Mankind Consumer Products Private Limited vs Alaina Healthcare Private Limited & Anr.
- Court
- Delhi High Court
$~O-
* IN THE HIGH COURT OF DELHI AT NEW DELHI
BEFORE
HON'BLE MR. JUSTICE PURUSHAINDRA KUMAR KAURAV
# CNR No. DLHC010106292026
+ CS(COMM) 280/2026, I.A. 7346/2026, I.A. 7347/2026, I.A.
7348/2026, I.A. 7349/2026, I.A. 16922/2026 & I.A. 21183/2026
MANKIND CONSUMER PRODUCTS PRIVATE LIMITED
HAVING ITS REGISTERED OFFICE AT
208, OKHLA INDUSTRIAL ESTATE - III,
NEW DELHI – 110 020, INDIA .....Plaintiff
( Through: Mr. Akhil Sibal, Sr. Advocate with Mr. Ankur, Mr.
Prateush, Mr. Ankit, Ms. Saumya, Mr. Swastik, Ms. Sugandha,
Advocates. )
versus
ALAINA HEALTHCARE PRIVATE LIMITED
KHASRA 127-133, BADDI- BAROTIWALA ROAD,
JHARMAJRI BADDI, SOLAN,
BADDI – 174 103
HIMACHAL PRADESH
AND ALSO AT
KHASRA 127-132, 707/133, 685/608/32
VILLAGE JHARMAJRI, BADDI,
DISTRICT SOLAN – 174 103
HIMACHAL PRADESH .....Defendant No. 1
A.MENARINI INDIA PRIVATE LIMITED
HAVING ITS REGISTERED OFFICE LOCATED AT:
NO. 101, TOWER A, SHAPATH-4,
OPP. KARNAVATI CLUB, S.G. ROAD,
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
AHMEDABAD,
GUJARAT – 380 015
AND ALSO AT
2102, TOWER 3, ONE INTERNATIONAL CENTRE,
SENAPATI BAPAT MARG,
ELPHINSTONE ROAD (W)
MUMBAI – 400 013 .....Defendant No. 2
( Through: Mr. Sandeep Sethi, Sr. Advocate and Mr. Manish K. Jha,
Sr. Advocate with Mr. Ananya Kumar, Mr. Utkarsh Khandelwal, Mr.
Ishan Gaur, Mr. Vaibhav Khanna, Ms. Shreya Sethi, Mr. Krisna
Gambhir and Mr. Ritwik Sharma, Advocates for D-2. )
------------------------------------------------------------------------------------
% Reserved on: 29.09.2026
Pronounced on: 16.10.2026
-----------------------------------------------------------------------------------
JUDGMENT
I.A. 7346/2026 (under Order XXXIX Rules 1 and 2 of CPC)
The instant application has been filed by the plaintiff under Order
XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (“CPC”),
seeking an interim injunction restraining the defendants from using the mark
ACNE SCAR / ACNE+SCAR / ACNESCAR (“impugned mark”), which,
according to the plaintiff, is deceptively similar to its registered trade mark
ACNESTAR.
2. Defendant no. 1, Alaina Healthcare Pvt. Ltd., is the manufacturer, and
defendant no. 2, A. Menarini India Pvt. Ltd., is the marketer, of the product
sold under the impugned mark. Reply to the application and written
submissions have been filed on behalf of defendant no. 2.
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
3. The case set up in the plaint, in brief, is that the plaintiff is the
proprietor of the word mark ACNESTAR, registered under No. 1352577 in
Class 5 with effect from 25.04.2005, in respect of “pharmaceutical and
medicinal preparations included in Class 5”. The mark was originally
registered in the name of Lifestar Pharma Pvt. Ltd., which was later
amalgamated with Mankind Pharma Ltd. Mankind Pharma Ltd. assigned the
mark to the plaintiff by a Deed of Assignment dated 19.02.2025, deemed
effective from 03.09.2024. The plaintiff filed Form TM-P on 22.08.2025 for
recording the assignment.
4. The mark ACNESTAR is stated to have been in continuous use since
2005, for a clindamycin and nicotinamide gel, and also for soaps and face
washes. As per the certificate of the auditor, the sales under the mark since
inception are about ₹ 540 crores, and the sales for FY 2024-25 were ₹ 76.39
crores.
5. The defendants manufacture and market a serum for acne scars under
the name HEXILAK ACNE + SCAR. The product is manufactured at
Baddi, Himachal Pradesh, under a cosmetics manufacturing licence. The
mark HEXILAK stands registered under No. 1270019 in Class 5 in the name
of A. Menarini Asia-Pacific Holdings Pte. Ltd., and defendant no. 2 is a part
of the said group.
6. As per the plaint, the plaintiff came to know about the impugned
product on 17.02.2026, and on enquiry learnt that the defendants had begun
marketing it in May 2025. The suit was instituted on 11.03.2026. Vide order
dated 20.03.2026, this Court granted an ex parte ad interim injunction in
favour of the plaintiff and appointed Local Commissioners.
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
7. The said order was assailed by defendant no. 2 in FAO (OS)
(COMM) 107/2026. Vide order dated 24.04.2026, the Division Bench
recorded the statement of learned senior counsel for the plaintiff that the
plaintiff had no objection to the order dated 20.03.2026 being kept in
abeyance till this Court decides the application afresh, after considering the
reply of the defendants. The present application has, accordingly, been heard
afresh.
