Sanofi Aventis vs Intas Pharmaceuticals Ltd. & Anr on 28 April, 2026

Delhi High Court

Sanofi Aventis vs Intas Pharmaceuticals Ltd. & Anr on 28 April, 2026

1. The present suit has been filed seeking relief of permanent injunction
restraining the defendants from infringing the trade marks of the plaintiff and
from passing off of their goods as those of the plaintiff along with other
ancillary reliefs.

SPONSORED

CASE SETUP BY THE PLAINTIFF

2. Brief facts relevant for adjudicating the present suit are as follows:

2.1. The plaintiff, a company registered under the laws of France, is
engaged in research, development, manufacturing and marketing of inter alia
medicinal and pharmaceutical preparations.

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2.2. The plaintiff is one of the world’s leading pharmaceutical companies
and has over the years manufactured and sold a number of pharmaceutical
products under several trade marks across the world including India.
2.3. One of the most renowned drugs of the plaintiff is its anti-thrombosis
drug, namely PLAVIX which helps prevent heart attacks and strokes.
2.4. The trade mark PLAVIX was coined in the year 1995.
2.5. The plaintiff filed an application bearing no.806651 for registration of

the device mark in class 5 on 17th June 1998, which was
granted on 25th August 2005. The plaintiff also filed an application bearing
no.652794 for registration of the word mark PLAVIX in class 5 on 20 th
January 1995, which was pending at the time of filing of the present suit.

However, subsequently, the word mark PLAVIX got registered on 13th August
2013.

2.6. The plaintiff’s drug under the mark PLAVIX was launched globally in
the year 1998 and in the Indian market in January 2003.
2.7. The plaintiff’s goodwill and reputation under the mark PLAVIX is
evident from its net global sales. The plaintiff’s global sales figures (in million
Euros) under the mark PLAVIX since the year 2003 are set out below:

2.8. The plaintiff has also extensively advertised and promoted its drug
under the mark PLAVIX through internet articles, medical journals and other

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literature across the world including India. The plaintiff’s drug under the mark
PLAVIX is also recognized by medical practitioners as synonymous with
heart-care treatment. The aforesaid has resulted into greater recognition of the
mark PLAVIX and its association with the plaintiff. The plaintiff’s
advertisement expenses since the year 2004 are set out below:

2.9. A search for the term ‘PLAVIX’ on Google search engine results in
links pertaining to the plaintiff’s drug. Further, Wikipedia page for
Clopidogrel also associates it with the plaintiff’s drug PLAVIX. The plaintiff
has therefore acquired immense and valuable common law rights over the
mark PLAVIX.

2.10. The defendant no.1, a company based in Ahmedabad, is engaged in the
business of manufacturing and selling pharmaceutical products. The
defendant no.2 is engaged in the marketing of products of the defendant no.1
including those under the mark CLAVIX (hereinafter ‘impugned mark’/
‘CLAVIX’). Both the defendants shall hereinafter be collectively referred to
as the ‘defendant’, unless otherwise provided.
2.11. The plaintiff first became aware of the defendant’s use of the impugned
mark in relation to identical medicinal preparations in or around mid-2005
through its marketing representative.

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2.12. In 2008, the plaintiff learnt that the defendant no.1 had filed an
application bearing no.1634650 for registration of the impugned mark in class
5 on 26th December 2007. The said application was opposed by the plaintiff
on 10th July 2009.

3. Accordingly, the present suit was filed seeking the following reliefs:

aa) An order for permanent injunction restraining the defendants, their
proprietor or partners as the case may be, their principal officers, servants
and agents, dealers, distributors and all other representatives, from
manufacturing, selling, offering for sale medicinal preparations and other
allied or cognate goods under the mark CLAVIX or any other mark that is
identical with or deceptively similar to the plaintiff’s label/ trade mark
registered under no. 806651 in class 5 amounting to infringement thereof.

a) An order for permanent injunction restraining the defendants, their
proprietor or partners as the case may be, their principal officers, servants
and agents, dealers, distributors and all other representatives, from
passing off their medicinal preparations as those of the plaintiff by the use
of the trade mark CLAVIX or any other that is identical or deceptively
similar to the plaintiff’s trade mark PLAVIX or doing any other thing
amounting to a misrepresentation of the defendants’ goods as those of the
plaintiff;

b) An order for delivery up by the defendants of all the goods, labels,
dies, blocks, negatives, packaging material, cartons, printed matter,
unfinished products and any other material bearing the impugned mark
CLAVIX to the authorized representative of the plaintiff for the purpose of
destruction/ erasure;

c) An order for damages of INR 1,00,00,000 to be paid by the
defendants on account of use of the impugned trade mark and name
CLAVIX and also for loss of reputation;

d) An order of rendition of account of profit illegally earned by the
defendants on account of use of the impugned trade mark and grant of a
decree in favour of the plaintiff for an amount so ascertained;

e) An order for costs of the proceedings
CASE SETUP IN THE WRITTEN STATEMENT

4. The defendants filed a written statement raising preliminary issues as
well as defences on merits, which are as follows:

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4.1. The defendant derived the impugned mark CLAVIX from Clopidogrel,
being the active ingredient, and its therapeutic indication viz Atherosclerotic
Vascular Incidences. The last letter X in the impugned mark indicates
reduction in the reoccurrence of acute events.

4.2. The defendant coined and adopted the impugned mark in the year 2001
and has been using the same since then.

4.3. The defendant obtained necessary approvals from the relevant
authorities for manufacturing of CLAVIX tablets on 27th June 2001 and 12th
July 2001.

4.4. The defendant no.1 applied for registration of the impugned mark in
class 5 vide application no.1634650 dated 26th December 2007 and the same
is pending.

4.5. Since the adoption and first use of the impugned mark in 2001, the
defendant has built up an enviable reputation thereunder. The defendant’s
sales figures under the impugned mark since the financial year 2001-02 are
set out below:

4.6. The defendant has spent a huge amount of money for promoting the
sale of its drug under the impugned mark such as through publicity media

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covering specialty doctors, hospitals, chemists, symposiums, CME programs,
medical journals, etc. The defendant’s marketing expenditure figures towards
the impugned drug since the financial year 2001-02 are set out below:

4.7. The defendant’s drug under the impugned mark has acquired
distinctiveness and enjoys great reputation and goodwill among the medical
professionals and other members of trade and public across India.

5. In its replication, the plaintiff has reaffirmed its assertions made in the
plaint. Additionally, the plaintiff has provided its global sales figures (in
million Euros) since the year 1998, which are reproduced below:

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PROCEEDINGS IN THE SUIT

6. Summons in the suit were issued on 12th December 2008.

7. The defendants entered appearance on 11th February 2009.

8. The suit was initially filed only as an action for passing off. The
plaintiff filed an application, being I.A. 8876/2009, seeking amendment of
plaint in order to make averments in relation to infringement of its registered
trade mark and seek a decree of permanent injunction on the basis of
infringement. The said application was allowed on 4th September 2009 and
the plaint was amended qua inclusion of averments in relation to infringement

of the mark .

9. On 17th March 2010, the following issues were framed in the present
suit:

1. Whether the plaintiff is the registered proprietor/ owner of the mark
PLAVIX, as claimed? OPP

2. Whether the defendant’s use of the mark CLAVIX constitutes
infringement and/ or passing off of the plaintiff’s mark/ label PLAVIX?
OPP

3. Whether the defendant’s mark CLAVIX is deceptively similar to the
plaintiff’s mark PLAVIX? OPP

4. Whether the defendant’s trade mark CLAVIX does not infringe the
plaintiff’s registered mark PLAVIX, as a result of Section 17 of the Trade
Marks Act, 1999? OPD

5. Whether the defendant is the prior and/ or bona fide user of the
mark CLAVIX for medicinal products in India? OPD

6. Whether there is any delay in filing the present suit?

7. Relief.

10. The plaintiff filed an application, being I.A. 12027/2011, seeking to
place additional documents on record. On 1st August 2011, the Court allowed
the said application and permitted the additional documents filed on behalf of

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the plaintiff along with the affidavits of its witnesses to be taken on record,
reserving the right of the defendant to object to the said additional documents.

11. The plaintiff changed its name from Sanofi Aventis to Sanofi and filed
an application, being I.A. 184/2012, to bring the aforesaid change of name on
record. The Court allowed the aforesaid application vide order dated 6th
January 2012.

12. The plaintiff filed an application, being I.A. 185/2012, for appointment
of a local commissioner to record evidence in the suit. The said application
was allowed on 28th March 2012 and the Court appointed Mr. Raman Kapur,
senior advocate as the local commissioner for recording of evidence of the
parties.

13. The plaintiff filed I.A. 6930/2013 for amending the list of witnesses
and I.A. 6931/2013 seeking leave to place additional documents on record.

On 4th January 2014, the Joint Registrar dismissed I.A. 6931/2013. Vide the
same order, the plaintiff was permitted to lead evidence of its additional
witness Mr. Subarto Panda.

14. The plaintiff filed a chamber appeal against the aforesaid order passed
by the Joint Registrar. Vide order dated 19th March 2014, the chamber appeal
was allowed subject to costs. Accordingly, the documents mentioned at serial
numbers 1 to 7, 10 and 11 of Annexure A to I.A. 6931/2013 were permitted to
be taken on record and the plaintiff was also permitted to examine its
additional witness Ms. Kalpana Jaswal. However, the documents mentioned
at serial numbers 8 and 9 of Annexure A to I.A. 6931/2013 were not pressed
by the plaintiff in the chamber appeal.

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15. On 14th July 2015, the Court allowed the defendant’s application, being
I.A. 11737/2015, seeking leave to place additional documents on record
subject to costs.

16. The plaintiff filed an application, being I.A. 25880/2015, seeking
amendment of plaint, i.e., paragraph 18 (regarding alleged loss suffered by
the plaintiff from several lakhs to crores), paragraph 21 (valuation clause from
Rs. 20,01,800/- to Rs. 2,00,01,300/-) and paragraph 22 (prayer clause
claiming damages of Rs. 1 crore). On 5th January 2016, the said application
was allowed. On the same date, the Registry was directed to re-register the
suit and assign it a fresh number as the present suit involves a commercial
dispute.

17. The following witnesses appeared on behalf of the plaintiff:

                                (i)       Mr. Tarun Bhatnagar (PW-1)
                                (ii)      Ms. Kalpana Jaswal (PW-2)
                                (iii)     Mr. Subroto Panda (PW-3)
                                (iv)      Mr. Rajesh Oberoi (PW-4)

18. On behalf of the defendant, Mr. Chandrashekhar Yagnik appeared as
the sole witness.

19. As per the report of the local commissioner, the recording of evidence
of the parties was closed on 23rd April 2018.

20. I have heard submissions on behalf of the parties on 10th January 2025,
15th January 2025, 18th February 2025, 20th March 2025, 15th May 2025, 18th
July 2025, 1st August 2025, 31st October 2025, 5th December 2025, 16th
February 2026 and 19th March 2026, when the judgment was reserved.

