Laboratoires Griffon Private Limited And Anr vs Psychotropics India Limited
- Court
- Bombay High Court
Digitally
signed by
MEERA
MAHESH
JADHAV
Date:
2026.06.17
17:27:22
+0530
2026:BHC-OS:13292
MEERA
MAHESH
JADHAV
3-IA-4006-2022
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 4006 OF 2022
IN
COMMERCIAL IP SUIT NO. 256 OF 2022
Laboratoires Griffon Private Limited And Anr. ...Applicants/Plaintiffs
Versus
Psychotropics India Limited ...Respondent/Defendant
_______
Dr. Veerendra Tulzapurkar, Senior Counsel, a/w. Mr. Rashmin Khandekar, Ms.
Archita Gharat and Mr. Kiran Mehta i/b. Kiran Mehta, for the
Applicants/Plaintiffs.
Mr. Alankar Kirpekar a/w. Mr. Jash J. Dalia, Mr. Ayush Tiwari, Ms. Yasheswini
Sharma and Mr. Anantkumar Nikam, for the Defendant.
_______
CORAM : ARIF S. DOCTOR, J
st
RESERVED ON : 21 APRIL 2026
th
PRONOUNCED ON : 15 JUNE 2026
P.C.
1. The present Interim Application seeks to restrain the Defendant from
the
infringing the Plaintiffs’ registered trade mark i.e., 'GRILINCTUS' (“
Plaintiffs’ mark ”), and from passing off the Defendant’s products as those
of the Plaintiffs. For convenience, reference to the parties in this Order
shall be as they are arrayed in the captioned Commercial IP Suit.
1 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
The Facts in Brief:
st
2. Plaintiff No. 1, on 31
August 1972, obtained registration of the Plaintiff’s
mark i.e., ‘GRILINCTUS’. Additionally, Plaintiff No. 1 is the registered
proprietor of several other allied marks, of which ‘GRILINCTUS’ is an
essential part (“ the allied marks ”). Plaintiff No. 1 then assigned the allied
th
marks to Plaintiff No. 2 vide a Deed of Assignment dated 25 January
th
1988. Thereafter, on 8 March 2012, Plaintiff No. 2 reassigned all the
rights and goodwill in the allied marks consisting of the word
‘GRILINCTUS’ back to Plaintiff No. 1 by a Deed of Assignment, which
is appended as Exhibit ‘C’ to the Plaint.
3.
It is the Defendant’s case that in the year 2008, the Defendant adopted the
mark ‘PIL-LINCTUS’ (“ the impugned mark ”) and also commenced use
thereof in the same year.
th
4. On 17 January 2018, the Defendant applied for registration of the
impugned mark in Class 5 vide Application No. 3729972. The Plaintiffs
th
filed a notice of opposition dated 20 June 2021 to oppose the said
2 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
application. The said application, thereafter, appears to have been
abandoned by the Defendant.
5.
It is the Plaintiffs’ case that it was only in the year 2021 that the Plaintiffs
th
became aware of the impugned mark and thus filed the present Suit on 20
August 2021.
th
6. Subsequent to the filing of the present Suit, the Defendant, on 8 October
2021, filed a fresh application for registration of the impugned mark, being
Application No. 5166666. The Plaintiffs have opposed this Application by
th
filing a notice of opposition dated 5 June 2022, which is presently pending
adjudication.
Submissions on behalf of the Plaintiffs:
7. Dr. Tulzapurkar, Learned Senior Counsel appearing on behalf of the
Plaintiffs, at the outset submitted that the Defendant, by adopting the
impugned mark ‘PIL-LINCTUS’, had plainly infringed the Plaintiffs’
registered trade mark ‘GRILINCTUS’, more so since the Defendant was
using the impugned mark in relation to a cough syrup, being the very same
3 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
product in respect of which the Plaintiffs are using the mark
‘GRILINCTUS’.
8. Dr. Tulzapurkar then submitted that it was well settled that rival marks
must be compared as a whole and, in support of this contention, placed
reliance upon the decision of the Hon’ble Supreme Court in Amritdhara
1
Pharmacy v. Satya Deo Gupta He also relied upon the decision of this
2
Court in Hiralal Parbhudas v. Ganesh Trading Company and Ors . ,
which he submitted had laid down the following principles governing the
comparison of rival trade marks viz.
5. What emerges from these authorities is (a) what is the main idea or salient
“
features, (b) marks are remembered by general impressions or by some
significant detail rather than by a photographic recollection of the whole, (c)
overall similarity is the touchstone, (d) marks must be looked at from the view
and first impression of a person of average intelligence and imperfect
recollection, (e) overall structure, phonetic similarity and similarity of idea
are important and both visual and phonetic tests must be applied, (f) the
purchaser must not be put in a state of wonderment, (g) marks must be
compared as a whole, microscopic examination being impermissible, (h) the
broad and salient features must be considered for which the marks must not
be placed side by side to find out differences in design and (i) overall
similarity is sufficient. In addition, indisputably must also be taken into
1
(1962) SCC OnLine SC 13.