Submissions on behalf of the plaintiff
8. Mr. Akhil Sibal, learned senior counsel appearing on behalf of the
plaintiff, submits that the plaintiff is the registered proprietor of the mark
ACNESTAR in Class 5 since 2005, and that the mark has been in
continuous and uninterrupted use since then. It is submitted that a Division
Bench of this Court has already recognised the statutory and common law
rights of the plaintiff’s predecessor in the mark ACNESTAR, and has
injuncted a third party from using the mark ACNESCAR, in Mankind
1
Pharma Ltd. v. Brinton Pharmaceuticals Ltd. , (“ Brinton ”). Reliance is
placed on paras 41.1, 41.3 and 41.4 of the said decision, wherein it has been
held that ACNESCAR is phonetically nearly identical to ACNESTAR, that
the plea of ACNESCAR being a portmanteau of ACNE and SCAR cannot
save it from injunction, and that ACNESTAR cannot be regarded as
descriptive.
9. He submits that ACNESTAR is a coined word, formed by combining
a prefix with a distinctive suffix, and that such a combination is distinctive.
The mark is to be compared as a whole. Reliance is placed on Wow Momo
1
FAO (COMM) 166/2024, decided on 22.09.2025
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
2
Foods Pvt. Ltd. v. Wow Burger , and Amritdhara Pharmacy v. Satya Deo
3
Gupta . It is further submitted that through twenty years of use, the mark has
come to be exclusively associated with the plaintiff.
10. It is contended that the present case falls squarely within para 41.3 of
Brinton . The defendants use ACNE SCAR as a trademark, and in a
prominent manner. The use of the house mark HEXILAK alongside does
not amount to a defence. Reliance is placed on V-Guard Industries Ltd. v.
4
Crompton Greaves Consumer Electricals Ltd. , affirmed in Crompton
5
Greaves Consumer Electricals Ltd. v. V-Guard Industries Ltd. , to submit
that use of a house mark with a prominently displayed mark amounts to sub-
branding, and is no answer to infringement. It is submitted that once the
essential features of a registered mark are adopted, added matter is
immaterial. Reliance is placed on Kaviraj Pandit Durga Dutt Sharma v.
6
Navaratna Pharmaceutical Laboratories .
11. Learned senior counsel submits that the impugned mark is nearly
identical to ACNESTAR, the only change being the replacement of the letter
“T” with “C”, which is a minute change calculated to superficially
distinguish the marks. Differences in get-up are irrelevant in an action for
infringement once the essential features are adopted. Reliance is placed on
para 42.6 of Brinton and on Amar Singh Chawal Wala v. Shree Vardhman
7
Rice and Genl. Mills .
2
2025 SCC OnLine Del 6545
3
1962 SCC OnLine SC 13
4
2022 SCC OnLine Del 1593
5
2024 SCC OnLine Del 1838
6
AIR 1965 SC 980
7
2009 SCC OnLine Del 1690
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
12. It is submitted that both products are pharmaceutical or
dermatological preparations for skin conditions associated with acne or its
sequelae, and are sold across the same counters, through the same e-
commerce platforms such as Flipkart, Amazon and 1mg, to the same class of
consumers. Reliance is placed on paras 42.8, 42.9 and 50 of Brinton . It is
further submitted that the difference between a medicinal and a cosmetic
product is immaterial where the goods are allied and cognate. Reliance is
8
placed on Himalaya Wellness Co. v. Wipro Enterprises (P) Ltd. , affirmed
9
in Wipro Enterprises (P) Ltd. v. Himalaya Wellness Co.
13. It is submitted that the test of likelihood of confusion is that of a
consumer of average intelligence and imperfect recollection, and not of an
informed consumer or a pharmacist. In the case of pharmaceutical products,
even the slightest probability of confusion requires that the use of the
impugned mark be restrained. Reliance is placed on Cadila Health Care
10
Ltd. v. Cadila Pharmaceuticals Ltd. , and Glenmark Pharmaceuticals Ltd.
11
v. Sun Pharma Laboratories Ltd.
14. As regards the defence under Sections 30(2)(a) and 35 of the Trade
Marks Act, 1999 (“Act”), learned senior counsel submits that the protection
is available only where an expression is used in a descriptive sense, and not
as a trade mark. The defendants use ACNE SCAR as the primary identifier
of the product, which is evident from its typography, colour scheme and
placement on the pack. The separate use of the words “Serum for Acne
Scars” on the same pack only shows that ACNE SCAR is used to create an
8
(2023) 3 HCC (Del) 755
9
2024 SCC OnLine Del 6859
10
(2001) 5 SCC 73
11
2024 SCC OnLine Del 2707
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
independent brand identity. It is pointed out that the product permission of
the defendants (p. 55 of the additional documents filed on 15.05.2026) and
the e-commerce listings also use ACNE SCAR as the name of the product.
