Delhi High Court
Modi-Mundipharma Pvt. Limited vs Speciality Meditech Pvt. Ltd. & Anr on 1 July, 2025
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 21 February 2025
Pronounced on: 1 July 2025
+ RFA(OS)(COMM) 8/2023, CM APPL. 20433/2023, CM
APPL. 34634/2023 & CM APPL. 42133/2023
MODI-MUNDIPHARMA PVT. LIMITED ..Appellant
Through: Mr. Pravin Anand and Ms.
Prachi Agarwal, Advs.
versus
SPECIALITY MEDITECH
PVT. LTD. & ANR. ....Respondents
Through: Mr. Gagan Gupta, Sr. Adv.
with Mr. Saurabh Gupta, Adv. for R-1
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
% JUDGMENT
01.07.2025
C. HARI SHANKAR, J.
Facilitative Index to the Judgment
S. No. Subject Para Nos
1 Introductory paras 1-3
2 The lis 4-8
3 Rival Pleadings before learned Single Judge
4 The plaint 9 – 9.2
5 Written Statement of Respondent 1 10
6 Written Statement of Respondent 2 11
7 Replication to Written Statement of 12
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 1 of 115
Signing Date:01.07.2025
13:29:56
Respondent 2
8 Replication to Written Statement of 13 – 13.4
Respondent 1
9 Proceedings before learned Single 14 – 16
Judge
10 Issues framed in the suit 15
11 Impugned Judgment 17 – 17.6
12 Rival Stands of learned Counsel before this Court
13 Submissions of Mr. Pravin Anand 19 – 19.11
14 Submissions of Mr. Gagan Gupta 20 – 20.8
15 Analysis
16 Points arising for determination 21 – 23
17 Re. Issue (i) – Delay and laches 24 – 24.16
18 Re. Issue (ii) – Infringement vis-à-vis 25 – 25.12
CONTIN family of marks of plaintiff
19 Relevant Statutory Provisions 25.1 – 25.1.24
20 Re. “family of marks” concept 25.11 – 25.11.15
21 The judgment in Amar Singh Chawal 25.11.3 – 25.11.3.4
Wala
22 Re. Issue (iii) – Plea of infringement 26 – 26.3
vis-à-vis FECONTIN-F registered
trade mark
23 Re. finding of learned Single Judge that 26.1 – 26.1.18
FECONTIN is a descriptive trade mark
24 On merits 26.2 – 26.2.14
25 Re. Issue (iv) – Passing Off 27 – 27.7
26 Re. Issue (v) – Relief to which the 28 – 28.4
appellant would be entitled
27 Re. finding of acquiescence 28.2 – 28.2.6
28 Re. Issue (vi) – Extent of liability of 29 – 29.2
the defendants
29 Conclusion 30 – 32
1. This is a regular first appeal filed at the instance of Modi-
Mundipharma Pvt. Ltd, the plaintiff in CS (Comm) 353/2018,
assailing judgment and decree dated 23 March 2023 passed by a
learned Single Judge of this Court, whereby the aforesaid suit has
been dismissed.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 2 of 115
Signing Date:01.07.2025
13:29:56
2. Respondent 1, who alone ultimately contested the suit, has also
filed cross objections, challenging the impugned judgment to the
extent it decides Issue 2, as framed in the suit, against Respondent 2
and in favour of the appellant.
3. This judgment disposes of the appeal and the cross-objections.
The lis
4. By the suit, the appellant-plaintiff alleged that, by use of the
trade mark FEMICONTIN, the respondents were infringing the
registered trade marks FECONTIN-F and CONTIN, for both of which
the appellant possesses registrations under the Trade Marks Act 1999.
Respondent-1 Speciality Meditech Pvt Ltd. is admittedly the
manufacturer of the allegedly infringing product and Respondent 2
Preet International Pvt Ltd. markets the product. It is alleged that
Respondent 2 is the principal infringer who has, from time to time,
been contracting with different manufacturers to manufacture the
infringing products.
5. The appellant, therefore, sought a decree of permanent
injunction, restraining the use, by the respondents, of the mark
FEMICONTIN, or any mark which included CONTIN as a part
thereof, for pharmaceutical preparations. Additionally, damages, costs
etc., were also sought in the suit.
6. The learned Single Judge has, by judgment dated 23 March
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 3 of 115
Signing Date:01.07.2025
13:29:56
2023, dismissed the suit. Aggrieved thereby, the appellant has
instituted the present appeal under Section 13 of the Commercial
Courts Act 2015. The appellant has, therefore, prayed, in the present
appeal, that the impugned judgment and decree dated 23 March 2023,
of the learned Single Judge, in CS (Comm) 353/2018 be quashed and
set aside and that the respondents and all others acting on their behalf
be restrained permanently from using the mark FEMICONTIN or any
other mark deceptively similar to FECONTIN-F or the CONTIN
“family of marks” of the appellant.
7. Photographs of the appellant and respondents’ products were
filed before the learned Single Judge and have also been placed on
record with the present appeal. The said photographs may be shown,
side by side, thus:
Appellant’s product Respondents’ product
8. Are the products Schedule H drugs?
A somewhat puzzling feature may be noted here. Both sides have
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 4 of 115
Signing Date:01.07.2025
13:29:56
pleaded, and argued, on the presumption that the products are
Schedule ‘H’ drugs, i.e. drugs which are contained in Schedule H to
the Drugs and Cosmetics Rules, 1945 and cannot, therefore, be
dispensed without a doctor’s prescription. In all such cases, the fact
that the formulation is a Schedule ‘H’ drug, and requires a doctor’s
prescription for being dispensed, invariably finds place on the package
and the strip of the tablets/capsules. We do not find any such mention
on the packages or strips either of FECONTIN-F of the appellant, or
of FEMICONTIN, of the respondents. We have also scanned the
Internet in this regard, and it does not appear that either product is, in
fact, a Schedule H drug. Nonetheless, as both sides have argued on
this basis, we, in appeal, do not propose to disturb this position. In any
event, as the discussion hereinafter would reveal, this fact does not
seriously impact the outcome of the present appeal. We merely note it,
as it appears strange that, on facts, both sides appear to be proceeding
on a wrong premise.
Rival pleadings before the learned Single Judge in CS (Comm)
353/2018
9. The plaint
9.1 The appellant alleged and asserted, in the plaint before the
learned Single Judge, thus:
(i) The appellant is the proprietor of family of trade marks of
which CONTIN is the common feature. CONTIN itself is
registered as a trade mark in favour of the appellant in class 5.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 5 of 115
Signing Date:01.07.2025
13:29:56
The list of the registered trade marks of the appellant, all of
which are in Class 5, have thus been provided in the plaint:
S.No. Trade Mark
1 ACOCONTIN
2 ALPROCONTIN
3 AMBROCONTIN
4 ANGICONTIN
5 ARCONTIN
6 ASACONTIN
7 ASPICONTIN
8 BUCOCONTIN
9 BUCONTIN
10 CONTIN
11 CONTINUS
12 CORBUCONTIN
13 DILCONTIN
14 DIUCONTIN
15 DIUCONTIN-K
16 FECONTIN
17 FECONTIN-F
18 FECONTIN-Z
19 FENCONTIN
20 GLIPICONTIN
21 INDICONTIN
22 ISOCONTIN
23 METOCONTIN
24 MORCONTIN
25 NAPROCONTIN
26 NITROCONTIN
27 PYRICONTIN
28 SALCONTIN
29 THEOCONTIN
30 TRD-CONTIN
31 UNICONTIN
32 VASCONTIN
(ii) The products of the appellant bearing CONTIN as a part
of their names/trademarks have, by dint of extensive and
continuous use, amassed considerable reputation in the market.
Signature Not Verified
The use of the mark CONTIN as a part of the name of
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 6 of 115
Signing Date:01.07.2025
13:29:56
pharmaceutical product acts as a source identifier for the
appellant.
(iii) FECONTIN-F, in respect of which the appellant has a
separate trade mark registration, is a combination of Ferrous
Glycrine Sulphate, equivalent to 100 mg iron1, and folic acid.
The mark is in use by the appellant since 1993. The sales
turnover and expenses involved in promotion and advertising of
the mark were thus provided in the plaint:
S. No. Period Total Sales Advertisement
(₹) in lakhs) (₹) (in lakhs)
1 March 93 to Dec 93 16.85
2 Jan 94 to Dec 94 32.41 0.19
3 Jan 95 to Dec 95 53.07
4 Jan 96 to Dec 96 73.76
5 Jan 97 to Dec 97 94.58
6 Jan 98 to Dec 98 105.60
7 Jan 99 to Dec 99 112.60 0.02
8 Jan 00 to Dec 00 116.20
9 Jan 01 to Dec 01 147.13 0.85
10 Jan 02 to Dec 02 143.18 0.75
11 Jan 03 to Dec 03 215.16 21.12
12 Jan 04 to Dec 04 233.89 23.18
Total 1344.43 46.2
(iv) The appellant has, therefore, a right to claim exclusivity
over the use of CONTIN as a part of the name of any
pharmaceutical product as well as specifically against any trade
mark which was deceptively similar to the registered trade mark
FECONTIN-F.
(v) In July 1999, the appellant came across the product
1 “Ferrum” being the chemical name for iron
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 7 of 115
Signing Date:01.07.2025
13:29:56
FEMICONTIN, being manufactured by M/s Eubiotics
Pharmaceuticals2, the predecessor-in-interest of Respondent 1.
(vi) FEMICONTIN contains 150 mg Ferrous Sulphate, 61.8
mg Zinc Sulphate Monohydrate, 1.2 mg Cyanocobalamin, 1.2
mg, Folic Acid and Vitamin B12.
(vii) The use of the mark FEMICONTIN by the respondents
infringed the registered trade marks FECONTIN-F and
CONTIN, of the appellant.
(viii) The appellant, therefore, addressed a cease and desist
notice to Eubiotics on 10 July 1999, calling on the respondents to
discontinue use of CONTIN as a part of the name of any of their
pharmaceutical products as well as specifically to discontinue the
use of the mark FEMICONTIN. Eubiotics responded on 3
August 1999, disputing the proprietorial rights of the appellant
over the trade marks FECONTIN-F and CONTIN.
(ix) As the respondents’ product FEMICONTIN was not
being sold in the market, the appellant did not institute any suit at
that point of time. However, on finding the product
FEMICONTIN in the market in March 2001, the appellant
instituted OS 33/2004 before the District Court at Ranga Reddy
in Hyderabad, alleging that Eubiotics was infringing the
appellant’s registered trade marks FECONTIN-F and CONTIN
and, therefore, seeking an injunction against the respondents in
Signature Not Verified
2 “Eubiotics” hereinafter
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 8 of 115
Signing Date:01.07.2025
13:29:56
that regard, apart from other reliefs.
(x) Though OS 33/2004 was instituted in 2002, Eubiotics
changed its name to Stanbiotic Pvt Ltd in 2004, upon which the
appellant had to file an amendment application to change the
name of the defendant in the array of parties. The suit thus got
renumbered as OS 33/2004.
(xi) Respondent 1, as Defendant 2 in OS 33/2004, disputed
the territorial jurisdiction of the Ranga Reddy District Court to
entertain the suit, as it was submitted that the allegedly infringing
products were not being sold in Andhra Pradesh. Among the
places where the products were being sold was, however, New
Delhi.
(xii) Accordingly, on 23 August 2004, the learned Additional
District Judge3, Ranga Reddy District Court, allowed OS
33/2004 to be withdrawn with liberty to the appellant to file a
fresh suit in the appropriate court.
(xiii) In the meanwhile, the manufacturer of the allegedly
infringing FEMICONTIN changed to Mark Drugs Pvt. Ltd4,
though the marketing company remained Respondent 2.
(xiv) Pursuant to the liberty granted by the Ranga Reddy
District Court, vide order dated 23 August 2004, the appellant
3 “the learned ADJ” hereinafter
4 “Mark Drugs” hereinafter
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 9 of 115
Signing Date:01.07.2025
13:29:56
instituted CS (OS) 577/2005 before this Court, seeking the same
relief against the respondents as were sought in OS 33/2004
before the Ranga Reddy District Court. Defendant 1, in the suit,
was Mark Drugs.
(xv) On 24 May 2005, this Court granted an ad interim
injunction restraining the respondents from using the mark
FEMICONTIN as well as any mark which included CONTIN as
a part thereof, as would infringe trade marks 518596 and 518594,
under which the trade marks FECONTIN-F and CONTIN
respectively were registered in favour of the appellant.
Subsequently, however, by order dated 22 May 2006, this Court
returned the plaint under Order VII Rule 10 of the CPC, on the
ground that the appellant had arbitrarily valued the suit at over ₹
20 lakhs, with liberty to institute the suit before the court of
appropriate jurisdiction.
(xvi) The appellant assailed the said order dated 22 May 2006
before the Division Bench of this Court by way of FAO (OS)
476/2006, which was disposed of by the Division Bench of this
Court on 30 August 2006 with liberty to move an application
before the learned Single Judge. The appellant, therefore, moved
an application under Order VI Rule 17 of the CPC to amend the
plaint as well as Review Application 07/2007 under order XLVII
Rule 1 of the CPC before the learned Single Judge.
(xvii) At the time of institution of CS (Comm) 353/2018, from
which the present appeal emanates, these applications were
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 10 of 115
Signing Date:01.07.2025
13:29:56
pending before the learned Single Judge, as is reflected in para
23 of the plaint. However, subsequently on 12 November 2007,
CS(OS) 577/2005 and Review Petition 07/2007 were withdrawn
by the appellant.
(xviii) Thereafter, Respondent 2 Preet International Pvt Ltd
succeeded Mark Drugs as the manufacturer of the allegedly
infringing products.
(xix) It was in these circumstances that the appellant had
instituted the present suit against Respondents 1 and 2. The suit
was originally numbered CS (OS) 2176/2007, but, after the
coming into force of the Commercial Courts Act in 2015, was
renumbered CS (Comm) 353/2018.
(xx) Apart from the fact that the use, by the respondents, of
the mark FEMICONTIN infringed the marks CONTIN and
FECONTIN-F, registered in favour of the appellant, the use of
the mark FEMICONTIN also resulted in brand dilution as well as
erosion of the goodwill that had been earned by the appellant’s
CONTIN series of marks, including FECONTIN-F. The mark
FEMICONTIN, therefore, resulted in infringement of the
statutory and common law rights of the appellant in the CONTIN
family of marks, and specifically in FECONTIN-F.
(xxi) Besides, the mark FEMICONTIN was practically
identical to the appellant’s registered trademark FECONTIN-F.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 11 of 115
Signing Date:01.07.2025
13:29:56
(xxii) The composition of the two products was also identical.
(xxiii) The two products catered to the same class of consumers
and were available through the same trade channels.
(xxiv) There was, therefore, every likelihood of a consumer
being confused between the appellant’s and the respondents’
products as a result of use of the mark FEMICONTIN by the
respondents.
(xxv) By use of the mark FEMICONTIN, the respondents were
also seeking to pass off their product as the product of the
appellant.
(xxvi) The case was, therefore, one of rank dishonesty.
(xxvii) As the respondents had themselves acknowledged before
the Ranga Reddy District Court that they were selling their
products in Delhi, this Court possessed territorial jurisdiction to
deal with the matter.
9.2 Based on the aforesaid assertions and allegations, the appellant
prayed, in the suit, thus:
“37. It is therefore prayed that the following reliefs be granted to
the Plaintiff:
a) An order for permanent injunction restraining
the Defendants, its partners or proprietor, as the case
may be, its offices, servants, and agents from
reproducing on the label or packaging of their product,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 12 of 115
Signing Date:01.07.2025
13:29:56
the trademark FEMICONTIN or any other trademark
deceptively similar to the Plaintiffs trademark
FECONTIN-F or from using the Plaintiffs registered
trademark CONTIN amounting to an infringement of
the Plaintiff’s registered trademarks bearing No.
518596 & 518594 respectively in class 5.
b) An order for Permanent Injunction restraining
the defendants, its partners or proprietor, as the case
may be, its offices, servants, and agents from
manufacturing, selling, offering for sale advertising,
directly or indirectly dealing in medicinal and
pharmaceutical preparation in packaging beating
Trademark FEMICONTIN which is identical or
deceptively similar to the Plaintiff’s CONTIN series of
marks and the trademark FECONTIN-F or from doing
any other act which would amount to pasting off of the
Defendant’s goods or business as the goods and
business of the Plaintiff;
c) An order for delivery up of all the goods
bearing the impugned mark, dies, cartons, labels,
packaging and any other infringing material to the
authorised representative of the Plaintiff for the
purposes of destruction/ erasure;
d) Direct the Defendants to pay a sum of Rs.
48,00,000/- towards damages which is the estimated
loss of sales by the Plaintiff as also the loss of
reputation owing to the illegal activities of the
Defendants;
e) An order for rendition of accounts of profits of
the Defendants on account of sales of the medicines
bearing the trademark FEMICONTIN and for any other
products hearing the Plaintiff’s Trademarks and the
sum due paid to Plaintiff;
f) An order directing the Department of Drugs
Control Administration, Government of Andhra
Pradesh to cancel the Drug manufacturing license of
Defendant No. 1.
And or May Pass any other orders as this Hon’ble Court
may deem fit and proper in facts and circumstances of
the present case.”
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 13 of 115
Signing Date:01.07.2025
13:29:56
10. Written Statement of Respondent 1
Respondent 1, in its written statement, asserted thus:
(i) The word CONTIN was not invented by the appellant,
but was merely an abbreviation of the dictionary word
“CONTINUE”. It was settled that a person could not be
permitted a monopoly over ordinary words which were
common to the trade or otherwise descriptive in nature.
(ii) As such, the appellant could not claim any exclusive right
over CONTIN either as a prefix or as a suffix in the name of
any pharmaceutical product.
(iii) Thought the appellant possessed a registration for the
trademark CONTIN, it had never used the mark.
(iv) It was denied that the CONTIN, as a prefix or suffix, was
the source identifier of the appellant. A tabular representation
of three other pharmaceutical products, of which CONTIN
formed part of their names, was thus provided:
Marks Application Status Proprietor
Nos
CONTINUS 547328 -- Elder
Pharmaceuticals
Ltd, Delhi
CONTINA 769168 Registered Schering
Aktiengesellschaft,
Germany
CONTINUE 1011707 -- Weave
Signature Not Verified
Pharmaceuticals
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 14 of 115
Signing Date:01.07.2025
13:29:56
Pvt. Ltd, Chennai
(v) The composition of the appellant and respondents'
products were different. FECONTIN-F contained Ferrous
Glycine Sulphate equivalent to 100 mg Iron and 0.5 mg Folic
Acid whereas FEMICONTIN contained 200 mg Ferrous
Fumurate in sustained release form, 61.8 mg Zinc Sulphate
Monohydrate, 10 mcg Cynocobalamin and 1.5 mg Folic Acid.
(vi) The appellant had not filed any document to support its
user claim of March 1993.
(vii) The appellant had also not filed any document to support
the sales turnover and promotional expenses reflected in the
plaint. Moreover, these figures were provided only till 2004.
(viii) The appellant and respondent’s products were Schedule
“H” drugs, which could be sold only on prescription by medical
practitioners. Medical practitioners were experienced and were
unlikely to be confused between FECONTIN-F and
FEMICONTIN.
(ix) There was, therefore, no likelihood of confusion as a
result of use, by the respondents, of the mark FEMICONTIN.
(x) Whereas, in OS 33/2004 filed before the Ranga Reddy
District Court, the appellant contended that it had come to learn
of the use, by the respondent, of FEMICONTIN in January
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 15 of 115
Signing Date:01.07.2025
13:29:56
2004, in the present suit, the appellant claimed to have learnt of
the use of the mark FEMICONTIN by the respondents in July
1999. The averment was, therefore, misleading.
(xi) In fact, Respondent 1 was using the trademark
FEMICONTIN since 1999 and had also applied for registration
of the mark under the Trade Marks Act, which was pending.
(xii) The marks FECONTIN-F and FEMICONTIN were not
similar.
(xiii) Besides, the products, in appearance, packing, price and
composition, were distinct and different, resulting in there being
no likelihood of any confusion between them.
(xiv) The suit was bad for want of territorial jurisdiction. The
statement made by Respondent 1 before the District Court at
Ranga Reddy, on which the appellant placed reliance, was that
Respondent 1 did not have any sales of its products in the State
of Andhra Pradesh, but was selling its products in Delhi, UP
and Rajasthan. This was with reference to the overall sales of
the products of Respondent 1 and not specifically with respect
to FEMICONTIN. In fact, the product FEMICONTIN was not
sold in Delhi.