2
1983 SSC Online Bom 284.
4 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
consideration the nature of the commodity, the class of purchasers, the mode
of purchase and other surrounding circumstances.
” (emphasis supplied)
9. Applying the aforesaid principles to the facts of the present case, Dr.
Tulzapurkar submitted that there could be no manner of doubt that the rival
marks, viz., ‘PIL-LINCTUS’ and ‘GRILINCTUS’, were phonetically,
visually, and structurally similar. He submitted that the concurrent use of
the rival marks was therefore likely to cause deception and confusion
amongst consumers and members of the trade alike.
10. He submitted that another important factor which required consideration
was that the rival products sold under the competing marks were both
cough syrups, having different compositions. He pointed out that this fact
was not disputed by the Defendant. He submitted that, since the products
were medicinal and pharmaceutical preparations with different
compositions, any confusion between them could potentially have
disastrous consequences. On this ground alone, he submitted, the
Defendant ought to be restrained from using the impugned mark.
5 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
11. In support of this contention, Dr. Tulzapurkar placed reliance upon the
Cadila Health Care Ltd. v.
decision of the Hon’ble Supreme Court in
3
Cadila Pharmaceuticals Ltd. , which held that a stricter standard must be
applied in cases involving medicinal products since confusion regarding
their identity could have disastrous consequences. He also relied upon the
decision of this Court in Wyeth Holdings Corporation & Anr. v. Burnet
4
Pharmaceuticals Pvt. Ltd. , to point out that where rival products were
medicinal preparations intended for the same ailment, greater care was
required since even the possibility of confusion may have serious
consequences for public health, and deceptive similarity in medicinal
marks must therefore be viewed strictly.
12. Dr. Tulzapurkar then submitted that the adoption of the impugned mark
by the Defendant was plainly dishonest. According to him, such dishonesty
was evident from the fact that the Plaintiffs’ marks were already registered
at the time when the Defendant claimed to have adopted the impugned
mark, whether in the year 2006 or 2017, and thus the Defendant had or then
3
(2001) 5 SCC 73.
4
2008 SCC Online Bom 76.
6 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
deemed to have had knowledge of the Plaintiffs’ mark. In support of his
contention, he placed reliance upon the decision of the Division Bench of
5
this Court in Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. & Anr.
and submitted that it was incumbent upon the Defendant, prior to adopting
the impugned mark, to undertake a search of the Trade Marks Registry. He
submitted that the Defendant having failed to do so, could not claim bona
fide adoption and must bear the consequences of such failure by being
restrained from using the impugned mark, which was deceptively similar
to the Plaintiffs’ mark.
13. Conversely, he submitted that if the Defendant had adopted the impugned
mark with actual or deemed knowledge of the Plaintiffs’ registered mark,
it necessarily followed that the Defendant ought to be injuncted from using
the same. He submitted that in such circumstances the Plaintiffs were
entitled not only to the statutory protection conferred by Sections 28 and
29 of the Trade Marks Act, 1999 but also to protection in the larger public
5
2001 SCC OnLine Bom 1176.
7 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
interest so as to avoid confusion and deception amongst members of the
public and trade alike.
14. Dr. Tulzapurkar further submitted that the Plaintiffs had adopted and used
a series of marks containing the word ‘GRILINCTUS’. Consequently, he
submitted that the goods sold under the impugned mark were likely to be
perceived as emanating from the Plaintiffs or as being associated with the
Plaintiffs. In support of this contention, he placed reliance upon the
decision of this Court in Neon Laboratories Ltd. v. Themis Medicare Ltd.
6
& Anr. , which he pointed out held that where a proprietor has adopted and
used a series of marks sharing a common and distinctive element, adoption
by a rival of a mark containing that essential feature was likely to lead
consumers to assume that the impugned product forms part of the
proprietor’s established range or is otherwise commercially associated with
such proprietor and/or prior adopter.
15. Dr. Tulzapurkar then submitted that the Defendant’s contention of alleged
use of the impugned mark was plainly false and was also replete with
6
2014 SCC Online Bom 1087.
8 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
inconsistencies and contradictions. In support of this contention, he pointed
out that the Defendant had (i) in an affidavit filed before the Trade Marks
Registry, stated that the Defendant had not commenced use of the
impugned mark and was merely taking steps to promote the products
proposed to be sold thereunder; (ii) thereafter stated that the stand taken in
the affidavit filed before the Trade Mark Registry was an error; (iii) in reply
to the examination report, did not claim use of the impugned mark since
2008 but merely asserted that the impugned mark had acquired goodwill
within a short span of time; (iv) before the Registrar of Trade Marks, relied
only upon invoices from 2018 onwards; and (v) in the Counter Statement
filed in the opposition proceedings, claimed use of the impugned mark
since December 2017. He then took pains to point out that the Defendant
had, in paragraph 14 of the Counter Statement, specifically admitted that
there existed a very high degree of phonetic, structural, and visual
similarity between the rival marks. This concession by the Defendant he
submitted was fatal and one which the Defendant could not resile from.