15. On the plea of delay, it is submitted that the plaintiff came to know
about the impugned product on or about 17.02.2026 and instituted the suit
on 11.03.2026, which cannot be termed as delay. The documents of the
defendants show only vague and inconsistent use, and not any substantial
market presence. In any event, delay is no defence to infringement. Reliance
12
is placed on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia , Chacha
13
Saree Bazar (P) Ltd. v. Chacha Cloth House , and Dindayal Industries
14
Ltd. v. Dindayal Ayurved Bhawan . It is also submitted that continuous use
of an infringing mark gives rise to a continuous cause of action, for which
15
reliance is placed on Castrol Ltd. v. Sanjay Sonavane .
16. It is further contended that the adoption of the impugned mark was
itself dishonest and calculated to trade upon the goodwill of ACNESTAR,
and where the initial adoption is dishonest, subsequent use does not tilt the
balance of convenience in favour of the defendant. Reliance is placed on
16
Ansul Industries v. Shiva Tobacco Co. Learned senior counsel also relies
17
on Laxmikant V. Patel v. Chetanbhai Shah , to submit that where a case
of infringement or passing off is made out, an injunction ordinarily follows.
17. In response to the plea that the plaintiff is not the registered
proprietor, it is submitted that the mark stands assigned to the plaintiff by
12
(2004) 3 SCC 90
13
2026 SCC OnLine Del 761
14
2025 SCC OnLine Del 9473
15
2025 SCC OnLine Del 8646
16
2007 SCC OnLine Del 74
17
(2002) 3 SCC 65
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
the Deed of Assignment dated 19.02.2025, and that Form TM-P has been
filed. Non-registration of an assignment does not preclude a valid assignee
from enforcing the mark. Reliance is placed on Sun Pharmaceutical
18
Industries Ltd. v. Cipla Ltd. .
18. As regards the allegation of suppression, learned senior counsel
submits that the registration of HEXILAK is irrelevant to the present
dispute, and was in any case pleaded in para 16 of the plaint and noted in
para 17 of the order dated 20.03.2026. The plaintiff’s documents included a
review of the defendants’ product of May 2024 (p. 258 of the plaintiff’s
documents), and the date was inadvertently missed in the plaint. The
plaintiff cannot be expected to scan the entire internet or monitor every e-
commerce platform. Scattered digital traces of the defendants’ product, such
as archived web pages, reviews on judge.me, Instagram posts of 2023 and a
research paper, do not amount to knowledge. It is submitted that only
suppression of a material fact disentitles a party to relief. Reliance is placed
19
on Arunima Baruah v. Union of India .
Submissions on behalf of defendant no. 2
19. Per contra , Mr. Sandeep Sethi, learned senior counsel appearing on
behalf of defendant no. 2, at the outset, submits that the plaint suffers from
material concealment and misrepresentation, and that the plaintiff has
attempted to engineer a cause of action. It is submitted that para 25 of the
plaint asserts knowledge on 17.02.2026 so as to make out urgency, while
para 11 of the plaint itself pleads that defendant no. 2 has been marketing the
product since May 2025. It is contended that the plaint deliberately does not
18
2008 SCC OnLine Del 1135
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
disclose that defendant no. 2 has been using ACNE SCAR, along with its
brand HEXILAK, at least since 2022.
20. In support, he refers to the certificate of a Chartered Accountant,
which places the sales of the product at ₹ 72.86 lakhs from August to
December 2022, ₹ 283.43 lakhs in 2023, ₹ 313 lakhs in 2024 and ₹ 312.81
lakhs in 2025. Reference is also made to invoices from 2022 onwards, the
Amazon listing showing the product as first available on 16.01.2025 with a
review of 14.11.2024, Flipkart reviews of April 2025, an Instagram review
of 08.06.2023, reviews on judge.me between 2022 and 2025, a research
paper on the product published in 2023, and an announcement on the
website of the Menarini group in 2019.
21. It is submitted that it is inconceivable that the plaintiff, being part of
the Mankind group, which claims to be the fourth largest pharmaceutical
company in India, was unaware of a product openly sold for over four years.
The plaintiff chose to sit over its alleged rights and approached this Court at
its own leisure. It is contended that a party who suppresses material facts is
not entitled to any equitable relief, and the merits become secondary.
20
Reliance is placed on Manjula v. D.A. Srinivas , Ramjas Foundation v.
21 22
Union of India , S.P. Chengalvaraya Naidu v. Jagannath , Prestige
23
Lights Ltd. v. State Bank of India , and Kent RO Systems Ltd. v.
24
Gattubhai .
19
(2007) 6 SCC 120
20
2026 SCC OnLine SC 831
21
(2010) 14 SCC 38
22
(1994) 1 SCC 1
23
(2007) 8 SCC 449
24
2022 SCC OnLine Del 791
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
22. On merits, learned senior counsel submits that defendant no. 2 is the
Indian subsidiary of the A. Menarini group, an established international
pharmaceutical group. Its brand HEXILAK stands registered under No.
1270019 in Class 5, on an application filed on 03.03.2004, before the
plaintiff applied for ACNESTAR. HEXILAK is used along with the house
mark MENARINI on the product and its packaging.
23. It is submitted that the product of defendant no. 2 is a cosmeceutical
serum for post-inflammatory repair. On the packaging, HEXILAK appears
in a distinctive script as the essential feature, along with the MENARINI
house mark and logo. ACNE + SCAR appear as a subordinate descriptor,
with a green “+” between the two words, followed by the words “SERUM
FOR ACNE SCARS”. The grievance of the plaintiff is confined to ACNE +
SCAR, which is only a combination of two dictionary words, ACNE being a
skin condition and SCAR the mark left behind by it. The expression
communicates the intended purpose of the product, and its use is a bona fide
description of the character and quality of the goods, protected by Sections
30(2)(a) and 35 of the Act.
