Reddy Pharmaceuticals vs Dr. Reddy'S Laboratories
- Court
- Delhi High Court
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 13.02.2026
Judgment pronounced on: 18.05.2026
+ RFA(OS) 138/2013
REDDY PHARMACEUTICALS .....Appellant
Through: Mr. Chander M. Lall, Sr. Adv.
with Ms. Arushi Singh, Ms. Annanya Mehan,
Ms. Manviya Arun, Mr. Prabhjyot Singh and
Ms. Amrisha Kumari, Advs.
versus
DR. REDDY'S LABORATORIES .....Respondent
Through: Ms. Swathi Sukumar, Sr.
Advocate with Mr. Ranjan Narula, Mr. Shakti
Priyan Nair and Mr. Parth Bajaj, Ms. Rishika
Aggarwal and Mr. Ritik Raghuwanshi, Advs.
+ W.P.(C) 654/2014
REDDY PHARMACEUTICALS LTD. .....Petitioner
Through: Mr. Chander M. Lall, Sr. Adv.
with Ms. Arushi Singh, Ms. Annanya Mehan,
Ms. Manviya Arun, Mr. Prabhjyot Singh and
Ms. Amrisha Kumari, Advs.
versus
DR. REDDYS LABORATORIES
LTD. AND ANR .....Respondents
Through: Ms. Swathi Sukumar, Sr.
Advocate with Mr. Ranjan Narula, Mr. Shakti
Priyan Nair and Mr. Parth Bajaj, Ms. Rishika
Aggarwal and Mr. Ritik Raghuwanshi, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
HON'BLE MR. JUSTICE OM PRAKASH SHUKLA
JUDGMENT
% 18.05.2026
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 1 of 113
OM PRAKASH SHUKLA, J.
INDEX
S.NO PARTICULARS PG.NO
1. BACKGROUND OF THE DISPUTE 2.
2. THE LIS 3.
3. PLAINT 6.
4. WRITTEN STATEMENT 11.
5. REPLICATION 18.
6. IMPUGNED JUDGMENT
20.
CS(OS) 2194/2003
ORA/78/2006/TIVI/DEL
7. PROCEEDINGS BEFORE THIS COURT
29.
SUBMISSION OF THE APPELLANT/PLAINTIFF
SUBMISSION OF THE RESPONDENT/DEFENDANT
8. FINDINGS AND ANALYSIS 61.
9. CONCLUSION 112.
BACKGROUND OF THE DISPUTE
1
1. The dispute between Dr. Reddy’s Laboratories and Reddy
2
Pharmaceuticals Ltd. involves competing claims over the use of the
term “REDDY” in relation to pharmaceutical products. This issue has
resulted in two parallel proceedings before this Court.
2. The first is RFA(OS) No. 138 of 2013, arising from the judgment
and decree dated 13.09.2013 in CS(OS) 2194/2003, wherein the learned
Single Judge partly decided the suit in favour of DRL
1
“DRL” hereinafter
2
“RPL” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 2 of 113
(plaintiff/respondent) in a suit alleging infringement and passing off
against RPL (defendant/respondent/petitioner). The second is W.P.(C)
No. 654 of 2014, whereby RPL has challenged the order of the
3
Intellectual Property Appellate Board directing the rectification of the
Trade Marks Register by removing the “REDDY” mark from its name.
3. For the sake of convenience, the parties will be referred to as they
were before the learned Single Judge. Accordingly, RPL will continue
to be referred to as the “defendant/RPL”, and DRL as the
“plaintiff/DRL”, unless the context dictates otherwise.
4. In view of the close interconnection between the issues arising in
both proceedings, particularly the direct impact of the determination of
the validity of RPL’s trademark registration on the claims advanced in
the civil suit, this Court, by order dated 01.09.2014, directed that the
appeal and the writ petition be heard together. Accordingly, both
matters have been heard conjointly and are being disposed of through
this common judgment.
The lis
5. The lis between the parties and the underlying issue involves a
dispute over the use of the expression “REDDY” in the pharmaceutical
trade. DRL claims that its long and continuous use of the trading style
and mark “Dr. Reddy’s” has led to the expression “REDDY” acquiring
distinctiveness, making it exclusively associated with DRL and its
products in the pharmaceutical industry.