21. My issue-wise findings are as under:

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Issue no.1 – Whether the plaintiff is the registered proprietor/ owner of the
mark PLAVIX, as claimed? OPP

22. At the outset, the defendant has raised an objection that the plaintiff is
not the registered proprietor/ owner of the mark PLAVIX as the plaintiff in
the present suit is Sanofi Aventis whereas the application for registration of
the mark PLAVIX has been filed in the name of Sanofi. It is thus submitted
that the plaintiff has failed to show the flow/ transfer of rights over the mark
PLAVIX in its favour.

23. It is submitted on behalf of the plaintiff that an entity Sanofi Synthelabo
had acquired the pharmaceutical and lab testing company Aventis and
changed its name to Sanofi Aventis in August 2004. Later on, in May 2011,
the plaintiff’s name was changed to Sanofi.

Analysis

24. It is an undisputed position that the word mark PLAVIX is registered in

the name of Sanofi and the device mark is registered in
the name of Sanofi Synthelabo. The plaintiff has placed on record the legal
proceeding certificates in respect of the registrations obtained for the
aforesaid trade marks. The details of the aforesaid legal proceeding
certificates are as follows:

a. Trade mark application for the word mark PLAVIX bearing no.652794
filed on 20th January 1995 in class 5, registered in the name of Sanofi
on 13th August 2013 [Exhibit PW-4/3 and Exhibit PW-4/4].

b. Trade mark application for the device mark bearing
no.806651 filed on 17th June 1998 in class 5, registered in the name of

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Sanofi Synthelabo on 25th August 2005 [Exhibit PW-1/9, Exhibit PW-
4/1 and Exhibit PW-4/2].

25. Mr. Tarun Bhatnagar, PW-1 has deposed in his evidence that the

application for the device mark was initially filed in the
name of Sanofi Synthelabo, the plaintiff’s predecessor. Subsequent to change
of name of the plaintiff from Sanofi Aventis to Sanofi, it has taken necessary
steps to record the change of name before the Registrar of Trade Marks by
filing the form TM-33, which has been marked as Mark K.

26. As noted above, issues were framed in the present suit on 17th March
2010. The objection taken on behalf of the defendant that the plaintiff in the
present case is Sanofi Aventis whereas the mark PLAVIX has been applied for
registration by Sanofi, no longer survives in view of the amendment of plaint
carried out in terms of the order dated 6th January 2012 wherein it was noted
that the name of the original plaintiff Sanofi Aventis has been changed to
Sanofi. A copy of the commercial register evidencing the change of name of
the plaintiff on 6th May 2011 has also been filed [Exhibit PW-1/23].

27. In view of the above, the issue no.1 is decided in favour of the plaintiff.

Issue no.2 – Whether the defendant’s use of the mark CLAVIX constitutes
infringement and/ or passing off of the plaintiff’s mark/ label PLAVIX? OPP
Issue no.3 – Whether the defendant’s mark CLAVIX is deceptively similar to
the plaintiff’s mark PLAVIX? OPP
Issue no.4 – Whether the defendant’s trade mark CLAVIX does not infringe
the plaintiff’s registered mark PLAVIX, as a result of Section 17 of the Trade
Marks Act, 1999? OPD

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Issue no.5 – Whether the defendant is the prior and/ or bona fide user of the
mark CLAVIX for medicinal products in India? OPD

28. Since all the aforesaid issues are connected, I shall take them up for
adjudication together.

29. Issue no.2 is premised on infringement as well as passing off. First, I
shall take up the aspect of infringement.

Submissions of the plaintiff – Infringement

30. Insofar as infringement is concerned, the plaintiff has made the
following submissions:

30.1. The plaintiff is the registered proprietor of the word mark PLAVIX with

effect from 20th January 1995 and the device mark with
effect from 17th June 1998 in class 5. On the other hand, the defendant’s
impugned mark CLAVIX has not been registered till date.
30.2. The defendant’s alleged use of the impugned mark since 2001 is
subsequent to the date of registration of the plaintiff’s marks PLAVIX and

. Thus, the defendant is not entitled to a defence under
Section 34 of the Trade Marks Act, 1999 (hereinafter ‘Act’).
30.3. The impugned mark is visually, structurally and phonetically similar to
the plaintiff’s marks. The defendant has merely substituted the letter ‘P’ in the
plaintiff’s mark with the letter ‘C’ to form the impugned mark.
30.4. The word PLAVIX is the essential element of the mark

. Therefore, Section 17 of the Act is not attracted in the
present case.

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30.5. The competing marks are used for identical pharmaceutical preparation
with the active ingredient Clopidogrel bisulphate and are used in relation to
an anti-thrombosis drug.

30.6. As the competing marks are deceptively similar, and the competing
products are identical and are sold side-by-side in pharmacies, likelihood of
confusion is inevitable and a case for infringement is made out under Section
29 of the Act.

30.7. Even if the competing products are categorized under Schedule H of
the Drugs and Cosmetics Rules, 1945, the plaintiff’s claim for infringement
is not diluted as likelihood of confusion still subsists on account of factors
such as negligence or mistake in reading the prescription, etc.
30.8. It is well settled that courts must be stricter in assessing likelihood of
confusion in infringement/ passing off disputes involving medicinal products
especially in a country like India where the ordinary consumer may be
illiterate or semi-literate and the potential for harm is much higher. Further,
the competing products are of an emergency/ life-saving nature and thus extra
caution ought to be exercised. Reliance is placed on Cadila Health Care v.

Cadila Pharmaceuticals1.

Submissions of the plaintiff – Dishonest Adoption
30.9. The reasoning given by the defendant to adopt the impugned mark is
dishonest and merely an afterthought. The term Atherosclerotic Vascular
Incidences does not exist in medical literature. The correct term for the disease
is Atherosclerotic Cardiovascular Disease (ASCVD). Further, the letter X

1
2001 SCC OnLine SC 578

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denotes an increase/ multiplication of activities, and not a reduction as
asserted by the defendant.

30.10. The defendant was already using the marks PREVA and PRASUGEL
for the impugned drug and had no bona fide reason to adopt a deceptively
similar impugned mark. The reason for adoption of the impugned mark is only
to boost sales by causing confusion in the market and association with the
plaintiff’s drug.

30.11. The defendant failed to show proof of having carried out any market
survey or search on the database of the Trade Marks Registry before adopting
the impugned mark. Reliance in this regard is placed on the judgments in FMI
v. Midas Touch Metalloys2, Adidas AG v. Keshav H. Tulsiani3 and Himalaya
Wellness Company v. Wipro Enterprises4.

Submissions of the defendant – Infringement

31. With respect to the issue of infringement, the defendant has made the
following submissions:

31.1. The defendant’s use of the impugned mark since 2001 is not disputed
by the plaintiff. Being the user of the impugned mark since 2001 as opposed
to the plaintiff’s alleged use of the mark PLAVIX in India since 2003, the
defendant is the prior user of the impugned mark.

31.2. The plaintiff has failed to place any documentary evidence on record to
show use of the mark PLAVIX in India until the year 2006. Since the plaintiff
has failed to use the mark PLAVIX in India till 2006, the defendant is entitled
to the defence under Section 34 of the Act. Reliance is placed on the

2
2025 SCC OnLine Del 4
3
2024 SCC OnLine Del 4940
4
2023 SCC OnLine Del 4035

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judgement of the Supreme Court in Neon Laboratories v. Medical
Technologies5.

31.3. First letter of any mark is the most significant, which, in the present
case, is phonetically and visually different in both the competing marks. Thus,
the competing marks are significantly dissimilar.
31.4. The plaintiff obtained registration for the mark PLAVIX despite
opposition by a third-party which owned the mark FLAVIX. Thus, the
competing marks in the present case, having different first letters, cannot be
contended to be similar.

31.5. A single bench of the High Court of Punjab and Haryana has also held
that the marks FLAVIX and CLAVIX are phonetically, structurally and
visually different. Thus, the competing marks in the present suit ought to be
held different in order to maintain judicial consistency.
31.6. In any event, the amended plaint filed by the plaintiff asserts

infringement of the mark . Thus, the plaintiff cannot assert
any right over the word mark PLAVIX in terms of Section 17 of the Act.
31.7. The competing products are completely distinct in their overall getup,
look and appearance. The packaging, colour scheme, price, etc. of the
competing products are different in the present case, which factors are
sufficient to rule out any likelihood of confusion between the competing
marks.

31.8. The plaintiff has failed to provide any proof of likelihood of confusion
or actual confusion also on account of the fact that both the competing
products are Schedule H medicines, which requires a medical prescription for

5
2015 SCC OnLine SC 905

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its dispensation. This precludes any likelihood of confusion or deception in
the minds of the purchasing public or members of the trade.
Submissions of the defendant – Dishonest Adoption
31.9. The defendant bona fidely adopted the impugned mark CLAVIX, i.e.,
the letters Cl from Clopidogrel being the active ingredient and the letters AVI
from its therapeutic indication viz Atherosclerotic Vascular Incidences. The
letter X indicates variables and such use of the letter X is common in medicinal
and non-medicinal products.

Analysis – Infringement

32. The plaintiff is the registered proprietor of the word mark PLAVIX and

the device mark in class 5. The registration of the device

mark was granted in favour of the plaintiff on 25th August
2005 with effect from 17th June 1998 [Exhibit PW-1/9, Exhibit PW-4/1 and
Exhibit PW-4/2] and of the word mark PLAVIX was granted in favour of the
plaintiff on 13th August 2013 with effect from 20th January 1995 [Exhibit PW-
4/3 and Exhibit PW-4/4].

33. The defendant applied for registration of the impugned mark CLAVIX
in class 5 on 26th December 2007 with the user claim since 12th July 2001
[Exhibit DW-1/4]. However, it is an admitted position that the registration is
yet to be granted in favour of the defendant on account of opposition filed by
the plaintiff.

34. As per Section 29(1) of the Act, a registered trade mark is infringed by
a person who, not being a registered proprietor, uses, in the course of trade, a
mark identical with or deceptively similar to the mark in relation to goods or

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services in respect of which it is registered. In terms of Section 29(2)(b) of the
Act, infringement would occur when a person, who is not a registered
proprietor, uses, during the course of trade, a similar mark in relation to
similar or identical goods in respect of which the trade mark is registered and
such use is likely to cause confusion.

35. The Supreme Court, in Kaviraj Pandit Durga Dutt Sharma v.

Navaratna Pharmaceutical Laboratories6, highlighted the distinction
between the ingredients for an action for passing off and an action for
infringement of trade marks in light of Section 21 of the Trade Marks Act,
1940, which is pari materia with Section 29 of the Trade Marks Act, 1999.
The relevant observations of the Supreme Court in Kaviraj Pandit (supra) are
set out below:

“28. …While an action for passing off is a Common Law remedy being in
substance an action for deceit, that is, a passing off by a person of his own
goods as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered, trade mark for the vindication of
“the exclusive right to the use of the trade mark in relation to those
goods” (Vide S. 21 of the Act). The use by the defendant of the trade mark
of the plaintiff is not essential in an action for passing off, but is the sine
qua non in the case of an action for infringement. No doubt, where the
evidence in respect of passing off consists merely of the colourable use
of a registered trade mark, the essential features of both the actions
might coincide in the sense that what would be a colourable imitation of
a trade mark in a passing off action would also be such in an action for
infringement of the same trade mark. But there the correspondence
between the two ceases. In an action for infringement, the plaintiff must,
no doubt, make out that the use of the defendant’s mark is likely to
deceive, but where the similarity between the plaintiff’s and the
defendant’s mark is so close either visually, phonetically or otherwise
and the court reaches the conclusion that there is imitation, no further
evidence is required to establish that the plaintiff’s rights are violated.
Expressed in another way, if the essential features of the trade mark of
the plaintiff have been adopted by the defendant, the fact that the get-up,

6
1964 SCC OnLine SC 14

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packing and other writing or marks on the goods or on the packets in
which he offers his goods for sale show marked differences, or indicate
clearly a trade origin different from that of the registered proprietor of
the mark would be immaterial; whereas in the case of passing off, the
defendant may escape liability if he can show that the added matter is
sufficient to distinguish his goods from those of the plaintiff.