24. It is contended that defendant no. 2 has never used ACNE + SCAR in
a trademark sense, and the comparison, therefore, has to be between
ACNESTAR and HEXILAK, between which there is no similarity at all.
The Court must undertake a holistic comparison of the rival marks,
discounting their descriptive elements. Reliance is placed on Pernod Ricard
25
India (P) Ltd. v. Karanveer Singh Chhabra .
25. It is further submitted that no one can claim monopoly over
descriptive words, and that use of such words by others in a descriptive
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
sense cannot be restrained. Reliance is placed on Marico Ltd. v. Agro Tech
26
Foods Ltd. , Office Cleaning Services Ltd. v. Westminster Window and
27
General Cleaners Ltd. , and Living Media India Ltd. v. Alpha Dealcom
28
(P) Ltd.
26. Learned senior counsel submits that the word ACNE is publici juris in
the trade of dermatological products, and is used by several third parties,
such as ACNESOL, ACNETHRO, ACNEREX, ACNELISSA, ACNEDAC,
ACNETOR and ACNEWAR. The plaintiff’s predecessor had itself taken
this stand in para 6(g) of its counter statement dated 08.12.2017 in the
opposition filed by Biomedica Life Science against Application No.
2520524 for ACNESTAR in Class 3, stating that no exclusive right can be
claimed over ACNE as it denotes a disease or disorder. Reliance is placed
29
on S.K. Sachdeva v. Shri Educare Ltd. , to submit that the plaintiff is
bound by its stand before the Trade Marks Registry.
27. On passing off, it is submitted that the presence of HEXILAK and
MENARINI, the different appearance of the product, the colour scheme, the
font and the arrangement of features rule out any likelihood of confusion.
30
Reliance is placed on Britannia Industries Ltd. v. ITC Ltd. , Schweppes
31 32
Ltd. v. Gibbens , and Harrods Ltd. v. Harrodian School Ltd. . On the
effect of a house mark, reliance is placed on Star Bazaar (P) Ltd. v. Trent
25
2025 SCC OnLine SC 1701
26
2010 SCC OnLine Del 3806
27
(1946) 63 RPC 39 (HL)
28
2016 SCC OnLine Del 815
29
2016 SCC OnLine Del 473
30
2017 SCC OnLine Del 7391
31
(1905) 22 RPC 601 (HL)
32
1996 RPC 697 (CA).
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
33 34
Ltd. , Intex Technologies (India) Ltd. v. AZ Tech (India) , and Meso (P)
35
Ltd. v. Liberty Shoes Ltd.
28. It is also submitted that the product of defendant no. 2 does not treat
acne, but addresses the scars, texture and pigmentation left behind after the
acne is gone. The plaintiff’s ACNESTAR gel, on the other hand, is a
clindamycin and nicotinamide preparation, a Schedule H drug sold only on
prescription, for the treatment of active acne. The products share no active
ingredient or mechanism of action, and are sequential and complementary
rather than substitutes. A dermatologist prescribing an antibiotic for active
acne would not mistakenly prescribe a collagen-stimulating scar serum. Nor
is there any confusion online, since, as per the plaintiff’s own documents,
the product of defendant no. 2 appears on e-commerce websites only when
“HEXILAK ACNESCAR” is searched, while a search for “ACNESTAR”
shows only the plaintiff’s products (p. 260 of the plaintiff’s documents).
29. Lastly, it is submitted that the plaintiff has not shown any decline in
its sales since 2022, rather, its sales have increased (p. 188 of the plaintiff’s
documents), which negates any plea of diversion of trade or irreparable
injury. An injunction, on the other hand, would cause grave prejudice to the
established business, inventory and distribution arrangements of defendant
no. 2. It is, therefore, prayed that the application be dismissed.
Analysis
30. This Court has heard learned senior counsel for the parties at length
and perused the material on record.
33
2010 SCC OnLine Del 4764
34
2017 SCC OnLine Del 7392
35
AIR 2019 Bom 305
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
31. Since learned senior counsel for defendant no. 2 has urged that the
plaintiff, having suppressed material facts, ought not to be heard on merits at
all, it would be apposite to deal with the said objection at the outset. There
can be no quarrel with the proposition that a litigant who seeks a
discretionary relief must approach the Court with clean hands. This Court in
36
ANZ Grindlays Bank Plc Vs. The Commissioner, MCD & Ors , has held
as under:
“87. When a party approaches the Court seeking relief of interim
injunction more so when the relief sought for is projected as urgent-
and is accompanied by a prayer for an ex parte relief the Court
places implicit reliance on the plaintiff. They are the facts set out by
the plaintiff in its pleadings and the documents filed which enable
the Court forming an opinion whether to exercise or not to exercise
jurisdiction in the matter of issuing ad interim injunction (behind the
back of the opposite party who is yet to be noticed). The Court while
reposing confidence in the plaintiff naturally expects him to make a
clean breast of all material and relevant facts which would enable
the Court forming a correct opinion and exercising judicial
discretion at that stage. Mis-state-ment by itself would be enough to
throw out the application…..”
