Glaxo Group Limited vs Shreya Life Sciences Private Limited

CNR No : HCBM020120912025


Judgement-COMMP-12-2026-F-1.docx
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
Digitally
signed by
CHAITANYA
ASHOK
JADHAV
Date:
2026.10.28
18:02:46
+0530
IN ITS COMMERCIAL DIVISION
CHAITANYA
ASHOK
JADHAV
COMMERCIAL MISCELLANEOUS PETITION NO. 12 OF 2026
Glaxo Group Limited …Petitioner
Versus
1. Shreya Life Sciences Pvt. Ltd.
2. Registrar of Trade Marks …Respondents
Mr. Hiren Kamod a/w Ms. Bhavya Shah, Mr. Jaskaran Singh, Ms.
Urfee Roomi, Vanshika Bansal, Janaki Arun, Mujtaba Ambekar i/b A
& P Partners, for Petitioner.
Mr. Aniket Gautam a/w Mr. Siddharth Kurrich, Adv. P. Amrut, for
Respondent No. 1.
CORAM: SOMASEKHAR SUNDARESAN, J.
RESERVED ON: AUGUST 5, 2026
PRONOUNCED ON: OCTOBER 28, 2026
JUDGEMENT :
Context and Factual Background:
1. Glaxo Group Limited (“ Glaxo ”), the Petitioner, seeks cancellation of
Trade Mark Registration No. 5001470 (“ Impugned Registration ”) for the
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mark ‘LEFOXIN BIOX’ in Class 5 (“ Impugned Mark ”). Shreya Life Sciences
Pvt. Ltd. (“ Shreya ”), the Respondent No. 1, is the registered proprietor of the
Impugned Mark. The captioned Rectification Petition is filed under Section 57
of the TM Act, 1999 (“ TM Act ”).
2. Glaxo is a company incorporated in England and Wales. It is part of the
GSK group. It owns Trade Mark Registration No. 177607 for ‘LANOXIN’, also
in Class 5 (“ Glaxo Mark ”), which has been in place since December 17, 1956,
and has been kept renewed from time to time and is valid until December 17,
2035. LANOXIN is used by Glaxo for tablets containing digoxin , which are
prescribed for cardiac failure and supraventricular arrhythmias. Glaxo relies
on use of LANOXIN in India in this manner since the 1950s. It has sought to
document sales in India since 1958 and seeks to place its sales figures on
record in a sealed cover.
3. Shreya is an Indian pharmaceutical company in the specialty injectables
business. Its facilities are at Aurangabad and Roorkee. Shreya applied for the
Impugned Mark on June 11, 2021, on a proposed-to-be-used basis, for
medicinal and pharmaceutical preparations. The application was advertised
in Trade Marks Journal No. 2009 dated July 19, 2021. Registration was
granted on December 9, 2021. Glaxo did not file any Notice of Opposition at
that stage.
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4. The Registrar of Trade Marks (“ Registrar ”) is Respondent No. 2. The
Registrar has not participated in these proceedings.
5. Shreya uses the Impugned Mark on levofloxacin tablets, which are
antibiotics. Shreya says it makes the tablets at Aurangabad only for export to
Russia, Ukraine, Uzbekistan, Belarus, Kazakhstan and other countries, and
asserts that nothing is sold in India. Shreya claims exports since 2006-07. It
relies on a turnover chart and invoices.
6. Glaxo accepts that Shreya exports the antibiotic tablets and does not sell
them in India. However, Glaxo contends that the Impugned Mark is
advertised in India on third-party websites, which Shreya says is aimed only at
its export markets.
7. Glaxo contends that it learnt of the Impugned Registration only in June
2024 and an investigation in July 2024 found Levofloxacin tablets under the
Impugned Mark being exported from Aurangabad. Glaxo sent a cease-and-
desist notice on August 16, 2024, after which the parties traded notices with
Shreya declining to stop use or to cancel the Impugned Registration. This
Rectification Petition has been affirmed by Glaxo on April 5, 2025.
8. Two other proceedings between the parties should be noted. First ,
Glaxo has instituted Commercial IP Suit (L) No. 12430 of 2025 against Shreya,
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which falls outside the roster of this Bench. Neither party has urged any
submission about its contents and its potential relevance for these rectification
proceedings. Second , on April 24, 2026, another Bench of this Court allowed
Glaxo’s petition for removal of Shreya’s PAXIL registration under Section 47
of the TM Act. That petition concerned a different mark and the ground was
one of non-use. Glaxo cites it for the meaning of “person aggrieved”.
Grounds for Rectification and Parties’ Contentions:
9. Glaxo invokes Section 57(2) of the TM Act, read with Sections 11(1),
11(3), 11(10) and 18(1). It says the Impugned Registration was made without
sufficient cause and wrongly remains on the Register of Trade Marks
(“ Register ”). The grounds pleaded are:
A] The Glaxo Mark is an earlier mark. It was adopted and has been
in open and continuous use since the 1950s and was registered in 1956
for pharmaceutical goods;
B] The Impugned Mark, LEFOXIN BIOX, is nearly identical to the
Glaxo Mark, LANOXIN, visually and phonetically. Shreya has only
replaced the letters “AN” with “EF”;
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C] Shreya adopted the Impugned Mark in bad faith. It knew, or
ought to have known, of the Glaxo Mark;
D] Shreya is not the bona fide proprietor of the Impugned Mark
within the meaning of Section 18(1) of the TM Act;
E] The Impugned Registration is contrary to public interest and
public health. Confusion between the two pharmaceutical products,
with completely different applications, could have serious
consequences.
10. Shreya contends that Glaxo cannot be considered a “person aggrieved”.
That apart, the marks are composite, to be considered as a whole, and just a
part of LEFOXIN BIOX cannot be compared with LANOXIN. The underlying
pharmaceutical compounds are different, their applications differ and both
necessitate prescription by medical practitioners and there can be no scope for
confusion. Glaxo has been late in filing this Petition since the registration took
place in 2021 with no opposition at the time of advertisement of the proposed
mark. Shreya is willing to undertake that it would not cater to the Indian
market at all and on that basis, Glaxo’s concerns may also stand addressed.
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Analysis and Findings:
11. Against this backdrop, the captioned Petition was taken up for final
disposal with the consent of the parties. I have heard at length, Mr. Hiren
Kamod, learned Advocate on behalf of Glaxo and Mr. Siddharth Kurrich,
learned Advocate on behalf of Shreya. With their assistance, I have examined
the material on record and the case law cited by them. The following points
arise for determination:
A] Whether Glaxo is a “person aggrieved” within the meaning of
Section 57 of the TM Act;
B] Whether the Impugned Mark is deceptively similar to LANOXIN,
such that there is a likelihood of confusion for purposes of Section 11(1)
(b) of the TM Act. Towards this end:
I] How are the marks to be compared, and what is the role of
‘BIOX’?