9 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
16. Dr. Tulzapurkar then submitted that even assuming the Defendant had
established user of the impugned mark, such user would not assist the
Defendant since it was subsequent to the Plaintiffs’ registration and use.
He submitted that the concept of concurrent use as a defence to an action
for infringement and passing off was alien to trade mark law.
17. In addition to infringement, Dr. Tulzapurkar submitted that the
Defendant’s use of the impugned mark also amounted to passing off. He
submitted that the Plaintiffs had acquired substantial reputation and
goodwill in the mark ‘GRILINCTUS’ and had also carried out extensive
sales by using the said trade mark. In support of his contention, he placed
reliance upon Exhibits ‘F’ and ‘G’ to the Plaint, i.e., the sales figures;
Exhibits ‘H-1’ to 'H-19', i.e., the sample invoices; and Exhibits ‘I-1’ to ‘I-
7’, i.e., the promotional material.
18. In addition to the above, Learned Senior Counsel also pointed out that the
Plaintiffs had annexed to the Affidavit in Sur-Sur-Rejoinder invoices from
the years 1975, 1976, 1987, 1989, 1998, 1999, 2000 and 2003–2007, all of
which established that the Plaintiffs’ marks had acquired distinctiveness
10 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
and had become exclusively associated in the minds of traders and
consumers with the Plaintiffs. Given this, and the deceptive similarity
between the rival marks he submitted, deception, confusion and association
were bound to ensue. He therefore submitted that the Plaintiffs had made
out a case not only for infringement but also for passing off.
19. Learned Senior Counsel further submitted that the Defendant’s conduct
was manifestly dishonest. He submitted that this was evident from the fact
that Defendant had, in the year 2009, applied for registration of the mark
‘BRILINCTUS’, which was opposed by the Plaintiffs on the ground that it
was deceptively similar to the Plaintiffs’ mark, following which the
Defendant abandoned the application. He submitted that this clearly
demonstrated the Defendant’s knowledge that the Plaintiffs consistently
protected their registered trade marks. He also pointed out that in
proceedings concerning the mark ‘PIL-REST’, the Registrar had rejected
the Defendant’s contention that ‘PIL’ constituted its house mark.
Accordingly, he submitted that the Defendant’s present attempt to justify
use of ‘PIL’ as a house mark was demonstrably false to its own knowledge.
11 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
20.
According to Dr. Tulzapurkar, the Defendant’s dishonesty was further
evidenced by the fact that, during the pendency of the present Suit, it had
filed yet another application seeking registration of the impugned mark
‘PIL-LINCTUS’ while claiming use since 2008. He pointed out that this
application had also been opposed by the Plaintiffs, since it had been filed
without disclosure of the pendency of the present Suit concerning the very
same mark.
21. Dr. Tulzapurkar submitted that the Plaintiffs had at all times acted
diligently in protecting their rights in the mark ‘GRILINCTUS’. In this
regard, he invited my attention to various Orders obtained by the Plaintiffs
restraining third parties from using the marks ‘TORILINCTUS’,
‘ALLINTUS BM’ and ‘TINILINCTUS’.
22. Dr. Tulzapurkar concluded by reiterating that it was an admitted position
that the rival marks were used in relation to cough syrups and that the
goods, trade channels and class of consumers were all essentially the same.
He therefore submitted that, given the deceptive similarity between the
rival marks and the goodwill, reputation and large volume of sales
12 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
demonstrated by the Plaintiffs, a strong case of passing off, in addition to
infringement, had also been made out. He thus submitted that the Interim
Application deserved to be allowed and that the Defendant ought to be
restrained from using the impugned mark ‘PIL-LINCTUS’ in respect of its
products falling in Class 5 and from infringing the Plaintiffs’ registered
trade mark ‘GRILINCTUS’.
Submissions on the behalf of the Defendant:
23. Mr. Kirpekar, Learned Counsel appearing on behalf of the Defendant,
submitted that the Defendant is a private limited company engaged in the
manufacture and marketing of medicinal products and has been in
existence since the 1980s. He pointed out that ‘PIL’ is an acronym derived
from the Defendant’s corporate name, namely Psychotropics India
Limited, and nothing more.
24. He submitted that the Defendant had successfully obtained several trade
mark registrations incorporating either the prefix or suffix ‘PIL’ in Classes
3 and 5, as evidenced by the registration certificates annexed as Exhibits
‘E-1’ to ‘E-26’ to the Reply. He submitted that the Defendant had, over
13 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
several decades, cultivated a business identity centred on the trade name
‘PIL’. He further submitted that the Defendant had consistently adopted
the use of a hyphen as part of its trade mark architecture across various
products such as ‘PIL-SB’, ‘PILTEN-M’ and ‘PIL GPM-SR’. He therefore
submitted that ‘PIL’, when used with a hyphen, functions as the
Defendant’s house mark and that the hyphen is a common feature
employed by the Defendant to distinguish different products within the
Defendant’s range of products.