32. At the same time, the principle enunciated in ANZ Grindlays Bank
Plc (supra) is attracted where the misstatement or suppression relates to a
fact which has a bearing on the exercise of the Court’s discretion. Not every
inaccuracy in the pleadings would disentitle a party to relief. The fact
suppressed must be one which is material for the determination of the lis . In
Arunima Baruah (supra), the Supreme Court observed thus:
“12. It is trite law that so as to enable the Court to refuse to
exercise its discretionary jurisdiction suppression must be of
material fact. What would be a material fact, suppression whereof
would disentitle the appellant to obtain a discretionary relief, would
depend upon the facts and circumstances of each case. Material fact
would mean material for the purpose of determination of the lis, the
36
1995 SCC OnLine Del 376
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
logical corollary whereof would be that whether the same was
material for grant or denial of the relief. If the fact suppressed is not
material for determination of the lis between the parties, the Court
may not refuse to exercise its discretionary jurisdiction. ...”
33. It was urged that the date of knowledge pleaded in para 25 of the
plaint, namely 17.02.2026, is belied by para 11, which pleads marketing by
defendant no. 2 since May 2025. There is no such inconsistency, since para
11 only records what the plaintiff learnt on an enquiry made after it came to
know of the impugned product. The commencement of marketing pleaded in
para 11, however, does not match the documents of defendant no. 2, which
indicate sales from August 2022. At the same time, the plaintiff itself placed
on record, along with the plaint, a Flipkart listing of the impugned product,
captured on 10.03.2026, which carries a review of the product dated May
2024 (p. 258 of the plaintiff’s documents). There was no compulsion on the
plaintiff to file the document, and its production shows that the plaintiff
placed the material in its possession before the Court in a bona fide manner.
The discrepancy in para 11 is no more than an inadvertent error, and a party
which itself files the document said to contradict its pleading cannot be said
to have suppressed it.
34. Even otherwise, the discrepancy is not of a nature which would
disentitle the plaintiff from being heard on merits. The plaint did disclose the
registration of HEXILAK (para 16), the opposition proceedings with
Biomedica Life Science (Document 12) and the decision in Brinton . The
inaccuracy pertains to the date on which defendant no. 2 commenced use of
the impugned mark, which is relevant to the plea of delay and to the balance
of convenience, but not to the question of infringement.
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
35. More importantly, the ex parte order dated 20.03.2026 has remained
in abeyance since 24.04.2026, on the plaintiff’s own statement before the
Division Bench, and the application has now been heard afresh, with the
reply and all the documents of defendant no. 2 on record. In Kent RO
Systems (supra), the ex parte injunction was vacated because the plaintiffs
had concealed their own correspondence with the defendants which
established knowledge and acquiescence since 2012. No such material exists
in the present case. Nor is the cause of action, which arises from the
continuing use of the impugned mark, an illusory one of the kind
contemplated in para 9.5 of Manjula (supra). The objection is, accordingly,
not sustainable.
36. Coming to the merits, the plaintiff’s title to the mark may first be
noticed. The plaintiff claims under a Deed of Assignment dated 19.02.2025,
and has filed Form TM-P for recording the assignment. In Sun
Pharmaceutical (supra), it was held that “registered proprietor” in Section
28, rather than adopting a pedantic interpretation has to be interpreted as
including a person having title as registered proprietor by way of assignment
or transmission. Prima facie , therefore, the plaintiff is entitled to maintain
the action.
37. It is not in dispute that the very mark ACNESTAR, and a rival mark
ACNESCAR used for a cream meant for acne scars, came up for
consideration before the Division Bench of this Court in Brinton . The
Division Bench, while setting aside the order refusing interim injunction,
held as under:
“ 41.1 Clearly, the mark ACNESCAR is phonetically nearly identical
to ACNESTAR and, unless the two words are pronounced syllable by
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
syllable, they are indistinguishable. A clear case of near phonetic
identity, therefore, exists between the marks.
41.2 ... It is certainly open to any manufacturer to coin a mark under
which it seeks to manufacture and sell its products. This principle
would apply as much to pharmaceutical products or cosmetic
products or as to any other product. While doing so, however, the
manufacturer has to take care to ensure that the mark is not
confusingly or deceptively similar to any registered trademark. If it
is, he risks the chance of an injunction. Innocence is no defence.
Infringement is not dependent on mala fides or mens rea.
41.3 The fact that the mark ACNESCAR may be a coined
portmanteau of the words ACNE and SCAR cannot, therefore, save
it from injunction on the ground of infringement, as it is clearly
phonetically deceptively similar to the mark ACNESTAR of the
appellant, for which the appellant has a subsisting trademark
registration of 2005 vintage, i.e., of nearly two decades.
*
42.8 ... They are similar products, meant for treatment of similar
ailments. They are available through the same trade channel and
cater to the same consumer segment. The mark ACNESCAR, as used
by the respondent, would, therefore, ipso facto infringe the mark
ACNESTAR of the appellant within the meaning of Section 29(2)(b)
of the Trade Marks Act. ”
38. Learned senior counsel for defendant no. 2 has rightly pointed out
that, vide order dated 17.02.2026 in Review Pet. 514/2025, the Division
Bench corrected paras 38, 45.3 and 53 of the said judgment, and that para 53
now provides that the observations therein would not be binding on the
learned Commercial Court at the final adjudication of that suit. The
correction, however, concerns only the effect of the interim findings at the
trial of that suit. The principles laid down by the Division Bench on the
comparison of these very marks, and on the similarity of the goods in
question, continue to bind this Court.