II] Is OXIN common to the trade?
III] What is the effect of different APIs, indications, prescribers
and prescription-only sale?
IV] What is the effect of the Impugned Mark being used only
for export?
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C] Whether Sections 11(3), 11(10) and 18(1) are independently
attracted, on the footing of bad faith or want of bona fides ; and
D] Whether delay, absence of proof of actual confusion and the
balance of hardship weigh against relief under Section 57.
Person aggrieved:
12. At the threshold, it may be stated that under Section 57(2) of the TM Act
any person aggrieved by any entry made in the Register may apply for
expunging such entry. Shreya contends that Glaxo is not a person aggrieved
since it has not shown a real and substantial grievance, only raising a
1 2
speculative grievance, relying upon Infosys and Hardie .
13. Besides, Shreya contends that the Impugned Mark is used solely for
export and there is no overlap of goods, consumers, prescribers or trade
channels in India. According to Shreya, the absence of injury or confusion is
borne out by Glaxo having been inactive for four years.
14. In my view, this contention is untenable. Without getting into whether
Glaxo’s contentions on merits necessitate rectification, for this issue, the core
1

Infosys Technologies Ltd. v. Jupiter Infosys Ltd. – (2011) 1 SCC 125, paragraphs 28 and 33
2
Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. – (2003) 11 SCC 92, paragraphs
30 to 32
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question to answer is whether Glaxo can be said to be a person aggrieved.
Evidently, Glaxo owns an earlier registration for LANOXIN in Class 5 for a
pharmaceutical product. The mark is phonetically and visually somewhat
similar and also used in the same field, although applied to a different
formulation, although such formulations with the respective brand names are
marketed in different markets. In view of the statutory protection available
through the Impugned Registration, Glaxo would be entitled to pursue, on
merits, its request for rectification. I am not satisfied that Glaxo is a complete
third party with no locus for its case to be shut out at the threshold. It is
settled law that the term “person aggrieved” must be liberally construed.
15. In Hardie , the Supreme Court dealt with the phrase “person aggrieved”
in some detail in the following words:
“30. The phrase "person aggrieved" is a common enough statutory precondition
for a valid complaint or appeal. The phrase has been variously construed depending
on the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the Act
contain the phrase. Section 46 deals with the removal of a registered trade mark from
the Register on the ground of non-use. This section presupposes that the registration
which was validly made is liable to be taken off by subsequent non-user. Section 56
on the other hand deals with situations where the initial registration should not have
been or was incorrectly made. The situations covered by this section include: (a) the
contravention or failure to observe a condition for registration; (b) the absence of an
entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any
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error or defect in the entry. Such type of actions are commenced for the "purity of the
Register" which it is in public interest to maintain. Applications under Sections 46
and 56 may be made to the Registrar who is competent to grant the relief. "Persons
aggrieved" may also apply for cancellation or varying an entry in the Register
relating to a certification trade mark to the Central Government in certain
circumstances. Since we are not concerned with a certification trade mark, the
process for registration of which is entirely different, we may exclude the
interpretation of the phrase "person aggrieved" occurring in Section 69 from
consideration for the purposes of this judgment.
31. In our opinion the phrase "person aggrieved" for the purposes of removal on
the ground of non-use under Section 46 has a different connotation from the phrase
used in Section 56 for cancelling or expunging or varying an entry wrongly made or
remaining in the Register.
32. In the latter case the locus standi would be ascertained liberally, since it
would not only be against the interest of other persons carrying on the same trade but
also in the interest of the public to have such wrongful entry removed. It was in this
sense that the House of Lords defined "person aggrieved" in the matter of Powelf's
Trade Mark:
"... although they were no doubt inserted , to prevent officious interference by
those who had no interest at all in the register being correct, and to exclude a
mere common informer, it is undoubtedly of public Interest that they should
not be unduly limited, inasmuch as it is a public mischief that there should
remain upon the register a mark which ought not to be there, and by which
many persons may be affected, who, nevertheless, would not be willing to
enter upon the risk and expense of litigation.
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Whenever it can be shown, as here, that the applicant is in the same trade as
the person who has registered the trade mark, and wherever the trade mark, if
remaining on the register, would, or might, limit the legal rights of the
applicant, so that by reason of the existence of the entry on the register he
could not lawfully do that which, but for the existence of the mark upon the
register, he could lawfully do. It appears to me he has a locus standi to be
heard as a person aggrieved."”
[Emphasis Supplied]
16. Hardie went on to distinguish rectification applications on the ground
of non-user and indicated a higher threshold to be met by a person aggrieved
on the ground of non-user. That is not relevant for the instant case, but what
is extracted above is squarely relevant. The principles enunciated in Hardie
3
have been applied by the Supreme Court further in Kabushiki and in
Infosys . Applying these long-standing principles, I have no hesitation in
rejecting the contention that Glaxo is not a person aggrieved as a matter of
jurisdictional fact. There is an element of public interest involved in the
matter, quite apart from the factual matrix involved in this case, namely
Glaxo’s own registration right since the 1950s, giving it locus and placing it
outside the realm of a disconnected busybody third party.
3

Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. – (2008) 10 SCC 766
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Deceptive Similarity:
17. Whether the Impugned Mark is deceptively similar to LANOXIN, so as
to attract Section 11(1)(b) of the TM Act is the question that is raised in these
proceedings. Section 11(1) provides:
“(1) Save as provided in section 12, a trade mark shall not be registered if,
because of—
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of
the goods or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.”
[Emphasis Supplied]
18. The Explanation to Section 11 defines an “ earlier trade mark ” as
follows:
“Explanation.— For the purposes of this section, earlier trade mark means—
(a) a registered trade mark or an application under section 18 bearing an earlier
date of filing or an international registration referred to in section 36E or convention
application referred to in section 154 which has a date of application earlier than
that of the trade mark in question, taking account, where appropriate, of the priorities
claimed in respect of the trade marks;
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(b) a trade mark which, on the date of the application for registration of the trade
mark in question, or where appropriate, of the priority claimed in respect of the
application, was entitled to protection as a well-known trade mark.”