25.
Mr. Kirpekar then submitted that the word ‘LINCTUS’ is a recognised
term in the pharmaceutical and medical trade describing a syrupy
medicinal preparation used in the treatment of cough and throat ailments.
In support of his contention, he relied on extracts from websites, Codex
research papers, and dictionary definitions, which are more particularly set
out in Exhibit ‘A’ to the Sur-Rejoinder. He therefore submitted that
‘LINCTUS’ was descriptive in character, common to the trade and publici
juris , and was incapable of being monopolised by the Plaintiffs.
14 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
26. Mr. Kirpekar then also placed reliance upon a search report annexed as
Exhibit ‘I’ to the Defendant’s Affidavit in Reply and Exhibit ‘C’ to the
Affidavit in Sur-Rejoinder, from which he pointed out that there were
presently more than thirty valid trade mark registrations containing the
word ‘LINCTUS’. He further submitted that several reputed
pharmaceutical companies were using ‘LINCTUS’ as either a prefix or a
suffix in their respective trade marks. He also submitted that even at the
time when the Plaintiffs acquired their mark in 1971 on a proposed-to-be-
used basis, there existed several pre-existing and contemporaneous marks
containing the suffix ‘LINCTUS’, including ‘CODIN LINCTUS’,
‘ACTILINCTUS’ and ‘MITS LINCTUS-D’. He therefore submitted that
it was not open to the Plaintiffs to contend that ‘LINCTUS’ was
exclusively associated with them or that they possessed any monopoly over
that expression.
27. Mr. Kirpekar then invited my attention to Section 17(2)(b) of the Trade
Marks Act, 1999 to point out that the same clearly provided that
registration of a composite mark does not confer exclusive rights in respect
15 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
of any element thereof which was common to the trade or otherwise non-
distinctive. He pointed out that the Plaintiffs had never obtained an
independent registration for the word ‘LINCTUS’ and, therefore, could not
assert exclusive rights over that word in isolation. He also submitted that
the Plaintiffs could not dissect their registered mark and claim protection
in respect of a single component thereof, since it was well settled that rival
marks must be considered as a whole.
28. Mr. Kirpekar then also placed reliance upon the proviso to Section 36 of
the Trade Marks Act, 1999 and submitted that where a word has become
established in the trade as the name or description of an article or substance,
no person could claim exclusivity in respect of such. He submitted that the
present case was a classic illustration of such a situation, since ‘LINCTUS’
was widely recognised in the pharmaceutical industry as a term for cough
syrup formulations.
16 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
29. Mr. Kirperkar then placed reliance upon the decisions in the case of
7
Franco Indian Pharmaceuticals Pvt. Ltd. v. Lupin Ltd. & Anr. , J.R.
8
Kapoor v. Micronix India and Bal Pharma Limited v. Wockhardt
Limited , to point out that where a mark contains a common, descriptive, or
generic element or is found to be publici juris , no proprietor can claim
exclusivity or monopoly over the common element and that the rival marks
must therefore be considered as a whole in order to determine whether or
not they are deceptively similar.
30.
Mr. Kirperkar then also placed reliance upon the decision of the Hon’ble
Supreme Court in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey
9
Manners & Co. Pvt. Ltd. , from which he pointed out that the marks in
question in that case, i.e., ‘DROPOVIT’ and 'PROTOVIT', were held to be
dissimilar because the common suffix ‘VIT’ was descriptive of vitamins
and the distinctive portions of the rival marks in that case, i.e., ‘DROPO’
and 'PROTO', were sufficiently different to avoid confusion.
7
2017 SCC OnLine Bom 143 .
8
1994 Supp (3) SCC 215 .
9
2001 SCC OnLine Bom 1176.
17 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
31. Drawing a parallel to the facts of the present case, Mr. Kirpekar submitted
that once ‘LINCTUS’ is recognised as a descriptive and common-to-trade
element, the distinguishing portions of the rival marks are their respective
prefixes, namely ‘GRI’ and ‘PIL’. He submitted that these prefixes were
entirely different visually, phonetically and conceptually and constituted
the dominant source-identifying features of the respective marks.