39. Defendant no.2 contends that ACNESTAR is a descriptive mark, that
the word ACNE is publici juris , and that the plaintiff’s predecessor had itself
so stated before the Trade Marks Registry. This argument, at this stage, does
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
not inspire the confidence of this Court. The Division Bench in Brinton has,
in para 41.4, already held, prima facie , that ACNESTAR cannot be regarded
as descriptive of the product for which it is used. The registration of
ACNESTAR subsists, and Section 31(1) of the Act makes it prima facie
evidence of validity. As held in para 44.2 of Brinton , “ at the stage of Order
XXXIX Rules 1 and 2 ... registration of the plaintiff‟s mark itself discharges
the onus on the plaintiff to prove that the mark is prima facie valid ”.
40. The plaintiff, moreover, does not claim exclusivity over the word
ACNE. It is well settled that, in the trade of drugs, the name of an ailment
cannot be appropriated by any one trader. The Division Bench in
37
Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. ,
which has been noticed in para 23 of Glenmark (supra), held thus:
“20. ... In the decisions of the Supreme Court and this Court also, it
has been clearly held that nobody can claim exclusive right to use
any word, abbreviation, or acronym which has become publici juris.
In the trade of drugs, it is common practice to name a drug by the
name of the organ or ailment which it treats or the main ingredient
of the drug. Such an organ ailment or ingredient being publici juris
or generic cannot be owned by anyone exclusively for use as a trade
mark. ...”
41. The claim of the plaintiff, however, is to ACNESTAR as a whole, and
not to ACNE alone. Where the rival marks share more than the generic
element, the marks cannot be artificially dissected by isolating the generic
part. In United Biotech (P) Ltd. v. Orchid Chemicals & Pharmaceuticals
38
Ltd. , noticed in para 48 of Glenmark (supra), the Division Bench approved
the following reasoning of the coordinate bench, which upheld the finding
that FORZID was deceptively similar to ORZID:
37
2007 SCC OnLine Del 237
38
2012 SCC OnLine Del 2942
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
“24. ... As already noticed it is not just the generic part 'ZID' that is
common to both marks. The further prefix 'OR' too is common. In
other words, 'ORZID' is common to both marks. No parallel can
therefore be drawn with the facts in Astrazeneca UK Limited. A
person of average intelligence and imperfect recollection seeking to
buy CEFTAZIDIME injection would hardly undertake any
„dissection‟ exercise ...”
42. In the present case too, what is common to the rival marks is not
merely the word ACNE, but the entire structure ACNE-S-_-A-R, save one
letter .
43. As regards the stand taken in the counter statement dated 08.12.2017,
it was taken in Class 3 proceedings, in response to the mark ACNESTAL of
a third party. An identical submission was considered and rejected in
39
Brinton , by applying Raman Kwatra v. KEI Industries Ltd. , in the
following terms:
“ 45.2 After the judgment of the Division Bench of this Court in
Raman Kwatra, this submission cannot survive. In Raman Kwatra, it
has clearly been held, in para 43 of the report, that prosecution
history is relevant only where the history pertains to the rival marks.
In other words, a stand adopted by the appellant when the
respondent‟s mark is cited against the appellant in opposition may
be relevant. However, a stand adopted by the appellant against
Biomedica, apropos an opposition by Biomedica, cannot be relevant
in a dispute between the appellant and the respondent, applying the
law laid down in Raman Kwatra .”
44. In S.K. Sachdeva (supra), the Division Bench took an adverse view of
the plaintiff having concealed its own stand before the Registry that SHRI
RAM was the name of a deity, incapable of appropriation. In the present
case, the opposition and the counter statement form part of the plaint itself.
45. That brings this Court to the core question, whether the impugned
mark is deceptively similar to ACNESTAR. The test, in an action for
39
2023 SCC OnLine Del 38
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
infringement, was laid down by the Supreme Court in Kaviraj Pandit Durga
Dutt Sharma (supra) as under:
“28. ... 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 an 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, 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.”
:
46. The rival marks and products may be compared as under
Plaintiff Defendants
Product
ACNE + SCAR / ACNE SCAR,
Mark ACNESTAR
used with HEXILAK and
MENARINI
Letters A-C-N-E-S- T -A-R A-C-N-E-S- C -A-R
Pronounced
AK-NEE-STAR AK-NEE-SKAR
as
Registration No. 1352577, Class 5, from None for the impugned mark
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
25.04.2005
User
Since 2005 Since August 2022
claimed
Clindamycin and nicotinamide gel;
Serum for acne scars (cosmetics
Goods
soaps and face washes
licence)
Trade
Chemists; Amazon, Flipkart, 1mg,
Chemists; Amazon, Flipkart, 1mg
channels
Clinikally
47. A bare perusal of the above would show that the impugned mark
differs from the plaintiff’s registered mark by a single letter, at the sixth
position. Phonetically, the two are nearly indistinguishable, as already found
in para 41.1 of Brinton . The insertion of the “+” device between ACNE and
SCAR on the pack does not alter the position, since a purchaser asking for
the product does not pronounce it. The Supreme Court in Amritdhara
Pharmacy (supra) held that an unwary purchaser of average intelligence and
imperfect recollection would go more by the overall structural and phonetic
similarity and the nature of the medicine he has previously purchased, and
would not split the name into its component parts.