[Emphasis Supplied]
19. Therefore, what is clear is that the jurisdictional fact necessary to attract
the prohibition on registration stipulated under Section 11(1) of the TM Act is
the similarity of the mark proposed to be registered with a mark already
registered, because of which similarity, there is a likelihood of confusion on
the part of the public. If these ingredients are met, registration of the latter
mark is prohibited. A registration that takes place in the teeth of such
prohibition is liable to be rectified under Section 57 of the TM Act.
20. Glaxo’s grievance is that the Impugned Mark is deceptively similar to
the mark Glaxo had already registered in its name. A registration in alleged
breach of Section 11(1) of the TM Act would attract the rectification
jurisdiction and therefore, as a party making out a prima facie case of
similarity, Glaxo would certainly be a person aggrieved. Therefore, without
prejudice to the merits of this contention, in the absence of such grievance
being completely fanciful and with no basis whatsoever, Glaxo would indeed
be a person aggrieved by the alleged likelihood of confusion that may arise out
of the similarity.
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Likelihood of Confusion from Similarity:
21. This brings me to whether the Impugned Mark can indeed be held to be
similar to the Glaxo Mark so as to have the likelihood of causing confusion in
the minds of the public. To deal with this question, one has to consider how to
compare the two marks, and which of the two parties is correct in canvassing
how such comparison must be made – in particular, whether the use of ‘BIOX’
dilutes the similarity by giving the Impugned Mark an element of
distinctiveness, or whether despite the use of ‘BIOX’ a reasonable finding of
similarity such that confusion is likely, can be arrived at.
22. Each of Glaxo and Shreya would contend that it is only comparing the
two marks as wholes. Therefore, the nuance that each side seeks to press into
service must be noticed at the threshold of this issue. One would also need to
consider the parties’ contentions on the channels relevant for their respective
products, and also their respective positions on Shreya using the Impugned
Mark only for the export market with Glaxo using it in the domestic as well as
international markets.
23. It is well settled that to test the likelihood of confusion, one has to apply
the standard of a person of average intelligence and imperfect recollection.
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24. Glaxo would submit that each of LANOXIN and LEFOXIN has three
syllables. BIOX is descriptive, Glaxo would contend, being an abbreviation of
“bacterial oxidation” but the dominant element of the Impugned Mark is
LEFOXIN. The pronunciation of the first syllables (‘LA’ and ‘LE’) and the last
syllables of LANOXIN and LEFOXIN are actually identical and only the
middle syllable differs. Therefore, Glaxo would contend that when one
compares the whole of the Impugned Mark with the whole of the Glaxo Mark,
a person of average intelligence and imperfect recollection, would not
differentiate between the two. This is clearly the element of public interest
envisaged in Section 11(1), Mr. Kamod would contend, to indicate that the
consumer would be deceived by the similarity, necessitating the rectification.
25. Shreya would contend that one must not forget that LANOXIN is one
word while LEFOXIN BIOX is two words. One cannot simply ignore BIOX
when assessing deceptive similarity, since BIOX provides a pointer to
“biological oxidation” and provides the distinctiveness necessary to take the
Impugned Mark out of any perception of likely confusion. The “OXIN”
portion is common to the pharmaceutical trade and suggests the
fluoroquinolone family, Shreya would submit. No trader can monopolise it.
The remainder of the marks, comprises very different prefixes “LEF” and
“LAN”. Glaxo would contend that it claims no exclusivity in OXIN. That
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apart, Shreya itself having registered LEFOXIN, cannot say that OXIN is
common to the trade.
26. Further, Shreya would contend that the active pharmaceutical
ingredient (“ API ”), indications and prescriptions of the drugs covered by the
marks differ widely. Both parties use the trade mark for prescription drugs.
All these factors need to be weighed when taking a view, Mr. Kurrich would
4 5
submit, invoking the law declared in Cadila-2001 , Intas , Sun Pharma-
6 7
Hetero , and Schering .
27. This is sharply contested by Mr. Kamod who submits that a stricter test
needs to be applied particularly to pharmaceutical products. Different APIs
and indications would not resolve the likelihood of confusion. Where marks
are similar, use of the marks on products deployed to cure completely different
ailments is even more dangerous, he would submit, also relying on Cadila-
2001 and on a decision of a Learned Division Bench of this Court in
8
Macleods Pharma . Mr. Kamod would point to a list of sixteen
4

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. – (2001) 5 SCC 73, paragraphs 35
and 36 (factors and weightage)
5

Intas Pharmaceuticals Ltd. v. Sun Pharma Laboratories Ltd. – 2026 SCC OnLine Del
4488, paragraphs 143 to 151
6

Sun Pharmaceuticals Laboratories v. Hetero Healthcare Ltd. – 2022 SCC OnLine Del
2580, paragraphs 43 and 44
7
Schering Corporation v. United Biotech (P) Ltd. – 2005 SCC OnLine Bom 546
8
Macleods Pharmaceuticals Ltd. v. Union of India – 2023 SCC OnLine Bom 408,
paragraphs 23 to 28
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Levofloxacin brands in the market to indicate that except for one brand called
Uloxin, there is no use of OXIN to indicate that this is common to the trade.
28. The parties also have a wide divergence on the relevance of Shreya being
present only in the export market. Mr. Kamod would contend that
manufacturing in India for export is also deemed use in India. The question is
confined to whether the entry of the Impugned Mark on the Register should
stand and it is totally irrelevant whether Shreya only sells outside India, it is
9
submitted in reliance upon Cadila-Sami . Mr. Kurrich would counter that
by contending that while export is “use” under Sections 29(6)(c) and 56 of the
TM Act, it would not presume that there can be confusion among consumers
in India, where nothing is sold in India. The doctors and pharmacists who see
each mark are different and separate and their paths would never converge for
confusion to emerge.
29. Against this backdrop, it would be appropriate to take up the facet of
exports first, particularly since Mr. Kurrich, on instructions, is willing to
submit to a condition that the Impugned Mark would be utilised solely for the
export market and that it would never be used for any product in India.
Section 56(1) of the TM Act reads thus:
9
Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai – 2011 SCC OnLine Bom 484,
paragraphs 63 to 68.
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“56. Use of trade mark for export trade and use when form of trade connection
changes.—
(1) The application in India of trade mark to goods to be exported from India or
in relation to services for use outside India and any other act done in India in relation
to goods to be so exported or services so rendered outside India which, if done in
relation to goods to be sold or services provided or otherwise traded in within India
would constitute use of a trade mark therein, shall be deemed to constitute use of the
trade mark in relation to those goods or services for any purpose for which such use
is material under this Act or any other law.”