3
“IPAB” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 3 of 113
6. On the other hand, RPL asserts that “REDDY” is a common
surname, which forms part of its bona fide corporate name “Reddy
Pharmaceuticals Ltd.”, adopted because it is the surname of its
Managing Director. RPL further contends that its use of “REDDY” is
consistent with industry practices and does not infringe upon any
proprietary rights held by DRL.
7. The dispute escalated when RPL began marketing
pharmaceutical products using the term “REDDY”, which DRL alleges
constitutes passing off, as it amounts to an attempt by RPL to exploit
the goodwill and reputation built by DRL in its mark “Dr. Reddy’s”.
According to DRL, RPL’s use of the mark “REDDY” gives rise to
confusion among consumers and undermines its established brand
recognition.
8. RPL, however, refutes these allegations, claiming that its
products are marketed under distinct brand names and that the use of
“REDDY” is merely as a house mark, not likely to cause deception or
confusion in the market.
9. On 13.09.2013, the learned Single Judge passed a decree largely
in favour of DRL, granting a permanent injunction to restrain RPL from
using the mark “REDDY” in relation to pharmaceutical products. The
Court also granted consequential reliefs to DRL, finding that the
defendant’s use of the mark constituted passing off and was likely to
cause confusion among consumers.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 4 of 113
10. Aggrieved by the judgment, RPL preferred the present appeal
4
under Section 96 of the Code of Civil Procedure,1908 , being RFA (OS)
No. 138 of 2013. This appeal challenges the learned Single Judge’s
decree and seeks a re-examination of the claim of infringement and
passing off.
11. Parallel to the civil proceedings, DRL filed a rectification petition
before the IPAB, seeking the removal of the “REDDY” mark from
RPL’s trademark registration. On 29.10.2013, the IPAB ruled in favour
of DRL and ordered the removal of the “REDDY” mark from the
Register of Trade Marks.
12. The present proceedings require this Court to adjudicate the
competing claims of the parties regarding the use of the expression
“REDDY” in the pharmaceutical trade. Specifically, the issue at hand
is whether the use of the said expression by RPL infringes upon the
proprietary and common law rights asserted by DRL in the mark “Dr.
Reddy’s.”
13. Before examining the impugned judgment and the rival
submissions advanced before us, it is essential to first reconstruct the
pleadings of the parties, beginning with the case set up by DRL in the
plaint.
14. At the heart of this dispute lies the determination of the
permissible scope of protection that the law of trademarks concerning
4
“CPC” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 5 of 113
the competing claims of the parties over the expression “REDDY ”
within the pharmaceutical trade. The case, therefore, primarily concerns
the balance of rights under intellectual property law, particularly
trademark protection in relation to distinctiveness and the likelihood of
confusion in the marketplace.
15. PLAINT
15.1 The suit out of which the present appeal arises was instituted by
DRL against RPL, seeking reliefs of permanent injunction restraining
RPL from engaging in passing off, infringement of copyright, rendition
of accounts, damages, delivery up and allied reliefs.
15.2 The key averments set out in the plaint, insofar as they pertain to
the present appeal, may be recounted thus:
15.3 DRL is a company incorporated under the Companies Act, 1956,
having its registered office at Ameerpet, Hyderabad. The suit was
instituted through Mr. N. L. Narasimha Das, the Manager (Legal) of
DRL, who was authorised by a Board Resolution dated 28.10.2003 to
institute and verify the legal proceedings on behalf of DRL.
15.4 DRL was established in 1984 by Dr. K. Anji Reddy and has built
a strong foundation in the fields of research and drug development. The
plaint highlights DRL’s global expertise in the development and
5
manufacture of Active Pharmaceutical Ingredients , intermediaries,
5
“APIs” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 6 of 113
and finished dosage forms, enabling it to supply high-quality, cost-
effective pharmaceutical products to markets across the globe. DRL
asserts that this long- standing commitment to quality has helped it
build substantial goodwill and reputation in the pharmaceutical
industry.