48. The submission that the descriptive elements must first be discounted,
so that the comparison is between ACNESTAR and HEXILAK, cannot be
accepted. The Supreme Court in Pernod Ricard (supra) has reiterated that
marks must be compared as a whole, and that the mere presence of a
common generic or laudatory word does not by itself establish deceptive
similarity. That was a case where the only common element between the
word marks BLENDERS PRIDE and LONDON PRIDE was the laudatory
word PRIDE, the leading words being entirely different. The Supreme
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Court, at the same time, observed in para 42 that “ even if a particular
component of a mark lacks inherent distinctiveness, its imitation may still
amount to infringement if it constitutes an essential and distinctive feature of
the composite mark as a whole ”. In the present case, the comparison of the
marks as a whole yield near identity, and not merely a common prefix.
49. The use of HEXILAK and MENARINI also makes no difference. In
view of para 28 of Kaviraj Pandit Durga Dutt Sharma (supra), added
matter is immaterial in an action for infringement once the essential features
of the registered mark are adopted. On the pack, ACNE + SCAR appears
immediately below HEXILAK, in larger letters than HEXILAK itself, and is
the most prominent text on the pack. Defendant no. 2 uses HEXILAK for a
range of scar products, including HEXILAK ULTRA (pp. 260 to 266 of the
plaintiff’s documents), and ACNE+SCAR identifies this particular product
within that range. Such use is in the nature of sub-branding, which, as held
in V-Guard Industries (supra) and affirmed in Crompton Greaves (supra),
is not recognised as a defence. The decisions in Intex Technologies , Star
Bazaar and Meso , relied upon by defendant no. 2, considered the effect of a
house mark in the context of passing off, or of discerning purchasers of
premium goods, where added matter assumes significance.
50. Defendant no. 2 next contends that its use of ACNE + SCAR is a
bona fide description of the intended purpose of the product, protected by
Sections 30(2)(a) and 35 of the Act. Section 30(2)(a) provides that a
registered trade mark is not infringed where the use “indicates the kind,
quality, quantity, intended purpose, value.....or other characteristics of
goods”, and Section 35 saves “the use by any person of any bona fide
description of the character or quality of his goods”. The protection under
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
these provisions is available only where an expression is used in its
descriptive sense, and not as a trade mark. Whether the defence is attracted
must, therefore, be tested on the manner in which the expression is actually
used by defendant no. 2.
51. Examined thus, the material on record prima facie indicates that
ACNE+SCAR is used to name the product, and not merely to describe it.
The pack carries, immediately below ACNE + SCAR and in smaller letters,
the words “SERUM FOR ACNE SCARS”, which is the description of the
product. The product permission issued to defendant no. 1 refers to the
product as “Hexilak Acne Scar Serum” (p. 55 of the plaintiff’s additional
documents). The e-commerce listings carry it as “Hexilak Acne Scar Serum”
or “Hexilak Acne Plus Scar Serum” (pp. 246 to 296 of the plaintiff’s
documents), and the sales invoices filed by the defendant no. 2 describe it as
“Hexilak Acne 15gm”. It is also the case of defendant no. 2 itself that its
product does not treat acne, and is meant only for the scars left behind.
ACNE + SCAR, read as it appears on the pack, would hardly be an accurate
description of such a product.
52. The reliance placed by defendant no. 2 on Marico (supra) is
misplaced. In that case, the plaintiff’s registered marks LOSORB and LO-
SORB were themselves held to be prima facie invalid, being only a minor
variation of the descriptive expression “low absorb”, registered on a
“proposed to be used” basis. The defendant had used the words only as part
of the sentence “WITH LOW ABSORB TECHNOLOGY”, along with its
own prominent mark SUNDROP, and it was on those facts that Section
30(2)(a) was held to be attracted. In the present case, ACNESTAR has been
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
held, prima facie , not to be descriptive, and ACNE + SCAR is not used as
part of a descriptive sentence, but as the name of the product itself.
53. Living Media (supra) and Office Cleaning Services (supra) also
concerned plaintiffs whose own marks were made up of ordinary descriptive
words, TODAY and OFFICE CLEANING, where small differences were
held sufficient to avoid confusion. In Living Media , the only element
common to INDIA TODAY and NATION TODAY was the word TODAY.
Office Cleaning Services , as noticed in Living Media , itself observed that
the position is otherwise where a fancy word has been chosen as part of the
name. ACNESTAR combines the name of an ailment with STAR, drawn
from the name of its original manufacturer, and the impugned mark
replicates it save for one letter. The defence under Sections 30(2)(a) and 35,
therefore, does not, at this stage, disentitle the plaintiff to interim relief. It is,
however, made clear that the defendants remain free to describe their
product, in the ordinary descriptive sense, as a serum for acne scars.