32. Mr. Kirpekar further submitted that the Defendant’s mark ‘PIL-
LINCTUS’ is structurally, visually and conceptually distinct from the
Plaintiffs’ mark ‘GRILINCTUS’. He pointed out that the Defendant’s
mark comprises of two separate elements, i.e., ‘PIL’ and ‘LINCTUS’,
which were separated by a hyphen. He submitted that the use of a hyphen
created both a visual break and a phonetic pause, and therefore the
impugned mark was perceived and pronounced as two separate and distinct
components. Conversely, he submitted that the Plaintiffs’ mark was a
single word and pronounced as such. Mr. Kirperkar then submitted that
what the Plaintiffs were effectively seeking to do was to isolate the
common element ‘LINCTUS’ and thereby claim a monopoly over a
18 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
descriptive expression, which was impermissible in law. In support of his
contention, he placed reliance upon the decision of the Hon’ble Supreme
Court in the case of Pernod Ricard India (P) Ltd. v. Karanveer Singh
10
Chhabra from which he pointed out that generic elements cannot form
the basis for establishing deceptive similarity and that competing marks
must be considered in their entirety.
33. Mr. Kirpekar then submitted that the Plaintiffs had failed to establish a
case for passing off. He submitted that in order to succeed in such an action
the Plaintiffs were required to inter alia establish (i) goodwill and
reputation in the mark; (ii) misrepresentation by the Defendant leading the
public to believe that the Defendant’s goods originated from or were
associated with the Plaintiffs; and (iii) consequent damage or likelihood of
damage. He submitted that in the facts of the present case, the Plaintiffs
had not established any of these elements.
10
(1969) 2 SCC 716 .
19 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
34. Mr. Kirperkar then also submitted that the Plaintiffs had failed to
demonstrate continuous use of the mark since 1971 and that many of the
invoices relied upon by the Plaintiff, in fact, emanated from a third party,
i.e., Franco-Indian Pharma Pvt. Ltd. He also pointed out that the invoices
annexed to the Plaint were largely from the year 2018 onwards, whereas
the Defendant had been using the impugned mark since 2008. He therefore
submitted that the Plaintiffs were unable to demonstrate continuous
commercial use corresponding to their claim of use dating back to 1971.
He thus submitted that the present Suit was founded primarily upon a
registration obtained on a proposed-to-be-used basis and unsupported by
sufficient evidence of continuous use or assignment.
35. Mr. Kirpekar then also submitted that there was no likelihood of confusion
amongst consumers or members of the trade since, firstly, the rival
products were sold under entirely different trade dress, packaging and get-
up and, secondly, the products were prescription medicines and were not
sold as over-the-counter products. He then, from the decision of the
Cadila Laboratories Ltd. & Anr. v. Dabur
Hon’ble Supreme Court in
20 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
11
India Limited pointed out that when the rival products differ in
appearance and the same are not available for individual sale, a case for
infringement cannot be said to have been made out.
36. Mr. Kirpekar then submitted that the Plaintiffs’ assertion that the Plaintiffs
had become aware of the impugned mark only in the year 2021 was wholly
untenable. He then submitted that the Defendant had openly and
continuously used the impugned mark since 2008 and had obtained a drug
rd
licence on 3
June 2006 in respect of ‘PIL-LINCTUS SYRUP’, as was
evident from Exhibit ‘D’ to the Reply. He submitted that this demonstrated
the Defendant’s bona fide intention to market the product under the
impugned mark and negated any allegation of dishonest adoption.
37. He then submitted that the Plaintiffs’ reliance upon the decisions in the
case of Amritdhara Pharmacy and Hiralal Parbhudas was misplaced. He
submitted that the factual matrix in those cases was materially different, as
11
1997 SCC OnLine Del 360 .
21 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
the common elements in the rival marks were not shown to be descriptive
or generic in the same manner as ‘LINCTUS’ is in the present case.
38.
Mr. Kirpekar further submitted that the Plaintiffs’ reliance upon the
decisions in Cadila Healthcare , Sytex Labs and Wyeth Holdings
Corporation were also equally misconceived since the rival marks in the
present case were not phonetically or visually similar but were, on the
contrary, clearly distinguishable. He also submitted that the decision in Bal
Pharma Ltd. did not assist the Plaintiffs since a search of the Trade Marks
Registry would itself have revealed numerous registrations incorporating
the word ‘LINCTUS’, thereby demonstrating that the expression was open
to trade and not exclusively associated with the Plaintiffs.
39. Lastly, Mr. Kirpekar submitted that the Defendant had openly and
continuously used the mark ‘PIL-LINCTUS’ since 2008 and had, over the
course of more than fifteen years, built substantial goodwill and
recognition in the market. He submitted that the parties were independent
competitors operating in a market where the word ‘LINCTUS’ was a
recognised descriptive term. He thus submitted that the Plaintiffs had stood
22 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
by for years while the Defendant had developed a distinct market identity
centred around the house mark ‘PIL’. He therefore submitted that the
Plaintiffs’ inaction amounted to acquiescence and that the balance of
convenience was overwhelmingly in favour of the Defendant. He
submitted that granting an injunction at this stage would cause grave
prejudice to the Defendant and would effectively permit the Plaintiffs to
monopolise a descriptive expression that had long remained available to
the trade.
40. Mr. Kirpekar, therefore, submitted that the Interim Application was
devoid of merit and deserved to be dismissed with costs.