29. When once the use by the defendant of the mark which is claimed to
infringe the plaintiff’s mark is shown to be “in the course of trade”, the
question whether there has been an infringement is to be decided by
comparison of the two marks. Where the two marks are identical no
further questions arise; for then the infringement is made out. When the
two marks are not identical, the plaintiff would have to establish that the
mark used by the defendant so nearly resembles the plaintiff’s registered
trade mark as is likely to deceive or cause confusion and in relation to
goods in respect of which it is registered (Vide S. 21). A point has
sometimes been raised as to whether the words “or cause confusion”

introduce any element which is not already covered by the words “likely to
deceive” and it has sometimes been answered by saying that it is merely
an extension of the earlier test and does not add very materially to the
concept indicated by the earlier words “likely to deceive”. But this apart,
as the question arises in an action for infringement the onus would be
on the plaintiff to establish that the trade mark used by the defendant in
the course of trade in the goods in respect of which his mark is registered,
is deceptively similar. This has necessarily to be ascertained by a
comparison of the two marks the degree of resemblance which is
necessary to exist to cause deception not being capable of definition by
laying down objective standards. The persons who would be deceived are,
of course, the purchasers of the goods and it is the likelihood of their being
deceived that is the subject of consideration. The resemblance may be
phonetic, visual or in the basic idea represented by the plaintiff’s mark.

The purpose of the comparison is for determining whether the essential
features of the plaintiff’s trade mark are to be found in that used by the
defendant. The identification of the essential features of the mark is in
essence a question of fact and depends on the judgment of the Court
based on the evidence led before it as regards the usage of the trade. It
should, however, be borne in mind that the object of the enquiry in
ultimate analysis is whether the mark used by the defendant as a whole
is deceptively similar to that of the registered mark of the plaintiff.”

[emphasis supplied]

36. The legal position that emerges from the aforesaid judgement can be
summarized as under:

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(a) Infringement is a statutory remedy available to a registered proprietor
of a trade mark whereas passing off is a common law remedy.

(b) In an action for infringement, where the similarity between the
competing marks is evident and the Court reaches the conclusion that
there is imitation, no further evidence is required to establish that the
plaintiff’s rights are violated.

(c) When the competing marks are not identical, the plaintiff is required to
establish that the impugned mark is deceptively similar to the plaintiff’s
registered trade mark and the same is likely to deceive or cause
confusion.

37. The aforesaid judgment has been consistently followed by courts across
India including the Supreme Court and this Court [please see Ramdev Food
Products v. Arvindbhai Rambhai Patel7, Renaissance Hotel Holdings v. B.
Vijaya Sai8 and Zydus Wellness Products v. Cipla Health9].

38. At this stage, it may be apposite to compare the registered trade marks
of the plaintiff with the impugned mark of the defendant.

                                       Plaintiff's Marks                Defendant's Impugned Mark
                                            PLAVIX
                                                                                   CLAVIX

39. The plaintiff’s mark PLAVIX is a coined term and thus inherently
distinctive. It does not bear any reference to the active ingredient the drug is
derived from or the ailment it is prescribed for. Hence, the plaintiff’s mark
qualifies for the highest level of protection.

(2006) 8 SCC 726
8
(2022) 5 SCC 1
9
2023 SCC OnLine Del 3785

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40. From the aforesaid comparison, it is apparent that the impugned mark
used by the defendant is phonetically and structurally similar to that of the
plaintiff. The only difference is that the defendant has replaced the letter ‘P’
with the letter ‘C’ in the impugned mark.

41. It is a settled position of law that similarity between the competing
marks is to be ascertained by comparing the marks as a whole and similarity
is to be approached from the point of view of a man of average intelligence
and imperfect recollection. A reference in this regard may be made to Corn
Products Refining v. Shangrila Food Products10, wherein the competing
marks were GLUCOVITA and GLUVITA. The Supreme Court found the
competing marks to be similar. The relevant extracts from Corn Products
(supra) are set out below:

“18. …It is well recognized that in deciding a question of similarity
between two marks, the marks have to be considered as a whole. So
considered, we are inclined to agree with Desai, J., that the marks with
which this case is concerned are similar. Apart from the syllable ‘co’ in
the appellant’s mark, the two marks are identical. That syllable is not in
our opinion such as would enable the buyers in our country to
distinguish the one mark from the other.

19. We also agree with Desai, J., that the idea of the two marks is the same.
The marks convey the ideas of glucose and life giving properties of
vitamins. The Aquamatic Case (Harry Reynolds v. Laffeaty’s Ld.) [1958
RPC 387] is a recent case where the test of the commonness of the idea
between two marks was applied in deciding the question of similarity
between the two marks we have to approach it from the point of view of
a man of average intelligence and of imperfect recollection. To such a
man the overall structural and phonetic similarity and the similarity of
the idea in the two marks is reasonably likely to cause a confusion
between them.”

[emphasis supplied]

42. In Cadila (supra), it has been held that in respect of pharmaceutical

10
1959 SCC OnLine SC 11

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products, the Court should adopt a strict approach while determining
possibility of confusion as any confusion could result in detrimental effect on
the health of members of the public. It was also held that merely the fact that
a drug is prescription based does not rule out likelihood of confusion. The
relevant extracts from Cadila (supra) are set out below:

“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.

*** *** ***

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…

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 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

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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.”

[emphasis supplied]

43. In the present case, the products of the plaintiff and the defendant are
medicinal products having an identical active ingredient and are used for
treatment of the same disease. Viewed in this light, the likelihood of confusion
on the part of the public, who could be patients, would be very high as the
only difference between the competing marks is of a single letter.

44. Senior counsel appearing on behalf of the defendant seeks to
distinguish Cadila (supra) on the ground that in the said judgment, the
competing drugs had different uses.

45. Undoubtedly, Cadila (supra) was in the context of two medicinal
products having different uses, however, the observations in Cadila (supra)
would be equally applicable if the two competing medicinal products have the
same salt and are used for treatment of the same disease. In fact, the likelihood
of confusion with respect to source and origin of the impugned product would

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be higher when the two competing drugs have the same salt and are used for
treatment of the same disease.

46. On behalf of the defendant, it is submitted that as the first letter of the
competing marks are different, there exists significant dissimilarity between
the competing marks. Reliance in this regard is placed on the following
judgments:

                                (i)       F. Hoffman-La Roche v. Geoffrey Manners11
                                (ii)      Abbott GmbH v. Registrar of Trade Marks12
                                (iii)     Cadila Laboratories v. Dabur13
                                (iv)      Glaxo India Ltd. v. Eudora Laboratories Pvt. Ltd.14
                                (v)       Johann A. Wulfing v. Chemical Industrial & Pharmaceutical
                                          Laboratories Ltd.15
                                (vi)      Mount Mettur Pharmaceuticals Ltd. v. Ortha Pharmaceuticals
                                          Corporation16

47. I have given my thoughtful attention to the aforesaid judgments relied
upon on behalf of the defendant. In my view, all the aforesaid judgments are
distinguishable as explained below:

(i) F. Hoffman (supra) – The competing marks were PROTOVIT and
DROPOVIT. The common element ‘VIT’ between the competing
marks was derived from the word ‘vitamin’ and was common to
trade.

(ii) Abbott (supra) – The competing marks were BRUFEN and

11
(1969) 2 SCC 716
12
2024 SCC OnLine Del 7306
13
(1997) SCC Online Del 360
14
1997 SCC OnLine Del 804
15
1983 SCC OnLine Bom 285
16
1974 SCC OnLine Mad 64

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MEBUFEN. The common element ‘FEN’ between the competing
marks was taken from the INN name ‘ibuprofen’ and there was
sufficient difference between ‘BRU’ and ‘MEBU’ to distinguish the
competing marks as a whole.

(iii) Dabur (supra) – The competing marks were MEXATE and
ZEXATE. The common suffix ‘exate’ was derived from the
common active pharmaceutical ingredient, namely, methotrexate
sodium.

(iv) Glaxo India (supra) – The competing marks were ZUPAR and
BUPAR. The Court only took a prima facie view to arrive at its
conclusion and final determination with respect to similarity could
only be done after trial.

(v) Johann A. Wulfing (supra) – The competing marks were
COMPLAMINA and CIPLAMINA. The initial syllables of the
competing marks, being ‘COM’ and ‘CIP’, were held to be
phonetically different.

(vi) Mount Mettur (supra) – The competing marks were
ORTHOGYNOL and UTOGYNOL. The common term ‘GYNO’
was derived from ‘gynaeco’, which term was suggestive of the use
of the product. Further, it was held that the suffix ‘OL’ was common
to trade.

48. The defendant has placed reliance on the judgment of the High Court
of Punjab and Haryana in M/s. Wockhardt Ltd. v. M/s. Intas Pharmaceuticals
Ltd. and others17 in support of its contention that the marks PLAVIX and

17
Judgment dated 4th December 2002 in Civil Revision No. 2773/2002

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CLAVIX are phonetically, structurally and visually different.

49. In the aforesaid case, Wockhardt, which was the registered proprietor
of the trade mark FLAVIX, had filed a suit for infringement and passing off
against Intas Pharmaceuticals, the defendant herein, for using the mark
CLAVIX. The District Judge, Ambala did not grant an ad-interim injunction
in favour of the plaintiff. Accordingly, the plaintiff filed a revision petition
before the High Court of Punjab and Haryana.

50. The High Court of Punjab and Haryana upheld the order of the District
Judge not granting an ad-interim injunction in favour of the plaintiff. Taking
into account that both the products were meant for different purposes as also
the difference in colour scheme and packaging, it was held that there is no
visual, structural or phonetic similarity between the marks FLAVIX and
CLAVIX.

51. The aforesaid judgment does not advance the case of the defendant
herein, as the aforesaid judgment was at the stage of an ad-interim injunction
and it was clearly noted that the two products FLAVIX and CLAVIX were
meant for different purposes, i.e., FLAVIX was an anti-depressant drug and
CLAVIX an anti-thrombosis drug. Hence, it was held that there is no
likelihood of deception or confusion. Pertinently, the aforesaid observations
were made in the context of passing off alone.

52. On behalf of the defendant, it is submitted that the competing marks in
the present case are not identical. Therefore, the test for passing off has to be
applied to determine similarity between the marks. As per the aforesaid test,
the added materials in the impugned mark with respect to overall getup, look
and appearance would eliminate the possibility of any confusion among the
members of trade and public. In this regard, reliance is placed on the judgment

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of the Supreme Court in Kaviraj Pandit (supra).