54. As regards the plea that the products are different, the Division Bench
in Brinton , in para 42.2, has held that an acne preparation and a cream for
acne scars “are intended to treat associated skin ailments” and “cater to the
same consumer segment”, and in para 42.8, that the medicinal character of
one and the non-medicinal character of the other “makes no difference”. The
same view was taken in Himalaya Wellness (supra), where a medicinal
preparation and a cosmetic product, meant for the same consumers and sold
through the same channels, were held to be allied and cognate, and was
affirmed in Wipro Enterprises (supra). In the present case, both products are
sold through chemists and the same online platforms, and the plaintiff itself
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
sells cosmetic products, namely soaps and face washes, under the mark
ACNESTAR.
55. The plaintiff’s ACNESTAR gel is a Schedule H drug. In matters
involving medicinal products, a stricter standard is to be applied. The
Supreme Court in Cadila Health Care (supra) observed that “ 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 ”, and that the fact that a drug is sold on prescription is
not by itself sufficient to prevent confusion. The Division Bench in
Glenmark (supra) held as under:
“63. ... In our considered opinion, the question of likelihood of
confusion in case of competing drugs would have to be answered on
a basis distinct from those that we may employ for ordinary
consumer products. We would be erring if we were to fail to adopt
strict principles of proof when it comes to drugs bearing in mind the
need to completely obviate the possibility of an error or mistake. ...”
56. Applying the said principle, and having regard to para 42.9 of
Brinton , the possibility of a consumer, or a chemist, applying one product
for the other, on account of the near phonetic identity of the marks, cannot
be ruled out. Accordingly, this Court is of the prima facie view that the use
of the impugned mark amounts to infringement of the plaintiff’s registered
trade mark within the meaning of Section 29(2)(b) of the Act.
57. On the plea of delay, it is settled that delay is not, by itself, a ground
to refuse an injunction against infringement. The Supreme Court in Midas
Hygiene (supra) held thus:
“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
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
itself dishonest.”
58. The same view has been reiterated in Chacha Saree Bazar (supra)
and Dindayal Industries (supra). There is no material on record to show that
the plaintiff had knowledge of the impugned product earlier and acquiesced
in its use. As held in para 44 of Ansul Industries (supra), acquiescence
implies positive act and not merely silence or inaction. Defendant no. 2 has
claimed to have been using HEXILAK for long, and has a clinical study of
the product funded by it. However, as held in para 41.2 of Brinton ,
innocence is no defence to infringement, and ACNESTAR stood registered
for about seventeen years before defendant no. 2 claims to have adopted the
impugned mark.
59. Thus, the plaintiff has been able to make out a prima facie case of
infringement. As regards the balance of convenience, this Court has taken
note of the fact that defendant no. 2 has been selling the impugned product
since 2022. However, the plaintiff is the registered proprietor of
ACNESTAR since 2005, with sales of about ₹ 540 crores, while defendant
no. 2 has neither a registration nor an application for the impugned mark.
The injunction would not affect the use of HEXILAK or MENARINI, or the
sale of the product itself, and would only require defendant no. 2 to adopt a
different name for the product. The balance of convenience, therefore, lies in
favour of the plaintiff.
60. The submission that the plaintiff’s sales have increased does not
negate irreparable injury. The injury caused by infringement of a registered
trade mark lies in the erosion of the exclusivity conferred by Section 28(1)
of the Act, which cannot be adequately compensated in money. Where one
of the products is a medicinal preparation, the public interest in avoiding
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
confusion is an additional consideration. The plaintiff would, therefore,
suffer irreparable harm if the injunction is refused.
Conclusion
61. In view of the foregoing discussion, this Court is of the considered
opinion that the plaintiff has made out a prima facie case of infringement of
its registered trade mark ACNESTAR.
62. Accordingly, till the final adjudication of the suit, the defendants,
their directors, officers, servants, agents, distributors, dealers, and all others
acting for and on their behalf, are restrained from manufacturing, selling,
offering for sale, advertising or in any manner dealing in pharmaceutical or
medicinal preparations, skin care preparations, or any allied or cognate
goods, under the mark ACNE SCAR, ACNE + SCAR or ACNESCAR, or
any other mark deceptively similar to the plaintiff’s registered trade mark
ACNESTAR.
63. The injunction in para 62 shall operate forthwith. However,
considering that defendant no. 2 has been selling the impugned product
since 2022, and that stock bearing the impugned mark has already been
supplied to the trade, defendant no. 2 is granted a period of two months from
today to recall such stock from its distributors, stockists, retailers and e-
commerce sellers, and to cause the listings of the product under the
impugned mark to be withdrawn. It is clarified that the time so granted is
only for the purpose of recall, and shall not be construed as permitting the
defendants to manufacture, advertise, offer for sale or supply any product
under the impugned mark in the interim.
64. The application stands allowed in the aforesaid terms.
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
65. It is made clear that the observations made hereinabove are only
prima facie , for the purpose of deciding the present application, and shall
not be construed as an expression on the merits of the case.
CS(COMM) 280/2026, I.A. 7346/2026, I.A. 7347/2026, I.A. 7348/2026,
I.A. 7349/2026, I.A. 16922/2026 & I.A. 21183/2026
List on 02.03.2027
(PURUSHAINDRA KUMAR KAURAV)
JUDGE
OCTOBER 16, 2026
SA
Signature Not Verified
Signed By:PRIYA
Signing Date:17.10.2026
13:22:27
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV