IP Case Law › Trade Marks › Opella Healthcare Group v. Pureca Laboratories Pvt Ltd (Trad…
Relevant Acts and provisions
Trade Marks Act, 1999
Section 134Section 135Section 29Section 47(1)(A)Section 57
Provisions considered: Sections 29, 47(1)(A), 57, 134 and 135 of the Trade Marks Act, 1999; Order XIII-A of the Commercial Courts Act, 2015 read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
Brief facts
The Plaintiff, a French corporation and member of the Sanofi Group, has used the mark PHENSEDYL for a cough syrup since 1954. The word mark is registered as No. 165059 dated 21.07.1954 in Class 5 and renewed up to 31.07.2030, with subsisting registrations of the Devanagari equivalent and a composite label mark in the same class. In India the product has been marketed by Rhone Poulenc India Ltd. as licensee since 1995 and from 2010 through Abbott Healthcare Pvt. Ltd. In March 2024 the Plaintiff discovered registration No. 3791026 for the mark PHENSERYL in Class 5 for an identical cough syrup in the name of the Director of the Defendant, claiming user from 01.12.2016 without supporting documents; the Plaintiff's own marks had been cited as conflicting during prosecution but the mark still proceeded to registration. The Plaintiff sued under Sections 134 and 135 of the Trade Marks Act, 1999 and obtained an ex parte ad interim injunction on 09.07.2024. A parallel rectification petition, C.O.(COMM.IPD-TM) 92/2024, under Sections 47(1)(A) and 57, was allowed on 12.11.2024 and the Defendant's registration was cancelled; the Defendant never appealed, later ceased to appear and was proceeded ex parte on 20.07.2026.
Issues before the Court
- After the order cancelling its registration in PHENSERYL had been accepted without challenge, did the Defendant have any real chance of defending the action for infringement?
- Did the competing trade marks PHENSERYL and PHENSEDYL, viewed together with their respective trade dress, appear deceptively similar in a way that would cause confusion among consumers and the trade?
- Did the Plaintiff's position as prior adopter and registered owner since 1954 entitle it to a decree of permanent injunction without oral evidence, in light of the Defendant's unparticularised claim of use from 2016?
Court's findings
The Court held that the conclusions in the 12.11.2024 rectification order effectively settled the issue of deceptive similarity: the Plaintiff had used the mark continuously since 1995, there was no evidence the Defendant had used it since 2016, and the two marks were visually and phonetically similar, the dark blue background with white lettering being the most prominent feature of both labels. The Defendant had apparently intentionally made its packaging as similar as possible so as to create an impression of trade association. Relying on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Court applied the stricter standard for medicinal products, noting that confusion between drugs may be life threatening and not merely inconvenient. Applying that higher standard, together with identical goods, shared distribution channels and close visual similarity, there was no possibility of the Defendant succeeding at trial. On procedure, relying on Su-Kam Power Systems Ltd. v. Kunwer Sachdev, the Court held that Order XIII-A requires only a realistic defence to be tried, and taking evidence ex parte would be an exercise in futility.
Decision
The Delhi High Court allowed I.A. 4622/2025 and passed summary judgment for the Plaintiff, granting a permanent injunction restraining the Defendant, its directors and all persons acting on its behalf from dealing in products under the mark PHENSERYL or any mark deceptively similar to PHENSEDYL. The Plaintiff abandoned the monetary reliefs claimed.
Key legal principle / ratio
Where a coordinate bench, following an unchallenged rectification order, has found the mark in question deceptively similar to the plaintiff's registered mark, the defendant has no real prospect of successfully defending the infringement claim and the suit is fit for summary judgment. The standard for determining confusion in the case of pharmaceutical marks must be more rigorous than that applied to ordinary goods, since confusing one medicine with another involves risks that go well beyond consumer inconvenience.
Cases cited
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73
- Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764
Authorities referred to in the decision. Please verify each citation in the judgment itself.
Keywords
Deceptive Similarity Passing Off Pharmaceutical Marks Prior Use Summary Judgment Trademark Rectification
Read the judgment
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