Submissions in Rejoinder:
41. Dr. Tulzapurkar submitted that it was not open to the Defendant to contend
that ‘LINCTUS’ was generic since the Defendant had applied for
registration of the impugned mark of which the word ‘LINCTUS’ formed
an essential part. In support of his contention, he placed reliance upon the
decision of this Court in the case of UltraTech Cement Limited v.
23 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
12
Alkandanda Cement Pvt. Ltd. where the marks involved were
ULTRATECH and ULTRATUFF, and pointed out that this Court had
observed that since the Defendant therein had applied for registration of
the impugned word ULTRATUFF, the Defendant was estopped from
contending that the word ‘ULTRA’ was descriptive or common to the
trade.
42. He also submitted that the fact that both products were available by
prescription was also irrelevant in view of the decision of the Hon’ble
Supreme Court in Cadila Healthcare Ltd. which had specifically taken
note of the fact that in India even prescription medicines were sold over the
telephone and had observed that
“Drugs are poisons, not sweets.
Confusion between medicinal products, may, therefore be life threatening,
not merely inconvenient”.
43. Dr. Tulzapurkar then also submitted that the Defendant’s contention that
there was delay, latches, and acquiescence was also wholly unsustainable.
He submitted that, in any event, delay and laches were not, by themselves,
12
2011 SCC Online Bom 783.
24 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
defences to oppose interim relief if a case for the grant of such relief was
otherwise made out. He submitted that the principle of acquiescence was
based on equity, and to establish acquiescence, the Defendant was, inter
alia , required to plead and prove that the Plaintiff had knowingly stood by
and encouraged or assented to the Defendant’s use of the impugned mark,
thereby inducing the Defendant to alter its position to its detriment. He
submitted that mere delay or inaction was not sufficient to constitute
acquiescence. In support of his contention, he placed reliance upon the
13
decisions in the case of Willmott v. Barber and also M/s. Power Control
14
Appliances and Ors. v. Sumeet Machines Pvt. Ltd. .
44. Dr. Tulzapurkar submitted that in the instant case there was no question of
the Defendant having made any mistake in adopting the impugned mark,
as the Defendant was aware of the Plaintiffs’ registered trade marks and,
therefore, the essential requirement to prove acquiescence was not
established. Secondly, he pointed out that the Plaintiffs had opposed the
Defendant's application for registration, and thus the question of the
13
[L.R.] 15 Chancery Division 96.
14
1994 2 SCC 448.
25 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
Plaintiffs encouraging the Defendant's use of the impugned mark did not
arise. In support of his contention, he placed reliance upon the decision in
the case of Kamath Hotels (India) Ltd. v. Royal Orchid Hotels Ltd and
15 16
Ors. and Schering Corporation v. Kiltch Co Pharma Pvt. Ltd. .
45. Dr. Tulzapurkar submitted that the Defendant’s contention that there were
several other marks in the market of which the word ‘LINCTUS’ formed
part was wholly irrelevant to the facts of the present case, as the lis before
this Court was confined only to the competing marks, i.e., ‘GRILINCTUS’
and ‘PIL-LINCTUS’. He submitted that mere production of entries from
the register or references to other marks was of no evidentiary value unless
the Defendant pleaded and established by cogent material that such marks
were in substantial, extensive, and actual use in the market. Absent proof
of such use, no inference could be drawn that the common element had
become publici juris or had lost its distinctiveness. In support of his
contention, he placed reliance upon the decisions in the case of Corn
15
2011 (4) M.h.L.J.
16
1990 SCC Online Bom 425.
26 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
Products Refining Co. v. Shangrila Food Products Ltd . and National Bell
Co. v. Metal Goods Mfg. Co. Pvt. Ltd .
46.
Dr. Tulzapurkar submitted that the Defendant’s contention that the
Plaintiffs had failed to establish continuous use since 1971 was
misconceived. He pointed out that Franco-Indian Pharmaceutical Pvt. Ltd.
was not an independent third party but the Plaintiff’s sister concern and
authorised marketing and distribution entity, through whom goods bearing
the ‘GRILINCTUS’ marks were sold, marketed, and distributed, and
therefore invoices issued by such entity enured to the benefit of Plaintiff
No. 1 as registered proprietor. He further submitted that the Plaintiffs had
placed on record, including in the Affidavit in Sur-Sur Rejoinder, invoices
from 1975 onwards, together with sales figures, promotional material and
other documents evidencing continuous and uninterrupted use of the marks
since 1973. Thus, the Defendant’s reliance on a single invoice from 2018,
while not considering earlier invoices from 1975 onwards, was, according
to the Plaintiffs, wholly selective and misleading. He further submitted that
the Defendant’s alleged use was in any event subsequent to the Plaintiffs’
27 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
registration and prior use and that concurrent user was no defence to an
action for infringement and passing off.
Reasons and Conclusions:
47. Having heard the learned counsel for the parties and having considered the
rival contentions and the case law upon which reliance has been placed, I
have no hesitation in holding that the Application deserves to be allowed.