53. In my considered view, the defendant’s reliance on Kaviraj Pandit
(supra) is misplaced. Kaviraj Pandit (supra) clearly states that the test would
be the same in actions for passing off and infringement only for determining
what would amount to a colourable imitation of the plaintiff’s trade mark. The
judgment itself states that in an action for infringement, if the essential
features of the trade mark of the plaintiff have been adopted by the defendant,
the fact that the get-up, packing and other writing or marks on the goods or
on the packets in which he offers his goods for sale show marked differences,
or indicate clearly a trade origin different from that of the registered proprietor
of the mark, would be immaterial. In a recent judgment in Wow Momo Foods
v. Wow Burger18, a division bench of this Court made the following
observations:

“25. Thus, infringement, or its absence, has to be tested by comparing
mark to mark [Also refer Rajastham Aushdhalaya Pvt. Ltd. v. Himalaya
Global Holdings Ltd., 2025 SCC OnLine Del 4721]. Added features,
such as difference in getup, colour, appearance, and the like, would not
be of significance where the marks, compared to each other, are
deceptively similar. For a case of passing off to be made out, however,
added features, which may distinguish the two marks from each other,
would be of significance.”

[emphasis supplied]

54. Pertinently, the defendant itself had applied for registration of the word
mark CLAVIX in class 5 [Exhibit DW-1/4]. Therefore, at this stage, the
defendant cannot take the defence of added material in the impugned mark to
overcome the claim for infringement.

55. The defendant has placed reliance on the judgment of this Court in

18
2025 SCC OnLine Del 6545

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Gensol v. Mahindra19 to submit that the use of the company name as a prefix
to the impugned mark would be sufficient to dispel confusion among the
members of trade and public.

56. The judgment in Gensol (supra), which was delivered by this bench,
was in an entirely different context. In that case, the plaintiff was yet to launch
its product whereas the plaintiff in the present case had launched its drug.
Further, in Gensol (supra), the vehicles of the parties belonged to different
categories targeting different segments of the public – the plaintiff was going
to launch a vehicle in the passenger category whereas the defendant’s vehicle
was aimed in the commercial space.

57. There is a stark difference in the facts and circumstances of the present
case. It is an undisputed position that both the plaintiff and the defendant are
using their respective marks in respect of pharmaceutical products having the
same salt/ active ingredient and the competing products are used for treatment
of the same disease. Hence, the judgment in Gensol (supra) is not applicable
in the facts of the present suit.

58. The bench in Gensol (supra) had also taken note of the fact that the
manufacturers in the automobile industry significantly affect the purchase
decision, which is not the case in the present suit. The relevant extracts from
Gensol (supra) are set out below:

“33. While purchasing a motor vehicle, the name of the manufacturer
becomes very important and an average consumer while deciding to
purchase a motor vehicle would not only consider the model of the motor
vehicle but also its manufacturer. There is an amount of brand equity,
goodwill and reputation attached to the name of the manufacturer. It is a
known position in the automobile industry that a model of a car is
identified and recognized not only by the name of the model but also by
the name of the manufacturer. It is common in the automobile trade that

19
2025 SCC OnLine Del 68

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the cars are identified by the manufacturer’s name along with the model of
the car. For instance, car models such as Mercedes E220, Toyota Camry,
Honda Accord, Maruti SX4 would not be readily recognizable without the
name of the manufacturing company i.e., Mercedes, Toyota, Honda, or
Maruti respectively. Thus, the name of the manufacturer is of utmost
importance for a consumer and becomes a distinguishing factor as the
consumer would consider the manufacturer’s name and not just the car
model.”

59. It is also the case of the defendant that the plaintiff, even in its amended

plaint, has asserted infringement of the device mark .
Thus, in terms of Section 17 of the Act, the plaintiff cannot assert any right
over the word mark PLAVIX.

60. To appreciate the legal position with respect to Section 17 of the Act, a
reference may be made to the decision of a division bench of this Court in
United Biotech Private Limited v. Orchid Chemicals & Pharmaceuticals20,
where the Court made the following observations:

“25. The entire arguments are on the wrong premise and it proceeds on the
basis of common feature of the two marks suffix “ZID” and since the
respondent has registration and trade mark “ORZID”, it cannot bare a
part of it, i.e., “ZID”. What has been seen in a case like this is as to
whether the mark “FORZID” is deceptively similar to “ORZID”. That is
the test which is to be applied and in a process, it is to be seen as to whether
the two marks are structurally and phonetically similar and would cause
deception in the minds of consumers. When we judge the matter from this
angle, we find ourselves in agreement with the view taken by IPAB as well
as the learned Single Judge. Although the mark “ORZID” is a label
mark, the word mark “ORZID” is an essential feature that has been
covered by the registration. Therefore, the learned counsel for the
respondent appears to be right in his submission on this aspect, which is
predicated on the Supreme Court decision in Ramdev Food Products
Ltd. (supra). Following dicta on the decision is pertinent:

“*** *** ***

84. Mr. Nariman is also not correct in contending that only a
label has been registered and not the name ‘Ramdev’.
Definition of ‘mark’ as contained in Section 2(j) of the 1958
Act also includes names, signature, etc.”

2012 SCC OnLine Del 2942

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26. We find that the learned Single Judge rightly held that when a label
mark is registered, it cannot be said that the word mark contained
therein is not registered. We, thus, are of the opinion that although the
word “ORZID” is a label mark, the word “ORZID” contained therein is
also worthy of protection…”

[emphasis supplied]

61. In the present case, the registered device mark is
only a stylized representation of the word PLAVIX. No other word or logo,
except PLAVIX, forms a part of the said device mark. Therefore, in light of
the aforesaid findings in United Biotech (supra), it becomes clear that when
taken as a whole, the word PLAVIX is the essential part of the registered

device mark in terms of Section 17 of the Act.

62. In any event, the plaintiff in the present case has obtained registration
for the word mark PLAVIX during the pendency of the present suit with effect
from 20th January 1995. [Exhibit PW-4/3 and Exhibit PW-4/4].

Analysis – Dishonest Adoption

63. At this stage, it would be relevant to refer to the justification given by
the defendant for adopting the impugned mark CLAVIX. In paragraph 7 of
the evidence affidavit of DW-1, it has been explained that the impugned mark
CLAVIX is an amalgamation of the letters ‘CL’ taken from the active
ingredient Clopidogrel, the letters ‘AVI’ taken from its therapeutic indication
viz Atherosclerotic Vascular Incidences and the letter ‘X’ indicating reduction
in recurrence of acute events. Relevant extracts of paragraph 7 of the evidence
affidavit of DW-1 are reproduced below:

“7. I state that the Defendants had launched its medical product CLAVIX
in the market, in the year 2001. I state that the Defendant No.1 has adopted
and coined the mark CLAVIX. I further state that the mark CLAVIX is an
amalgamation of the drug “CLOPIDROGEL” (‘CL’ taken from this drug)

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being the basic drug and its therapeutic indication viz. Atherosclerotic
Vascular Incidences (‘AVI’) and the last letter ‘X’ is referable and indicates
reduction in recurrence of acute events…”

64. DW-1 was cross-examined by counsel for the plaintiff on this aspect.
The relevant extracts from the cross-examination are set out below:

65. It is clear from the aforesaid evidence of DW-1 that the explanation for
adopting the impugned mark CLAVIX as given by the defendant is dishonest
and far-fetched. Clearly, it is in the nature of an afterthought.

66. To highlight the dishonest adoption of the impugned mark CLAVIX by
the defendant, it has also been contended on behalf of the plaintiff that the
defendant has been using two marks other than CLAVIX, namely PREVA and
PRASUGEL, for the very same drug.

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67. Once again, DW-1 was cross-examined by counsel for the plaintiff in
this regard. The relevant extracts from the cross-examination are set out
below:

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68. The aforesaid cross-examination establishes that the defendant was
indeed selling formulations of Clopidogrel under the marks PREVA and
PRASUGEL. No satisfactory explanation has been given by the defendant as
to why it adopted the impugned mark when it had already been using other
marks for the same drug.

69. Yet another aspect which has emerged from the evidence of the
defendant is that the defendant launched CLAVIX in 2001 without conducting

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any due diligence including trade mark search in the database of the Trade
Marks Registry as well as any market research. This is evident from the cross-
examination of DW-1 conducted on behalf of the plaintiff on 21st December
2017 and 6th January 2018. The relevant extracts from the cross-examination
are set out below:

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70. From the aforesaid cross-examination of DW-1, it becomes evident that
the defendant did not conduct any search on the Register of Trade Marks
before adopting the impugned mark CLAVIX.

71. In fact, DW-1, during his cross-examination, has admitted that if a
search on the database of the Trade Marks Registry would have been
conducted by the defendant in 2001 before launching CLAVIX, it would have
shown the trade mark applications filed on behalf of the plaintiff for the marks

PLAVIX and . The relevant extracts from the cross-

examination of DW-1 are set out below:

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72. It was also put to DW-1 whether any market research was conducted
by the defendant in the year 2001 with regard to the brands that existed in
India for the drug Clopidogrel. From the responses of DW-1, it is apparent
that no market research was done by the defendant in the year 2001 to
determine the existence of other brands in relation to the drug Clopidogrel.
The relevant extracts from the cross-examination are set out below:

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73. This Court finds it hard to believe that the defendant, which is a
significant player in the pharmaceutical industry, would not be aware of the
launch of the plaintiff’s drug PLAVIX in the world market. A reputed
pharmaceutical company cannot be expected to launch a new drug in the
market under a mark without conducting even a basic search about competing
drugs with identical or similar trade marks that are already available in the
market. In this regard, reference may be made to the judgment in Himalaya
Wellness (supra), wherein this bench was faced with the aspect of due
diligence required to be carried out on behalf of the defendant prior to
adoption of the impugned mark. The relevant extracts from Himalaya
Wellness (supra) in this regard are set out below:

“66. It is intriguing for me as to why a reputed company such as the
defendant company would launch its product, also pertaining to female
reproductive hygiene, almost 22 years later, using the identical trade mark
as that of the plaintiffs. A simple due diligence exercise conducted on
behalf of the defendant would have informed the defendant about the
existence of the product of the plaintiffs with an identical trade mark. A
google search or a Trade Marks Registry search across various classes
would have brought to light the registered mark of the plaintiffs.

67. The reply of the defendant only indicates that the defendant conducted
a search only in Class 3 and found that there was no other registered mark
or pending application in respect of the mark “EVECARE”. It is not the
case of the defendant that they conducted a trade mark search and came
across the registration of the plaintiffs under Class 5 and yet decided to
adopt the identical trade mark in respect of their product, which was under

Class 3. Nor is it the case that the defendant took a legal opinion before
adopting an identical trade mark. The defendant company is not a small
time operator. It is a company with ample resources and surely, with access
to legal resources.

68. The reply of the defendant is conspicuously silent with regard to its
knowledge of the products of the plaintiffs selling under the identical mark.

It is difficult to fathom that the defendant was not aware of the use of the
trade mark “EVECARE” by the plaintiffs when it decided to launch its
product under the same trade mark in 2020. While countering the
contention of the plaintiffs that the plaintiffs became aware of the
defendant’s “EVECARE” product in November 2022, the defendant has

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argued that the plaintiffs ought to have been aware of the defendant’s
“EVECARE” product, which has only been launched 1.5 years back.
Applying the same argument, the defendant ought to have been aware of
the plaintiffs’ “EVECARE” product that has been in the market for a period
of 24 years.

69. As noted in the judgments above, misrepresentation can even be made
out in the absence of any mala fide intention on the part of the defendant.
Further, there is no need to establish fraud or actual deception or actual
damage to the business or goodwill of the plaintiff, and a mere likelihood
is sufficient. In my considered view, the defendant has failed to provide a
plausible explanation for adopting the identical trade mark. Accordingly,
this Court is of the prima facie view that the adoption of the registered
trade mark of the plaintiffs by the defendant was not bona fide and amounts
to misrepresentation.”

[emphasis supplied]

74. The judgment in Himalaya Wellness (supra) has been upheld by the
division bench21.

75. In view of the discussion above, I am of the opinion that the adoption
of the impugned mark CLAVIX by the defendant was dishonest.

Whether the defendant is entitled to the defence under Section 34 of the Act

76. The defendant seeks to invoke the defence under Section 34 of the Act.
Section 34 operates as a complete defence available to a prior user of a trade
mark against a claim for infringement by a registered proprietor. It provides
that the proprietor of a registered trade mark cannot interfere with or restrain
a prior user from using an identical or deceptively similar mark. For the
purpose of this provision, a person can be said to be the prior user of a trade
mark only if he has continuously used the said mark prior to:

(a) the use of the first-mentioned trade mark by its proprietor, or

(b) the date of registration of the first-mentioned trade mark, whichever is

21
Wipro Enterprises v. Himalaya Wellness, 2024 SCC OnLine Del 6859

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earlier.

77. The legal position with regard to Section 34 is clear from the recent
judgment of the division bench in Bodhisattva Charitable Trust v. Mayo
Foundation for Medical Education and Research22.

78. In Mayo (supra), a division bench of this Court made the following
observations:

“30.1 …The use of the words “whichever is earlier” in Section 34 results
in the Section being applicable only where the defendant has been using
the infringing mark from a point of time prior to the date of registration
as well as user of the plaintiff’s mark. The user, by the defendant, of the
infringing mark has, therefore, to pre-date both the registration and user
of the asserted mark of the plaintiff. In the present case, the registration
of the mark MAYO and MAYO CLINIC in favour of the respondent in Class
16 is of 1992 whereas, admittedly, the user of the MAYO mark by the
appellants is only of 1995.

*** *** ***

31. Mere priority of user no defence to infringement
Priority of user is not a defence to an action for infringement. It becomes
a defence only if it falls within the parameters of Section 34 of the Trade
Marks Act. That, in its turn, requires user, by the defendant or the
infringing mark, predating both the user as well as the registration of
the asserted mark of the plaintiff. In other words, it is only if the
defendant has been using the allegedly infringing mark, from a point of
time prior to the registration as well as the user of the asserted mark of
the plaintiff, that the defendant, despite being an infringer can escape
an injunction by seeking recourse to Section 34. Else, mere priority of
user by the defendant is no defence to infringement, or the injunction
which must inexorably follow a finding of infringement.”

[emphasis supplied]

79. In Adidas AG (supra), the defendant contended that he is the prior user
of the mark ADIDAS and when he adopted the said mark, the plaintiff’s goods
under the mark ADIDAS were not available in India. A coordinate bench of
this Court held that a registered proprietor can initiate legal proceedings

22
Judgment dated 28th July 2025 in FAO(OS) (COMM) 73/2024

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against infringement even without actual use of the registered mark. The
relevant date for purposes of establishing prior use would be the date of
registration of the mark and not when the plaintiff actually started using it.

80. It is the case of the defendant that since the defendant adopted and
commenced using the impugned mark CLAVIX in 2001, i.e. although after
the filing of the plaintiff’s trade mark applications in the years 1995 and 1998
but before the plaintiff’s alleged use in 2003 and grant of first registration in
2005 in India, it would be entitled to benefit under Section 34 of the Act.
Reliance in this regard is placed on Neon Laboratories (supra).

81. In Neon Laboratories (supra), the plaintiff, an unregistered proprietor
using its mark since 1998, instituted a suit for passing off against the
defendant, which had commenced use of the impugned mark only from 16th
October 2004. The defence of the defendant was that it had received
registration for its trade mark in 2001, which would date back to its date of
application filed in 1992.

82. In this background, the Supreme Court gave its prima facie view that
Section 34 of the Act would come to the aid of the plaintiff against the
defendant, who did not use the impugned mark for twelve years from the date
of filing of its trade mark application.

83. The aforesaid observations were made by the Supreme Court in the
facts and circumstances of the case where the defendant, despite applying for
registration in 1992 and obtaining registration in the year 2001, had not
launched its product in the market till 2004. In the meanwhile, the plaintiff
commenced use of its mark back in the year 1998 and had acquired substantial
goodwill in the market for the said trade mark. The defendant also did not
ever take any action against the plaintiff from using its trade mark.

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84. In Neon Laboratories (supra), a suit for passing off had been instituted
against a prior registrant of a trade mark whereas in the present case, the
plaintiff, who is the prior registered proprietor, has instituted a suit for
infringement and passing off against the defendant for using the impugned
mark. The defendant in the present case has not filed a suit for passing off
against the plaintiff, nor is it the case of the defendant that it had acquired
goodwill and reputation in the impugned mark CLAVIX before the plaintiff
launched PLAVIX in India. Therefore, the judgment in Neon Laboratories
(supra) does not advance the case of the defendant.

85. In the present case, the defendant’s drug under the mark CLAVIX was
admittedly launched in the year 2001. On the other hand, the registration of

the plaintiff’s marks PLAVIX and would date back to 20th
January 1995 and 17th June 1998, respectively.

86. Therefore, in the facts of the present case, the defendant has failed to
establish prior use of the impugned mark CLAVIX in terms of Section 34 of
the Act.

87. In any event, the defendant cannot assert the benefit of prior user in
terms of Section 34 of the Act in view of my conclusion that the defendant’s
adoption of the impugned mark is dishonest. A reference in this regard may
be made to the judgment of this bench in Mayo Foundation for Medical
Education and Research v. Bodhisattva Charitable Trust23, the relevant
extracts of which are set out below:

“20. In FDC (supra) it has been clearly held where the defendants
dishonestly adopt a mark that is identical to a prior registered trademark,
whether a well-known or not, the benefit of prior user in terms of Section
34 of the Trade Marks Act, 1999 would not be available to the defendants

23
2023 SCC OnLine Del 3241

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even if such user by the defendants was in respect of different goods and
services.”

88. In view of the discussion above, a clear case of infringement under
Section 29 of the Act is made out by the plaintiff against the defendant.

Submissions of the plaintiff – Passing off

89. The plaintiff has made the following submissions:

89.1. The plaintiff was first to launch the drug Clopidogrel worldwide in the
year 1998. In disputes involving medicinal products, prior use is determined
on the basis of first use in the world market and not just first use in India. In
this regard, reliance is placed on the judgment of the Supreme Court in Milmet
Oftho v. Allergen24.

89.2. The plaintiff has placed sufficient evidence on record to show
worldwide reputation of the mark PLAVIX.

89.3. Further, the global reputation and goodwill of the mark PLAVIX since
1998 has spilled over in India and made it well-known in the Indian medical
fraternity far before the defendant’s alleged adoption of the impugned mark
in 2001.

89.4. Notwithstanding the plaintiff’s commercial launch of PLAVIX in India
in 2003, the same was being prescribed by doctors and imported by hospitals/
pharmacists in India at least since the year 2000. Sufficient evidence in this
regard has been placed on record.

Submissions of the defendant – Passing off

90. The defendant has made the following submissions:

(2004) 12 SCC 624

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90.1. The plaintiff’s product PLAVIX had no presence in India when the
defendant’s product under the impugned mark was launched in 2001. Thus,
the plaintiff did not have any goodwill or reputation for the mark PLAVIX in
2001 in India, which is sine qua non in an action for passing off.
90.2. Since trade mark rights are territorial in nature, use of the plaintiff’s
mark outside India cannot be considered without proof of a trans-border
reputation.

90.3. The alleged trans-border reputation of the plaintiff’s mark PLAVIX
since 2000 is unsubstantiated and merely an afterthought. The plaintiff has
failed to show any sale, customer base, marketing expenditure or potential
growth for its product under the mark PLAVIX in India to establish trans-
border reputation. No sales or advertisement figures have been given prior to
the years 2003 and 2004, respectively.

90.4. The medical journals filed by the plaintiff do not target Indian
customers in particular and are inconsequential and sporadic.

Analysis – Passing off

91. Passing off is an action founded in common law, which is based on the
principle that no person has the right to represent his/ her goods or services as
those of someone else. Section 27(2) of the Act recognizes the right of action
against any person for passing off his/ her goods or services as the goods or
services of another person. In S. Syed Mohideen v. P Sulochana Bai25, the
essential elements for constituting an action for passing off have been
elucidated by the Supreme Court in the following terms:

“31.1. Traditionally, passing off in common law is considered to be a
right for protection of goodwill in the business against misrepresentation
25
(2016) 2 SCC 683

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caused in the course of trade and for prevention of resultant damage on
account of the said misrepresentation. The three ingredients of passing
off are goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as per the
speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc.,
(1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)] which is more popularly
known as “Jif Lemon” case wherein Lord Oliver reduced the five
guidelines laid out by Lord Diplock in Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd. [Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731 at p. 742 :

(1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] (“the Advocaat case”) to
three elements: (1) goodwill owned by a trader, (2) misrepresentation,
and (3) damage to goodwill. Thus, the passing off action is essentially an
action in deceit where the common law rule is that no person is entitled to
carry on his or her business on pretext that the said business is of that of
another. This Court has given its imprimatur to the above principle
in Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V.
Patel v. Chetanbhai Shah, (2002) 3 SCC 65].”

[emphasis supplied]

92. A reading of the aforesaid extracts makes it evident that the first and
foremost element in the test for an action for passing off is establishing
goodwill and reputation of the plaintiff’s mark among the members of trade
and public.

93. It is the case of the plaintiff that the mark PLAVIX was coined by the
plaintiff in the year 1995 and a drug under the said mark was launched
globally in the year 1998. PLAVIX was a blockbuster drug and soon after its
launch in 1998, it became popular worldwide.

94. From the evidence led on behalf of the defendant, it has come out that
the defendant had launched its product CLAVIX in India in the year 2001 after
obtaining permission from the Drugs Controller General (India) for
manufacturing Clopidogrel on 27th June 2001 [Exhibit DW-1/2]. On the
basis of the said permission, the defendant was granted permissions from

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Food and Drugs Control Administration (Gujarat) to manufacture the drug
Clopidogrel under the name CLAVIX on 12th July 2001 [Exhibit DW-1/3].

95. It is vehemently submitted on behalf of the defendant that the plaintiff
did not have any goodwill and reputation in the mark PLAVIX when the
defendant launched CLAVIX in India in 2001. In this regard, defendant places
reliance on the judgment of the Supreme Court in Toyota Jidosha Kabushiki
Kaisha v. Prius Auto Industries Ltd. & Ors26.

96. In Toyota v. Prius (supra), the plaintiff had instituted a suit for
infringement as well as passing off. The plaintiff in the said case had claimed
that international reputation and goodwill in respect of its car model PRIUS
had spilled over into India even though the said model had not been launched
in India. The Supreme Court held that in order to succeed in an action for
passing off, the Court has to determine if there has been a spillover of
reputation and goodwill of the mark used by the plaintiff in India. In this
context, the relevant observations of the Supreme Court are set out below:

“38. The next exercise would now be the application of the above
principles to the facts of the present case for determination of the
correctness of either of the views arrived at in the two-tier adjudication
performed by the High Court of Delhi. Indeed, the trade mark “Prius”

had undoubtedly acquired a great deal of goodwill in several other
jurisdictions in the world and that too much earlier to the use and
registration of the same by the defendants in India. But if the
territoriality principle is to govern the matter, and we have already held
it should, there must be adequate evidence to show that the plaintiff had
acquired a substantial goodwill for its car under the brand name “Prius”
in the Indian market also. The car itself was introduced in the Indian
market in the year 2009-2010. The advertisements in automobile
magazines, international business magazines; availability of data in
information-disseminating portals like Wikipedia and online Britannica
dictionary and the information on the internet, even if accepted, will not
be a safe basis to hold the existence of the necessary goodwill and
reputation of the product in the Indian market at the relevant point of

26
2017 SCC OnLine SC 1500

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time, particularly having regard to the limited online exposure at that
point of time i.e. in the year 2001. The news items relating to the launching
of the product in Japan isolatedly and singularly in The Economic Times
(Issues dated 27-03-1997 and 15-12-1997) also do not firmly establish the
acquisition and existence of goodwill and reputation of the brand name in
the Indian market. Coupled with the above, the evidence of the plaintiff’s
witnesses themselves would be suggestive of a very limited sale of the
product in the Indian market and virtually the absence of any
advertisement of the product in India prior to April 2001. This, in turn,
would show either lack of goodwill in the domestic market or lack of
knowledge and information of the product amongst a significant section
of the Indian population. While it may be correct that the population to
whom such knowledge or information of the product should be available
would be the section of the public dealing with the product as distinguished
from the general population, even proof of such knowledge and
information within the limited segment of the population is not prominent.

39. All these should lead to us to eventually agree with the conclusion of
the Division Bench of the High Court that the brand name of the car Prius
had not acquired the degree of goodwill, reputation and the market or
popularity in the Indian market so as to vest in the plaintiff the necessary
attributes of the right of a prior user so as to successfully maintain an
action of passing-off even against the registered owner. In any event the
core of the controversy between the parties is really one of appreciation
of the evidence of the parties; an exercise that this Court would not
undoubtedly repeat unless the view taken by the previous forum is wholly
and palpably unacceptable which does not appear to be so in the present
premises.

40. If goodwill or reputation in the particular jurisdiction (in India) is
not established by the plaintiff, no other issue really would need any
further examination to determine the extent of the plaintiff’s right in the
action of passing-off that it had brought against the defendants in the
Delhi High Court. Consequently, even if we are to disagree with the view
of the Division Bench of the High Court in accepting the defendant’s
version of the origin of the mark “Prius”, the eventual conclusion of the
Division Bench will, nonetheless, have to be sustained…”

[emphasis supplied]

97. From a reading of the above, it emerges that merely because a trade
mark has acquired goodwill and reputation overseas, the same cannot be the
basis to say that the said mark has also acquired goodwill and reputation in
India. There has to be adequate evidence to show that the plaintiff has

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acquired substantial goodwill for its trade mark in Indian market. In the facts
of the case, the Supreme Court held that a singular news item relating to the
launch of the product in India would not establish goodwill and reputation in
view of the limited sale of the plaintiff’s car and absence of advertisements in
India at the relevant time. It was also held that information on the internet
cannot be the sole basis to acquire goodwill or reputation, particularly having
regard to the limited exposure to content available on the internet in the year
2001.

98. Per contra, the plaintiff submits that in cases of medicinal products, the
position of law has been laid down in Milmet (supra).

99. In Milmet (supra), the plaintiff, which was a foreign company, had
instituted a suit for passing off against the defendant, an Indian entity, for
restraining the defendant from using an identical mark in respect of a
medicinal product. The claim of the plaintiff was based on prior use of the
mark by the plaintiff outside India.

100. A single bench of the High Court of Calcutta did not grant an interim
injunction in favour of the plaintiff. The aforesaid order was set aside by a
division bench of the High Court of Calcutta holding that the plaintiff had
been able to establish spillover of worldwide reputation in respect of its trade
mark in India. Accordingly, the judgment of the single bench was set aside
and an interim injunction was passed in favour of the plaintiff.

101. The defendant took the matter to the Supreme Court. The Supreme
Court did not interfere with the judgment of the division bench. The relevant
extracts from Milmet (supra) are set out below:

“8. We are in full agreement with what has been laid down by this Court.
Whilst considering the possibility of likelihood of deception or confusion,
in present times and particularly in the field of medicines, the Courts must

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also keep in mind the fact that nowadays the field of medicine is of an
international character. The Court has to keep in mind the possibility that
with the passage of time, some conflict may occur between the use of the
mark by the Applicant in India and the user by the overseas company. The
Court must ensure that public interest is in no way imperilled. Doctors
particularly eminent doctors, medical practitioners and persons or
Companies connected with medical field keep abreast of latest
developments in medicine and preparations worldwide. Medical literature
is freely available in this country. Doctors, medical practitioners and
persons connected with the medical field regularly attend medical
conferences, symposiums, lectures etc. It must also be remembered that
nowadays goods are widely advertised in newspapers, periodicals,
magazines and other media which is available in the country. This
results in a product acquiring a worldwide reputation. Thus, if a mark in
respect of a drug is associated with the Respondents worldwide it would
lead to an anomalous situation if an identical mark in respect of a similar
drug is allowed to be sold in India. However one note of caution must be
expressed. Multinational corporations, who have no intention of coming
to India or introducing their product in India should not be allowed to
throttle an Indian Company by not permitting it to sell a product in India,
if the Indian Company has genuinely adopted the mark and developed the
product and is first in the market. Thus the ultimate test should be who is
first in the market.

9. In the present case, the marks are the same. They are in respect of
pharmaceutical products. The mere fact that the Respondents have not
been using the mark in India would be irrelevant if they were first in the
world market. The Division Bench had relied upon material which
prima-facie shows that the respondents’ product was advertised before
the Appellants entered the field. On the basis of that material the Division
Bench has concluded that the Respondents were first to adopt the mark. If
that be so then no fault can be found with the conclusion drawn by the
Division Bench.

10. However, it was submitted on behalf of the Appellants that the
Respondents were not the first to use the mark. it was submitted that there
was no proof that the Respondents had adopted the mark and used the
mark before the Appellants started using the mark in India. In our view,
these are matters which would require examination on evidence.
Considering the fact that for all these years, because of the injunction
Order, the Appellants have sold their product under some other name,
the balance of convenience is that the injunction order be continued and
the hearing of the Suit be expedited. If on evidence it is proved that the
Respondents had adopted the mark prior to the Appellants doing so, on
the settled law, then the Respondents would become entitled to an
injunction. However, if on evidence it is shown that the Respondents had

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not adopted the mark prior to its use in India by the Appellants then,
undoubtedly, the trial Court would vacate the injunction. The trial Court
would undoubtedly then assess the damage which Appellants have suffered
for having wrongly not been allowed to use the mark for all these years.”

[emphasis supplied]

102. The suit in Milmet (supra) was at the stage of interim injunction and
the Supreme Court rejected the appellant’s contention of prior use of the mark
in India on the ground that the same would require examination on evidence.
One of the factors for the Supreme Court’s non-interference with the decision
of the division bench was that the defendant started selling its product under
some other mark after suffering injunction during the pendency of the suit.

103. Another important factor in Milmet (supra) was that the plaintiff’s
product was widely advertised in newspapers, periodicals, magazines and
other media having circulation in India before the defendant entered the
market, which was specifically noted by the division bench.

104. In my considered view, Milmet (supra) does not hold that spillage of
trans-border reputation is automatic in all cases of pharmaceutical products.
The division bench, whose judgment was affirmed in Milmet (supra), clearly
noted that the plaintiff had advertised its medicine extensively in India before
the defendant entered the market. Therefore, the judgment in Milmet (supra)
cannot be read in a manner to suggest that in cases of pharmaceutical products,
there is no requirement for the plaintiff to establish goodwill and reputation
in India so as to maintain an action for passing off.

105. Merely because the plaintiff was the first to launch its product in the
world market cannot be the basis to assume that the plaintiff has established
goodwill and reputation in India. The judgment in Toyota v. Prius (supra)
would continue to hold the field and in order to succeed in an action for

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passing off, the plaintiff would have to establish spillover of its goodwill and
reputation in India.

106. To be noted, the judgment in Toyota v. Prius (supra) was a final
judgment based on trial in the suit, whereas the judgment in Milmet (supra)
was only at the stage of interim injunction.

107. At this stage, it may be apposite to examine the evidence produced by
the plaintiff to show goodwill and reputation of PLAVIX, including spillover
of its trans-border reputation, in India at the time when CLAVIX was launched
by the defendant, i.e., July 2001. The said evidence is detailed below:

(i) Literature, brochure and leaflets for PLAVIX [Mark A]

(ii) Extracts from the plaintiff’s website [Exhibit PW-1/7 also exhibited
as Exhibit PW-3/2 and Exhibit PW-3/3]

(iii) Promotional materials circulated in other countries [Mark G]

(iv) European Public Assessment Report for PLAVIX [Exhibit PW-2/3]

(v) Financial report for the year 2001 [Exhibit PW-1/22] and annual
reports [Exhibit PW-3/6]

(vi) Documents available on the internet [Exhibit PW-2/4]

108. The literature, brochure and leaflets for PLAVIX produced by the
plaintiff [Mark A] do not bear any date of publication. Hence, they do not
show reputation of PLAVIX in India at the relevant point of time. Insofar as
the extracts from the plaintiff’s website [Exhibit PW-1/7 also exhibited as
Exhibit PW-3/2 and Exhibit PW-3/3] are concerned, the plaintiff has failed
to show that its website was being accessed by the members of trade and
public in India prior to 2001. The promotional materials circulated in other
countries [Mark G] do not show that these materials were accessed by the
members of trade and public in India. The European Public Assessment

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Report [Exhibit PW-2/3] does not advertise the plaintiff’s drug PLAVIX in
any manner. This report, at best, only shows that PLAVIX has been authorized
by the European Commission. Insofar as the plaintiff’s financial report for the
year 2001 [Exhibit PW-1/22] and annual reports for the year 2000 [Exhibit
PW-3/6] are concerned, they only show consolidated sales of the plaintiff for
PLAVIX across the globe. They do not, in any manner, establish goodwill and
reputation of PLAVIX in India. The article from Neurology India Publication
of 2001 [Exhibit PW-2/4] does not talk about sale of PLAVIX in India. The
article also cannot be construed to be an advertisement.

109. There is no evidence in the present suit that the plaintiff’s mark
PLAVIX was widely advertised in newspapers, periodicals, magazines and
other media having circulation in India.

110. The documents placed on record by the plaintiff showing use of the
mark PLAVIX post 2001 are not relevant to establish its goodwill and
reputation in India in 2001.

111. Counsel for the plaintiff further submits that the doctors in India have
been prescribing PLAVIX at least since 2001, i.e., before its official launch in
India in January 2003. Reliance in this regard has been placed on the
following documents:

(i) Four certificates issued by doctors practicing in India stating that
they have been using/ prescribing PLAVIX to their customers/
patients in India since 2001.

(ii) Three prescriptions of Apollo Hospital to show that the said hospital
has been prescribing PLAVIX to treat its patients since September
2001.

(iii) A statement from a pharmacy dated 31st August 2001 showing that

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it had stocks of PLAVIX.

112. The defendant has objected to the aforesaid documents being admitted
in evidence, as the same had been specifically refused to be taken on record
by the Joint Registrar vide order dated 4th January 2014 and the same was not
pressed for by the plaintiff in the chamber appeal against the said order.

113. Without going into this controversy, even if the documents mentioned
above are to be considered, at best, they establish that few doctors and
hospitals in India were aware of PLAVIX in 2001 and had been prescribing it
to their patients. However, these documents only establish sporadic use of
PLAVIX in India till 2001. Mere fact that some of the doctors and hospitals
were aware of the launch of the plaintiff’s product globally and/ or have
prescribed the same to their patients would not be sufficient to establish
goodwill and reputation of PLAVIX in India.

114. After carefully analyzing the evidence led on behalf of the parties, this
Court is of the opinion that the plaintiff has been unable to establish goodwill
and reputation in respect of PLAVIX in India at the time of launch of CLAVIX
by the defendant in 2001.

115. In view of the aforesaid conclusion, this Court does not need to examine
the remaining aspects of passing off, i.e., misrepresentation on the part of the
defendant and injury to the plaintiff on account of such misrepresentation.
Accordingly, the plaintiff has failed to establish a case for passing off.

116. Therefore, Issue no.2 so far as infringement is concerned is decided in
favour of the plaintiff. Remaining issues, i.e., Issues no.3, 4 and 5 are also
decided in favour of the plaintiff and against the defendant.

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Issue no.6 – Whether there is any delay in filing the present suit?
Submissions of the plaintiff

117. In respect of Issue no.6, the plaintiff has made the following
submissions:

117.1. The plaintiff learnt of the defendant in mid-2005 and the defendant’s
business started to cause market damage to the plaintiff only in 2006-07. Thus,
there is no delay in instituting the present suit.

117.2. Notwithstanding the aforesaid, delay is not a relevant factor for
consideration when the defendant’s adoption of the impugned mark is
dishonest.

Submissions of the defendant

118. The defendant has rebutted the aforesaid submissions of the plaintiff in
the following manner:

118.1. Admittedly, the plaintiff was aware of the defendant’s drug CLAVIX
since mid-2005, however, the suit came to be instituted only in 2008. The suit
is therefore barred on account of inordinate delay.
118.2. The delay on behalf of the plaintiff is intentional which resulted in the
defendant’s product CLAVIX becoming popular in the market. Thus, the
plaintiff is disentitled to any injunctive relief from this Court.

Analysis

119. At the outset, it may be relevant to highlight the settled position of law
with respect to the question of delay in instituting the suit and its
consequences in granting relief to the parties.

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120. In Midas Hygiene Industries v. Sudhir Bhatia27, the Supreme Court,
taking note of dishonest adoption of the impugned mark by the respondents,
gave the following findings with respect to the issue of delay:

“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.”

121. In Hindustan Pencils v. India Stationary Products28, the Court made
the following observations on the aspect of delay:

“30. Even though there may be some doubt as to whether laches or
acquiescence can deny the relief of a permanent injunction, judicial
opinion has been consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating the plaintiff’s rights
then in that case, even if there is an inordinate delay on the part of
plaintiff in taking action against the defendant, the relief of injunction
is not denied. The defence of laches or inordinate delay is a defence in
equity. In equity both the parties must come to the Court with clear hands.
An equitable defence can be put up by a party who has acted fairly and
honestly. A person who is guilty of violating the law or infringing or
usurping somebody else’s right can’t claim the continued misuse of the
usurped right. It was observed by Romer, J. in the matter of an application
brought by J.R. Parkington and Coy. Ltd., 63 R.P.C. 171 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. In other words, the equitable relief
will be afforded only to that party who is not guilty of a fraud and whose
conduct shows that there had been, on his part, and honest concurrent
user of the mark in question. If a party for no apparent or a valid reason,
adopts, with or without modifications, a mark belonging to another,
whether registered or not, it will be difficult for that party to avoid an
order of injunction because the Court may rightly assume that such
adoption of the mark by the party was not an honest one. The Court
would be justified in concluding that the defendant, in such an action,

27
2004 SCC OnLine SC 106
28
1989 SCC OnLine Del 34

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wanted to cash in on the plaintiff ‘s name and reputation and that was the
sole, primary or the real motive of the defendant adopting such a mark.
Even if, in such a case there may be an inordinate delay on the part of
the plaintiff in bringing a suit for injunction, the application of the
plaintiff for an interim injunction cannot be dismissed on the ground
that the defendant has been using the mark for a number of years.
Dealing with this aspect Harry D. Nims in his “The Law of Unfair
Competition and Trade-Mark”, Fourth Edition, Volume Two at page 1282
noted as follows:

‘Whether infringement is deliberate and wilful and the
defendant acts fraudulently with knowledge that he is
violating plaintiff’s rights, essential elements if estoppel are
lacking and in such a case the protection of plaintiff ‘s rights
by injunctive relief never is properly denied. “The doctrine of
estoppel can only be invoked to promote fair dealings.”‘ ”

[emphasis supplied]

122. The aforesaid observations are fully applicable in the facts of the
present case. I have already concluded above that the defendant has adopted
the mark CLAVIX in a dishonest manner. Therefore, the plaintiff cannot be
denied the relief of permanent injunction even if there is any delay on the part
of the plaintiff in instituting the present suit.

123. In the present case, the plaintiff has pleaded in the plaint that it came to
know about the defendant’s use of the impugned mark CLAVIX in mid-2005.
In its evidence, PW-1 has deposed that the business of the defendant under
the impugned mark started to affect the business of the plaintiff only in the
year 2006-07. Accordingly, the present suit was filed in the year 2008.

124. In the case of Dr. Reddy’s Laboratories v. Reddy Pharmaceuticals29
before a coordinate bench of this Court, the defendant was using the trade
name ‘Reddy Pharmaceutical Limited’ for a long time in relation to bulk
drugs, i.e., goods not similar to that of the plaintiff. It was only in 2003 that

29
2004 SCC OnLine Del 668

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the defendant launched various pharmaceutical preparations under the mark
REDDY, which resulted in the plaintiff instituting a suit for infringement
against the defendant.

125. This Court, in Dr. Reddy‘s (supra), reiterated the settled principle of
law that trade mark/ copyright owners cannot be expected to initiate legal
proceedings against every infringer and incur litigation cost, especially those
proceedings which are too trivial or insignificant in terms of causing loss to
the plaintiff’s business. Accordingly, it was held that the plaintiff is entitled to
wait till the time the user of its name starts harming its business interests and
starts misleading and confusing its customers. The relevant observations of
the Court in Dr. Reddy‘s (supra) are reproduced below:

“16. …till August, 2003 there was no clash of interests between the plaintiff
and the defendant-company and in fact the defendant was engaged in
advancing and promoting the business of the plaintiff-company by acting
as its agent for the sale of bulk drugs. The threat came in August, 2003
when the defendant introduced in the market its pharmaceutical
preparations and thereby threatened the business interests of the plaintiff
company. This move of the defendant was mala fide on the face of it as it
was not manufacturing pharmaceutical preparations earlier but now it
was trying to market the pharmaceutical preparations manufactured by
others under the trade mark “Reddy”…It cannot be said that the plaintiff
has allowed the defendant to build a reputation or goodwill in trade name
“Reddy” for use on pharmaceutical preparations. Moreover, the owners
of trade marks or copy rights are not expected to run after every infringer
and thereby remain involved in litigation at the cost of their business
time. If the impugned infringement is too trivial or insignificant and is
not capable of harming their business interests, they may overlook and
ignore petty violations till they assume alarming proportions. If a road
side Dhaba puts up a board of “Taj Hotel”, the owners of Taj group are
not expected to swing into action and raise objections forthwith. They
can wait till the time the user of their name starts harming their business
interests and starts misleading and confusing their customers.”

[emphasis supplied]

126. Dr. Reddy‘s (supra) was followed by this bench in Alkem Laboratories

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v. Alchem International30, wherein it was observed that the plaintiff is
entitled to sue when the defendant’s business starts to pose a threat to the
business interest of the plaintiff and not before. The relevant extracts of Alkem
(supra) are set out below:

“46. This is illustrative of the fact that when the defendant started
expanding its business and launching new products in 2017 and 2018, the
plaintiff was compelled to file the present suit. The present suit was filed
in the year 2018, when the plaintiff was of the view that the business
activities of the defendant have expanded in a manner that it threatens
the business interests of the plaintiff and would likely to mislead the
consumers. Earlier, even though the plaintiff may be aware of the
defendant, the business of the defendant was of a scale that it did not
pose a threat to the business interest of the plaintiff.”

[emphasis supplied]

127. Therefore, in my considered view, it cannot be said that there was a
delay in instituting the present suit. Accordingly, Issue no.6 is decided in
favour of the plaintiff and against the defendant.

Damages

128. Counsel for the plaintiff submits that the reliefs qua damages and
rendition of accounts have been sought in the plaint. Hence, the plaintiff
would be entitled to damages/ rendition of accounts.

129. Vide order dated 5th January 2016, the plaintiff’s claim for damages was
amended from Rs. 20,00,000/- to Rs. 1 crore. However, no issue with regard
to the damages and/ or rendition of accounts has been framed in the suit.

130. It is submitted on behalf of the plaintiff that damages/ rendition of
accounts can be granted under Issue no.7, i.e., Relief.

131. The plaintiff relies upon the evidence of the defendant, wherein the

30
2025 SCC OnLine Del 6412

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defendant has provided its sales figures under the impugned mark CLAVIX
from 2001 to 2014. The aforesaid sales figures are supported by a CA
Certificate, which has been exhibited as Exhibit DW-1/5. The plaintiff also
relies upon the cross-examination of DW-1 conducted by the plaintiff to
contend that the profit margin of the defendant was 25%, which would
translate into profits of approximately Rs. 75 crores. The cross-examination
on which the plaintiff places reliance is set out below:

132. It is submitted on behalf of the plaintiff that at the very least, the Court
should award nominal damages in favor of the plaintiff.

133. At this stage, it may be apposite to mark a reference to the decision of
this Court in Kabushiki Kaisha Toshiba v. Tosiba Appliances31, the relevant
extracts of which are set out below:

“138. …The Court’s decision on awarding damages must be predicated
on a substantive examination of evidence that justifies the quantum of
such compensation. The burden of proving damages rests unequivocally
with the Plaintiff. To succeed, the Plaintiff must present compelling
evidence substantiating the claimed damages resulting from the

31
2024 SCC OnLine Del 5594

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Defendant’s alleged infringement. They must provide a reasonable
estimate of the amount claimed, foundational facts, account statements,
and supporting documentary and/or oral evidence. This entails
establishing a direct link between the Defendant’s actions and the
claimed damages and quantifying these damages in a manner acceptable
in law. They must demonstrate how the claimed figure was reached and
the methodology employed, which must withstand the Court’s scrutiny.
Speculative or hypothetical assertions cannot form the basis for a
substantial damages award.