(xv) The allegation of passing off was denied. Respondent 1
had no intent to pass off its products FEMICONTIN as the
product of the appellant.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 16 of 115
Signing Date:01.07.2025
13:29:56
(xvi) In this context, the origin of the mark FEMICONTIN was
thus sought to be explained. “FE” in FEMICONTIN referred to
Ferrous Fumarate, “FEMI” was an abbreviation for “Female” as
the product was of use to pregnant women and the suffix
“CONTIN” was an abbreviation for “CONTINUES”. By using
the mark FEMICONTIN, therefore, it was sought to be
conveyed that the drug, when administered, continuously
released iron into the body of pregnant women, resulting in
increase in Red Blood Corpuscles5 and overall well-being of the
patient.
(xvii) The prefix “FE” was generic, and was the origin of both
the rival marks FECONTIN-F and FEMICONTIN. The
appellant could not, therefore, be permitted a monopoly over the
use of the generic “FE” prefix.
(xviii) Besides, the use of the “FE” prefix as an abbreviation for
Ferrous (Iron) was also suggestive of the ailment which the
product was intended to cure, which was Anaemia.
(xix) The “FE” prefix was common to the trade. A list of
several pharmaceutical products, in the names of which “FE”
figured as a prefix was thus provided:
Marks Application Status Proprietor
No's
FEMICARE 728337 -- Rahul
Laboratories Pvt
5 "RBC" hereinafter
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 17 of 115
Signing Date:01.07.2025
13:29:56
Ltd, Hyderabad
FEMICHROM 1026073 Registered Needs pharma Pvt
E Ltd, Muzaffar
Nagar
FEMICOT 1092685 Opposed Guapha Remedies
Pvt Ltd, NOIDA
FEMICORD 1142048 Registered Focus health care
Pvt Ltd, Punjab
FEMICON 1194028 Opposed Consis pharma,
Kolkata
FEMIRON -- -- Swarde
Pharmaceuticals,
Mumbai
FEMICLO-V 1332941 opposed Foregen
Healthcare Ltd,
Delhi
FEFODAN -- -- Danapharma
FEFODAN-Z -- -- Danapharma
FEFOL -- -- SB
FEFOL-Z -- -- SB
FEM -- -- NAC
International
FERGLOW -- -- Biochem
FERINOVA -- -- Lupin
Laboratories
FERITAS -- -- Intas
Laboratories
FERIZEST -- -- DWD
FEROSE -- -- C F L Pharma
FEROLUV -- -- N E U foreva
FERRO -- -- Intra Lab
FERRODAN -- -- Dhana Pharma
FERRUM-FOL -- -- Khandelwal
(xx) The distinguishing features between the appellant’s and
the respondents’ product was thus tabulated:
Subject Femicontin Fecontin-F Remarks
Application No 837309 518596
Date of 18.01.1999 March 1993
Application
Class 05 05
Organisation Speciality Modi Mundi
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 18 of 115
Signing Date:01.07.2025
13:29:56
Meditech Pharmaceuticals
Private Limited.
Limited.
Registered office Situated at Situated at New
Jaipur Delhi
Is it Schedule H Yes Yes Both should
drug be sold only
on doctors
Prescription.
Cures which Haemitinic6 Haemitinic
disease
Is it a tablet or Capsules Tablets
capsule
Areas of operation Rajasthan, All over India There is no
Maharashtra, sales in
Himachal Andhra
Pradesh, Pradesh and
Haryana, New Delhi
Assam,
Manipur,
Madya
Pradesh,
Some Places
of Uttar
Pradesh
Rate of Tablets Cost of 10 Cost of 10 tablets The price of
/Capsules for Strip Capsules is ₹ is ₹ 51-05 only. the Plaintiff
24-00 only. (Variable) Product is
(Variable) approximately
doubles to the
price of
Defendant.
Colour of the Ponceau 4R Sun set yellow Totally
Tablets (Capsules) (Tablets) Different
Colour of Packing Lite Saffron Ash Colour Both are
Box Colour different
Similarities Word Marks Word Marks Visually,
Phonetically
or Structurally
Different.
Contents of Tablets Dried Ferrous Glycine Contents are
Ferrous Fumurate different.
Sulphate I.P. equivalent to
- 100mg Ferrous
200mg Zinc Iron and Folic
Sulphate Acid I.P - O.5mg
6 Which increases haemoglobin and thereby treats anaemia
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 19 of 115
Signing Date:01.07.2025
13:29:56
Monohydrat-
e-
61.8mg.,
Cynocobala-
min I.P
l0mcg, Folic
Acid -
l.5mg,
Quotation Sustained Controlled There are no
mentioned on strip Release Release System chances of
System getting
confused.
(xxi) The appellant was also disentitled from seeking the
reliefs that it had sought in the suit on the ground of
acquiescence. It was well-settled that a person could not sit
back and allow the use of a trademark by another over a period
of time and belatedly seek an injunction against such use from
the Court. CS (OS) 2176/2007, from which the present appeal
emanates, was filed by the appellant nine months after CS (OS)
577/2005 was withdrawn. This amounted to acquiescence, by
the appellant, to the use of the mark FEMICONTIN by the
respondents, thereby disentitling it to any injunctive relief.
(xxii) The appellant’s assertions, CS (OS) 2176/2007, that it
had come to learn of the use, by the respondents, of the mark
FEMICONTIN only in 2004, could not be believed, as the
respondent’s mark FEMICONTIN was appearing alongside the
appellant’s product FECONTIN-F in the Indian Drug Review
journal since May 2002.
On the basis of the aforesaid assertions, Respondent 1 prayed that the
suit be dismissed.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 20 of 115
Signing Date:01.07.2025
13:29:56
11. Written Statement of Respondent 2
Respondent 2, in its written statement, merely stated that it was only
manufacturing the product FEMICONTIN for Respondent 1 and that
such manufacture did not constitute “use” of the trademark
FEMICONTIN for the purposes of the Trade Marks Act. Besides, the
manufacture was only for a period November/December 2005 to
September/October 2007, and was discontinued thereafter.
Respondent 1, therefore, disclaimed all liability towards any
infringement or passing off, as alleged by the appellant.
12. Replication by the appellant to Written Statement of
Respondent 2
As the written statement of Respondent 2 was brief, the appellant, in
its replication before the learned Single Judge, merely contended that
Section 307 of the Trade Marks Act, which was impliedly invoked by
7 30. Limits on effect of registered trade mark. –
(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark
by any person for the purposes of identifying goods or services as those of the proprietor provided
the use–
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark.
(2) A registered trade mark is not infringed where–
(a) the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services;
(b) a trade mark is registered subject to any conditions or limitations, the use of the
trade mark in any manner in relation to goods to be sold or otherwise traded in, in any
place, or in relation to goods to be exported to any market or in relation to services for use
or available or acceptance in any place or country outside India or in any other
circumstances, to which, having regard to those conditions or limitations, the registration
does not extend;
(c) the use by a person of a trade mark--
(i) in relation to goods connected in the course of trade with the
proprietor or a registered user of the trade mark if, as to those goods or a bulk
Signature Not Verified or which they form part, the registered proprietor or the registered user
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 21 of 115
Signing Date:01.07.2025
13:29:56
Respondent 2, was not applicable, as the case did not fall within any
of the circumstances envisaged in the said Section. As such, the
appellant submitted that the attempt of Respondent 2 to distance itself
from the infringement and passing off which had taken place could
not succeed.
13. Replication to Written Statement of Respondent 1
13.1 In response to the written statement of Respondent 1, the
appellant submitted that, as the appellant possessed a registration for
the mark CONTIN per se, the respondent was not permitted, in law, to
use the mark CONTIN, either by itself or as part of any other mark,
especially for pharmaceutical products. It was denied that the
appellant could not claim exclusivity over the mark CONTIN.
conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark; or
(ii) in relation to services to which the proprietor of such mark or of a
registered user conforming to the permitted use has applied the mark, where the
purpose and effect of the use of the mark is to indicate, in accordance with the
fact, that those services have been performed by the proprietor or a registered
user of the mark;
(d) the use of a trade mark by a person in relation to goods adapted to form part of,
or to be accessory to, other goods or services in relation to which the trade mark has been
used without infringement of the right given by registration under this Act or might for
the time being be so used, if the use of the trade mark is reasonably necessary in order to
indicate that the goods or services are so adapted, and neither the purpose nor the effect of
the use of the trade mark is to indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person and the goods or services, as the
case may be;
(e) the use of a registered trade mark, being one of two or more trade marks
registered under this Act which are identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by registration under this Act.
(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the
sale of the goods in the market or otherwise dealing in those goods by that person or by a person
claiming under or through him is not infringement of a trade by reason only of *–
(a) the registered trade mark having been assigned by the registered proprietor to
some other person, after the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark by the
proprietor or with his consent.
(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to
oppose further dealings in the goods in particular, where the condition of the goods, has been
changed or impaired after they have been put on the market.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 22 of 115
Signing Date:01.07.2025
13:29:56
CONTIN, it was submitted, was not a dictionary word but was coined
and inventive in nature and was, therefore, entitled to the highest
degree of trademark protection. In any event, as the mark CONTIN
was registered in the appellant’s favour, the appellant was entitled to
claim exclusivity over use of the mark. While it was true that the
appellant did not manufacture or sell any product under the mark
CONTIN per se, CONTIN formed a common part of all the marks
under which the appellant sold its products.
13.2 The appellant denied the respondent’s assertions that the
ingredients of the appellant and respondent’s products were different.
It was further submitted that both products were aimed at treating the
same ailments and, therefore, catered to the same consumer segment.
The appellant submitted that, as the rival marks were used for
pharmaceutical products, the Court was required to adopt a stricter
approach, as an inalienable element of public interest was involved in
ensuring that one drug was not mistaken for another.
13.3 In this context, the appellant submitted that, even if the products
were Schedule “H” Drugs and dispensable only against a medical
practitioner’s prescription, that was no guarantee against confusion.
Inasmuch as CONTIN formed an essential part of the names of all the
aforesaid products manufactured and sold by the appellant, the use of
CONTIN as a part of the name of the respondents’ product was
obviously with an intent to create confusion in the market. As such, a
clear case of passing off was made out.
13.4 The appellant, therefore, reiterated the prayers in the plaint.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 23 of 115
Signing Date:01.07.2025
13:29:56
Proceedings before the learned Single Judge
14. Respondent 2 stopped appearing in the proceedings before the
learned Single Judge after 26 March 2010. After that date, Respondent
1 alone contested the suit.
15. Issues framed in the suit
The following issues were framed by the Court, for consideration:
“1. Whether this court has no jurisdiction to try and entertain
the present suit? OPD
2. Whether the present suit is liable to be dismissed on account
of delay, laches and/or acquiescence? OPD
3. Whether the present suit is barred by virtue of Section 11 of
the Code of Civil Procedure, 1908? OPD
4. Whether the plaintiff is the registered proprietor of the trade
mark FECONTIN-F and the trade mark CONTIN/CONTIN family of
trademarks in relation to its goods/services? OPP
5. Whether the defendants have infringed the registered
trademarks FECONTIN-F and CONTIN of the plaintiff? OPP
6. Whether the use of the deceptively similar mark
FEMICONTIN by the defendants amounts to passing off? OPP
7. Whether the plaintiff is entitled to permanent injunction as
prayed for? OPP
8. Whether the plaintiff is entitled to damages as prayed for?
OPP
9. Whether the plaintiff is entitled to delivery up of materials and
rendition of accounts? OPPl0. Relief.”
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 24 of 115
Signing Date:01.07.2025
13:29:56
16. The appellant led the evidence only of Mr. Rajiv Behl in CS
(Comm) 353/2018 as PW-1 and Respondent 1 led the evidence of its
Director Prem Prakash Bhardwaj as DW-1.
17. The impugned judgment
17.1 As it transpires from a reading of the impugned judgment, the
appellant and Respondent 1 reiterated, before the learned Single
Judge, the contentions contained in their respective pleadings which
have already been noted earlier in this judgment.
17.2 Dealing with the issues which arose before him, the learned
Single Judge noted that Issues 1 and 3 were not pressed by
Respondent 1 and were accordingly disposed of. Apropos the
remaining issues, the learned Single Judge held as under:
17.3 Re. Issue 2
17.3.1 Issue 2 dealt with the objections of delay, laches and
acquiescence, as raised by Respondent 1.
17.3.2 The learned Single Judge noted that there was a dispute
regarding the year in which OS 33/2004 was filed by the appellant
before the Hyderabad District Court. The appellant contended that OS
33/2004 had originally been filed in 2002 but was renumbered OS
33/2004 only because there was a change of the manufacturer who
was manufacturing the infringing product, which necessitated an
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 25 of 115
Signing Date:01.07.2025
13:29:56
amendment. As against this, Respondent 1 contended that OS 33/2004
was filed only in 2004, as it referred to certain events on 2004 in paras
7 and 10, which read thus:
“7. In the month of January 2004, representative of the Plaintiff
came across the defendant’s pharmaceutical product bearing the
trademark FEMICONTIN relating to the same class of goods as
that of the Plaintiff containing Dried Ferrous Sulphate I.P. 150 mg,
Zinc Sulphate Monohydrate U.S.P. 61.8 mg, Cyanocobalamin I.P.
1.2 mcg, Folic Acid 1.2 mg with Vitamin B12 capsules. The said
product is stated to be a sustained release capsules. Using the mark
FEMICONTIN, amounts to infringement of the statutory
trademark rights of the plaintiff and is likely to confuse the
prospective buyers, who will associate the same as the product of
the Plaintiff thereby passing off their product as those of the
Plaintiff. The continued business of the defendants is pure
infringement and is involving in the manufacture and marketing of
the drug FEMICONTIN, which is causing untold loss of reputation
to the plaintiff. Thus the plaintiff is compelled to institute the
present proceedings.
*****
10. The cause of action in the present suit first arose in the
month of January 2004 when it came to the attention of the
Plaintiff that the defendants are manufacturing and marketing a
sustained release capsules under the trademark FEMICONTIN.
The defendants are continuing to infringe the trademark of the
plaintiff. The cause of action is a continuous one and continues
until such time as the Defendant is restrained by an order of
injunction passed by this Hon’ble Court. (Emphasis Supplied)”
17.3.3 As against this, the appellant sought to rely on certain
documents appearing in the Evidence Folder in OS 33/2004 which
bone a stamp of acknowledgement from the Ranga Reddy District and
Sessions Court dated 30 October 2002.
17.3.4 The learned Single Judge ruled that the documents in Evidence
Folder IV B of OS 33/2004, on which the appellant sought to rely,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 26 of 115
Signing Date:01.07.2025
13:29:56
could not be read as evidence, as the appellant had not produced any
certified copy of OS 33/2004 as purportedly filed in 2002 or any other
evidence of such filing, despite a specific issue to that effect having
been framed in the present proceedings. The documents to which the
appellant drew attention were registration certificates for its trade
marks, and, according to the impugned judgment, they did not show
with certainty that they were filed in OS 33/2004. The learned Single
Judge, therefore, held that no cogent evidence of OS 33/2004 having
been filed by the appellant before the Hyderabad District Court in
2002 had been produced by the appellant.
17.3.5 In that view of the matter, the impugned judgment holds that,
though the appellant had become aware of the use, by the respondents,
of the allegedly infringing FEMICONTIN mark in 1999, a suit
seeking an injunction thereagainst was first filed before the Hyderabad
District Court only in 2004, after a delay of five years.
17.3.6 The learned Single Judge, thereafter, proceeds to decide Issue 2,
thus:
“53. In Midas Hygiene P. Ltd.8, the Supreme Court has held that
mere delay in bringing action is not sufficient to defeat grant of an
injunction. In M/s Power Control Appliances & Ors9. the Supreme
Court has held that acquiescence is sitting by, when another is
invading the rights and spending money on it. It is a course of
conduct inconsistent with the claim for exclusive rights in a trade
mark and it implies positive acts and not mere silence or inaction
such as is involved in laches. Therefore, for delay and
acquiescence, there has to be something more than a mere delay on
part of the plaintiff. In order to support the plea of acquiescence, it
must be demonstrated through the conduct of the plaintiff that the
plaintiff stood by for a considerable period while the defendant8 Midas Hygiene Industries (P) Ltd v Sudhir Bhatia, (2004) 3 SCC 90
9 Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 27 of 115
Signing Date:01.07.2025
13:29:56
expended money in building up its own business with the aid of a
similar mark.
54. In the present case, the plaintiff has asserted that after
discovery of the use of the impugned mark by the defendant in the
year 1999, and the issuance of a legal notice, it was informed that
the products with the impugned mark are not available in the
market. It was only in 2001, that it again came to the knowledge of
the plaintiff that the products with the impugned mark are available
in the market. As noted hereinabove, there is a controversy whether
the suit was thereafter filed in the year 2002 or 2004. However, be
that as it may, even assuming that the suit was filed in the year
2004, it cannot be said that by its conduct, the plaintiff acquiesced
to the use of the impugned mark by the defendant. In this regard, I
must also note that apart from stating its sales and advertising
figures in the affidavit of evidence of DW-1, the defendant no.2
has not placed any other document on record to show the user of
the impugned mark between 1999 to 2005.
55. In view of the above, issue no.2 is decided in favour of the
plaintiff and against the defendant no.2, holding that though there
is a delay in filing of the suit, the suit is not liable to be dismissed
on this account.”
17.3.7 Thus, despite holding that OS 33/2004 was instituted before the
Hyderabad District Court only in 2004, the learned Single Judge has
held that the suit could not be dismissed solely on the ground of delay
and has, therefore, decided Issue 2 in favour of the appellant.
17.4 Re. Issues 4 to 7
17.4.1 While dealing with Issues 4 to 7, the learned Single Judge, in
para 58, commences the discussion thus:
“58. The plaintiff has been able to establish that it is the
registered proprietor of the trade marks FECONTIN-F and
CONTIN. It has also been able to establish its reputation in the
mark FECONTIN-F, in fact, the same has not been denied by the
defendant no.2.”
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 28 of 115
Signing Date:01.07.2025
13:29:56
Thus, at the very commencement of the discussion on Issues 4 to 7,
the learned Single Judge holds, in favour of the appellant, that it had
succeeded in establishing its reputation in the mark FECONTIN-F,
and that it was the registered proprietor of the trademarks
FECONTIN-F and CONTIN.
17.4.2 Re. claim of exclusivity over CONTIN as a suffix/prefix
17.4.2.1 The learned Single Judge, thereafter, proceeds to deal
with the claim of the appellant for exclusivity with respect to the mark
CONTIN, thus:
“59. At the same time, though the plaintiff is the registered
proprietor of the mark CONTIN, in spite of the specific assertion
of the defendant no.2 that the said mark is not in use as no product
with the said mark alone is available in the market, the plaintiff has
led no evidence to the contrary. The only claim of the plaintiff is
that it has a family of marks of which CONTIN is the dominant
part. For CONTIN, the answer to Question No.11 given by Mr.
Rajiv Behl is relevant. The same is reproduced as under:
“Q.11 Does the Plaintiff company manufacture or market
any product named only as CONTIN?
Ans. We do not manufacture any product under the brand
name CONTIN however most of our products bear the
CONTIN as a suffix in all trademarks.
I am not aware as to how and on what basis Mundipharma
AG of Switzerland had adopted the trademark CONTIN.
We are using CONTIN as suffix in relation to products
with drug delivery system continus.”
60. The above is an admission of the fact that the registered
trade mark CONTIN is not used by the plaintiff for its
pharmaceutical products for which it is registered. In my opinion,
even though CONTIN may be used as a prefix or suffix in a family
of marks by the plaintiff, the same would not amount to use of the
registered mark.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 29 of 115
Signing Date:01.07.2025
13:29:56
61. Section 47 (1) (b) of the Act states that a registered trade
mark may be taken off the Register where it is shown inter alia that
up to a date three months before the date of the application filed
seeking its removal from the Register of trade marks, a continuous
period of five years from the date on which the trade mark is
actually entered in the register or longer had elapsed during which
the trade mark though registered was not bona fide used in relation
to the goods and services for which it had been registered. Sub
section (1) of Section 47 of the Act is reproduced herein below:-
“47. Removal from register and imposition of
limitations on ground of non-use. –
(1) A registered trade mark may be taken off the
register in respect of the goods or services in respect
of which it is registered on application made in the
prescribed manner to the Registrar or the High
Court by any person aggrieved on the ground
either–
(a) that the trade mark was registered
without any bona fide intention on the part
of the applicant for registration that it should
be used in relation to those goods or services
by him or, in a case to which the provisions
of section 46 apply, by the company
concerned or the registered user, as the case
may be, and that there has, in fact, been no
bona fide use of the trade mark in relation to
those goods or services by any proprietor
thereof for the time being up to a date three
months before the date of the application; or
(b) that up to a date three months before
the date of the application, a continuous
period of five years from the date on which
the trade mark is actually entered in the
register or longer had elapsed during which
the trade mark was registered and during
which there was no bona fide use thereof in
relation to those goods or services by any
proprietor thereof for the time being:
Provided that except where the applicant has been
permitted under section 12 to register an identical or
nearly resembling trade mark in respect of the
goods or services in question, or where the
Registrar of the High Court, as the case may be, is
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 30 of 115
Signing Date:01.07.2025
13:29:56
of opinion that he might properly be permitted so to
register such a trade mark, the Registrar of the High
Court, as the case may be, may refuse an
application under clause (a) or clause (b) in relation
to any goods or services, if it is shown that there has
been, before the relevant date or during the relevant
period, as the case may be, bona fide use of the
trade mark by any proprietor thereof for the time
being in relation to–
(i) goods or services of the same
description; or
(ii) goods or services associated with
those goods or services of that description
being goods or services, as the case may be,
in respect of which the trade mark is
registered.”