[Emphasis Supplied]
30. Therefore, even if the mark is used essentially for exports, under Section
56(1) of the TM Act, it would follow that the use would constitute use of the
mark in India. Therefore, application of the Impugned Mark on
pharmaceutical products to be exported from India is, in the eyes of law, use of
the trade mark in India. This facet of the law is clearly declared by the
Learned Division Bench of this Court in Cadila-Sami , in a suit for
infringement and passing off. The following extracts (of the submissions and
their rejection) are noteworthy:
“63. Mr. Dwarkadas submitted that the question of infringement or passing off
cannot and does not arise as the appellant neither sells nor intends selling its
products in India under the said mark “Hb TONE”. The appellant only exports its
products bearing the said mark. In any event, according to him, section 56 does not
apply to an action for passing off. He submitted that this is so because to establish
infringement the plaintiff does not have to show user, commercial or otherwise.
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However, in the present case of passing off “use” is necessary. Accordingly, he
submitted that if a mark is not used in India, there is no question of protecting either
the proprietor of the mark or the general public. Therefore, a passing off action does
not fall within the ambit of section 56.
65. It is admitted that the appellant applies the impugned mark to the goods in
India which are thereafter exported. The impugned mark has thus been applied to the
appellant's goods within the meaning of section 56. Had the mark been applied in
relation to goods to be sold within India, it would undoubtedly have constituted use of
the trade mark in India. By virtue of section 56, the application in India of the trade
mark, although to goods to be exported from India, is deemed to constitute use of the
trade mark in relation to the said goods “for any purpose for which such use is
material under the Trade Marks Act, 1999, or any other law”. The plain language of
section 56, therefore, constitutes the application in India of trade marks even to
goods to be exported from India as use of the trade mark in relation to those goods
for any purpose for which such use is material under the Act or any other law.
68. Thus section 56 would clearly apply to an action for infringement if the trade
mark is applied in India to goods to be exported from India as the same is deemed to
constitute use of a trade mark in relation to those goods for any purpose for which
such use is material under the Act.”
[Emphasis Supplied]
31. While the aforesaid observations have been made in a suit for
infringement and passing off and not in rectification proceedings, the
principle applied is obviously applicable to rectification proceedings as well.
Any claim of infringement can only arise in relation to a registered mark. By
the registration, goodwill is sought to be established from Shreya’s exports
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from India. The application of the Impugned Mark in India for exports from
India is naturally use in India to generate goodwill in India. This is precisely
why any registrant such as Shreya, who may focus on the export market would
find it necessary to even contemplate registration in India.
32. That brings me to the comparison of the two marks. The Glaxo Mark
and the Impugned Mark are extracted below:
Glaxo Mark Impugned Mark
L AN OXIN L EF OXIN BIOX
API: Digoxin , prescribed in treatment of API: Levofloxacin , prescribed for
abnormal heart rhythm and cardiac failure. treatment of bacterial infections.
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33. The guidance on how to compare two marks has been well stated in
Cadila-2001 in the following words, which Courts have regularly applied in
rectification proceedings:
“35. Broadly stated, in an action for passing off on the basis of unregistered trade
mark generally for deciding the question of deceptive similarity the following factors
are to be considered:
(a) The nature of marks i.e. whether the marks are word marks or label
marks or composite marks i.e. both words and label works.
(b) The degree of resemblance between the marks, phonetically similar
and hence similar in idea.
(c) The nature of the goods in respect of which they are used as
trademarks.
(d) The similarity in the nature, character and performance of the goods
of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree of care
they are likely to exercise in purchasing and/or using the goods.
(f) The model of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks."
36. Weightage to be given to each of the aforesaid factors depending upon facts of
each case and the same weightage cannot be given to each factor in every case.”
[Emphasis Supplied]
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34. Evidently, these guidelines give a wide play in the joints when
adjudicating for likelihood of confusion. The issue to address in this case is
how to compare the Impugned Mark with the Glaxo Mark.
35. Both the competing marks in the matter at hand are word marks. Both
the marks are registered with an intention to use them with respect to
medicinal and pharmaceutical preparations. They have a resemblance, which
is dealt with later below. Going by what they are registered for, there is no
obligation that they should be deployed only for one or the other type of API or
formulation. That they actually are deployed for specific formulations is a
subsequent fact but there is nothing to stop the mark from being used for
other formulations. Both the products for which the respective marks are
used are scheduled products necessitating a prescription for pharmacists and
chemists to dispense them. The surrounding circumstances too may be taken
into account.
36. Each party purports to contend that the marks should be read as a
whole, but each in its own way has made submissions that border on
dissecting the marks. The comparison has to necessarily be made of
LANOXIN and LEFOXIN BIOX as composite wholes without ignoring either
OXIN or BIOX. That apart, the test to apply considering the provisions of
Section 11(1) of the TM Act is to examine the likelihood of confusion rather
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than demonstrated proof of confusion. Whether a person of average
intelligence and imperfect recollection is likely to be confused is the question
to ask at the time of registration. If that question is to be answered in the
affirmative at the time of registration, then the registration would call for
rectification.
37. Indeed, an element of a prolonged period of use during which one is
able to demonstrate actual absence of confusion can arise in suits for
infringement and passing off since the temporal element of assessment would
be dynamic as to the time when the suit is filed. The ability to prove absence
of confusion with evidence can lead to influencing the decision in the suit, in
particular, on the facet of damages. However, in the case of rectification
proceedings, the timing of assessment must necessarily be whether there is a
likelihood of confusion at the time of registration.
38. In my opinion, the Impugned Mark is phonetically close to the long-
standing and registered Glaxo Mark. Indeed, LEFOXIN is the dominant
element of the Impugned Mark, which also has BIOX, virtually like a suffix.
Both parties attribute BIOX to oxidation – one terms it bacterial oxidation
and the other terms it biological oxidation, the former being a subset of the
latter. That brings in an element of descriptiveness about the element of
BIOX in the Impugned Mark, and therefore even while the two whole marks
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are to be compared, the element of differentiation introduced by BIOX is
indeed diffused – virtually more akin to a suffix. In any case, the dominant
feature of the Impugned Mark is LEFOXIN.
39. As regards visual comparison, the word structure of the two marks is
very similar, indeed, with the BIOX suffix. The difference of ‘AN’ (in
LANOXIN) and ‘EF’ (in LEFOXIN) is very subtle. There is a potential for one
to assume that LEFOXIN BIOX is a variant of LANOXIN, when seen from the
prism of a person of average intelligence and imperfect recollection. When
Shreya filed the application for registration of the Impugned Mark, the
Registrar did not flag the existence of Glaxo Mark, and Glaxo too did not
initiate opposition proceedings, which led to the Impugned Mark getting
registered. In these rectification proceedings, one has to examine whether a
direction to remove the Impugned Mark is necessary in deference to the
scheme of the statute.