I say so for the following reasons:
A. As held in the case of Amritdhara Pharmacy and Hiralal Parbhudas ,
deceptive similarity must be assessed by comparing the rival marks as a
whole and not by dissecting them into their individual components. The
enquiry must proceed on the basis of the overall impression created by the
marks in the mind of a person of average intelligence and imperfect
recollection. What is required to be considered is the overall structural,
phonetic and visual impression created by the rival marks and the
likelihood of confusion and/or association arising from their use. It is
through this lens that the rival marks, namely ‘GRILINCTUS’ and ‘PIL-
LINCTUS’, must be examined and compared.
28 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
B. Cadila
It is equally important to note that the Hon’ble Supreme Court in
Health Care Ltd. has held that, particularly in cases involving medicinal
and pharmaceutical products, a stricter approach must be adopted while
assessing deceptive similarity, since confusion between medicinal products
may have serious and, in some cases, disastrous consequences. The
Hon’ble Supreme Court specifically observed that, in relation to medicinal
products, even the possibility of confusion must be avoided since “ drugs
are poisons, not sweets
”, and confusion between medicinal products may
therefore be life-threatening rather than merely inconvenient.
C. Applying the principles laid down in the aforesaid decisions, I am of the
prima facie view that there can be little doubt that the rival marks
‘GRILINCTUS’ and ‘PIL-LINCTUS’ are aurally, phonetically and
structurally similar. I say so because both marks are three-syllable words
and, when pronounced, it is the suffix ‘LINCTUS’ that dominates and
virtually eclipses the respective prefixes, namely ‘GRI’ and ‘PIL’.
Although the impugned mark contains a hyphen, in my view, the use of a
hyphen by itself is insufficient to obviate confusion. This is particularly so
29 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
Cadila Health Care
because, as noted by the Hon’ble Supreme Court in
Ltd. , even prescription drugs in India are often ordered over the telephone
and sold without prescriptions. In such circumstances, the hyphen pales
into insignificance, and there exists a real and substantial possibility of
confusion between the rival products, which, as held in Cadila Health Care
Ltd. , must be avoided. Thus, the law laid down in the case of Pernod
Ricard India (P) Ltd., in my view, will not apply to the facts of the present
case.
D. Hence, for the reasons stated in ( C ) above, I am of the prima facie view
that the decision in F. Hoffmann-La Roche & Co. Ltd., would not apply.
In that case, the rival marks, namely ‘DROPVIT’ and ‘PROTOVIT’, were
distinguishable by their respective prefixes, which created distinct overall
impressions. The present case stands on a different footing, as the common
suffix ‘LINCTUS’ overwhelmingly dominates the pronunciation and
overall impression of both marks. Further, and significantly, the Defendant
has itself admitted in its Counter Statement filed before the Registrar of
very high degree of phonetic, structural
Trade Marks that there exists a “
30 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
and visual similarity
” between the rival marks. Thus, the Plaintiffs’
reliance upon the decision in the case of Neon Laboratories Ltd. is apposite
in the facts of the present case.
E. Even assuming that the word ‘LINCTUS’ is descriptive, for the reasons
already recorded in ( C ) and ( D ) above, deception and confusion are
nevertheless likely to arise. Another factor which merits consideration is
that the Defendant, having itself sought registration of the mark ‘PIL-
LINCTUS’, cannot now be permitted to contend that the essential feature
of its mark, namely ‘LINCTUS’, is merely descriptive or common to the
UltraTech Cement Limited
trade. In this regard, the Plaintiffs’ reliance on
is apposite. Consequently, in the facts of the present case, I find that the
decisions in Franco Indian Pharmaceuticals, J.R. Kapoor , F. Hoffmann-
La Roche & Co. Ltd., Kamath Hotels (India) Ltd. , and Schering
Corporation , relied upon by the Defendant, would not apply.
F. I am also, at this prima facie stage, unable to accept the Defendant’s
contention that the Plaintiffs are effectively seeking to monopolise
‘LINCTUS’. The Plaintiffs, as the registered proprietor of the composite
31 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
mark ‘GRILINCTUS’, are merely seeking to protect their registered mark
as a whole from the deceptively similar mark, i.e., PIL-LINCTUS. Section
17(2)(b) of the Trade Marks Act, 1999 does not in any manner denude the
proprietor of a registered composite mark of the right to protect the mark
in its entirety, which is exactly what the Plaintiffs are seeking to do. The
Plaintiffs are not seeking any exclusivity in ‘LINCTUS’ or in its use by the
Defendant. It is possible that, had the Defendant adopted ‘LINCTUS-PIL’
as its mark, the Plaintiffs may have had no legitimate grievance, since such
a mark would not create the same phonetic, visual or structural impression
as ‘GRILINCTUS’. Significantly, the Defendant’s own registrations
demonstrate that it has, in several instances, adopted ‘PIL’ as a suffix rather
than a prefix, such as ‘K-PIL’ and ‘NATURAL PIL’S SMART PET’.
G. Also , in my view, the conduct of the Defendant is another factor which, at
this interlocutory stage, would go against Defendant. The Defendant has
adopted the impugned mark despite being aware or then deemed to have
been aware of the Plaintiffs’ registered mark. Also, the Defendant had, in
the year 2018, applied for registration of the impugned mark 'PIL-
32 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
LINCTUS', which was abandoned after it was opposed by the Plaintiff. The
Defendant had, thereafter, in 2009, applied for registration of the mark
'BRILINCTUS', which the Plaintiffs also opposed and which was also
subsequently abandoned. Crucially , the Defendant has taken inconsistent
pleas regarding its claim of user of the impugned mark and has also failed
to produce any material evidencing any substantial use of the impugned
mark.
H. Conversely , there is no dispute that the Plaintiffs are and have been the
registered proprietor of the mark ‘GRILINCTUS’ since the year 1973. The
Plaintiffs have also, prima facie, established extensive and continuous use
of the mark ‘GRILINCTUS’ and the fact that the Plaintiffs have substantial
goodwill and reputation associated with the said mark and has also
produced material which supports the fact that the Plaintiffs have acted
diligently in protecting its statutory rights in respect of the said mark and
has obtained injunctions against the use of TORILINCTUS, ALLINTUS
BM and TINILINCTUS. In my prima facie view, therefore, the balance of
convenience lies clearly in favour of the Plaintiffs.
33 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
I. Though the Defendant has sought to contend that the Plaintiffs have relied
upon third-party invoices to establish continuous use of the mark, given
that the invoices relied upon are of Franco Indian Pharmaceuticals, which
is a sister concern of the Plaintiffs, who was using the mark under licence
from the Plaintiffs, such use would necessarily inure to the benefit of the
Plaintiffs. I am, therefore, not inclined, at this prima facie stage, to accept
the contention that the Plaintiffs have failed to establish continuous use of
the Plaintiffs’ mark.
J. I also find no merit in the contention that the Plaintiffs are disentitled to
relief on the grounds of delay and acquiescence. It is well settled that delay
would not by itself be sufficient to disentitle the Plaintiffs to relief if a case
is otherwise so made out. Equally, acquiescence requires proof of active
encouragement or assent on the part of the Plaintiff to the Defendant’s use
of the impugned mark. In the present case, the Defendant has not produced
any material to support the contention that the Plaintiff acquiesced in the
Defendant's use of the impugned mark. On the contrary, the material upon
which the Plaintiff placed reliance indicates that the Plaintiff has, in fact,
34 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
opposed the Defendant’s trade mark applications. Hence, the Plaintiff's
reliance upon the decisions in Willmott , M/s. Power Control Appliances
and Ors., and Kamath Hotels (India) Ltd. is entirely apposite.
K. Also, the Defendants' reliance on third-party registrations containing the
word ‘LINCTUS’ is, in my view, insufficient at this stage to deny relief to
the Plaintiff. It is well settled, as held in Corn Products Refining Co., and
National Bell Co., that the burden of establishing actual third-party use lies
upon the party asserting it. In my prima facie view, the Defendant has failed
to place any substantial material on record demonstrating such use. That
issue would, in any event, be more appropriately determined at trial.
L. As already noted in ( B ) and ( C ) above, the impugned mark is used in
relation to a pharmaceutical product, in respect of which a stricter standard
is required to be applied while assessing deceptive similarity, as held in
Cadila Health Care Ltd. and Wyeth Holdings Corporation & Anr. . The
Defendant’s conduct, as noted in ( G ) above, also does not inspire
confidence and, at this stage, appears to reflect a deliberate attempt to come
as close as possible to the Plaintiff’s registered trade mark
35 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
prima facie satisfied that the Plaintiffs
‘GRILINCTUS’. I am therefore
have established both prior registration and long-standing use of the trade
mark ‘GRILINCTUS’. The rival marks are deceptively similar and are
used in relation to substantially identical pharmaceutical products, albeit
with different compositions. The Plaintiffs have therefore made out a
strong prima facie case for the grant of interim relief.
41. Hence for the reasons set out in ( A ) to ( L ) above, I pass the following
order:
ORDER
i. The captioned Interim Application is allowed in terms of prayer clause
‘(a)’.
ii. There shall be no orders as to costs.
[ARIF S. DOCTOR, J.]
36 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::
3-IA-4006-2022
42. After the pronouncement, Mr. Kirpekar sought a stay of Order. To this, Mr.
Khandekar submitted that this Order will not be acted upon for a period of
4 weeks from today. His statement is accepted.
[ARIF S. DOCTOR, J.]
37 37
Page of
Meera Jadhav
::: Uploaded on - 17/06/2026 ::: Downloaded on - 17/06/2026 17:51:19 :::