62. Sub-Section (2)(c) of Section 2 of the Act states that the
“use of a mark‟ in relation to goods shall be construed as a
reference to the use of the mark upon, or in any physical or in any
other relation whatsoever, to such goods.
63. Therefore, use of the registered trade mark itself by the
proprietor is essential. Use of a similar mark or a mark of which
the registered mark is a part, cannot be the use of the registered
mark itself.
64. Section 28 of the Act gives the exclusive right to the use of
the trade mark in relation to the goods and services in respect of
which it is registered to the proprietor, if such registration is valid.
65. In the present case, challenge to the mark CONTIN has
been filed by the defendant no.2 and is pending adjudication.
Notwithstanding the pendency of the same, in my opinion, the non-
use of the mark would be of relevant consideration for determining
the relief to be granted to the plaintiff on account of registration of
the mark CONTIN in its favour.”
Thus, apropos the appellant’s claim to exclusivity for the mark
CONTIN, the learned Single Judge has proceeded on the aspect of use
of the mark CONTIN, by itself, by the appellant. The learned Single
Judge notes that, though the appellant was the registered proprietor of
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 31 of 115
Signing Date:01.07.2025
13:29:56
the mark CONTIN, it had never used CONTIN as a standalone mark
for any product. This fact, it was noted, was also acknowledged by
PW-1 in his response to Question 11 during cross examination.
17.4.2.2 We may note that, even before us, the appellant does not
seek to contend that it ever used CONTIN as a standalone mark for
any of its products.
17.4.2.3 The learned Single Judge holds that the use of CONTIN
as a prefix or a suffix in the various trade marks employed by the
appellant would not amount to use, by the appellant, of the registered
trade mark CONTIN. It is thus that the learned Single Judge proceeds
to examine the entitlement of the appellant to injunction against the
use of CONTIN as a part of the respondents’ trade mark, even though
there was no standalone use of the mark CONTIN by the appellant.
17.4.2.4 In this context, the learned Single Judge has referred to
Section 47(1)(b)10 in conjunction with Section 2(2)(c)11 of the Trade
10 47. Removal from register and imposition of limitations on ground of non-use. –
(1) A registered trade mark may be taken off the register in respect of the goods or services in
respect of which it is registered on application made in the prescribed manner to the Registrar or
the High Court by any person aggrieved on the ground either–
*****
(b) that up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually entered in the
register or longer had elapsed during which the trade mark was registered and during
which there was no bona fide use thereof in relation to those goods or services by any
proprietor thereof for the time being:
Provided that except where the applicant has been permitted under Section 12 to register
an identical or nearly resembling trade mark in respect of the goods or services in question, or
where the Registrar or the High Court, as the case may be, is of opinion that he might properly be
permitted so to register such a trade mark, the Registrar or the High Court, as the case may be, may
refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is
shown that there has been, before the relevant date or during the relevant period, as the case may
be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to–
(i) goods or services of the same description; or
(ii) goods or services associated with those goods or services of that description being
goods or services, as the case may be, in respect of which the trade mark is registered.
11 (2)
Signature Not Verified In this Act, unless the context otherwise requires, any reference–
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 32 of 115
Signing Date:01.07.2025
13:29:56
Marks Act. These provisions, according to the learned Single Judge,
render use of a registered trade mark by the proprietor essential for
maintaining a claim of infringement. Use of a mark, of which the
registered trade mark is a part, does not constitute use of the registered
trade mark. In view of the right conferred by Section 28(1) 12 of the
Trade Marks Act, for exclusive right to use a registered trade mark,
the learned Single Judge holds that the fact that the registered trade
mark is not used is a relevant consideration while examining the
appellant’s plea for injunction.
17.4.2.5 Having so observed, the learned Single Judge, in para 66
of the judgment, proceeds to observe thus:
“66. I may herein clarify that the above observations are not to
be considered relevant for the purposes of determining the claim of
passing off that the plaintiff may have due to its family of marks
wherein CONTIN forms a predominant part as a suffix or prefix.
While the concept of family of marks may be relevant for purposes
of determining a claim of passing off, it may not be of much
assistance to the plaintiff for considering the claim of infringement
of the registered trade mark. It is also not relevant for determining
the claim of infringement or passing off due to registration of the
mark FECONTIN-F in favour of the plaintiff. Claim of
infringement would have to be separately considered for the two
marks, that is, CONTIN and FECONTIN-F.”
Thus, in para 66, the learned Single Judge notes the fact of non-use by
*****
(c) to the use of a mark,–
(i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as
or as part of any statement about the availability, provision or performance of such
services;
12 28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
Signature Not Verified in respect of infringement of the trade mark in the manner provided by this Act.
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 33 of 115
Signing Date:01.07.2025
13:29:56
the appellant, of CONTIN as a standalone mark, despite its
registration in the appellant’s favour, is not a relevant consideration
while examining the appellant’s plea for injunction on ground of
passing off, predicated on the fact that it has a family of marks in all
of which CONTIN is a predominant part either as a prefix or a suffix.
Equally, the non-use, by the appellant, of CONTIN as a standalone
mark has been acknowledged by the learned Single Judge as not being
relevant while examining the appellant’s claim for infringement
predicted on the registration held by it of the mark FECONTIN-F.
17.4.2.6 Resultantly, the learned Single Judge has, in the
impugned judgment, opined that, whereas the appellant did not have a
case of infringement, against the respondents, by virtue of the
registration held by it in the mark CONTIN, the issues of whether a
claim for infringement against the respondents would lie on the basis
of the registration held by the appellant in the mark FECONTIN-F or
whether a claim of passing off would lie against the respondents by
virtue of the fact that CONTIN forms a pre-dominant part of the
names of all the marks used by the appellant, still remained open for
consideration.
17.4.3 Re. claim of infringement vis-à-vis the FECONTIN-F trade
mark of the appellant
17.4.3.1 The learned Single Judge thereafter addresses the issue of
whether the claim for infringement, against the respondents, would lie
on the basis of the registration of the mark FECONTIN-F in favour of
the appellant. This issue is covered by paras 67 to 88 of the impugned
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 34 of 115
Signing Date:01.07.2025
13:29:56
judgment.
17.4.3.2 Dealing with the plea of the appellant, against the
respondents, of infringement, based on the registration of the trade
mark FECONTIN-F in the appellant’s favour, the learned Single
Judge notes that the prefix “FE” and the suffix “CONTIN” in
FECONTIN-F were both used in a descriptive sense.
17.4.3.3 The prefix “FE”, holds the learned Single Judge,
indicated the presence of iron in the product. For this purpose, the
learned Single Judge relies on the answer of PW-1 to Question 13
posed to him during cross examination. The question, and the
response of PW-1 thereto, read thus:
“68. The witness of the plaintiff, that is, Mr.Rajiv Behl, PW-1,
in answer to question No.13 has stated as under:
“Q.13 Are you aware as to what is the basis of naming
the product in question as FECONTIN-F?
Ans. FE relates to iron and CONTIN is our registered
trademark and F is related to ferrous and ingredients of
the product.”
17.4.3.4 Apropos the suffix “CONTIN”, the learned Single Judge
similarly relies on the response of PW-1 to Questions 11 and 12 put to
him during cross-examination thus:
“69. For CONTIN, answers to Question No.11 as also Question
No.12 given by Mr.Rajiv Behl are relevant. The same reproduced
as under:
“Q.11 Does the Plaintiff company manufacture or
market any product named only as CONTIN?
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 35 of 115
Signing Date:01.07.2025
13:29:56
Ans. We do not manufacture any product under the
brand name CONTIN however most of our products bear
the CONTIN as a suffix in all trademarks.
I am not aware as to how and on what basis Mundipharma
AG of Switzerland had adopted the trademark CONTIN.
We are using CONTIN as suffix in relation to products
with drug delivery system continus.”
“Q.12 What is the meaning of the expression “drug
delivery system continus”?
Ans. Continus Drug Delivery means the drug will
have continuous effect in the body for a longer duration”
(Emphasis supplied)
17.4.3.5 The learned Single Judge therefore holds that “FE” in
FECONTIN-F relates to iron, which is an ingredient of the product
and “CONTIN” indicates that the product has a Continuous Drug
Delivery system. Even while recognising that a mark is not to be
bifurcated into parts to examine whether it is descriptive, the learned
Single Judge holds that if a part of the mark is descriptive, the
proprietor cannot be permitted a monopoly over that part. Equally,
while examining the aspect of deceptive similarity vis-a-vis the rival
marks, the descriptive part of plaintiff’s mark is liable to be accorded
less weightage. Para 71 of the impugned judgment, which records
these findings, reads as under:
“71. Therefore, “FE” relates to iron, which is an ingredient of
the plaintiff’s product, while CONTIN is being used in relation to
the products with Continuous Drug Delivery system, that is where
the drug will have a continuous effect in the body for a longer
duration. Though, it is correct that for determining whether a mark
is descriptive or suggestive in nature, the mark is not to be
bifurcated into parts, at the same time, it is also to be seen that the
part which is descriptive is not allowed to be monopolised by any
person. For determining whether the complained mark is
deceptively similar to the other mark, the descriptive parts of such
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 36 of 115
Signing Date:01.07.2025
13:29:56
mark may have to be given less weightage.
17.4.3.6 The learned Single Judge thereafter proceeds to refer to
the decisions of Division Benches of this Court in Marico Ltd v Agro
Tech Foods Ltd13, Schering Corporation v Alkem Laboratories Ltd14
and Sun Pharmaceutical Laboratories Ltd v Hetero Healthcare
Ltd15. Based on these decisions, the learned Single Judge proceeds to
hold, on the aspect of whether the appellant could claim exclusivity
over the mark FECONTIN, and its individual parts thus, in paras 75
to 77 of the impugned order:
“75. Applying the above ratios, in the present case, the word
FECONTIN-F is clearly descriptive of the pharmaceutical product
itself. It is suggestive of iron released for a continuous period in the
body. The plaintiff’s product is Ferrous Glycine Sulphate
equivalent to 100mg Ferrous Iron and Folic Acid I.P. 0.5mg
tablets. PW1- Shri Rajiv Behl, in his cross examination states as
under:-
“The medicine FECONTIN-F is an iron supplement and is
used by female patients normally during pregnancy.”
76. The mark is therefore, descriptive of the product. The
plaintiff cannot claim any exclusive right over the same.
77. Though a combination of two descriptive words may still
be entitled to protection, the plaintiff cannot deny the use of such
descriptive parts by a third party or claim exclusive right to use the
same. The defendant no. 2 has explained the reason for adoption of
its mark in the following words:-
“The Defendant No.2 submits that both the rivals marks in
the suit are not similar at all. It is pertinent to mention that
it is a very common phenomenon in the Pharmaceutical
Industry to club the nature of disease and medicinal
compound to coin a Trademark which will enable the
medical practitioners and doctors to remember the
particular names of the medicine very easily. The13 (2010) 169 DLT 325
14 (2009) 165 DLT 474
15 2022 SCC OnLine Del 2580
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 37 of 115
Signing Date:01.07.2025
13:29:56
Defendant No.2 humbly submits before this Hon’ble Court
as to how the Trademark “FEMICONTIN” has been coined
by them. The letters „FE’ are derived from Ferrous
Fumarate, which is an ingredient of the drug. The medicine
contained in the Trademark is useful for the pregnant
women and hence the word “FEMI” is derived by adding
letters “MI” to “FE”, which indicates “Female”. The word
“CONTIN” is derived from the dictionary word
“CONTINUES” which means to go on happening or
moving. Here, in total, the Trademark “FEMICONTIN”
means and indicates a drug which releases iron
continuously in a sustained release manner into the body of
a pregnant woman to avoid normal side effects and it
improves the quality of blood by increasing RBC. That is
why the Defendant No.2 has adopted “FEMICONTIN” as
their Trademark. It is further submitted that the Defendant
No.2 does not have any ill intention or any other reason to
adopt the Trademark “FEMICONTIN”. It is coined with
honest and bonafide intention.”
Interestingly, in the opening sentence of para 75 reproduced supra, the
learned Single Judge holds, apropos the mark FECONTIN-F, first that
it is descriptive and, later, that it is suggestive. We may note, even at
this juncture, that while descriptive marks cannot be registered,
suggestive marks can16; an aspect with which we would deal in greater
detail hereinafter.
17.4.3.7 The learned Single Judge relies on the evidence of PW-1,
in cross examination, to the effect that FECONTIN-F is an iron
supplement, normally used during pregnancy, as a ground to hold that
the mark FECONTIN-F was descriptive of the product and that,
therefore, the appellant could not claim any exclusivity over the mark.
17.4.3.8 Thereafter, in para 77, the learned Single Judge correctly
16 Refer T.V. Venugopal v Ushodaya Enterprises Ltd, (2011) 4 SCC 85
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 38 of 115
Signing Date:01.07.2025
13:29:56
observes, at the outset, that a combination of two descriptive words
may still be entitled to protection, but immediate follows this
observation by a finding that a plaintiff cannot deny the use of such
descriptive part by a third party or claim any exclusivity in respect
thereof. Thereafter, the learned Single Judge has accepted the
explanation adduced by the respondents for using the mark
FEMICONTIN, to which reference is already contained in para
17.4.3.5 supra. Accepting the said explanation, the learned Single
Judge holds that the adoption of the mark FEMICONTIN by
Respondent 2 was bonafide.
17.4.3.9 Following this, in para 79, the learned Single Judge
merely returns the following finding, with respect to visual and
phonetic similarity of the rival marks:
“79. In the present case, the two marks, in my view, are also not
deceptively similar, either visually or phonetically.”
17.4.3.10 Re. plea of estoppel based on Notice of Opposition filed
by Respondent 2 before the Registrar of Trade Marks17, opposing
appellant’s application for registration of the mark FECONTIN
The learned Single Judge, thereafter, addresses in paras 80 to 85, a
contention, advanced by the appellant, to the effect that Respondent 1
having, while opposing the application of the appellant for registration
of the mark FECONTIN, contended that the mark FECONTIN was
not entitled to registration as it was deceptively similar to the mark
FEMICONTIN, was estopped from contending otherwise in the
present proceedings. Apropos this submission of the appellant, the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 39 of 115
Signing Date:01.07.2025
13:29:56
learned Single Judge holds that the Notice of Opposition filed by
Respondent 1 before the Registrar of Trade Marks, opposing the
appellant’s application for registration of the mark FECONTIN, could
not be taken into consideration, as it had not been brought on record
after obtaining permission of the court and could not, therefore, be
confronted to the respondents’ witness. The plea of estoppel, raised by
the appellant, against Respondent 1, has, therefore, been rejected on
this ground.
17.4.4 Requirement of actual confusion
Thereafter, in paras 86 to 89, the learned Single Judge holds thus:
“86. Returning back to the discussion on whether the two marks
are deceptively similar to each other, I must also herein note that
the plaintiff has also not led any evidence on any confusion being
caused by the simultaneous use of the marks of the plaintiff and the
defendant no.2, though the suit itself has been pending for more
than 15 years.
87. In answer to Question no.25, Mr.Rajiv Behl, PW-1 stated
as under:
“Q.25 Have you received any complaint or can you
quote a specific instance where a doctor may have mis-
spelt the brand and a chemist had sold the drug in question
without prescription?
Ans. No. However field staff has informed about the
confusion because of the presence of the product under the
trademark.”
88. The plaintiff produced no other witness. Even the alleged
information received by it from “field staff” has neither been filed
nor proved.
89. For purposes of passing off, it is to be seen whether there is
17 “ROTM” hereinafter
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 40 of 115
Signing Date:01.07.2025
13:29:56
any likelihood of confusion in the mind of an unwary consumer
with imperfect recollection due to the use of the two marks. In the
present case, the plaintiff has failed to prove any confusion being
caused by the use of the mark of the defendant no. 2.”
The learned Single Judge, therefore, has also taken adverse notice of
the fact that no evidence of actual confusion, by the use of the mark
FEMICONTIN by the respondents, has been produced by the
appellant. The plea of infringement, as advanced by the appellant, has,
therefore, been rejected.
17.4.5 Re. passing off
On the aspect of passing off, the learned Single Judge has restricted
his finding to para 89, which reads thus:
“89. For purposes of passing off, it is to be seen whether there is
any likelihood of confusion in the mind of an unwary consumer
with imperfect recollection due to the use of the two marks. In the
present case, the plaintiff has failed to prove any confusion being
caused by the use of the mark of the defendant no. 2.”
17.4.6 Following the aforesaid, the learned Single Judge has decided
Issues 4 to 7 against the appellant and in favour of Respondent 1.
17.5 Re: Issues 8 to 10
In view of the findings returned by him, with respect to Issues 4 to 7,
the learned Single Judge has decided Issues 8 to 10 in favour of
Respondent 1 and against the appellant.
17.6 Accordingly, the learned Single Judge has dismissed the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 41 of 115
Signing Date:01.07.2025
13:29:56
appellant’s suit.
18. Aggrieved thereby, the appellant has approached this Court by
means of the present appeal.
Rival stands of learned Counsel before this Court
19. Submissions of Mr. Pravin Anand
19.1 Mr. Pravin Anand, learned Counsel appearing for the appellant,
submitted that, as the proprietor of the CONTIN family of marks, the
appellant was entitled to an injunction against all other persons using
CONTIN as a prefix or a suffix or as any other part of their mark, in
respect of pharmaceutical products. He disputes the finding of the
learned Single Judge that the adoption of the mark FEMICONTIN, by
the respondents, was bona fide. He submits that the commonality of
the FE prefix and CONTIN suffix between the appellant’s and the
respondents’ marks cannot be mere coincidence and are indicative of a
dishonest attempt, on the respondents’ part, to mislead consumers into
mistaking the respondents’ product for the appellants.
19.2 Mr. Pravin Anand submits that the classical triple identity test is
satisfied in the present case, as the appellant and respondent’s marks
are practically identical, the product serve the same purpose and treat
the same ailments and, therefore, cater to the same consumer segments
and are available through the same trade channels. Besides, he submits
that even the composition of the appellant’s and respondent’s products
are the same. In such circumstances, Mr. Anand submits that the fact
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 42 of 115
Signing Date:01.07.2025
13:29:56
that the appellant’s and respondents’ product may be Schedule H
drugs, or that there may be a difference in their prices, cannot mitigate
the likelihood of confusion. He relies, for this purpose, on paras 22
and 26 to 33 of the Judgment of the Supreme Court in Cadila Health
Care Ltd v Cadila Pharmaceuticals Ltd18, which read thus:
“”22. It may here be noticed that Schedule ‘H’ drugs are those
which can be sold by the chemist only on the prescription of the
doctor but Schedule ‘L’ drugs are not sold across the counter but
are sold only to the hospitals and clinics. Nevertheless, it is not
uncommon that because of lack of competence or otherwise,
mistakes can arise specially where the trade marks are deceptively
similar. In Blansett Pharmaceuticals Co. v Carmick Laboratories
Inc.19 it was held as under:
“Confusion and mistake is likely, even for prescription
drugs prescribed by doctors and dispensed by pharmacists,
where these similar goods are marketed under marks which
look alike and sound alike.”
*****
26. It was further submitted on behalf of the appellant that
although the possibility of confusion in a drug being sold across
the counter may be higher, the fact that a drug is sold under
prescription or only to physicians cannot by itself be considered a
sufficient protection against confusion. The physicians and
pharmacists are trained people yet they are not infallible and in
medicines, there can be no provisions for mistake since even a
possibility of mistake may prove to be fatal.
27. As far as the present case is concerned, although both the
drugs are sold under prescription but this fact alone is not sufficient
to prevent confusion which is otherwise likely to occur. In view of
the varying infrastructure for supervision of physicians and
pharmacists of medical profession in our country due to linguistic,
urban, semi-urban and rural divide across the country and with
high degree of possibility of even accidental negligence, strict
measures to prevent any confusion arising from similarity of marks
among medicines are required to be taken.
18 (2001) 5 SCC 73
19 25 USPQ 2nd, 1473 (TTAB 1993)
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 43 of 115
Signing Date:01.07.2025
13:29:56
28. Here it will be useful to refer to the decision
of Morgenstern Chemical Co. case where it has been held as
under:
“(5) In the field of medical products, it is particularly
important that great care be taken to prevent any possibility
of confusion in the use of trade marks. The test as to
whether or not there is confusing similarity in these
products even if prescribed and dispensed only by
professionally trained individuals does not hinge on
whether or not the medicines are designed for similar
ailments. The rule enunciated by Judge Helen in Cole
Chemical Co. v Cole Laboratories20 is applicable here:
‘The plaintiff and the defendant are engaged in the
sale of medical preparations. They are for ultimate
human consumption or use. … They are particularly
all for ailments of the human body. Confusion in
such products can have serious consequences for
the patient. Confusion in medicines must be
avoided.
***
Prevention of confusion and mistakes in medicines
is too vital to be trifled with.’The observations made by Assistant Commissioner Leeds
of the Patent Office in R.J. Strasenburgh Co. v Kenwood
Laboratories, Inc.21 are particularly apt, that:
‘Physicians are not immune from confusion or
mistake. Furthermore it is common knowledge that
many prescriptions are telephoned to the
pharmacists and others are handwritten, and
frequently handwriting is not unmistakably legible.
These facts enhance the chances of confusion or
mistake by the pharmacists in filling the
prescription if the marks appear too much alike
when handwritten or sound too much alike when
pronounced.’The defendant concedes that physicians and pharmacists
are not infallible but urges that the members of these
professions are carefully trained to detect difference in the
characteristics of pharmaceutical products. While this is20 DC Mo 1954, 118 F Supp 612, 616, 617, 101, USPQ 44, 47, 48
21 106 USPQ 379 (1955)
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 44 of 115
Signing Date:01.07.2025
13:29:56
doubtless true to dos (sic) not open the door to the adoption
by manufacturers of medicines of trade marks or names
which would be confusingly similar to anyone not
exercising such great care. For physicians and pharmacists
are human and in common with the rest of mankind are
subject to human frailties. In the field of medicinal
remedies the courts may not speculate as to whether there is
a probability of confusion between similar names. If there
is any possibility of such confusion in the case of medicines
public policy requires that the use of the confusingly
similar name be enjoined (see Lambert Pharmacol Ltd. v
Bolton Chemical Corpn.22 ).”
29. In the book titled as McCarthy on Trade Marks, it is
observed in the footnote at pp. 23-70 as under:
“Physicians and pharmacists are knowledgeable in their
fields does not mean they are equally knowledgeable as to
marks and immune from mistaking one mark from
another.” (Schering Corpn. v Alza Corpn.23)
30. In the case of Syntex Laboratories Inc. v Norwich
Pharmacal Co.24 it is observed as under:
“Stricter standard in order to prevent likelihood of
confusion is desirable where involved trade marks are
applied to different prescribed pharmaceutical products and
where confusion could result in physical harm to the
consuming public.”
31. Trade mark is essentially adopted to advertise one’s product
and to make it known to the purchaser. It attempts to portray the
nature and, if possible, the quality of the product and over a period
of time the mark may become popular. It is usually at that stage
that other people are tempted to pass off their products as that of
the original owner of the mark. That is why it is said that in a
passing-off action, the plaintiff’s right is
“against the conduct of the defendant which leads to or is
intended or calculated to lead to deception. Passing-off is said
to be a species of unfair trade competition or of actionable
unfair trading by which one person, through deception,
attempts to obtain an economic benefit of the reputation which
another has established for himself in a particular trade or
22 DCNY 1915, 219 F 325.326
23 207 USPQ 504 (TTAB 1980)
24 169 USPQ 1 (2nd Cir 1971)
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 45 of 115
Signing Date:01.07.2025
13:29:56
business. The action is regarded as an action for deceit”.
[See Wander Ltd. v Antox India (P) Ltd.25]
32. Public interest would support lesser degree of proof
showing confusing similarity in the case of trade mark in respect of
medicinal products as against other non-medicinal products. Drugs
are poisons, not sweets. Confusion between medicinal products
may, therefore, be life threatening, not merely inconvenient.
Noting the frailty of human nature and the pressures placed by
society on doctors, there should be as many clear indicators as
possible to distinguish two medicinal products from each other. It
is not uncommon that in hospitals, drugs can be requested verbally
and/or under critical/pressure situations. Many patients may be
elderly, infirm or illiterate. They may not be in a position to
differentiate between the medicine prescribed and bought which is
ultimately handed over to them. This view finds support
from McCarthy on Trade Marks, 3rd Edn., para 23.12 of which
reads as under:
“The tests of confusing similarity are modified when the goods
involved are medicinal products. Confusion of source or
product between medicinal products may produce physically
harmful results to purchasers and greater protection is required
than in the ordinary case. If the goods involved are medicinal
products each with different effects and designed for even
subtly different uses, confusion among the products caused by
similar marks could have disastrous effects. For these reasons,
it is proper to require a lesser quantum of proof of confusing
similarity for drugs and medicinal preparations. The same
standard has been applied to medical products such as surgical
sutures and clavicle splints.”
33. The decisions of English courts would be relevant in a
country where literacy is high and the marks used are in the
language which the purchaser can understand. While English cases
may be relevant in understanding the essential features of trade
mark law but when we are dealing with the sale of consumer items
in India, you have to see and bear in mind the difference in
situation between England and India. Can English principles apply
in their entirety in India with no regard to Indian conditions? We
think not. In a country like India where there is no single common
language, a large percentage of population is illiterate and a small
fraction of people know English, then to apply the principles of
English law regarding dissimilarity of the marks or the customer
knowing about the distinguishing characteristics of the plaintiff’s
goods seems to overlook the ground realities in India. While
25 1990 Supp SCC 727
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 46 of 115
Signing Date:01.07.2025
13:29:56
examining such cases in India, what has to be kept in mind is the
purchaser of such goods in India who may have absolutely no
knowledge of English language or of the language in which the
trade mark is written and to whom different words with slight
difference in spellings may sound phonetically the same. While
dealing with cases relating to passing off, one of the important tests
which has to be applied in each case is whether the
misrepresentation made by the defendant is of such a nature as is
likely to cause an ordinary consumer to confuse one product for
another due to similarity of marks and other surrounding factors.
What is likely to cause confusion would vary from case to case.
However, the appellants are right in contending that where
medicinal products are involved, the test to be applied for
adjudging the violation of trade mark law may not be on a par with
cases involving non-medicinal products. A stricter approach should
be adopted while applying the test to judge the possibility of
confusion of one medicinal product for another by the consumer.
While confusion in the case of non-medicinal products may only
cause economic loss to the plaintiff, confusion between the two
medicinal products may have disastrous effects on health and in
some cases life itself. Stringent measures should be adopted
specially where medicines are the medicines of last resort as any
confusion in such medicines may be fatal or could have disastrous
effects. The confusion as to the identity of the product itself could
have dire effects on the public health.””
19.3 Inasmuch as the marks of the appellant and the rival marks are
practically identical, Mr. Anand submits that the present case attracts
Section 29(2)(c)26 read with Section 29(3)27 of the Trade Marks Act,
and there would be a presumption of likelihood of confusion.
19.4 Mr. Anand further submits that the learned Single Judge is at
error in holding that the mark CONTIN, or even FEMICONTIN, is
26 (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of–
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
27 (3)
Signature Not Verified In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 47 of 115
Signing Date:01.07.2025
13:29:56
descriptive or publici juris. He submits that CONTIN is a coined
word, which is not to be found in any dictionary and has no
etymological meaning. He further submits that there is no evidence,
either led by the respondents or relied upon by the learned Single
Judge, on the basis of which it could be said that CONTIN or
FECONTIN are common to the trade. He relies, for this purpose, on
para 88 of the Judgment of the Division Bench of this Court in Shree
Nath Heritage Liquor Pvt Ltd v Allied Blender & Distillers Pvt Ltd28,
thus:
“88. The fact that a mark is common to the trademarks register
may not mean that it is common to the trade. Furthermore, for an
argument common to the trade to succeed, evidence of extensive
use of the mark in question needs to be shown. The appellant has
relied on copies of a few third party labels, none of which uses the
mark ‘Officer’. In the present case, the word ‘Officer’ is not
common to the register and there is no evidence to show that it is
common to the trade. For the above stated reasons, the decision
reported as Schering Corporation v. Alkem Laboratories Ltd.29,
cited by learned senior counsel for the appellant is inapplicable to
the present case.”
19.5 In the same context, Mr. Anand further submits that, having
itself applied for registration of the mark FEMICONTIN, Respondent
1 was estopped from contending that the mark FECONTIN was
ineligible for registration as it comprised of parts which were common
to the trade or descriptive. Apropos the submission that CONTIN was
a descriptive suffix, Mr. Anand further points out that CONTIN was
not an abbreviation either of any of the constituents of the appellant’s
product or of the ailment that the product sought to treat.
cause confusion on the part of the public.
28 2015 SCC OnLine Del 10164
29 2010 (42) PTC 772 (Del)
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 48 of 115
Signing Date:01.07.2025
13:29:56
19.6 With respect to the appellant’s claim to exclusivity over
CONTIN, as any part of the mark of pharmaceutical products
manufactured by any other person, Mr. Anand submits that the learned
Single Judge has materially erred in failing to appreciate the concept
of a family of marks, which stands settled, inter alia, by the judgment
of this Court in Amar Singh Chawalwala v Shree Vardhaman Rice
& General Mills30. As the registered proprietor of the CONTIN family
of marks, Mr. Anand submits that the appellant is entitled to maintain
an action for infringement against every person who uses CONTIN as
part of the name of his pharmaceutical preparation and is entitled to an
injunction against such use. He submits that the learned Single Judge
has, in order to sustain his finding that the CONTIN was common to
the trade, relied only on three marks, none of which would justify such
a finding. Mr. Anand submits, therefore, that the learned Single Judge
was in error in refusing to grant an injunction, to the appellant, against
the use, by any other person, of CONTIN as a part of its trademark,
given the fact that the appellant was the registered proprietor of the
CONTIN family of marks.
19.7 Mr. Anand further points out that, while the marks CONTIN
and FECONTIN-F were both registered in Class 5, in favour of the
appellant, on 19 October 1989, the respondents have no registration of
any mark in their favour.
19.8 Adverting, next, to the appellant’s claim for injunction based on
its registered FECONTIN-F trademark, Mr. Anand submits that the
learned Single Judge was in error in bifurcating the mark into “FE”
Signature Not Verified
30 160 (2009) DLT 267 (DB)
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 49 of 115
Signing Date:01.07.2025
13:29:56
and “CONTIN” and, by holding that “FE” was an abbreviation for
Iron and “CONTIN” was descriptive of the product, proceeding to
reject the appellant’s claim by treating the entire mark as descriptive
in nature. The learned Single Judge, he submits, was also in error in
holding that a combination of a generic and a descriptive mark was
not entitled to monopoly, even though he submits that neither could
the “FE” prefix by treated as generic nor could the “CONTIN” suffix
be treated as descriptive. He points out that the learned Single Judge
himself has noticed that a combination of two dictionary words is also
entitled to protection. As such, Mr. Anand submits that the learned
Single Judge is in manifest error in holding that the mark FECONTIN
was either descriptive, or generic, or a combination of a generic and
descriptive marks and, therefore, not entitled to protection against
infringement.
19.9 Apropos the aspect of infringement itself, Mr. Anand submits
that the marks FEMICONTIN and FECONTIN-F are practically
identical, the only difference between the two being the intermediate
“MI” syllable beween “FE” and “CONTIN”. The marks are, therefore,
nearly identical, used for products which cater to the same consumer
segment and are available through the same trade channels, thereby
satisfying the triple identity test of infringement. Mr. Anand points
out that, as the marks are used for pharmaceutical products, a lower
threshold is required to be satisfied for a case of infringement to be
made out and cites, in this context, the judgment of the Supreme Court
in Cadila Pharmaceuticals.
19.10 Mr. Anand further submits that the learned Single Judge was in
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 50 of 115
Signing Date:01.07.2025
13:29:56
error in relying on the fact that no proof of actual confusion had been
led by the appellant. He submits that actual confusion is not required
to be shown for a case of infringement or passing off to be made out
and that all is required to be seen is whether there is a likelihood of
confusion. A comparison of the two marks and of the packages on
which the marks are used, he submits, clearly indicates that there is
manifest likelihood of confusion between them.
19.11 Mr. Anand finally submits that the learned Single Judge is also
in error in holding that the appellant has acquiesced to the use of the
FEMICONTIN mark by the respondents. He submits that the
appellant had come to know of the use of the mark by the respondents
in 1999 and immediately issued a cease and desist notice to the
respondents. From 1999 to 2001, there was no market usage of the
mark FEMICONTIN by the respondents. On coming to learn, in 2001,
that the mark was being used in the market, the appellant immediately
approached the District Court in Hyderabad by way of OS 33/2004.
Consequent on the District Court at Ranga Reddy permitting the
appellant to withdraw the said suit, the appellant immediately
approached this Court by means of CS (OS) 577/2005 and, after
withdrawing the said suit, filed the present suit in 2007. It was,
therefore, submitted that there were no delay or laches on the part of
the appellant, nor could it be said that the appellant had acquiesced to
the use of the impugned FEMICONTIN mark by the respondents. In
any event, relying on the judgment of the Supreme Court in Midas
Hygiene Industries, Mr. Anand submits that delay and laches are no
impediment to grant of injunction, where infringement is found to
exist.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 51 of 115
Signing Date:01.07.2025
13:29:56
20. Submissions of Mr Gagan Gupta
20.1 Responding to the submissions of Mr. Anand, Mr. Gagan
Gupta, learned Senior Counsel for Respondent 1, first submits that the
appellant’s suit was barred by both delay and laches as well as
acquiescence. He submits that, having found that the appellant was
guilty of delay and laches in initially approaching the District Court at
Hyderabad and, thereafter, filing the present suit before this Court in
2007, the learned Single Judge was in error in rejecting the
respondent’s objection of delay and laches and in deciding Issue 2 in
favour of the appellant and against the respondents. He presses, in this
context, the cross-objections filed by the respondents in the present
appeal, whereby the respondents have challenged the impugned
judgment to the extent it has decided Issue 2 in favour of the
appellant. He submits that OS 33/2004, initially instituted by the
appellant before the Hyderabad District Court, as well as the present
suit which was instituted as CS(OS) 2176/2007 before this Court, are
both hit by delay and laches and ought to have been dismissed even on
that sole ground.
20.2 For the same reason, Mr. Gupta submits that the appellant is
guilty of acquiescence, as it has allowed the respondent to continue to
use the impugned FEMICONTIN mark and acquired a reputation by
such usage over a period of time. In such circumstances, he submits
that no injunction can be granted in favour of the appellant or against
the respondents.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 52 of 115
Signing Date:01.07.2025
13:29:56
20.3 Mr. Gupta submits that the marks CONTIN and FECONTIN
are neither inventive nor innovative in nature. CONTIN, he submits,
is a mere abbreviation of “CONTINUOUS”, which depicts the mode
and manner of action in the human body. The prefix “FE” is purely
generic, and is an abbreviation for Iron, the chemical name of which is
“Ferrum”. He submits that the learned Single Judge is correct in his
finding that the Court cannot grant a monopoly, to the appellant, over
a mark which is merely a combination of a generic prefix and a
descriptive suffix. He relies, in this context, on Section 17 of the
Trade Marks Act.
20.4 Besides, submits Mr. Gupta, the mark FEMICONTIN is
descriptive of the product manufactured by the respondents. There can
be no injunction against the use of a descriptive mark, in view of
Section 35 of the Trade Marks Act.
20.5 Having obtained a trademark registration for the mark
CONTIN, Mr. Gupta points out that the appellant has, in fact, never
used CONTIN as its registered trademark for any product. As such,
the appellant cannot maintain an action, before the Court, with a
prayer that no one should be allowed to use CONTIN as a part of its
trademark in respect of any products. Equally, the appellant cannot
seek a monopoly over the use of CONTIN, either as a prefix or as a
suffix. The case of infringement and passing off, that the appellant
had sought to make out had, therefore, to be tested only vis-a-vis the
registered FECONTIN-F mark of the appellant, and not vis-a-vis its
CONTIN registered trademark.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 53 of 115
Signing Date:01.07.2025
13:29:56
20.6 The rival marks, according to Mr. Gupta, are not deceptively
similar either visually, structurally or phonetically. Besides, the
products are Schedule H drugs, which could be sold only on the
prescription of a registered medical practitioner. Registered medical
practitioners are classically supposed to know their job and, therefore,
there was no likelihood of confusion. He points out that, in fact, no
evidence was led by the appellant to indicate that the use of the mark
FEMICONTIN by the respondents had ever resulted in confusion in
the market.
20.7 In conclusion, Mr. Gupta submits that it is common practice, in
the pharmaceutical trade, for manufacturers to name their products on
the basis of the constituents or ingredients of the products or the
ailments that they seek to treat. Equally, manufacturers routinely
combined these elements while naming the products, for ease of
dispensation to the ailing public. The marks FECONTIN-F and
FEMICOTNIN are both marks which are combinations of the
ingredients of the product, the patients for whom they are intended,
and the mode and mechanism of their action. There cannot, therefore,
be a claim of exclusivity with respect to such marks.
20.8 Mr. Gupta, therefore, submits that the appeal is without bereft
of merit and that the impugned judgment of the learned Single Judge,
being unexceptionable on facts and in law, deserves to be upheld in its
entirety.
Analysis
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 54 of 115
Signing Date:01.07.2025
13:29:56
21. This is a Regular First Appeal. Order XLI Rule 3131 of the Code
of Civil Procedure, 190832 requires the Court to state (a) the points for
determination, (b) the decision thereon, (c) the reasons for the decision
and (d) in the event that the impugned judgment and decree is
appealed or varied, the relief to which the appellant would be entitled.
The Supreme Court has held, in Malluru Mallappa v
Kuruvathappa33, that appellate orders are required to conform to
Order XLI Rule 31 of the CPC and one of us (C. Hari Shankar, J.),
sitting singly, has reiterated this proposition in Kailash Devi v Tej
Pal34, relying on the aforesaid judgment of the Supreme Court.
22. Accordingly, following the discipline of Order XLI Rule 31 of
the CPC, this Court identifies the points that arise for determination in
the present case, as
(i) whether the appellant is disentitled to relief on the ground
of delay and laches,
(ii) whether the appellant has succeeded in making out a case
of infringement, against the respondents, on the ground that it is
the registered proprietor of the CONTIN family of marks,
(iii) whether the appellant has succeeded in making out a case
of infringement, by the respondents, of the registered
FECONTIN-F trademark of the appellant,
31 31. Contents, date and signature of judgment. – The judgment of the Appellate Court shall be in
writing and shall state–
(a) the points for determination;
(b) the decision thereon;
(c) the reasons for the decision; and
(d) where the decree appealed from is reversed or varied, the relief to which the appellant is
entitled;
and shall at the time that it is pronounced be signed and dated by the Judge or by the Judges concurring
therein.
32 “CPC” hereinafter
33 (2020) 4 SCC 313
34 2022 SCC OnLine Del 3756
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 55 of 115
Signing Date:01.07.2025
13:29:56
(iv) whether the appellant has succeeded in making out a case
of passing off, by the respondents, of their products as the
product of the appellant,
(v) the relief to which the appellant would be entitled, if any,
and
(vi) the extent to which each of the respondents would be
liable in that regard, if at all.
23. We proceed, therefore, to address each of these issues seriatim.
24. Re. Issue (i) – delay and laches
24.1 This aspect is relevant only insofar as the cross objections,
preferred by Respondent 1 in the present appeal, are concerned. The
learned Single Judge has decided Issue 2, which dealt with the
respondents’ objection of delay and laches, in favour of the appellant.