40. On a careful examination of the record, I am not persuaded that OXIN
should be dissected out of the marks and be held to be common to the trade.
In fact, only one of the sixteen Levofloxacin brands placed on record
(ULOXIN) carries it. In any case to treat OXIN as common to the trade and to
discern the rest would militate against the anti-dissection rule without taking
the marks as a whole.
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41. To my mind, when Shreya applied for registration, the Registrar ought
to have flagged the existence of the Glaxo Mark, in view of the phonetic and
visual resemblance of the Impugned Mark with the Glaxo Mark. To my mind,
the addition of BIOX appears to indicate that the Impugned Mark is a variant
of the Glaxo Mark. This, on the face of it, seems to be the core issue that
stands out when one assesses these proceedings from a commonsensical
perspective applying the standard of a person of average intelligence with
imperfect recollection.
42. The difference in the APIs involved in the products to which the
competing marks are currently applied is also an issue that arises for
consideration. The Glaxo Mark is used on Digoxin tablets, used for treating
heart conditions. The Impugned Mark is used on antibiotic Levofloxacin
tablets used to treat bacterial infections. Each party contends that this
difference cuts differently – Glaxo would contend that there would be
disastrous consequences for someone who needs heart medicine consuming
antibiotics instead or the other way around while Shreya would contend that
the sheer divergence of the two would mean that there would be no scope for
overlap – a heart specialist would not prescribe antibiotics while a physician
treating antibiotics would not prescribe a heart medicine. Both the drugs are
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prescription drugs and only a qualified medical practitioner would prescribe
them and qualified pharmacists would supply them.
43. The key differentiator in the approach to rectification proceedings as
opposed to trial of suits is that the likelihood of confusion at the time of
registration is what is up for consideration. Glaxo has evidently had a
continuous use of the Glaxo Mark right since the 1950s, while Shreya has
registered the Impugned Mark only 2021. Neither the Glaxo Mark nor the
Impugned Mark is identified as being intended to be applied to any specific
pharmaceutical formulation with specific APIs. The Impugned Mark is
registered in Class 5 in respect of “ medicinal and pharmaceutical
preparation ”, and at the time of registration, it was applied for on a proposed-
to-be-used basis. The Glaxo Mark was registered in 1956 in Class 5 in respect
of “ medicinal, pharmaceutical and veterinary preparations ”.
44. Evidently, for registration purposes, there having been no predefined
scope of use of the mark, with registrants obviously wanting the broadest
flexibility possible when getting registration, the question is whether the
actual use to which the trade mark is put is restrictive of what other uses it can
be put to within the same broad-spectrum range of medicinal and
pharmaceutical preparations. The only difference between the two
registrations is that Glaxo’s registration also spoke of veterinary preparations.
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Technically, nothing in law prevents either party from launching any other
product with the respective registered mark. In a commercial dispute and a
suit, the facts, as they have dynamically moved after registration, would have a
more significant influence on the assessment and adjudication. In
rectification proceedings that are filed reasonably within time, such exercise
would involve (to borrow medical terminology) more of a laboratory diagnosis
and less of a clinical diagnosis.
45. From the material placed on record by Glaxo it is apparent that the
Glaxo Mark, LANOXIN had been in use for Digoxin all around the world for
over six decades. This is a prolonged use for identification of the Glaxo Mark
as a brand name for that API. Whether a phonetically and visually similar
trade mark could have been registered for medicinal and pharmaceutical
preparations is the core issue in these proceedings. In this context, it is
important to examine how the case law guides assessment of this core issue.
46. The Supreme Court in Cadila-2001 (which each party has sought to
highlight) has dealt with the issue of how to approach likely confusion in the
context of pharmaceutical products. The Supreme Court was dealing with
FALCIGO AND FALCITAB, products dealing with the same ailment with
different composition . The Supreme Court declared that in the field of
pharmaceuticals, the likelihood of confusion has to be more conservatively
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construed since confusion between two medicinal products can have
disastrous consequences.
47. Relying and building on this, a Learned Division Bench of this Court, in
Macleods , dealt with a conflict between OFLOMAC (used for Ofloxacin
tablet) and OFRAMAX (used for Ceftriaxone injection). Macleods comes
closest to the facts of this case, particularly since it also dealt with completely
different APIs and even different means of administration. While this
judgement provides significant guidance on how to address the matter in
hand, for completeness it would also be necessary to engage with the decision
of a Learned Division Bench of the Delhi High Court in Intas , which dealt
with a conflict between BEVATAS (used on Bevacizumab) and BEVETEX
(used on Paclitaxel), both anti-cancer drugs, to set aside a permanent
injunction granted post-trial after appreciation of evidence.
48. Both Glaxo and Shreya point to Cadila-2001 on how to read it while
Glaxo leans on Macleods , particularly as a binding declaration of law by the
Learned Division Bench while Shreya would lean on Intas to indicate how it
fits the facts of this case. It is noteworthy that Cadila-2001 was rendered in
a suit for passing off and sets a stricter approach for medicines to indicate that
when compositions vary, the test becomes even stricter and not more lax.
Macleods is indeed rendered in the context of rectification proceedings,
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where the rectification order was challenged in a Writ Petition. Intas deals
with an appeal against a final decree where it was found that the original
plaintiff admittedly had no interest left in the cause of action and purported to
pursue the suit in public interest.
49. In Cadila-2001 , after the extraction and citing with approval, of
various American judgements on the point, the Supreme Court held that even
in prescription drugs likelihood of errors can have serious consequences, a less
liberal standard has to be applied when assessing likelihood of confusion. The
following extracts are noteworthy:
“22. It may here be noticed that Schedule ‘H’ drugs are those which [can] be sold
by the chemist only on the prescription of the doctor but Schedule ‘L’ drugs are not
sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it
is not uncommon that because of lack of competence or otherwise, mistakes can arise
specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals
Co. v. Carmick Laboratories Inc. it was held as under: “Confusion and mistake is
likely, even for prescription drugs prescribed by doctors and dispensed by
pharmacists, where these similar goods are marketed under marks which look alike
and sound alike.”