139. The Plaintiff’s late introduction of a claim for damages totalling Rs.
25,00,000/- along with punitive damages is premised on speculative
assumptions rather than tangible evidence. This claim is derived from an
extrapolation of the Defendant’s sales data, specifically using sales bills,
invoices for “TOSIBA” products, and a Chartered Accountant’s
certification of the Defendant’s annual sales. The Plaintiff estimates the
Defendant’s profits from the sale of allegedly infringing products by
assuming a profit margin of 10%. Such an approach to assessing damages
post-trial, without evidence or proof and opportunity to the Defendant to
controvert cannot be accepted. Pertinently, the parties conducted a trial
on an entirely different premise and the Defendant was not confronted with
this claim any time prior to filing of the written submissions. In absence
of direct, tangible evidence linking the Defendant’s actions to
quantifiable losses incurred by the Plaintiff, this method of calculation
remains conjectural and insufficient to form the basis for a credible
claim for damages. Thus, due to lack of evidence put forth by the parties
during the trial, the Court is not inclined to award damages as claimed.
In the precedents cited by Plaintiff, persuasive material elaborating the
foundation of the claimed amount of damages, such as the product-wise
price chart, detailed account of profit earned on each sale and seizures
made by a Local Commissioner, was presented to the Court. Contrastingly,
in the case at hand, the Plaintiff’s claim is entirely dependent on the
evidence of sale of “TOSIBA” products of the Defendant, without any
breakdown of amounts purportedly due to the Plaintiff. Plaintiff’s claim
of intangible losses manifested in the form of loss of consumer
confidence and trust also fails to persuade the Court, given the Plaintiff’s
inability to establish their reputation in India at the relevant juncture.

140. Nonetheless, the Court is empowered to award nominal damages to
the aggrieved party who is able to establish that they have suffered an
injury caused by the wrongful conduct of a wrongdoer but cannot offer
proof of a loss that can be compensated. This is particularly necessary
when the infringement of rights is clear, as in the present case, where
the Defendant has used a deceptively similar mark. The rationale behind
this is to affirm the rights of the trademark holder and recognize the
wrongdoing, albeit the actual damage might not be quantifiable due to the

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Plaintiff’s lack of express evidence. Given the protracted duration of this
lawsuit – spanning three decades – and the continuous use of the
infringing mark by the Defendant throughout this period, it is both
reasonable and just for the Court to award nominal damages. Therefore,
in recognition of these factors and in line with judicial precedents that
support the award of nominal damages in cases of clear infringement but
insufficient proof of actual damage [See : Gujarat Ginning and
Manufacturing Co. Ltd. v. Swadeshi Mills Co. Ltd., 1938 SCC OnLine Bom
94], the Court finds it appropriate to award nominal damages of Rs.
15,00,000/-. This amount is intended not as a measure of actual loss
suffered, but as a minimal compensatory amount reflecting the
infringement’s duration and the need to uphold trademark rights.”

[emphasis supplied]

134. The aforesaid observations are entirely applicable in the present case.

135. I am in complete agreement with the aforesaid findings of the
coordinate bench. The onus to make out a case for damages in a suit is
unequivocally on the plaintiff. Material evidence is required to justify the
quantum of damages claimed by the plaintiff and the same must be directly
linked to the loss suffered on account of the defendant selling the impugned
product. However, in the present case, the plaintiff has failed to lead any
evidence in respect of the claim of damages. The only basis for the plaintiff
to claim damages is the alleged profit margin of 25% over the approximate
sale of CLAVIX by the defendant. The onus of proving damages/ rendition of
accounts cannot be shifted to the defendant nor can it be awarded on the basis
of mere speculative or hypothetical claims. It was for the plaintiff to lead
positive evidence to show loss suffered by the plaintiff on account of the
defendant selling CLAVIX in India or the profits made by the defendant for
the relief of rendition of accounts. Having failed to do so, the plaintiff would
not be entitled to damages and/ or rendition of accounts.

136. However, in the facts and circumstances of the present case, the
plaintiff has made out a case for infringement in its favour and against the

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defendant. This Court has also come to the conclusion that the defendant’s
adoption of the impugned mark was dishonest. Further, given the fact that
there was no interim injunction in favour of the plaintiff restraining the
defendant from using the impugned mark CLAVIX, the defendant has
continuously been able to sell its drug CLAVIX during the pendency of the
suit, i.e., from 2008 to 2026.

137. In light of the aforesaid findings, this Court deems it appropriate to
award nominal damages amounting to Rs. 20,00,000/- in favour of the
plaintiff for the loss and injury suffered by the plaintiff. The aforesaid amount
shall be paid by the defendant within a period of eight (8) weeks.

138. It is clarified that the said amount is not towards actual loss or damage
suffered by the plaintiff but as a minimal compensation in light of the
conclusion of the Court that the defendant has infringed the plaintiff’s mark

Costs

139. Counsel for the plaintiff presses for actual costs of litigation in relation
to the present suit.

140. In this regard, a reference may be made to Section 35 of the Code of
Civil Procedure, 1908 as applicable to the commercial disputes:

“35. Costs.– (1) In relation to any Commercial dispute, the Court,
notwithstanding anything contained in any other law for the time being in
force or Rule, has the discretion to determine:

(a) Whether costs are payable by one party to another;

                                  (b)    The quantum of those costs; and
                                  (c)    When they are to be paid

Explanation.–For the purpose of clause (a), the expression “costs” shall
mean reasonable costs relating to–

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(i) the fees and expenses of the witnesses incurred;

(ii) legal fees and expenses incurred;

(iii) any other expenses incurred in connection with the proceedings.
(2) If the Court decides to make an order for payment of costs, the general
rule is that the unsuccessful party shall be ordered to pay the costs of the
successful party:

Provided that the Court may make an order deviating from the general rule
for reasons to be recorded in writing.”

[emphasis supplied]

141. A reference may also be made to Rule 2 of Chapter XXIII of the Delhi
High Court (Original Side) Rules, 2018, which is set out below:

“2. Imposition of actual costs. – In addition to imposition of costs, as
provided in Rule 1 of this Chapter, the Court shall award costs guided by
an upto actual costs as borne by the parties, even if the same has not
been qualified by parties, at the time of decreeing or dismissing the suit.
In this behalf the Court will take into consideration all relevant factors
including (but not restricted) the actual fees paid to the Advocates/
Senior Advocates; actual expenses for publication, citation etc.; actual
costs incurred in prosecution and conduct of the suit including but not
limited to costs and expenses incurred for attending proceedings,
procuring attendance of witnesses, experts etc.; execution of
commissions; and all other legitimate expenses incurred by the party;
which the Court orders to be paid to any party.

In addition to imposition of costs as above, the Court may also pass a
decree for costs as provided in Sections 35-A and 35-B of the Code or any
applicable law.”

[emphasis supplied]

142. The Supreme Court in Uflex Limited v. Government of Tamil Nadu32
has laid down the principles for determining costs in commercial matters. The
relevant observations of the Supreme Court are set out below:

“55. We may note that the common thread running through all these three
cases is the reiteration of salutary principles: (i) costs should ordinarily
follow the event; (ii) realistic costs ought to be awarded keeping in view
the ever-increasing litigation expenses; and (iii) the costs should serve
the purpose of curbing frivolous and vexatious litigation. [Report No. 240
of the Law Commission of India]

32
2021 SCC OnLine SC 738

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56. We may note that this endeavour in India is not unique to our country
and in a way adopts the principle prevalent in England of costs following
the event. The position may be somewhat different in the United States but
then there are different principles applicable where champerty is
prevalent. No doubt in most of the countries like India the discretion is with
the court. There has to be a proportionality to the costs and if they are
unreasonable, the doubt would be resolved in favour of the paying party
[UK Civil Procedure Rule 44.2]. As per Halsbury’s Laws of England, the
discretion to award costs must be exercised judicially and in accordance
with reason and justice. [Vol. 10, 4th Edn. (Para 15)] The following
principles have been set out therein:

“In deciding what order (if any) to make about costs, the court must have
regard to all the circumstances, including:

(i) The conduct of all the parties;

(ii) Whether a party has succeeded on part of his case, even if he has
not been wholly successful; and

(iii) Any payment into court or admissible offer to settle made by a party
which is drawn to the court’s attention.

The conduct of the parties includes:

(a) Conduct before, as well as during, the proceedings and in particular
the extent to which the parties followed any relevant pre-action protocol;

(b) Whether it was reasonable for a party to raise, pursue or contest a
particular allegation or issue;

(c) The manner in which a party has pursued or defended his case or a
particular allegation or issue; and

(d) Whether a claimant who has succeeded in his claim, in whole or in
part, exaggerated his claim.” [ 10th Vol. 4th Edn. (Para 17)]
*** *** ***

58. We have set forth the aforesaid so that there is appreciation of the
principles that in carrying on commercial litigation, parties must weigh
the commercial interests, which would include the consequences of the
matter not receiving favourable consideration by the courts. Mindless
appeals should not be the rule. We are conscious that in the given facts of
the case the respondents have succeeded before the Division Bench though
they failed before the learned Single Judge. Suffice to say that all the
parties before us are financially strong and took a commercial decision to
carry this legal battle right up to this Court. They must, thus, face the
consequences and costs of success or failure in the present proceedings.”

[emphasis supplied]

143. The present suit was instituted as far back in 2008 and involved
multiple hearings. Additionally, Local Commissioner was appointed by this

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Court to record evidence.

144. As discussed above, the plaintiff has succeeded in establishing a case

for infringement of its mark by the defendant.

145. Taking into account the aforesaid position, I am of the view that in the
facts and circumstances of the present suit, the plaintiff is entitled to recover
actual costs from the defendant.

146. In view of the above, for the purposes of calculation of actual costs, the
plaintiff shall file its bill of costs in terms of Rule 5 of Chapter XXIII of the
Delhi High Court (Original Side) Rules, 2018 within four (4) weeks. For this
purpose, the representatives of the plaintiff shall appear before the Taxation
Officer on 14th July 2026, who shall determine the actual costs incurred by the
plaintiff in the present suit.

147. Costs as determined by the Taxation Officer shall be paid by the
defendant within a period of eight (8) weeks from the date of determination.

Relief

148. A decree is accordingly passed in favour of the plaintiff and against the
defendant in the following terms:

(i) Permanent injunction restraining the defendants, their proprietor,
partners, principal officers, servants, agents, dealers, distributors
and/ or other representatives from manufacturing, selling, offering
for sale medicinal preparations and other allied or cognate goods
under the mark CLAVIX or any other mark identical with or

deceptively similar to the plaintiff’s mark
registered under trade mark no.806651 in class 5 amounting to
infringement;

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(ii) Nominal damages to the extent of Rs.20,00,000/-;

(iii) Actual costs.

149. Let decree sheet be drawn up accordingly.

150. All pending applications stand disposed of.

AMIT BANSAL
(JUDGE)
APRIL 28, 2026
at

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