Even while holding that the appellant was guilty of delay and laches,
the learned Single Judge has held that the suit cannot be dismissed on
that ground and has relied, for that purpose, on the judgment of the
Supreme Court in Midas Hygiene Industries. While the appellant has
traversed the finding of the learned Single Judge that it was guilty of
delay and laches, Respondent 1 has preferred cross-objections,
challenging the decision of the learned Single Judge on Issue 2,
inasmuch as it has decided the said issue in favour of the appellant. In
its cross-objections, Respondent 1 contends that, as the suit instituted
by the appellant was barred by delay and laches, the appellant was not
entitled to the prayers contained in the said suit. The suit, therefore,
ought to have been dismissed even on the ground of delay and laches.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 56 of 115
Signing Date:01.07.2025
13:29:56
24.2 It is obvious that the cross-objections are misconceived. The
learned Single Judge is correct in his view that, even if the aspect of
delay and laches were to be held on facts against the appellant, the suit
could, nonetheless, not be dismissed, in view of the judgment of the
Supreme Court in Midas Hygiene, from which the following
paragraph is relevant:
“5. The law on the subject is well settled. In cases of
infringement either of trade mark or of copyright, normally an
injunction must follow. Mere delay in bringing action is not
sufficient to defeat grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie appears that the
adoption of the mark was itself dishonest.”
(Emphasis supplied)
The Supreme Court has, therefore, clarified that, in the case of
infringement of the trademark, an injunction must follow, even if there
is delay on the part of the plaintiff in bringing the action. The Supreme
Court has further observed the fact that the defendant has acted
dishonestly provides an additional reason for grant of an injunction in
such cases. However, even if no dishonesty could be imputed to the
defendant, and the infringement of the appellant’s trademark may be
wholly innocent, para 5 of Midas Hygiene is clear in its mandate that
an injunction has to be granted. Delay on the plaintiff’s part is
irrelevant in such cases.
24.3 That said, as the discussion hereinafter would reveal, in the
present case, the respondents have acted dishonestly, so that the
requirement of grant of injunction stands accentuated.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 57 of 115
Signing Date:01.07.2025
13:29:56
24.4 The decision in Midas Hygiene has been followed by a
Division Bench of this Court of which one of us (C. Hari Shankar, J.)
was a member, in Mex Switch Gears Pvt Ltd v Omex Cables
Industries35, para 44 of which read thus:
44. In any case, delay if any, is not fatal in a case of
infringement inasmuch as in every infringement of the registered
trademark is a recurring cause of action. We may extract the
extensive enunciation of law on the subject which was discussed in
para 24 of Max Switchgears Pvt Ltd v Max Switchgears Pvt. Ltd.,
which reads as follows:
“e) In the case of Midas Hygiene Industries Pvt. Ltd. v
Sudhir Bhatia, relevant para-5 of the said judgment is as
under:
“5. The law on the subject is well settled. In
cases of infringement either of Trade Mark or of
Copyright normally an injunction must follow. Mere
delay in bringing action is not sufficient to defeat
grant of injunction in such cases. The grant of
injunction also becomes necessary if it prima facie
appears that the adoption of the Mark was itself
dishonest.”
f) In the case of Swarn Singh v Usha Industries
36
(India) , it was held as under:
“There is then the question of delay. Learned
counsel for the respondents had urged that the delay
is fatal to the grant of an injunction. We are not so
satisfied. A delay in the matter of seeking an
injunction may be aground for refusing an
injunction in certain circumstances. In the present
case, we are dealing with a statutory right based on
the provisions of the trade and Merchandise Marks
Act, 1958. An exclusive right is granted by the
registration to the holder of a registered trade mark.
We do not think statutory rights can be lost by
delay. The effect of a registered mark is so clearly
defined in the statute as to be not capable of being
misunderstood. Even if there is some delay, the35 2018 SCC OnLine Del 10412
36 AIR 1986 Del 343 (DB)
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 58 of 115
Signing Date:01.07.2025
13:29:56
exclusive right cannot be lost. The registered mark
cannot be reduced to a nullity”
g) In the case of Hindustan Pencils Pvt. Ltd. v India
Stationery Products Co.37, it was held as under:
“….. It was observed by Romer, J. in the matter of
an application brought by J.R. Parkingnon and Co.
Ltd.38, at page 181 that “in my judgment, the
circumstances which attend the adoption of a trade
mark in the first instance are of considerable
importance when one comes to consider whether the
use of that mark has or has not been a honest user. If
the user in its inception was tainted it would be
difficult in most cases to purify it subsequently”. It
was further noted by the learned Judge in that case
that he could not regard the discreditable origin of
the user as cleansed by the subsequent history.”
h) In the case of Bengal Waterproof Lim. v Bombay
Waterproof Manufacturing Co.39, it was held as under:
“20. It is now well settled that an action for
passing off is a common law remedy being an action
in substance of deceit under the Law of Torts.
Wherever and whenever fresh deceitful act is
committed the person deceived would naturally
have afresh cause of action in his favour. Thus every
time when a person passes off his goods as those of
another he commits the act of such deceit. Similarly
whenever and wherever a person commits breach of
a registered trade mark of another he commits a
recurring act of breach or infringement of such trade
mark giving a recurring and fresh cause of action at
each time of such infringement to the party
aggrieved. It is difficult to agree how in such a case
when in historical past earlier suit was disposed of
as technically not maintainable in absence of proper
relief, for all times to come in future defendant of
such a suit should be armed with a license to go on
committing fresh acts of infringement and passing
off with impunity without being subjected to any
legal action against such future acts.”
37 AIR 1990 Del 19
38 (1946) 63 RPC 171
39 (1997) 1 SCC 99
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 59 of 115
Signing Date:01.07.2025
13:29:56
24.5 We may also refer, in this context, to a decision of a Division
Bench of the High Court of Calcutta in Amar Nath Chakroborty v
Dutta Bucket Industries40, specifically to the following passages from
the said decision:
21. Although, Mr. Banerjee appearing on behalf of the
respondent assiduously tried to convince us that suit having been
filed after a long time there should not be any injunction, we are not
at all impressed by such submission. In this connection reference
may be made to the decision of the Supreme Court in the case of
Midas Hygiene Industries (Pvt.) Ltd. v Sudhir Bhatia, reported in
where the Apex Court has held that once allegation of passing off is
established, delay is immaterial for considering the case of
injunction. In the case of Power Control Appliances v Sumeet
Machines Pvt. Ltd.41, relied upon by Mr. Banerjee, it was held that
acquiescence is one of the defences available under section 30(1)(b)
of the 1958 Act. According to the Apex Court, acquiescence is
sitting by, when another is invading right and spending money on it.
It implies positive act; not merely silence or inaction as is involved
in laches. According to the Supreme Court, the acquiescence must be
such as to lead to the inference of a licence sufficient to create a new
right in favour of a defendant. In this case, the defendant has not
produced any material showing positive act on the part of the
plaintiff consenting to grant of licence in favour of the defendant.
22. As indicated above, once the charge of passing off has been
prima facie proved, in our view, the delay is immaterial unless it is
shown that there is definite proof of acquiescence of the plaintiff.
Such material has not been placed before the learned Trial Judge by
the defendant. We, thus, find that this is a fit case where the plaintiff
is entitled to get an order of temporary injunction restraining the
defendant from using trade mark “MAJ” till the disposal of the suit.
24.6 Para 21 of Amar Nath Chakroborty also, incidentally, answers
the plea of acquiescence, raised by Mr. Gupta, as we would have
occasion to observe presently.
24.7 Thus, in view of the law enunciated in Midas Hygiene, and
40 2005 SCC OnLine Cal 156
41 1994 (2) SCC 448
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 60 of 115
Signing Date:01.07.2025
13:29:56
followed in Mex Switchgears and Amar Nath Chakroborty among
others, the aspect of delay and laches, on the part of the appellant, in
bringing the action before the Court, loses much of its steam. Even if
the Court were to hold that the appellant was guilty of delay and
laches to the some extent, that would nonetheless not inhibit, in any
manner, the appellant’s right to injunction, where infringement was
found to have taken place.
24.8 That said, even on facts, we are of the opinion that the appellant
cannot be said to be guilty of delay or laches. The learned Single
Judge has noted, in para 49 of the impugned judgment, that there were
certain documents, on the record of OS 33/2004, as originally filed in
the Hyderabad District Court, bearing the stamp of acknowledgement
from the Office of the District and Sessions Judge, Ranga Reddy
District, dated 30 October 2002. The learned Single Judge observes
that the documents in question were the registration certificates of the
trademarks and that there was no certain indication that they had been
filed in OS 33/2004. We are unable to subscribe to this finding. If the
documents bore the stamp of acknowledgement, from the Office of
the District and Sessions Judge, Ranga Reddy, dated 30 October 2002,
it stands to reason that OS 33/2004, had, in fact, been originally filed
before the Hyderabad District Court in 2002. These documents, it
must be noted, were not being produced for the first time before the
learned Single Judge in the present suit, but constituted part of the
original OS 33/2004, as instituted before the Hyderabad District
Court. The impugned judgment does not record any contention, raised
by the respondents, questioning the veracity of the stamp of
acknowledgement dated 30 October 2002, from the Office of the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 61 of 115
Signing Date:01.07.2025
13:29:56
Ranga Reddy District and Sessions Judge as it figured on some of the
documents. In that view of the matter, we are of the opinion that the
learned Single Judge was not factually correct in his finding that there
was no indication that OS 33/2004 had originally been filed in the
Ranga Reddy District Court in 2002.
24.9 Besides, the learned Single Judge has also erred in failing to
note the communications exchanged between the appellant and its
Counsel between 2002 and 2004, which were also part of the record
before the learned Single Judge. We may reproduce the said
communications, chronologically, thus:
Email dated 16 November 2002
Dear Hari,
Could you confirm the status of this. Thanks,
Neel
Email dated 18 November 2002
From: nunepally harinath reddy
([email protected])
Sent: Monday, November 18, 2002 4:41 PM
To: Neel Mason
Subject: Re: FW: EubioticsDeer Neel,
The matter has come up today, the court has asked us to produce
the sample of the defendants drug. I shall procure it and produce it
in the court the matter shall again come up on Friday.
regards,
Hari
Email dated 18 November 2002
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 62 of 115
Signing Date:01.07.2025
13:29:56
From: Neel Mason ([email protected])
To: [email protected]
Sent: Monday, November 18, 2002 4:44 PM
Subject: FW: FW: Eubiotics
Dear Mr. Seth,
I am enclosing the report in the Hyderabad matter.
Warm regards,
Neel Mason
Email dated 29 December 2002
From: nunepally harinath reddy
([email protected])
Sent: Sunday, December 29, 2002 2:27 PM
To: Neel Mason
Subject: Re: FW: EubioticsDear Neel,
sorry Neel, could not respond on 24th Dec, I was travelling. well,
the hearing could not take place, as the summons were returned
with an endorsement ADDRESSEE NOT TRACABLE.
I feel the defendant has shifted the operations, I am trying to
ascertain the address from the Registrar of Companies and then
shall file fresh summons on the new address.
regards,
HariEmail dated 30 December 2002
From: Neel Mason ([email protected])
To: [email protected]
Co: [email protected]
Sent: Monday, December 30, 2002 12:14 PM
Subject: Eubiotics HyderabadDear Mr. Seth,
I am enclosing the email of Harinath Reddy, the counsel
representing you in Hyderabad.
Would you be in a position to help him with a fresh address.
Warm regards,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 63 of 115
Signing Date:01.07.2025
13:29:56
Neel Mason
Anand And Anand Advocates
B-41, Nizamuddin East
New Delhi-110013
IndiaTel Nos. # 91 11 24350360, 24355076, 24358078,
Fax Nos. #91 11 24354243, 24353060, 24352090
Email : [email protected]Email dated 30 January 2003
Dear Hari,
Have you had any luck on following up with the new address of
the Defendant.
If not could you advise whether we can move an application for
substituted service in this matter under Order 5 Rule 20.
Thank you,
Warm regards,
Neel Mason
Anand And Anand Advocates
B-41, Nizamuddin East
New Delhi-110013
IndiaTel Nos. # 91 11 24350360, 24355076, 24358078,
Fax Nos. #91 11 24354243, 24353060, 24352090
Email :[email protected]”
Email dated 30 January 2003
From: Neel Mason ([email protected])
To: ([email protected])
Cc: ([email protected])
Sent: Thursday, January 30, 2003 3:00 PM
Subject: FW: Eubiotics matterDear Mr. Seth,
I am enclosing the response of the counsel representing you in
Hyderabad.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 64 of 115
Signing Date:01.07.2025
13:29:56
The only way now to serve is by publication and he is taking steps
accordingly.
Warm regards,
Neel Mason
Anand And Anand Advocates
B-41, Nizamuddin East
New Delhi-110013
IndiaTel Nos. # 91 11 24350360, 24355076, 24358078,
Fax Nos. #91 11 24354243, 24353060,24352090
Email [email protected]Email dated 30 January 2003
From: nunepally harinath reddy
([email protected])
Sent: Thursday, January 30, 2003 3:06 PM
To: Neel Mason
Subject: Re: Eubiotics matterDear Neel,
No luck so far, the address available in the Registrar is alos the
saem
one
and the records are not updated.
I shall request the court to permit us to carryout paper publication.
I shall revert back with the latest.
regards,
HariEmail dated 30 January 2003
From: Anurag Seth ([email protected])
Sent: Thursday, January 30, 2003 3:33 PM
To: Neel Mason
Subject: Re: Eubiotics matterDear Neel,
Please wait for the publication as our field force is taking steps to
find out the correct address and locate the people. In case they fail
than we may move further to publishSignature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 65 of 115
Signing Date:01.07.2025
13:29:56
RegardsAnurag Seth
Email dated 30 January 2003
From: Neel Mason ([email protected])
To: Anurag Seth ([email protected])
Sent: Thursday, January 30, 2003 4:09 PM
Subject: RE: Eubiotics matterI spoke to Hari who stated that he will await instructions before
taking any steps. He also stated that usually in the District court
they await a couple times for summons to be returned unserved
before permitting publication and hence it is unlikely that we can
take steps for publication before another month or so.
Warm regards,
Neel Mason
Anand And Anand Advocates
B-41, Nizamuddin East
New Delhi-110013
IndiaTel Nos. # 91 11 24350360, 24355076, 24358078,
Fax Nos. #91 11 24354243, 24353060, 24352090
Email : [email protected]Email dated 23 July 2003
From: Anurag Seth ([email protected])
Sent: Wednesday, July 23, 2003 2:04 PM
To: Neel Mason
Subject: RE: Amendment in Proceedings: Eubiotics: HyderabadDear Neel,
What happened in the below mentioned matter. this was to come
on 16.06.2003.
Anurag Seth
Modi-Mundipharma Pvt. Ltd.
Email dated 23 July 2003
From: Neel Mason ([email protected])
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 66 of 115
Signing Date:01.07.2025
13:29:56
Sent: Wednesday, July 23, 2003 2:23 PM
To: ‘[email protected]‘
Subject: RE: Amendment in Proceedings : Eubiotics : HyderabadDear Mr. Seth,
I just spoke to Harinath Reddy in Hyderabad who informs me that
fresh summons has been issue for the 4th of August 2003 as the
Defendants remain unserved.
Warm regards,
Neel Mason
Anand and Anand
D-41, Nizamuddin East
New Delhi-110013
IndiaTel Nos. # 91 11 24350360, 24355076, 24358078,
Fax Nos. # 91 11 24354243, 24353060,24352090
Email :[email protected]Email dated 18 August 2003
From: Anurag Seth ([email protected])
Sent: Monday, August 18, 2003 9:58 AM
To: Neel Mason
Subject: RE: Amendment in Proceedings: Eubiotics:
Hyderabad
Dear Neel,
Any news from Harinath Reddy. The matter was listed for 4th
August?
Regards
Anurag Seth
Modi-Mundipharma Pvt. Ltd.
Company Secretary & D.G.M. (Legal)
Ph: (M) 9810294516
(0) 011-26421384 (Direct)
(0) 011-26286581 to 5 (Indirect)Email dated 20 August 2003
Dear Hari,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 67 of 115
Signing Date:01.07.2025
13:29:56
Could you give me an update on what happened on the 4th of
August.
Thanks,
Neel Mason
Anand and Anand
B-41, Nizamuddin East
New Delhi-110013
India
Tel Nos. 91 11 24350360, 24355076, 24358078,
Fax Nos. 91 11 24354243, 24353060, 24352090
Email :[email protected]”
Email dated 20 August 2003
From: nunepally harinath reddy ([email protected])
Sent: Wednesday, August 20, 2003 6:07 PM
To: Neel Mason
Subject: Re: Eubiotics matterHI Neel,
Extremely sorry for the delay, in reporting. The matter has not
shown any development, the summons have again returned
unserved. Fresh summons have been filed into the court. The
matter has been adjourned to 22.11.2003.
I shall report back with some development by then.
rgds,
Hari
Email dated 20 August 2003
From: Neel Mason [[email protected]]
Sent: Wednesday, August 20, 2003 6:57 PM
To: [email protected]
Subject: Eubiotics matter
Dear Mr. Seth,
I am enclosing the letter of Harinath Reddy, the counsel
representing Win Medicare against Eubiotics.
Warm regards,
Neel Mason
Anand and Anand
B-41, Nizamuddin East
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 68 of 115
Signing Date:01.07.2025
13:29:56
New Delhi-110013
IndiaTel Nos. 91 11 24350360, 24355076, 24358078,
Fax Nos. 91 11 24354243, 24353060, 24352090
Email :[email protected]Email dated 18 November 2003
From: Hari Advocate ([email protected])
Sent: Tuesday, November 18, 2003 4:30 PM
To: Neel Mason
Cc: ‘[email protected]‘;
‘[email protected]
Subject: Re: Modi Mundipharma vs. Eubiotics Pharma & Anr.
Dear Neel,
Point taken I shall do the needful.
Rgds,
Email dated 19 November 2003
From: Anurag Seth (anuragseth @winmedicare.com)
Sent: Wednesday, November 19, 2003 10:50 AM
To: Hari Advocate
Cc: Neel Mason
Subject: RE: Modi Mundipharma vs. Eubiotics Pharma & Anr.
Dear Mr. Hari,
Mr. Neel Mason must have provided you the new address of
Eubiotoics with its changed name immediately after the last
hearing when we were informed that summons could not be served
as the party no more exists at the given address. We hope the prs
summons were served on the party at new address. For your
immediate reference we are once again appending here below text
of the mall sent to Mr Nee Mason:
As discussed, we are giving below the address of the manufacturer
and marketing Company of product FEMICONTIN:
Manufactured by : Stanbiotech Pvt. Ltd.
Plot No. 6/3, Road No. 11,
IDA, Nacharam,
Hyderabad-500 076
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 69 of 115
Signing Date:01.07.2025
13:29:56
Marketed by : Speciality Meditech Pvt. Ltd.
7-61, Bapuji Nagar, Main Road,
Nacharam,
Hyderabad-500 076
Please note that manufacturer’s name has changed from Eubiotics
Pharmaceuticals, 6-4/1/1, Savarkar Nagar, Nacharam, Hyderabad-
600 076-to Stanbiotech Pvt. Ltd. at the address mentioned above.
The product sample of FEMICONTIN has been purchased by us
from Madhur Medical Agencies, Nangal Road, UNA-174 303
(H.P.) which is being sent to you by hand alongwith original Bill.
We request you that if this time also the summons are not served
please try and take an early date with orders for dasti as we need to
press this matter and expedite the court proceedings otherwise the
whole purpose of filing the cases is going to be forfeited.
Regards
Anurag Seth
Modi-Mundipharma Pvt. Ltd.
Company Secretary & D.G.M. (Legal)
(M) 9810294516
(O) 011-26421384 (Direct)
(O) 011-26286581 to 5 (Indirect)
Email dated 15 December 2003
From: Hari Advocate ([email protected])
Sent: Monday, December 15, 2003 11:46 AM
To: Anurag Seth
Subject: Re: RE: Modi Mundipharma vs. Eubioties Pharma & Anr.
Dear Mr Seth,
The matter had come up on 12.12.2003. the court ordered personal
summons on the defendant to be carried by special messanger of
court and posted the matter to 29.12.2003. I have entrusted the job
of ensuring the service of
Email dated 30 December 2003
From: Hari Advocate ([email protected])
Sent: Tuesday, December 30, 2003 2:50 PM
To: Anirag Seth
Cc: Neel Mason
Subject: Re: RE: RE: Modi Mundipharma vs. Eubiotics Pharma &
Anr.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 70 of 115
Signing Date:01.07.2025
13:29:56
Dear Mr. Seth,
some of the Trade Marks matters have been transferred to the fast
track court of Ranga Reddy District Court, the matters shall be
renumbered after they are allotted to the fast track court. I shall get
the number next week latest by 5th or 6th and I shall move an
urgent application before the Fast Track Court.
Regards,
Hari
Email dated 30 December 2004
Dear Mr. Hari.
Please advise what happened in the matter yesterday, any
success??
Regards
Anurag Seth.
Modi-Mundipharma Pvt. Ltd.
Company Secretary & D.G.M. (Legal)
Ph: (M) 9810294516
(O) 011-26421384,55504536 (Direct)
(O) 011-55504555 Ext. 4536 (Indirect)
24.10 The afore-extracted communications also indicate that OS
33/2004 had initially been filed before the Ranga Reddy District Court
in 2002. This sequence of communications had been brought on
record by PW-1 and were part of the record before the learned Single
Judge.
24.11 No question was put to PW-1, in his cross-examination, with
respect to the aforesaid documents.
24.12 We may note, in this context, that the aforesaid communications
between the appellant and its Counsel were only marked by the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 71 of 115
Signing Date:01.07.2025
13:29:56
learned District Court, and not exhibited, for the sole reason that Mr.
Anurag Seth, who was the author of the emails, had not been
produced. They were, nonetheless, tendered in evidence by PW-1, and
it remains a matter of record that, in his cross-examination, no
questions were put to him with respect to said communications.
24.13 In view of the aforesaid evidence, we are of the opinion that the
conclusion of the learned Single Judge, in para 52 of the impugned
judgment, that there was delay of almost five years in the appellant
moving the Ranga Reddy District Court, cannot sustain.
24.14 Even otherwise, as we have already held, delay and laches on a
plaintiff’s part cannot disentitle a plaintiff to injunction, where
infringement is found to have taken place.
24.15 Resultantly, the cross-objections of Respondent 1, which are
limited to the findings of the learned Single Judge on Issue 2 as
framed in the suit, have necessarily to be rejected.
24.16 The ultimate finding of learned Single Judge on Issue 2, which
is to the effect that CS (OS) 2176/2007, later re-numbered CS
(Comm) 353/2018, could not have been dismissed on the ground of
delay and laches, deserves to be affirmed. At the same time, the
observations of the learned Single Judge that the appellant was in fact
guilty of delay and laches in approaching the Court is also, to our
view, unsustainable.
25. Re: Issue (ii) – Infringement vis-à-vis the “CONTIN family of
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 72 of 115
Signing Date:01.07.2025
13:29:56
marks” of the plaintiff
25.1 Relevant statutory provisions
25.1.1 Before dealing with the aspect of infringement, it would be
worthwhile to advert to certain provisions of the Trade Marks Act,
which deal with infringement, the right to relief against infringement,
and the exceptions to each.
25.1.2 Infringement is defined in Section 29 of the Trade Marks Act,
specifically in sub-sections (1) to (5), (7) and (8)42 thereof. In each
case, infringement can only be of a registered trade mark. Registration
of the plaintiff’s trade mark is, therefore, mandatory for the plaintiff to
be entitled to institute an action for infringement.
25.1.3 Section 29(1) generally treats, as infringement, use, in the
course of trade, by the defendant, of a mark which is identical with, or
deceptively similar to, the plaintiff’s registered trade mark, in relation
to the goods or services in respect of which the trademark is registered
in the plaintiff’s favour, in such a manner as to render the use likely to
be taken as a trademark. Section 29(1) would apply, therefore, only
where the use of the infringing trademark by the defendant is in
relation to the goods or services in respect of which the trademark is
registered in favour of the plaintiff.
25.1.4 Section 29(2) which is the provision which most commonly
applies, envisages three situations in which infringement can be said
42
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 73 of 115
Signing Date:01.07.2025
13:29:56
to have taken place.
25.1.5 Section 29(2)(a) applies where the rival marks are identical, but
the goods or services in respect of which they are used are not
identical, but similar. Section 29(2)(b) applies where the rival marks
are not identical, but only similar, and the goods or services in respect
of which they are used are either identical or similar. Section 29(2)(c)
applies where the rival marks are identical, and are used in relation to
identical goods or services. In each of these situations, where the
nature of the rival marks, and the nature of the goods or services, in
respect of which they are used, is likely to cause confusion on the part
of the public or a presumption of an association between the plaintiff
and the defendant, infringement is said to have taken place.
25.1.6 Thus, for infringement to have taken place within the meaning
of Section 29(2), three factors must be found to co-exist. There must
be (i) identity or similarity of the rival marks, (ii) identity or similarity
of the goods or services in respect of which the rival marks are used,
and (iii) resultant likelihood of confusion or of assertion between the
two marks in the minds of the public.
25.1.7 Section 29(3) caters to a situation in which Section 29(2)(c)
applies, i.e., where the rival marks, as well as the goods or services in
respect of which the rival marks are used, are identical. In such a
circumstance, Section 29(3) ordains that likelihood of confusion in the
minds of the public would be presumed.
25.1.8 Section 29(4) applies in a situation where three circumstances,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 74 of 115
Signing Date:01.07.2025
13:29:56
envisaged in clauses (a) to (c) of the sub-section, are simultaneously
present. Clause (a) requires the rival marks to be identical or similar,
clause (b) requires that the goods or services in respect of which the
rival marks are used are not similar and clause (c) requires the
plaintiff’s marks to have a reputation in India and the use, by the
defendant, of the impugned mark to be without due cause and to result
in unfair advantage of, or be detrimental to, the distinctive character
and repute of the plaintiff’s registered trademark. Thus, Section
29(4) would apply where there is no similarity or identity between the
goods and services in respect of which the rival marks are used; in
other words, it would cater to a situation which does not fall within
any of the three clauses (a) to (c) of Section 29(2). Even in such a
case, if the plaintiff’s mark is reputed, and the use of the defendant’s
mark without due cause results in unfair advantage or detriment to the
plaintiff’s mark, a case of infringement would be made out.
25.1.9 Section 29(5) applies where the rival marks are identical. For
the provision to apply, the defendant must use the plaintiff’s registered
trademark as the defendant’s trade name, part of the defendant’s trade
name or business concerned or part thereof, in relation to the goods or
services in respect of which the trademark is registered in favour of
the plaintiff. This, therefore, is a simple case of poaching of a
registered trademark, where one person misuses the registered
trademark of another, in respect of the goods or services for which the
mark is registered, as part of his own trade name or business concern.
25.1.10 Section 29(7) deals with use of a registered trademark,
labelling or packaging material, as a business paper or for advertising
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 75 of 115
Signing Date:01.07.2025
13:29:56
goods or services, by a defendant who was aware of the fact that such
use was not permissible.
25.1.11 Section 29(8) explains the circumstances in which
infringement by advertising of a registered trademark can be said to
have taken place.
25.1.12 Section 29(9) clarifies that infringement need not always
be in writing or by visual representation, but could also be by spoken
use of the words which constitute part of the infringed trademark.
25.1.13 We may straight away note, here, that the only sub-
section of Section 29, which applies in the present case, is Section
29(2). Even in Section 29(2), though Mr. Anand has sought to
contend that clause (c) would apply, the contention cannot be
accepted, as clause (c) applies only where the rival marks are
identical. Any difference between the rival marks, howsoever
infinitesimal, would exclude the applicability of Section 29(2)(c). In
the present case, the appellant’s mark is FECONTIN-F and the
respondent’s mark is FEMICONTIN. They are not identical. Section
29(2)(c), therefore, does not apply and Mr. Anand’s contention that it
does, has necessarily to be rejected.
25.1.14 Equally, as Section 29(2)(c) does not apply, Section
29(3) is also inapplicable.
25.1.15 The definition of infringement in Section 29 of the Trade
Marks Act is not absolute. The Trade Marks Act itself provides for
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 76 of 115
Signing Date:01.07.2025
13:29:56
exceptions to the definition. Where the exceptions apply, no
infringement can be said to have taken place, even if all the
ingredients of one or more of the various sub-sections of Section 29
are found to exist in a given case.
25.1.16 Section 30(1) and (2)43 set out, expressly, circumstances
in which infringement cannot be said to take place even if the
ingredients of one or more of the sub-sections of Section 29 are found
to exist.
43 30. Limits on effect of registered trade mark. –
(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark
by any person for the purposes of identifying goods or services as those of the proprietor provided
the use–
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark.
(2) A registered trade mark is not infringed where–
(a) the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services;
(b) a trade mark is registered subject to any conditions or limitations, the use of the
trade mark in any manner in relation to goods to be sold or otherwise traded in, in any
place, or in relation to goods to be exported to any market or in relation to services for use
or available or acceptance in any place or country outside India or in any other
circumstances, to which, having regard to those conditions or limitations, the registration
does not extend;
(c) the use by a person of a trade mark--
(i) in relation to goods connected in the course of trade with the
proprietor or a registered user of the trade mark if, as to those goods or a bulk
or which they form part, the registered proprietor or the registered user
conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark; or
(ii) in relation to services to which the proprietor of such mark or of a
registered user conforming to the permitted use has applied the mark, where the
purpose and effect of the use of the mark is to indicate, in accordance with the
fact, that those services have been performed by the proprietor or a registered
user of the mark;
(d) the use of a trade mark by a person in relation to goods adapted to form part of,
or to be accessory to, other goods or services in relation to which the trade mark has been
used without infringement of the right given by registration under this Act or might for
the time being be so used, if the use of the trade mark is reasonably necessary in order to
indicate that the goods or services are so adapted, and neither the purpose nor the effect of
the use of the trade mark is to indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person and the goods or services, as the
case may be;
(e) the use of a registered trade mark, being one of two or more trade marks
registered under this Act which are identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by registration under this Act.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 77 of 115
Signing Date:01.07.2025
13:29:56
25.1.17 Though Section 30(2) is expressly stated as enumerating
circumstances in which a registered trademark is not infringed,
Section 30(1) also sets out, in its clauses, additional circumstance in
which infringement cannot be said to have taken place. The provisions
of Section 30 stand reproduced in the footnote to this judgment, and,
for our purposes, it is only necessary to refer to Section 30(1) and
Section 30(2)(a).
25.1.18 Section 30(1) excludes the applicability of Section 29
where the defendant uses the allegedly infringing trademark for
identifying the goods or services as those of the proprietor of the
trademark, provided the use by the defendant is in accordance with
honest industrial and commercial practice and does not take unfair
advantage of, and is not detrimental to, the character and repute of the
plaintiff’s trademark.
25.1.19 Section 30(2)(a) excludes, from the ambit of
infringement, use, by a defendant, of the registered trademark of the
plaintiff, where such use indicates the kind, quality, quantity, intended
purpose, value, geographical origin, time of production of goods or
rendering of services or other characteristics of the goods or services.
It is this group of circumstances, envisaged in Section 30(2)(a) which
are popularly characterised as “descriptive” use of the impugned
mark. Where, therefore, the impugned mark of the defendant
describes the characteristics of the goods or services of the defendant,
it cannot be said to be infringing, even if the ingredients of one or
more of the sub-sections of Section 29, vis-a-vis the plaintiff’s
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 78 of 115
Signing Date:01.07.2025
13:29:56
registered trademark, are satisfied.
25.1.20 Section 28(1)44 of the Trade Marks Act entitles the
registered proprietor of a trademark not only to the right to exclusive
use of the registered trademark, but also to relief in respect of
infringement of the trademark. If, therefore, a registered trademark is
infringed, within the meaning of Section 29, and none of the
exceptions contained in Section 30 apply, the proprietor of the
registered trademark is entitled, in the event that the registered
trademark is infringed, to relief against infringement.
25.1.21 Section 135(1)45 of the Trade Marks Act deals with the
reliefs available in the case of infringement. Among these include
injunction, damages, rendition of accounts and delivery up of the
infringing labels and marks. As in the case of infringement, there are
also exceptions, in the Trade Marks Act, to the right of the proprietor
of a registered trademark to obtain relief against infringement. In other
words, the proprietor of a registered trademark would, in a case in
which one or more of the exceptions in the Trade Marks Act is found
to apply, not be entitled to relief against infringement, even where
infringement is found to have taken place.
25.1.22 These exceptions are to be found in Section 30(1),
44 28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this Act.
45 135. Relief in suits for infringement or for passing off. –
(1) The relief which a court may grant in any suit for infringement or for passing off referred
to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the
Signature Not Verified option of the plaintiff, either damages or an account of profits, together with or without any order
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 79 of 115
Signing Date:01.07.2025
13:29:56
33(1)46, 34 and 3547. Of these, the only provisions with which we
need be concerned are Section 30(1)(a), 33(1) and 35.
25.1.23 We have already dealt with Section 30(1)(a). Section 33
applies where the plaintiff, as the proprietor of the allegedly infringed
earlier trademark, acquiesces to the use of the registered trademark of
the defendant, for a period of five years. In such a situation, the
plaintiff cannot seek an injunction against the use, by the defendant, of
its registered trademark in relation to the goods or services in respect
of which it shall be used, unless the registration was not applied for in
good faith. Thus, the principle of acquiescence statutorily applies only
where the defendant’s trademark is registered, and not where the
impugned trademark of the defendant is unregistered.
25.1.24 Section 35 prohibits grant of an injunction against bona
fide use, by a defendant, of his own name, his place of business, the
name or place of business of his predecessors or of any bona fide
description of the character or quality of the respondent of his goods
or services. This, again, is one of the grounds on which a defence of
“descriptive use” is at times raised, as a bulwark against an injunction,
even where infringement may otherwise be found to exist.
for the delivery-up of the infringing labels and marks for destruction or erasure.
46
33. Effect of acquiescence. –
(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of
five years in the use of a registered trade mark, being aware of that use, he shall no longer be
entitled on the basis of that earlier trade mark–
(a) to apply for a declaration that the registration of the later trade mark is invalid,
or
(b) to oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used,
unless the registration of the later trade mark was not applied in good faith.
47 35. Saving for use of name, address or description of goods or services. – Nothing in this Act shall
entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a
person of his own name or that of his place of business, or of the name, or of the name of the place of
business, of any of his predecessors in business, or the use by any person of any bona fide description of the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 80 of 115
Signing Date:01.07.2025
13:29:56
25.2 Having thus adverted to the various provisions in the Trade
Marks Act which deal with infringement, the right to injunction, and
the statutory exceptions in that regard, we may now proceed to
examine the appellant’s claim of infringement, as well as his
consequent prayer for injunction, vis-a-vis the registration held by the
appellant of the marks CONTIN and FECONTIN-F, seriatim.
25.3 Issue (ii), as framed by us in para 22, supra as arising for
consideration, deals with the appellant’s claim of infringement, by the
impugned FEMICONTIN mark of the respondents, of the CONTIN
family of marks of the appellant.
25.4 The appellant is the registered proprietor of the mark CONTIN,
in respect of which it holds a registration dating back to 19 October
1989 in Class 5. Section 28(1) of the Trade Marks Act, therefore,
entitles the appellant, as of right, to relief against infringement, by
way of injunction, against the use of the mark CONTIN by any third
party, in respect of pharmaceutical products or any allied or cognate
goods or services.
25.5 The appellant does not, however, seek an injunction against the
use of the mark CONTIN per se by any other person. Nor has the
appellant claimed to ever have used the mark CONTIN per se in
respect of any goods or services, though it holds a registration for the
mark CONTIN under the Trade Marks Act.
Signature Not Verified
character or quality of his goods or services.
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 81 of 115
Signing Date:01.07.2025
13:29:56
25.6 What the appellant seeks is an injunction against any third party
using CONTIN as a part of any trademark, whether as a prefix or a
suffix, in respect of goods falling in Class 5 or which may be allied or
cognate thereto.
25.7 For this purpose, the appellant invokes the concept of a “family
of marks”. The appellant claims to be the registered proprietor of the
CONTIN family of marks and, by virtue thereof, to be entitled to
exclusivity over the use of CONTIN as a prefix or a suffix in any
trademark by any third party for goods covered by Class 5 or which
are allied or cognate thereto.
25.8 The learned Single Judge has rejected this plea on two grounds.
25.9 Aspect of non-use of CONTIN as a standalone mark by the
appellant
25.9.1 The first ground on which the learned Single Judge has rejected
the appellant’s prayer for an injunction against any third party using
CONTIN as a part of any trade mark for pharmaceutical products, is
that there has been no use, by the appellant, of the mark CONTIN per
se, despite the appellant being the registered proprietor of the said
mark, at any point of time. Use of the registered trademark, according
to the learned Single Judge, is necessary for an action against
infringement of the said mark to be sustainable in law. For this
purpose, the learned Single Judge relies on Section 47(1)(b)48 read
48 47. Removal from register and imposition of limitations on ground of non-use. –
Signature Not Verified (1) A registered trade mark may be taken off the register in respect of the goods or services in
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 82 of 115
Signing Date:01.07.2025
13:29:56
with Section 2(2)(c)49 of the Trade Marks Act. The learned Single
Judge also adverts to Section 28(1) of the Trade Marks Act, in this
context.
25.9.2 To our mind, the reliance, by the learned Single Judge, on
Section 47(1)(b) of the Trade Marks Act is misguided.
25.9.3 Section 47 deals with the right of one person to apply to the
Registrar of Trade Marks to have the trade mark of another person
taken off the register. Continuous non-use of a registered mark, upto a
period of three months prior to the application, is the ground on which
Section 47 (1)(b) permits the removal of the registered trade mark,
from the Trade Marks register, to be sought by the applicant.
25.9.4 Section 47 is not an exception either to Section 29 of the Trade
Marks Act, which defines infringement, or to Section 28(1) read with
Section 135 which entitles the proprietor of a registered trade mark to
an injunction against an infringer of such a registered trade mark. It is,
no doubt, open to the infringer, as it is to everyone else, to apply to the
Registrar of Trade Marks for taking off the registered trade mark from
respect of which it is registered on application made in the prescribed manner to the
Registrar or the High Court by any person aggrieved on the ground either–
*****
(b) that up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually entered in the
register or longer had elapsed during which the trade mark was registered and during
which there was no bona fide use thereof in relation to those goods or services by any
proprietor thereof for the time being:
49 (2) In this Act, unless the context otherwise requires, any reference–
*****
(c) to the use of a mark,–
(i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as
or as part of any statement about the availability, provision or performance of such
Signature Not Verified services;
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 83 of 115
Signing Date:01.07.2025
13:29:56
the Trade Mark register and, for that reason, to cite five years’ non-use
of the registered trade mark as a ground for seeking cancellation. So
long as this is not done, and the registered trade mark remains on the
register, however, infringement of the registered trade mark is
impermissible and, if infringement takes place, the right of the
proprietor of the registered trade mark to relief against infringement
is statutorily guaranteed.
25.9.5 The Court cannot refuse to grant relief where it finds
infringement on the ground that the defendant could possibly, if it so
chose, institute proceedings for cancellation of the asserted mark of
the plaintiff under Section 47(1). Nor can the Court presume the
outcome of such proceedings, even if they were instituted. So long as
they are not instituted, the registration of the asserted mark of the
plaintiff has to be accorded due respect.
25.9.6 The Trade Marks Act, we may note, significantly differs from
the Designs Act, 2000 and the Patents Act, 1970, in this respect.
Section 22(3)50 of the Designs Act, and Section 107(1)51 of the Patents
Act, envisage any ground on which the asserted design, or patent, of
the plaintiff, is vulnerable to invalidation, or revocation, as being
available as a defence against a claim of infringement. There is no
such provision in the Trade Marks Act.
50 (3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the
registration of a design may be cancelled under Section 19 shall be available as a ground of defence.
51 107. Defences, etc. in suits for infringement. –
(1) In any suit for infringement of a patent, every ground on which it may be revoked under
Signature Not Verified Section 64 shall be available as a ground for defence.
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 84 of 115
Signing Date:01.07.2025
13:29:56
25.9.7 Inasmuch as these are cognate statutes protecting infringement
of intellectual property, it must be presumed that the legislature, in not
providing, in the Trade Marks Act, any provision analogous to Section
22(3) of the Trade Marks Act or Section 107(1) of the Patents Act, did
so consciously. The legislative mandate has to be respected.
25.9.8 Ergo, howsoever fragile the validity of a registered trade mark
may seem, so long as it remains on the register, the right against
infringement, available under Section 28(1), stands protected.
25.9.9 It is true that Section 28(1) uses the expression “if valid”.
However, that does not empower a Court, seized with an infringement
action based on a registered trade mark, to pronounce on the validity
of the trade mark as a ground to deny injunction, even where the
defendant has infringed the mark. It merits mention, in this regard,
that Section 31(1)52 of the Trade Marks Act provides that the
registration of a trade mark would by itself be prima facie evidence of
its validity. This prima facie presumption of validity can be unseated
only if the defendant succeeds in having the trade mark invalidated
under Section 57(1) or (2)53, or Section 47, of the Trade Marks Act.
So long as this is not done, the right to relief against infringement,
52 31. Registration to be prima facie evidence of validity. –
(1) In all legal proceedings relating to a trade mark registered under this Act (including
applications under Section 57), the original registration of the trade mark and of all subsequent
assignments and transmissions of the trade mark shall be prima facie evidence of the validity
thereof.
53 57. Power to cancel or vary registration and to rectify the register. –
(1) On application made in the prescribed manner to the High Court or to the Registrar by
any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as
it may think fit for cancelling or varying the registration of a trade mark on the ground of any
contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by
any entry made in the register without sufficient cause, or by any entry wrongly remaining on the
register, or by any error or defect in any entry in the register, may apply in the prescribed manner to
Signature Not Verified the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 85 of 115
Signing Date:01.07.2025
13:29:56
available to every registered trade mark under Section 28(1), stands
preserved. The words “if valid” in Section 28(1) have, therefore, in
our opinion, to be read in conjunction with Section 31(1), and the
statutory presumption of validity engrafted therein.
25.9.10 Insofar as Section 28(1) is concerned, the provision
clearly favours the appellant, rather the respondents. Section 28(1)
entitles the appellant, as the proprietor of each of its registered trade
marks, to relief against infringement of such registered trade mark by
any third party, by way of injunction or by way of any of the other
reliefs envisaged in Section 135 of the Trade Marks Act. Mere
registration, even by itself, assures the appellant of the right to relief
against infringement. Use of the registered trademark is not necessary.
25.9.11 As such, we are of the opinion that the learned Single
Judge is not correct in his view that, owing to the fact that the
appellant has not used the trade mark CONTIN per se, despite being
its registered proprietor, it cannot maintain an action for infringement
or seek relief against infringement of the mark.
25.9.12 The learned Single Judge could not, therefore, have held
that, because the appellant did not use trade mark CONTIN, which
was registered in its favour, the appellant was disentitled to injunction
against its infringement.
25.10 The registration of the mark CONTIN, held by the appellant
would, however, ordinarily entitle it only to an injunction against use,
Signature Not Verified make such order for making, expunging or varying the entry as it may think fit.
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 86 of 115
Signing Date:01.07.2025
13:29:56
by any third party, of the mark CONTIN per se. Else, the appellant
would have to establish, in the case of a particular impugned mark,
that, by use of CONTIN as a part thereof, the registration of CONTIN
as a trade mark in the appellant’s favour stands infringed. The
provisions of the Trade Marks Act do not permit any grant of
injunction, merely because the appellant is the registered proprietor of
the mark CONTIN or of a series of marks in all of which CONTIN
may form a part, absolutely against any third party using CONTIN as
any part of its trade mark, whether for pharmaceutical products or
otherwise.
25.11 Re. the “family of marks” concept
25.11.1 The appellant has invoked, for this purpose, “the family
of marks concept”. The learned Single Judge has held, in para 66, that
the family of marks concept applies only to passing off, and not to
infringement.
25.11.2 The finding of the learned Single Judge that the concept
of family of marks is relevant only for passing off, and not for
infringement, may not be correct, in view of the judgment of the
Division Bench of this Court in Amar Singh Chawal Wala.
25.11.3 The judgment in Amar Singh Chawal Wala
25.11.3.1 A short digression into the exact dispute before the
Division Bench in Amar Singh Chawal Wala is necessary at this
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 87 of 115
Signing Date:01.07.2025
13:29:56
point. Amar Singh Chawal Wala54 instituted Suit 2247/1989 against
Shree Vardhman Rice and General Mills55, alleging infringement.
Amar Singh was the proprietor of the registered word marks
GOLDEN QILLA, LAL QILLA CHAPP and the word and device
marks LAL QILLA and NEELA QILLA, in respect of rice. It was also
the proprietor of a registered device mark “QILLA” with a fort
representing the mark. It sought an injunction against Vardhman
using the trade mark HARA QILLA or the QILLA device or any
deceptively similar mark. Amar Singh claimed the exclusive right to
use the asserted word and device marks QILLA, GOLDEN QILLA,
LAL QILLA, LAL QILLA CHAPP and NEELA QILLA, of which it
claimed extensive and continuous user. It was asserted that the use, by
the Vardhman, of the mark HARA QILLA and the QILLA device,
also for rice, infringed the registered trade marks of Amar Singh, and
that unwary purchasers were likely to mistake Vardhman’s rice for
Amar Singh’s.
25.11.3.2 Amar Singh filed an application for interim injunction,
along with its suit. The application was dismissed by a learned Single
Judge of this Court by order dated 1 March 1996. Amar Singh
challenged the order before the Division Bench, resulting in the
passing of the judgment under discussion.
25.11.3.3 The Division Bench finally allowed the appeal and
reversed the judgment of the learned Single Judge. Vardhman was
restrained, during the pendency of the suit, from dealing in any rice or
54 “Amar Singh” hereinafter
55 “Vardhman” hereinafter
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 88 of 115
Signing Date:01.07.2025
13:29:56
any other allied or cognate goods using the QILLA device or the trade
mark HARA QILLA or any mark or device deceptively similar to the
registered trademarks or device marks of Amar Singh in respect of
rice.
25.11.3.4 It is not necessary to advert to all the findings of the
Division Bench. For the present discussion, which deals with the
“family of marks” concept, it is sufficient to note that, in para 18 of
the judgment, the Division Bench held as under:
“18. It is not possible to agree with the reasoning of the learned
Single Judge that the word QILLA is not associated with rice and
therefore no ordinary purchaser of rice would associate the
Defendant’s mark as that of the Plaintiffs. It is plain from the
pleadings that the Plaintiff has been using the words QILLA
consistently in connection with the rice being sold by them with
only the first word indicating the colour viz., GOLDEN, LAL or
NEELA. It must be held that the Plaintiff has been able to prima
facie show that it has developed a ‘family of marks’ and that by
merely changing the first word from GOLDEN, LAL or NEELA to
the word HARA there is every possibility of confusion being
caused both in trade and in the mind of any person desiring to
purchase rice. Likewise the use of the picture or depiction of a fort
in the background on the label/packing of the rice is also likely to
cause confusion in the mind of the purchaser and in the trade that
the product being sold by the Defendants are in fact those
manufactured by the Plaintiff.”
25.11.4 It is obvious that the above findings would analogously
apply to the present case. Just as, in the appeal before the Division
Bench in Amar Singh Chawal Wala, Amar Singh had used the second
word QILLA consistently with different first words such as
GOLDEN, LAL and NEELA, merely changing the first word each
time, thereby resulting in a QILLA “family of marks”, the appellant
has also developed a family of registered marks of which CONTIN is
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 89 of 115
Signing Date:01.07.2025
13:29:56
the common suffix, with different prefixes. Applying the principle
enunciated in para 18 of Amar Singh Chawalwala, the use, by any
other third party, of a mark, for pharmaceutical products, with the
CONTIN suffix and another prefix – such as FEMICONTIN in the
present case – may be potentially likely to deceive consumers into
confusing the mark with the appellant or, at the very least, presuming
an association between the mark and the appellant.
25.11.5 In view of para 18 of Amar Singh Chawalwala, to which
the attention of the learned Single Judge appears not to have been
drawn, the finding of the learned Single Judge that the family of
marks concept would apply only to passing off, is not correct. Amar
Singh Chawalwala, rendered by a Division Bench of this Court and
therefore binding on us, clearly holds the family of marks concepts to
apply, equally, to infringement.
25.11.6 The concept of family of marks was also adopted by the
High Court of Bombay in Neon Laboratories v Themis Medicare
Ltd56, to hold “the “XYLOX family of marks” comprising XYLOX
2%, XYLOX HEAVY, XYLOX GEL, XYLOX ADRENALINE and
XYLOX 2% Jelly to be infringing the “LOX family of marks”
comprising LOX 2% ADRENALINE, LOX 4%, LOX 5%, LOX
HEAVY 5%, LOX VISCOUS, LOXALPRIN, LOXALPRY,
LOXIMLA, PLOX and RILOX.”
25.11.7 Both these judgments were followed by this Court in
56 (2014) 60 PTC 621
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 90 of 115
Signing Date:01.07.2025
13:29:56
Bennett Coleman and Co. Ltd v Vnow Technologies Pvt Ltd57 and
Bennett Coleman and Co. Ltd v Fashion One Television LLC58, both
of which were authored by one of us (C Hari Shankar, J.), sitting
singly.
25.11.8 These two decisions adjudicated on rectification petitions
under Section 57 of the Trade Marks Act filed by Bennett Coleman
and Co. Ltd seeking rectification of the register of Trade Marks by
removal, therefrom, of the mark VNOW (in the case of Bennett
Coleman and Co. Ltd v VNOW Technologies) and FASHION NOW
(in the case of Bennett Coleman and Co. Ltd v Fashion One
Television). This Court allowed the petitions in both the cases, noting
the proprietorial rights of Bennett Coleman in the “NOW” family of
marks, which included TIMES NOW, ET NOW, MOVIES NOW,
ROMEDY NOW and MIRROR NOW. Following the decisions in
Amar Singh Chawalwala and Neon Laboratories, this Court held
that, having established a NOW family of marks, in each of which
proprietorial rights were conferred on Bennett Coleman as the
registered proprietor of the marks, the registration of VNOW and
FASHION NOW would result in confusion and that, therefore, such
registration would violate Section 11 (1) of the Trade Marks Act,
rendering the registration liable to cancellation.
25.11.9 It is a fact that the Trade Marks Act does not expressly
recognises the concept of a family of marks. However, the concept,
though judicially created and developed, is merely a manifestation of
57 2023 SCC OnLine Del 864
58 2023 SCC OnLine Del 8083
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 91 of 115
Signing Date:01.07.2025
13:29:56
the principles contained in the Trade Marks Act. When an entity is
the proprietor of a number of registered trademarks containing a
common prefix or suffix, or a common first or second word, any other
mark by a third party which would contain the same first or second
word, if used for similar goods or service, could result in likelihood of
confusion within the meaning of Section 29(2) of the Trade Marks
Act. It is this concept which is elliptically described as the “family of
marks” concept. Thus, the concept of a family of marks is not alien to
the Trade Marks Act, but merely a recognition of the principles that
underlie the statute.
25.11.10 As already noted, the “family of marks” concept when
applied to the present case, clearly indicates that the appellant is the
registered proprietor of a family of marks of which CONTIN is a
common suffix. The use of any other mark by a third party, with the
same suffix, for pharmaceutical preparation, could, therefore, lead to
confusion or a presumption of association within the meaning of
Section 29(2) of the Trade Marks Act. As the registered proprietor of
the CONTIN family of marks, the appellant would be entitled to
injunct any such mark from being used.
25.11.11 That said, however, the principle of a “family of marks”
cannot extend to grant of an injunction, in favour of the appellant and
against all third parties, from using any mark of which CONTIN is a
part, for pharmaceutical preparations or otherwise. Though the
principle of a family of marks is well recognised, the Court cannot,
without actual facts before it, presume that every mark of which
CONTIN is a part, and which may deal with pharmaceutical
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 92 of 115
Signing Date:01.07.2025
13:29:56
preparations, is necessarily infringing in nature. One may, for
example, hypothetically, envisage the use of a mark with the word
“CONTINUOUS” or “CONTINGENT” which, hypothetically, may
not be infringing even if it is used for pharmaceutical preparations,
and contains “CONTIN”. Notably, even in the decisions which have
upheld the family of marks principle, including Amar Singh Chawal
Wala and Neon Laboratories, and the two Bennett Coleman
decisions, the Court has not granted an absolute injunction, across the
board, in favour of the family of marks holder and against all third
parties from using the common feature of the family of marks in any
case. The family of marks concept has been applied only to injunct
the use of specific marks, which were under consideration in those
cases.
25.11.12 This, in fact, is but logical. Section 135 of the Trade
Marks Act also envisages injunction of a particular trade mark or trade
marks, and not of hypothetical trade marks which are not before the
Court.
25.11.13 Even if, therefore, the benefit of the family of marks
principle is extended to the appellant, the sequitur cannot be that the
appellant would be entitled to an injunction against the use, by every
third party, of CONTIN as a part of any trade mark, whether for
pharmaceutical preparations or otherwise. The Court would have to
examine each instance on a case to case basis. While it is possible for
the Court to invoke the family of marks principle to grant injunction,
that injunction has to be against marks which are specifically under
challenge before the court.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 93 of 115
Signing Date:01.07.2025
13:29:56
25.11.14 By way of example, the appellant would be entitled to an
injunction, against the respondents, restraining use of the
FEMICONTIN mark, as it infringes the CONTIN family of registered
trade marks of the appellant.
25.11.15 While, therefore, we are unable to subscribe to the view
of the learned Single Judge that the concept of a family of marks
principle is applicable only to passing off, we agree with the learned
Single Judge that the appellant cannot be granted an absolute
injunction against use of CONTIN as a prefix or suffix or any other
part of any mark under which pharmaceutical preparations are
manufactured or cleared.
25.12 We, therefore, uphold the decision of the learned Single Judge
insofar as it refuses to grant injunction to the appellant, as sought,
against any third party using CONTIN as a prefix or as a suffix of any
mark under which pharmaceutical preparations are manufactured or
cleared.
26. Re. Issue (iii) – Plea of infringement vis-a-vis the FECONTIN-
F registered trade mark
26.1 Re. finding of learned Single Judge that FECONTIN is a
descriptive mark
26.1.1 There are three significant findings of the learned Single Judge,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 94 of 115
Signing Date:01.07.2025
13:29:56
in the impugned judgment, with respect to the appellant’s claim of
infringement, by the FEMICONTIN trade mark of the respondents, of
the FECONTIN-F registered trade mark of the appellant. All three
have a relation with the aspect of whether FECONTIN, or
FEMICONTIN, can be treated as descriptive marks.
26.1.2 The first is in para 71, in which the learned Single Judge
observes:
“…it is correct that for determining whether a mark is descriptive or
suggestive in nature, the mark is not to be bifurcated into parts…”
26.1.3 Secondly, in the opening sentence in para 75 of the impugned
judgment, the learned Single Judge observes, even while holding the
mark FECONTIN-F to be descriptive of the product for which it is
used, that “it is suggestive of iron released for a continuous period in
the body”.
26.1.4 The third significant observation is in para 77, where the
learned Single Judge observes that “…a combination of two
descriptive words may still be entitled to protection…”.
26.1.5 These three observations of the learned Single Judge, when
applied to the facts of the present case, clearly indicate that neither
FECONTIN nor FEMICONTIN can be treated to be descriptive of the
marks for which they are used, so as to disentitle the appellant from
injunction against the respondent.
26.1.6 Once it is correctly acknowledged, by the learned Single Judge,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 95 of 115
Signing Date:01.07.2025
13:29:56
in para 71 of the impugned judgment, that a mark is not to be
bifurcated into parts in order to decide whether it is descriptive or
suggestive or otherwise, the issue of whether the marks FECONTIN
or FEMICONTIN, are descriptive, suggestive or otherwise have to be
decided on the basis of the marks themselves, and not by dividing the
marks into their individual elements such as “FE” and “CONTIN”.
26.1.7 At this point, it is important to note that the aspect of whether a
mark is descriptive or suggestive or otherwise, would actually be
relevant only for the respondents’ FEMICONTIN mark, and not for
the appellant’s FECONTIN mark. This is because, if the respondents’
mark is descriptive, its use would not amount to infringement by
virtue of Section 30(2)(a), and it would be saved from any injunctive
order by virtue of Section 35 of the Trade Marks Act. The issue of
whether the appellant’s FECONTIN-F mark is descriptive, suggestive
or otherwise, is actually irrelevant, insofar as the aspect of
infringement, and the appellant’s right to injunction against the
respondents, is concerned.
26.1.8 To that extent, in stressing the purported descriptive nature of
the mark FECONTIN, the learned Single Judge appears, with respect,
to have misdirected himself in law.
26.1.9 We also find substance in Mr. Pravin Anand’s contention that
as Respondent 1 had itself applied for registration of the
FEMICONTIN mark, it could not lie in its mouth to contend that
either FEMICONTIN or FECONTIN-F was descriptive.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 96 of 115
Signing Date:01.07.2025
13:29:56
26.1.10 That said, the issue of whether the mark is descriptive or
suggestive or neither of the two, would bear more or less the same
scrutiny, when applied to the mark FEMICONTIN as to the mark
FECONTIN. Expressed otherwise, if FECONTIN is descriptive, so
would FEMICONTIN be.
26.1.11 As we have already noted, the learned Single Judge
himself acknowledges that the test of whether a mark is descriptive or
suggestive or otherwise has to be decided by reference to the entire
mark, and not by breaking it up into fragments. The proscription
against injunction of a descriptive mark applies, under Section 35, to
the entire mark. Equally, the amnesty against the injunction, as
contained in Section 30(2)(a) also applies vis-a-vis the entire mark of
the defendant, and not with respect to part thereof. The learned Single
Judge has correctly held, therefore, that this issue has to be decided by
examining the entire mark, though he has, somewhat inaccurately,
applied the test to the appellant’s FECONTIN mark instead of the
respondents’ FEMICONTIN mark.
26.1.12 The exception to infringement, and the protection against
infringement, are available to marks which are themselves descriptive
of the product in respect of which they are used. In our considered
opinion, the imagination would have to be stretched to unrealistic
limits to hold that FEMICONTIN is a descriptive mark, merely
because “FE” happens to be the chemical symbol for iron, “FEMI” is
some sort of abbreviation for “female” and “CONTIN” is an
abbreviation for “continuous”, which is neither indicative of the
ailment that the drug intends to treat or to any of the constituents of
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 97 of 115
Signing Date:01.07.2025
13:29:56
the drug, but is supposed to represent the mechanism in which the
drug acts within the body of the patient. Even if, for the sake of
argument, it is assumed that, in devising the FEMICONTIN mark,
Respondent 1 was intending to achieve some kind of a portmanteau of
the chemical symbol for one of the ingredients of the product, the sex
of the patient for whom the drug was intended and the mode or
mechanism or action of the product within the body of the patient, that
can hardly render the name FEMICONTIN, as plainly read,
descriptive of the product.
26.1.13 At the very highest, FEMICONTIN may be regarded,
though again by stretching the imagination somewhat, to be suggestive
of the nature of the product for which the mark is used. This position
appears, in fact, to have been acknowledged by the learned Single
Judge himself, by his observation in para 75 that the name is
“suggestive of iron released for a continuous period in the body”.
26.1.14 This observation is by itself sufficient to defeat the final
conclusion of the learned Single Judge that no injunction can be
granted against the mark FEMICONTIN, or even that the mark
FECONTIN-F is not entitled to injunction, applying the law laid down
by the Supreme Court in T.V. Venugopal, which clearly distinguishes
between descriptive and suggestive marks. The following passage,
from T.V. Venugopal may, in this context, be reproduced, to
advantage:
“30. The argument of the respondent Company is that “Eenadu”
is not a generic or descriptive mark but a suggestive mark. The
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 98 of 115
Signing Date:01.07.2025
13:29:56
difference between categorisation as generic, descriptive or
suggestive is as follows:
• A generic mark can never be a trade mark.
• A descriptive mark can become a trade mark if it acquires
secondary meaning.
• A suggestive mark is inherently distinctive.”
Thus, while a descriptive mark is not entitled to registration, and
cannot be injuncted, a suggestive mark escapes these interdictions.
The proscription against injunction, available under Section 35 of the
Trade Marks Act, applies only to descriptive marks, and not to merely
suggestive marks.
26.1.15 By no stretch of imagination, in our considered opinion,
can the mark FEMICONTIN be regarded as descriptive of the drug in
respect of which it is used. The same conclusion would apply to
FECONTIN-F as well.
26.1.16 Interestingly, while acknowledging, in para 77 of the
impugned judgment, that a combination of two descriptive words may
be entitled to protection, the learned Single Judge proceeds to observe
that “the plaintiff cannot deny the use of such descriptive part by a
third party or claim exclusive right to use the same”. Thus, what the
learned Single Judge appears to be conveying, through these
observations in para 77 of the impugned judgment, is that, though a
trade mark which is a combination of two descriptive parts, or a
generic and a descriptive part, may be entitled to protection, no
individual protection for each of the parts can be claimed by the
proprietor. In other words, even if FECONTIN is entitled to
protection, the appellant would not be to seek protection individually
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 99 of 115
Signing Date:01.07.2025
13:29:56
for “FE” as a prefix or “CONTIN” as a suffix.
26.1.17 This observation, in fact, is clearly in favour of the
appellant, as the appellant is not seeking any injunction against the
use, by any third party, of the prefix “FE”, and we have already held,
in earlier in this judgment, that no injunction against the use of
CONTIN as a suffix can be granted to the appellant. As such, we are
not concerned with individual injunctions for the prefix “FE” or the
suffix “CONTIN”, and, as the learned Single Judge himself observes
that the combined FEMICONTIN mark may be entitled to protection,
it has to be held that, in denying injunction to FECONTIN-F mark,
against the FEMICONTIN mark of the respondents on the ground that
it was descriptive of the nature, the learned Single Judge has
apparently erred.
26.1.18 The appellant’s prayer for injunction against the use, by
the respondents, of the impugned FEMICONTIN mark could not,
therefore, have been rejected on the ground that FECONTIN-F mark
of the appellant was descriptive in nature. This finding of the learned
Single Judge is, therefore, ex facie erroneous.
26.2 On merits
26.2.1 On merits, there can be hardly any doubt that the respondents’
mark FEMICONTIN is practically identical to the appellant’s mark
FECONTIN-F. It cannot be said that the combination of “FE”, being
the chemical symbol for iron, and “CONTIN”, as an abbreviation of
the mode of action of the product, is one which would ordinarily occur
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 100 of 115
Signing Date:01.07.2025
13:29:56
to any person manufacturing the drug. We are in entire agreement
with Mr. Pravin Anand that the devising of FEMICONTIN as the
name for the respondents’ product in the face of the existing
FECONTIN-F product of the appellant, both of which are intended to
treat similar conditions in the human body, cannot be purely co-
incidental. The only distinction between FECONTIN and
FEMICONTIN is the intervening “MI, between “FE” and “CONTIN”.
That intervening “MI” does not result in any such distinction between
the two marks as would mitigate the possibility of confusion, not only
in the mind of the consumer of an average intelligence and imperfect
recollection, but even in the mind of a doctor. The marks FECONTIN
and FEMICONTIN are practically identical.
26.2.2 They are also phonetically similar, when one applies the test in
that regard as laid down in In Re: Pianotist59
“You must take the two words. You must judge them, both by their
look and by their sound. You must consider the goods to which
they are to be applied. You must consider the nature and kind of
customer who would be likely to buy those goods. Infact you must
consider all the surrounding circumstances and you must further
consider what is likely to happen if each of those trade marks is
used in a normal way as a trade mark for the goods of the
respective owners of the marks.”
26.2.3 We have already reproduced, towards the commencement of
this judgment, photographs of the packs of the appellant and the
respondents. These photographs also constituted part of the record
before the learned Single Judge. The respondents do not deny that the
photographs are of the packages of the appellant and the respondents’
59 (1906) 23 RPC 774
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 101 of 115
Signing Date:01.07.2025
13:29:56
products. If one compares the photographs, it is clear that the
respondents have not only adopted a name which is deceptively
similar to FECONTIN, but have also adopted a trade dress, including
colouring on the package, which would augment the possibility of
confusion.
26.2.4 In that view of the matter, we are also not inclined to agree with
the learned Single Judge in his observation that the adoption, by the
Respondent 1 of the mark FEMICONTIN was bona fide. We agree
with Mr. Pravin Anand that the adoption of the mark FEMICONTIN
was a conscious decision, taken with a view to confuse the product of
the respondents, in the mind of the consumer, with the product of the
appellant.
26.2.5 While dealing with the aspect of confusion, we may note the
exordium, in the judgment of the Supreme Court in Cadila
Pharmaceuticals, to which Mr. Pravin Anand has rightly drawn our
attention, that, while dealing with alleged trade mark infringement in
the case of pharmaceutical products, the court has to adopt a stricter
stand. The degree of resemblance which would otherwise be necessary
is relaxed when one deals with pharmaceutical products, and the Court
has to ensure that there is absolutely no chance of confusion in the
minds of the public between one pharmaceutical product and another,
by reasons of similarity of the marks under which the two products are
dispensed. Inasmuch as it is public health which hangs in the balance,
there can be no leniency whatsoever. Even the slightest chance of
confusion in the mind of public between, one drug and another, has to
be avoided at all costs.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 102 of 115
Signing Date:01.07.2025
13:29:56
26.2.6 Thus viewed, the mark FEMICONTIN is phonetically,
structurally and visually practically identical to FECONTIN-F, both
when viewed as a word mark per se as well as the manner in which
they are visually depicted on the individual packs of the products of
the appellant and the respondents.
26.2.7 The facts of the present case, in fact, also justify invocation of
the principle in Munday v Carey60 and Slazenger v Feltham61. The
relevant retracts from the said decisions may be reproduced thus:
Munday v Carey
“…Where you see dishonesty, then even though the similarity
were less than it is here, you ought, I think, to pay great attention
to the items of similarity, and less to the items of dissimilarity.”
Slazenger
“One must exercise one’s common sense, and, if you are driven to
the conclusion that what is intended to be done is to deceive if
possible, I do not think it is stretching the imagination very much
to credit the man with occasional success or possible success. Why
should we be astute to say that he cannot succeed in doing that
which he is straining every nerve to do?”
In Munday, it has been held, in cases of dishonest imitation or
copying, that the Court has to concentrate on the points of similarity
between the rival marks, rather than points of dissimilarity. Where
there is a clear and dishonest intention to adopt a mark which is
imitative of an existing mark of another, with intent to deceive, the
decision in Slazenger holds that the Court must presume that the60 1905 RPC 273
61 (1886) 6 RPC 531
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 103 of 115
Signing Date:01.07.2025
13:29:56
attempt at deception, practiced by the defendant, succeeds.
26.2.8 Applying these principles, too, there is no escape, in our mind,
from the conclusion, that the Respondent 1’s mark FEMICONTIN is
in fact deceptively similar to the appellant’s mark FECONTIN-F and
that there is, in fact, every likelihood of confusion between the two.
26.2.9 The judgment of the Supreme Court in Cadila Pharmaceuticals
clearly holds that, in such cases, the mere fact that the products may
be Schedule H drugs, or may be differently priced, does not mitigate
the possibility or likelihood of confusion. We have to bear in mind the
fact that it is not a doctor alone who deals with pharmaceutical
preparations. Once the doctor prescribes a medicine, the patient
approaches the dispensing chemist to purchase the medicine. The
dispensing chemist is also required to dispense the correct drug.
Equally, the dispensing chemist dispenses the drug which the patient
seeks. The patient is also, therefore, required to be aware of the exact
drug which he wants. The likelihood of confusion, while dealing with
pharmaceutical products, therefore, arises not only at the end of the
prescribing doctor, but also at the end of the dispensing chemist and
the purchasing consumer. The possibility of such likelihood of
confusion at any stage is by itself sufficient, especially while dealing
with pharmaceutical preparations, to justify grant of an injunction.
26.2.10 Viewed from this angle, too, it cannot be said that there is
no likelihood of confusion between the marks FECONTIN-F and
FEMICONTIN. We are of the clear and considered opinion that the
mark FEMICONTIN is so close, phonetically, structurally and
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 104 of 115
Signing Date:01.07.2025
13:29:56
visually, to the mark FECONTIN-F, as to result in every likelihood of
one being confused for the other, within the meaning of Section
29(2)(b) of the Trade Marks Act.
26.2.11 No requirement of actual confusion
In this context, the learned Single Judge has also erred in his
observation that no proof of actual confusion has been produced by
the appellant. Section 29, which defines infringement, uses the
expression “likelihood of confusion”. In order to succeed in a claim
of infringement, and to be entitled an injunction on that basis, the
plaintiff is not required to prove actual confusion. All that has to be
proved is likelihood of confusion.
26.2.12 The issue of whether there is likelihood of confusion, too,
is an issue which has to be decided not on the basis of evidence, but
from the perspective of the Judge, as enunciated in Dr. Reddys
Laboratories v Smart Laboratories62, authored by one us (C. Hari
Shankar, J.) sitting singly:
“70. … There can obviously be no absolute guidelines on the
basis of which it can qualitatively, or quantitatively, be determined
whether two marks are phonetically similar. Ultimately, it is a call
which the Court has to take on its own perception of the rival
marks, keeping in mind the principle that deceptive similarity has
to be examined from the point of view of a consumer of average
intelligence and imperfect recollection.”
26.2.13 Once the Court finds, by a comparison of the marks that
there is likelihood of confusion, the necessity of establishing actual
confusion does not survive. We, therefore, are of the opinion that, in
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 105 of 115
Signing Date:01.07.2025
13:29:56
his observation that no proof of actual confusion had been led by the
appellant, the learned Single Judge has, with respect, erred in law.
26.2.14 At the very commencement of his discussion on issues 4
to 7, which dealt with the aspect of infringement and the appellant’s
entitlement to injunction, the learned Single Judge has clearly held
that the appellant had succeeded in establishing the reputation of the
product FECONTIN-F. Once this was found to have successfully
established, it is clear that, by adopting a mark FEMICONTIN, for a
product which had closely similar constituents, and was intended to
treat an identical physical condition, the respondents have sought to
capitalise on the reputation of the appellant’s FECONTIN-F product.
There is no other reason why the respondents adopted a mark which
was so starkly similar to the mark adopted by the appellant. As Mr.
Pravin Anand correctly submits, it is too much of a coincidence to
sustain judicial scrutiny.
26.3 For all the above reasons, we are of the opinion that the learned
Single Judge is not correct in his finding that the mark
FEMICONTIN, as used by the respondents, does not infringe the
existing FECONTIN-F mark of the appellant. We are of the view that
the FEMICONTIN mark of the respondents is clearly infringing of the
appellant’s FECONTIN mark and, inasmuch as the respondents are
not entitled to the benefit of Section 30(2)(a) or Section 35 of the
Trade Marks Act, the appellant would, by operation of Section 28(1),
read with Section 135 of the Trade Marks Act, be entitled to an
injunction against the use, by the respondents, of the mark
Signature Not Verified
62 2023 SCC OnLine Del 7276
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 106 of 115
Signing Date:01.07.2025
13:29:56
FEMICONTIN, for pharmaceutical products.
27. Re.Issue (iv) – Passing Off
27.1 On passing off, the learned Single Judge has merely held that,
as there is no “likelihood of confusion in the mind of an unwary
consumer with imperfect recollection”, by the respondents’ use of the
mark FEMICONTIN, no case of passing off was made out.
27.2 The finding is, with respect, fundamentally erroneous, in law as
well as on facts.
27.3 In the first place, if one were to apply the test of an unwary
consumer with imperfect recollection, there is every chance of
confusion between the marks FEMICONTIN and FECONTIN. To
expect that an average consumer, whose recollection is imperfect,
would recollect, on coming across the respondents’ mark
FEMICONTIN, that it is not the mark of the appellant FECONTIN
which he had earlier seen, and that there is an extra “MI” in the
former, is plainly unrealistic. Even if one were to place the products
side by side, there is every likelihood of confusion between
FEMICONTIN and FECONTIN.
27.4 Even if one were to apply the stricter test of confusion in the
mind of the prescribing doctor, or the dispensing chemist, there is still
every likelihood of confusion owing to the similarity of the marks,
combined with the fact that they are intended to treat similar physical
conditions and are available through the same trade outlets. In passing
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 107 of 115
Signing Date:01.07.2025
13:29:56
off, it has to be remembered that the Court is concerned, not so much
with the likelihood of confusion, but whether there is a chance, owing
to the similarity of marks, of one product being mistaken for the other.
The Slazenger principle, which requires the Court to presume that the
attempt at deception, or even creation of confusion, succeeds, would
equally apply when examining whether a case of passing off is made
out. Plainly, the respondents, in adopting the mark FEMICONTIN,
when the appellant’s FECONTIN-F, intended at treating similar
patients suffering from similar ailments, was already in the market,
have attempted to create confusion in the minds of the persons who
would be prescribing, dispensing, or even purchasing the product. By
adopting a practically identical mark, the respondnts, in our view,
have made every attempt at ensuring that, instead of prescribing,
dispensing or purchasing the appellant’s FECONTIN-F, the doctor,
chemist or consumer may end up prescribing, dispensing or
purchasing the respondent’s FEMICONTIN. This, therefore, is a
textbook case of passing off, in its truest and most classical sense.
27.5 Though, stricto sensu, the triple identity test may not directly
apply, as there is a minor difference between the two marks owing to
the intervening “MI” in the mark of the respondents, the test, to all
intent and purposes, would apply to the present case as well. As such,
the finding of the learned Single Judge that there was no likelihood of
confusion between the two marks, which is the only basis on which
the learned Single Judge has rejected the claim of passing off, cannot
sustain.
27.6 We have already held that the rival marks are nearly identical.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 108 of 115
Signing Date:01.07.2025
13:29:56
We have also held that the adoption of the FEMICONTIN mark, by
Respondent 1, cannot be treated as bona fide and is an apparent
attempt, by the respondent, to capitalise on the reputation of the
FECONTIN-F mark of the appellant, by creating confusion in the
mind of the persons who would be dealing with the product. This is,
therefore, a clear case of attempt, by the respondents, to pass off their
product as the product of the appellant, by adopting a nearly identical
mark. The finding of passing off is underscored by the similarity
between the two packs of FEMICONTIN and FECONTIN, which
augment the possibility of confusion between the two products.
27.7 We, therefore, are of the opinion that the appellant would be
entitled to relief even on the ground of passing off and cannot sustain
the finding to the contrary as returned by the learned Single Judge in
the impugned judgment.
28. Re. Issue (v) – Relief to which the appellant would be entitled
28.1 The sequitur to the above discussion is obvious. The appellant
would be entitled to injunctive reliefs against the respondents, both on
the ground of infringement as well as on the ground of passing off.
28.2 The finding of acquiescence
28.2.1 Mr. Gagan Gupta, however, also sought to plead acquiescence,
on which issue the learned Single Judge has held against the appellant
and in favour of the respondent. The delay in institution of CS (OS)
2176/2007, after CS (OS) 577/2005 was withdrawn by the appellants,
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 109 of 115
Signing Date:01.07.2025
13:29:56
has been held, in the impugned judgement, to amount to acquiescence.
28.2.2 The finding, in our considered opinion, cannot sustain on facts
or in law.
28.2.3 Acquiescence constitutes a statutory interdiction to injunction,
even where a case of infringement is made out. It is covered by
Section 33 of the Trade Marks Act and has, therefore, to be pleaded,
and established, within the four corners of that provision. Where the
principle that is sought to be invoked is statutorily defined, the Court
has to invoke the principle, if it intends to, within the four corners of
the definition.
28.2.4 Section 33(1)(b) of the Trade Marks Act disentitles the
proprietor of a registered trade mark from opposing the use of a later
registered trade mark by another, if he has acquiesced “for a
continuous period of five years” to the use of the latter trade mark.
28.2.5 Plainly, there are two statutory conditions, which are required
cumulatively to be satisfied for the principle of acquiescence to apply,
and neither is fulfilled here. Firstly, the later trade mark, i.e. the trade
mark which the plaintiff desires to see injuncted, must be a registered
trade mark. FEMICONTIN is not a registered trade mark. Secondly,
the plaintiff must have acquiesced to the use, by the defendant, of the
later trade mark, for a period of five years. No such acquiescence
exists in the present case.
28.2.6 Acquiescence is a positive act. It must involve active
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 110 of 115
Signing Date:01.07.2025
13:29:56
facilitation, whether by action or omission, of continued infringement
by the respondent. Mere inaction, even if it were found to exist, would
not amount to acquiescence. In the present case, immediately on
coming to know of the use, by the respondents, of the use of the
infringing FEMICONTIN mark, the appellant issued a cease and
desist notice to the respondents. On the respondents continuing to use
the mark, the appellant instituted not one but three suits in succession,
first moving the Ranga Reddy District Court, and, thereafter, moving
this Court twice. It cannot, therefore, be said that the appellant had set
back and acquiesced in the use, by the respondents, of the infringing
FEMICONTIN mark. The plea of acquiescence, as advanced by the
respondents is, therefore, bereft of merit.
28.3 While the passage from Midas Hygiene Industries, already
reproduced supra in para 24.2, clearly holds that, where infringement
is found to exist, injunction must follow, a similar legal formulation is
to be found in para 13 of the judgment of the Supreme Court in
Laxmikant V Patel v Chetanbhai Shah63 , where a case of passing off
is found to exist. In Laxmikant Patel, the Supreme Court has held
that where the Court is satisfied that a case of passing off exists, the
Court must immediately grant an injunction and appoint a local
commissioner to seize the infringing products.
28.4 We, of course, have crossed that stage, as this is an appeal
against the final judgment passed by a learned Single Judge. As such,
the appellant would be entitled to relief of injunction both on the
ground of infringement as well as on the ground of passing off.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 111 of 115
Signing Date:01.07.2025
13:29:56
29. Re. Issue (vi) – Extent of liability of the defendants
29.1 Section 29 of the Trade Marks Act makes “use” of the
deceptively similar trade mark infringing. Though Section 29(6)64
defines “use”, for the purposes of Section 29, that sub-section may not
apply as it defines use “of a registered trade mark”, and not use of a
mark which is confusingly or deceptively similar to a registered trade
mark. While interpreting the term “use” as employed for the alleged
infringer in Section 29(1) to (5), therefore, one has to seek recourse to
Section 2(2)(b)65 and (c) (of which the latter already stands
reproduced earlier in this judgement). Section 2(2)(b) clarifies that
any reference, in the Trade Marks Act, to the “use” of a mark is to be
construed as a reference to the use of the mark in printed or visual
form. In the present case, the respondent uses the FEMICONTIN
mark both in printed and visual form. Section 2(2)(c)(i) clarifies that
the reference to the “use” of a mark, in relation to goods, would be
construed as a reference to the use of the mark upon, or in any
physical or in any relation whatsoever, to the goods. Clearly, both the
respondents are using the FEMICONTIN mark in relation to the
pharmaceutical products manufactured and sold thereunder.
63
(2002) 3 SCC 65
64 (6) For the purposes of this section, a person uses a registered mark, if, in particular, he–
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the registered trade
mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
65 (2) In this Act, unless the context otherwise requires, any reference–
*****
(b) to the use of a mark shall be construed as a reference to the use of printed or other visual
representation of the mark;
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 112 of 115
Signing Date:01.07.2025
13:29:56
29.2 Respondent 2 is, therefore, as liable, for infringement and its
sequelae, as Respondent 1.
Conclusion
30. In view of the foregoing discussion, we sustain the finding of
the learned Single Judge insofar as it deals with the plea of injunction
against the use of CONTIN, as a suffix or a prefix or any other part of
a mark by any person for pharmaceutical products, but set aside the
finding of the learned Single Judge insofar as it rejects the plea for
injunction, predicated on the FECONTIN-F mark of the appellant.
31. Resultantly, the present appeal is disposed of in the following
terms:
(i) The FEMICONTIN mark of the respondents is held to
infringe the FECONTIN-F mark of the appellant and also
amount to passing off, by the respondents, of their product as
the product of the appellant. As such, the respondents, as well
as all others acting on their behalf would stand permanently
injuncted from using the mark FEMICONTIN, or any other
mark which is confusingly or deceptively similar to any of the
appellant’s registered trade marks, in respect of pharmaceutical
product in class 5 or for any other similar, allied or cognate
products. Though we are not calling upon the respondents to
withdraw, from the market, any batches of the products which
may have already been cleared by the respondents, the
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 113 of 115
Signing Date:01.07.2025
13:29:56
respondents are injuncted from clearing into the market any
further stock of FEMICONTIN, which may be available with
them. Any such stock if available, shall be destroyed by the
respondents, and details in that regard shall be furnished on
affidavit with the Registrar of this Court.
(ii) The prayer of the appellant for a restraint against the use
of CONTIN as a suffix, a prefix or any part of the mark by any
third party for pharmaceutical products of any other
preparations, is rejected. However, there shall be a restraint
against any third party using CONTIN per se as a mark for
pharmaceutical product or for any other allied, cognate or
similar products.
(iii) This shall not, however, preclude the appellant from
instituting infringement, or passing off, proceedings, against
any individual mark or marks, alleging infringement on the
ground that the mark or marks are deceptively similar to the
plaintiff’s registered trade mark, inter alia because of use of
CONTIN as a part thereof.
(iv) No separate submissions were advanced before us on the
aspect of damages. As such, we refrain from passing any order
in that regard.
(v) The cross-objection filed by Respondent 1, against the
decision of the learned Single Judge with respect to Issue 2, is
rejected.
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 114 of 115
Signing Date:01.07.2025
13:29:56
32. The impugned judgment of the learned Single Judge stands set
aside in part, and the present appeal stands allowed in part to the
aforesaid extent, with no order as to costs.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
JULY 1, 2025
dsn/ar
Click here to check corrigendum, if any
Signature Not Verified
Digitally Signed By:AJIT
KUMAR RFA(OS)(COMM) 8/2023 Page 115 of 115
Signing Date:01.07.2025
13:29:56