25. The drugs have a marked difference in the compositions with completely
different side effects, the test should be applied strictly as the possibility of harm
resulting from any kind of confusion by the consumer can have unpleasant if not
disastrous result. The courts need to be particularly vigilant where the defendant’s
drug, of which passing-off is alleged, is meant for curing the same ailment as the
plaintiff’s medicine but the compositions are different. The confusion is more likely in
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such cases and the incorrect intake of medicine may even result in loss of life or other
serious health problems. […]
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.
29. In the book titled as McCarthy on Trade Marks, it is observed in the footnote
at page 23-70 as under: “Physicians and Pharmacists are knowledgeable in their
fields does not mean they are equally knowledgeable as to marks and immune from
mistaking one mark from another. (Schering Corp v. Alza Corp)
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, nor merely inconvenient. Noting the
frailty of human nature and the pressures placed by society on doctors, there should
be as many clear indicators as possible to distinguish two medicinal products from
each other. It is not uncommon that in hospitals, drugs can be requested verbally
and/or under critical/pressure situations. Many patients may be elderly, infirm or
illiterate. They may not be in a position to differentiate between the medicine
prescribed and bought which is ultimately handed over to them. This view finds
support from McCarthy on Trade Marks, 3rd Edn., para 23.12 of which reads as
under: “The tests of confusing similarity are modified when the goods involved are
medicinal products. Confusion of source or product between medicinal products may
produce physically harmful results to purchasers and greater protection is required
than in the ordinary case. If the goods involved are medicinal products each with
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different effects and designed for even subtly different uses, confusion among the
products caused by similar marks could have disastrous effects. For these reasons, it
is proper to require a lesser quantum of proof of confusing similarity for drugs and
medicinal preparations. The same standard has been applied to medical products
such as surgical sutures and clavicle splints.
33. The decisions of English courts would be relevant in a country where literacy
is high and the marks used are in the language which the purchaser can understand.
While English cases may be relevant in understanding the essential features of trade
mark law but when we are dealing with the sale of consumer items in India, you have
to see and bear in mind the difference in situation between England and India. Can
English principles apply in their entirety in India with no regard to Indian
conditions? We think not. In a country like India where there is no single common
language, a large percentage of population is illiterate and a small fraction of people
know English, then to apply the principles of English law regarding dissimilarity of
the marks or the customer knowing about the distinguishing characteristics of the
plaintiff's goods seems to overlook the ground realities in India. While examining
such cases in India, what has to be kept in mind is the purchaser of such goods in
India who may have absolutely no knowledge of English language or of the language
in which the trade mark is written and to whom different words with slight difference
in spellings may sound phonetically the same. […..] 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
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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]
50. What becomes clear is that in the case of medicinal products, the
scrutiny of similarity and likelihood of confusion is meant to be heightened.
Indeed, Cadila-2001 was rendered in the context of an interim injunction
but in Macleods , the Learned Division Bench of this Court refused to
interfere with a rectification effected by the Intellectual Property Appellate
Board, applying the law declared in Cadila-2001 . Not only is Macleods
binding on any Single Bench of this Court, it deals with a factual matrix that is
quite similar to the matter in hand. That case involved two different APIs
administered in two different forms (tablet and injection). The Learned
Division Bench summarised the applicable test in the following words:
“25. The principles which are emerging from the decisions set out hereinabove are
summarised in the following manner:
(a) When a particular medicinal or a pharmaceutical product is involved as the
impugned trade mark which may deceive the public or cause a confusion with respect
to another trademark, it is the Court's primary duty to take utmost care to prevent any
such possibility of confusion in the use of trademarks.
(b) Confusion in case of a non-medicinal or a nonpharmaceutical product may
only cause economic loss to the person, but on the other hand, a confusion in terms of
medicinal or a pharmaceutical product may have disastrous effect on the health.
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Hence, it is proper to require a lesser quantum of proof of confusing similarity for
such products.
(c) The Court may not speculate as to whether there is a probability of confusion
between the marks. Mere existence of the slightest probability of confusion in case of
medicinal product marks, requires that the use of such mark be restrained.
(d) While arriving at a conclusion with respect to the similarity and confusion
between medicinal products, the same should be examined from the point of view of
an ordinary common man of average intelligence instead of that of a specialised
medicinal practitioner. Courts must decide the same from the view point of man with
average intelligence considering multiple factors such as the first impression of the
mark, salient features of both the products, nature of the commodity, overall
similarity and the possibility of the same creating a confusion amongst the public at
large.
(e) The primary duty of the Court is towards the public and the purity of the
register. Duty of the Court must always be to protect the public irrespective of what
hardship or inconvenience it may cause to a particular party whose trade mark is
likely to deceive or cause confusion.
(f) The following rules of comparison can be culled out from various
pronouncement of Court from time to time.
(i) Meticulous comparison is not the correct way.
(ii) Mark must be compared as whole.
(iii) First impression.
(iv) Prima facie view is not conclusive.
(v) Structural resemblance.
(vi) Similarity in idea to be considered.
(g) The main object of maintaining trade mark register is that the public should
know whose goods they are buying. It is therefore essential that the register should
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not contain the trade mark which is identical by which purchaser may likely to be
deceived by thinking that they are buying the goods of a particular company/industry
whereas he is buying the goods of another company/industry. It is necessary to
consider the factual aspects of this case in the light of the above principles.”
[Emphasis Supplied]
51. The aforesaid detailed articulation would support my impression that
the Impugned Mark registered in 2021 was clearly likely to cause confusion
between the Impugned Mark and the Glaxo Mark. Therefore, the Impugned
Mark ought not to have been registered and warrants rectification of the
Register.
52. It would be appropriate to deal with Intas , which is presented as a
deviation from the trend flowing from Cadila-2001 and adopted in
Macleods , namely, of extreme conservatism to be exercised in the case of
pharmaceuticals. Indeed, Intas dealt with non-interchangeable drugs as
dissimilar goods and holds that evidence of actual confusion would be
necessary. This is the basis on which Mr. Kurrich fashions his submissions in
this matter too. However, clearly that judgement was in the case of an appeal
against a final decree disposing of a suit. In that context, the Learned Division
Bench appreciated the evidence and found that there was a complete absence
of any confusion despite evidence having been led and the same having been
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subjected to trial. The original plaintiff also clearly purported to have pursued
the suit in public interest having admittedly given up its claim for damages.
This was observed as being a pointer to vexatious proceedings, which should
have led to the suit being disposed of without expending energy on
adjudicating issues. The Supreme Court has since set aside the finding on
vexatious proceedings and the consequential directions on costs, and has
otherwise declined to interfere with the judgement.
53. In Intas , it was held that in a final decree, infringement and likelihood
of confusion on the part of the public ought not to be determined solely on a
bare structural and phonetic comparison of the rival marks undertaken by the
Court itself. Since evidence had been led, it had to be appreciated to arrive at a
view. On facts, BEVETEX was registered in 1990 but put to use only in 2015,
and BEVATAS was launched within a year thereafter, in October 2016. It is a
finding of an absence of evidence-based assessment of the allegation of
deceptive similarity and likelihood of confusion, applying the factors set out in
Cadila-2001 that led to the outcome in Intas . On facts, it was found that
the packing was distinctive, the class of purchasers were different, the price
points were different, and each drug was to be administered only in a closed
oncology clinic under the supervision of an oncologist. That apart it was found
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that the ‘BEV’ and ‘BEVA’ in the rival marks ‘BEVATAS’ and ‘BEVETEX’ were
publici juris for anti-cancer drugs containing the molecule ‘Bevacizumab’.
54. Arguably, Intas may appear to be a deviation from Cadila-2001 but it
is essentially a decision that turned on the appellate view that the tests laid
down in Paragraph 35 of Cadila-2001 had not been applied during the trial
of the evidence that led to the judgement. The Learned Division Bench also
held that Cadila-2001 was rendered in the context of passing off by an
unregistered mark while in Intas , a registered and statutorily protected trade
mark was assailed claiming infringement. It was found that the original
plaintiff led no evidence whatsoever from any oncologist, chemist, or trained
nurse to show even “the slightest possibility of confusion” for the standard set
in Cadila-2001 to be met. The two competing drugs being administered in
controlled oncology settings under supervision of an oncologist, it was held
that there was no possibility of substitution, intentional or accidental. This is
why Shreya would contend that more cogent evidence of actual confusion
ought to have been brought to bear in these proceedings as well.
55. In my view, Intas turns on its own facts. To begin with it was a suit and
not the rectification jurisdiction, a distinction even the Learned Division
Bench made in that very judgement. For example, distinguishing United
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10
Biotech , which had directed rectification dealing with competing marks
FORZID and ORZID, it was held in Intas that rectification directed in that
case was distinguishable because the Court had concluded that on a visual and
phonetic comparison the FORZID was deceptively similar to the earlier
registered mark ORZID. Both marks were used for the same drug molecule
(Ceftazidime), both were administered intravenously, where the risk arose
from direct substitutability of identical therapeutic agents with differing
dosages. It was found that the Court’s concern was precisely such
interchangeability of drugs leading to dosage errors, while on evidence, in
Intas , the two drugs were fundamentally different and not substitutable.
56. The guidelines stipulated in Cadila-2001 that were found to have not
been followed, necessitating the ruling in Intas , provide a range of factors to
be applied. I have applied those to the fact of the case. That apart, noticing
these guidelines, the Learned Division Bench of this Court, by which I am
bound, has directed in Macleods , how the rectification court must approach
the matter. I have applied those factors as well. I have compared the marks as
a whole and gone by the first impression bearing in mind the likelihood of
confusion.
10

United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. – 2012 SCC OnLine
Del 2942
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57. To my mind in a passing off action, the competing marks being
substitutable is a classic ingredient for deception of one competitor by
another. In rectification proceedings, the Registrar has to examine the
likelihood of confusion, and therefore, whether the competing marks are
meant to operate for the same formulation is not really in issue. Going by the
purpose for registration, both the marks are registered in respect of medicinal
and pharmaceutical preparations. That should suffice to answer the test laid
out in Cadila-2001 . Phonetically, visually and structurally, the Impugned
Mark, in my view, is reasonably similar to the Glaxo Mark such that confusion
is likely. At the risk of repetition, there is no real barrier to deploy the marks
for other formulations, and it is purely a matter of effective communications.
When the Impugned Mark was registered the Glaxo Mark had been in use for
over six decades. This clearly indicated the likelihood of confusion but in the
absence of opposition from Glaxo, the registration went through without the
Registrar noticing the similarity.
58. Therefore, for the aforesaid reasons, in my view, the ruling in Intas
does not turn the needle in Shreya’s favour in this case, despite the seemingly
logical means of attempting to fit the factual matrix of this case into the
framework of reasoning found in Intas . The products for which these marks
are currently being used are not administered in such controlled
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circumstances as found in Intas (only clinically administered under
oncologist supervision). In contrast, the risk of doctors, chemists and
pharmacists making an error and ending up dispensing an antibiotic to a heart
patient or a heart medicine to a person with a bacterial infection is precisely
the kind of risk highlighted by Cadila-2001 and further elaborated in
Macleods .
59. In these circumstances in my view, a case has been made out for
rectification and the directions that would follow later in this judgement.
Bad faith and want of bona fides:
60. Glaxo also relies on Sections 11(3), 11(10) and 18 of the TM Act to
contend bad faith and dishonest intention in the very adoption of the
Impugned Mark. At the heart of this contention is the submission that
Shreya, being a sizeable pharmaceutical company, knew or ought to have
known of the Glaxo Mark, which has been sold in India since the 1950s and is
on the Register. It lacked diligence when applying. Honest adoption is no
defence if the mark has a likelihood of causing confusion. The Registry’s
failure to cite LANOXIN confers no right on Shreya, whose subsequent use
cannot cure a dishonest adoption.
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61. Shreya would counter that with the contention that the Impugned was
conceived by it independently for its Levofloxacin products. The Registry
examined and advertised the Impugned Mark without citing LANOXIN.
Glaxo too did not file any opposition. Shreya accepts that this is not
conclusive, but says it is a relevant circumstance, considering that the
rectification jurisdiction is rooted in equity. Nothing having been brought to
bear an intent to imitate LANOXIN or to trade on Glaxo’s goodwill, no case for
dishonesty is made out.
62. I have expressed my views on the likelihood of confusion in the earlier
segment of this judgement. To my mind, to indicate dishonesty in adoption,
one strong pointer would be the similarity of the products for which the mark
is used. In the instant case, Shreya has used the Impugned Mark for an
antibiotic and chosen mark LEFOXIN is somewhat linked to Levofloxacin .
Had Shreya had a dishonest intention in its adoption, it would have been
engaged in products in the field of heart ailments.
63. It appears to me that the other submission by Glaxo, namely, lack of
diligence when applying for registration is more probably the cause. It is likely
that the two pharmaceutical companies were unaware of each other’s actions.
Glaxo, too by its own showing, claims to have come to know about it about two
and a half years later, in June 2024, but filed these proceedings only in 2025.
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64. Dishonest adoption would necessitate having knowledge and
consciously seeking to steal a march while negligence would mean remaining
unaware and not carrying out the application with the diligence that is due.
Negligence and positive dishonest intent cannot coexist.
65. In the peculiar factual matrix involved, I am satisfied that this appears
to be a case of negligence rather than of a positive dishonest act to register the
Impugned Mark. Mr. Kamod points to the history of attempts to register
where an application filed in 2011 stood abandoned and was followed by a
fresh application filed on June 11, 2021. There is nothing to indicate positive
knowledge and one cannot lightly infer dishonesty without adequate evidence
to even create a reasonable preponderance of probability in favour of such
finding.
66. Having held that the Impugned Mark is liable to be rectified on account
of likelihood of confusion, in my opinion, it is not necessary to positively hold
that Shreya has been dishonest in its adoption, for which evidence does not
stand up. Mr. Kamod’s other proposition that honest adoption is no defence
to rectification of a demonstrably confusing mark seems far more plausible a
view than to summarily conclude that the adoption was per se dishonest.
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Delay and equities:
67. Equally, there is nothing to positively indicate that Glaxo was aware of
the registration of the Impugned Mark in 2021. Indeed, a public register can
be said to give constructive notice of the registration but equally, the same
public register would have given Shreya constructive notice of the Glaxo Mark.
Each party has traded the same accusation that it has to defend too.
68. There is nothing to indicate that Shreya knew about the Glaxo Mark as
there is nothing to indicate that Glaxo knew in 2021, contrary to its
contention, about the Impugned Mark. The former is a bit more possible
because of the sheer length of time for which the Glaxo Mark has been
registered, and that too worldwide, with Shreya primarily being an exporter.
Be that as it may, I am not satisfied that Shreya too has made out a case for
inferring unreasonable delay on the part of Glaxo in filing these proceedings
and that too such that it has lost its right to pursue rectification. The temporal
standard for acquiescence under Section 33 of the TM Act is five years and
awareness of such use. Even going by the filing of these proceedings, it is
apparent that it has been filed within four years of the registration. I am not
persuaded that the date of filing of these proceedings is fatal to Glaxo’s
entitlement to relief.
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69. Shreya has also applied to register LEFOXIN (Application No. 5285447,
filed on January 14, 2022) in Class 5. This was advertised in Trade Marks
Journal No. 2146-0 dated March 4, 2024. Glaxo has initiated opposition
proceedings against that application (Opposition No. 1331233) on July 4,
2024. This timeline is not inconsistent with the inferences made above.
Glaxo opposed within the four-month period from advertisement, which
accords with its case that it learnt of Shreya’s use in June 2024. This is noted
only for completeness and this judgement does not deal with the merits of that
case, although it appears that in that case, the element of BIOX is absent.
70. In the result, just as I do not hold against Shreya on the facet of
dishonesty in adoption, I do not hold against Glaxo on the facet of alleged
delay and loss of equity.
Summary of Conclusions:
71. To summarise my conclusions:
A] Glaxo is a person aggrieved. It is the proprietor of the earlier
registration for LANOXIN that has been in place since 1956, and the
Impugned Registration stands in the way of the rights it claims. The
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grievance is real and not speculative. This is so under Section 57(2) read
with Hardie , Kabushiki and Infosys ;
B] The Impugned Mark, LEFOXIN BIOX is similar to LANOXIN.
The test is the likelihood of confusion at the time of registration in 2021,
from the standpoint of a person of average intelligence and imperfect
recollection, and with the stricter approach that applies to medicinal
products under Cadila-2001 and Macleods . In particular:
I] The marks are compared as wholes. LEFOXIN is the
dominant element of the Impugned Mark. BIOX is descriptive
and diffuses the difference only marginally. Visually and
phonetically, the Impugned Mark reads as a variant of LANOXIN;
II] The record does not persuade me that OXIN is common to
the trade. Only one of the sixteen Levofloxacin brands placed on
record (ULOXIN) carries it. In any case, to treat OXIN as
common to the trade and to discern the rest would militate
against the anti-dissection rule without taking the marks as a
whole;
III] Different APIs, indications, prescribers and the
prescription-only status of both products do not dispel the
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likelihood of confusion. Both marks are registered for medicinal
and pharmaceutical preparations at large, and Cadila-2001 and
Macleods call for greater caution where medicines are
concerned;
IV] Use of the Impugned Mark only for export makes no
difference. Under Section 56(1), applying the mark in India to
goods meant for export is use in India;
C] A case of evidently dishonest adoption is not made out. The
record points more towards lack of diligence on the part of Shreya, and
not to a positive intent to imitate. Honest adoption is no answer to a
plea for rectification of a confusing mark. The Impugned Mark is
therefore rectified on the basis of Section 11(1)(b), and no separate
finding under Sections 11(3), 11(10) and 18(1) is considered necessary;
D] The alleged delay does not defeat relief on the ground of equities.
The Petition was filed within four years of registration and well within
the five-year period stipulated in Section 33 of the TM Act. Nothing
shows that Glaxo knew of the Impugned Registration before June 2024.
The absence of proof of actual confusion is not fatal, since the test in
rectification is the likelihood of confusion at registration
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notwithstanding prior use. Hardship to Shreya is mitigated by deferring
the removal date as set out below;
E] The offer by Shreya to restrict actual usage to exports too does not
assist since in the legal sense of “use”, whether one produces for exports
or for the domestic market is not relevant. Moreover, with the changing
nature of commerce with e-commerce platforms breaking territorial
boundaries, the conventional manner of trade in denomination of
territory would not be much relevant.
72. In the result, the Registrar is directed to remove the Impugned Mark
from the Register for the reason that when it was registered in 2021 on a
proposed-to-be-used basis, it carried with it a reasonable likelihood of
confusion with the Glaxo Mark. Considering that the competing marks have
coexisted, and considering that time for rebranding would be necessary, the
direction to remove the Impugned Mark shall be implemented with effect from
December 31, 2026. The time until then shall be used by Shreya to implement
a communications, marketing and public relations campaign to widely
disseminate that the Impugned Mark, LEFOXIN BIOX, would change to such
new mark as may be adopted by Shreya with effect from January 1, 2027. This
time period shall also be utilised to apply for and process changes in any
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regulatory approvals that may be necessary, and all authorities shall act on the
basis of this judgement when processing such applications.
73. In the peculiar circumstances of the case, I am persuaded not to impose
costs.
74. All actions required to be taken pursuant to this order shall be taken
upon receipt of a downloaded copy as available on this Court’s website.
[SOMASEKHAR SUNDARESAN J.]
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