15.5 DRL claims that through long, continuous, and extensive use of
its trading style “Dr. Reddy’s Laboratories Ltd.”, it has acquired
substantial reputation and goodwill in the pharmaceutical industry. It
asserts that the use of its trading style, combined with its extensive
presence in the market, has made it a well-known name in the industry,
particularly in the areas of bulk drugs and finished formulations.
15.6 DRL further asserts that the expression “REDDY” is the essential
and dominant feature of its trading style, and the extensive use of this
expression in relation to pharmaceutical products has led to a strong
association of the mark “REDDY” with DRL’s goods. It contends that
this association is exclusive to DRL and its pharmaceutical products in
the market, such that the expression “REDDY” has come to be
identified by consumers as a distinctive mark representing DRL.
15.7 The plaint goes on to state that DRL adopted a distinctive logo
consisting of a device of a man with outstretched arms, along with the
word mark “Dr. Reddy’s.” This artistic work was created in April 2001,
and DRL acquired exclusive rights to the work through a Deed of
Assignment dated 18.12.2002, under which the copyright in the logo
was assigned to DRL. DRL claims that the exclusive rights vested in it
by this assignment further bolster its claims regarding the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 7 of 113
distinctiveness of its intellectual property.
15.8 The plaint also states that RPL was initially engaged in the
business of supplying APIs and had been purchasing bulk drugs from
DRL since 1997 for distribution to other formulators. The relationship
between DRL and RPL was initially cooperative, with DRL supplying
ingredients to RPL for distribution in the market.
15.9 At the outset of their business relationship, DRL did not object
to RPL’s use of the corporate name “ Reddy Pharmaceuticals Ltd.”
because, at that time, RPL operated merely as a distributor of DRL’s
products. DRL was not concerned with the use of the name “Reddy
Pharmaceuticals Ltd." as it did not believe that it created any confusion
with DRL’s own use of the name “Dr. Reddy’s Laboratories Ltd.”
15.10 However, the relationship between the parties changed
significantly when, on 01.04.2003, RPL was appointed as DRL’s
commercial del credere agent for marketing DRL’s products in
Northern India. DRL contends that RPL’s subsequent activities,
particularly the prominent use of the expression “REDDY” in its
branding and marketing, cause confusion among the public and gave
rise to the likelihood of passing off. DRL further asserts that RPL’s
actions, including the use of “REDDY” as part of its branding for
pharmaceutical products, are in direct conflict with the established
goodwill associated with the mark “Dr. Reddy’s.”
15.11 DRL further pleads that in September 2003, it became aware of
the fact that RPL had expanded its business beyond being merely a
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 8 of 113
supplier of bulk drugs. RPL had begun marketing pharmaceutical
preparations in finished dosage forms under various brand names,
prominently displaying the mark “REDDY”. DRL alleges that RPL
represented to its distributors and agents that it was part of the “Reddy
group,” thereby attempting to leverage the goodwill and reputation
associated with DRL’s name and mark.
15.12 DRL claims that RPL’s packaging of its products prominently
displayed the mark “REDDY,” sometimes with even greater
prominence than the brand name of the product itself. This, according
to DRL, thereby creating a likelihood of confusion among consumers
and constituting an act of passing off.
15.13 In addition to using the mark “REDDY”, DRL alleges that RPL
used Ameerpet, Hyderabad, the locality where DRL’s registered office
is situated, as the address on its product cartons, despite conducting its
business operations from Delhi. This, DRL claims, was a deliberate
attempt by RPL to create an association with DRL and to exploit the
latter’s established goodwill.
15.14 In addition to using the “REDDY” mark, DRL claims that RPL
adopted a deceptively similar product range to that of DRL.
Specifically, DRL markets a well-known pharmaceutical preparation
under the trademark “OMEZ”, which is one of the leading brands of
Omeprazole in India. DRL alleges that RPL, knowing the reputation of
“OMEZ”, began marketing Omeprazole under the brand name
“OMRE" in a strip packaging with a design substantially similar to that
of DRL’s “OMEZ” packaging, thereby infringing DRL’s copyright
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 9 of 113
over the design. Further, DRL claims that RPL is marketing a brand
called “RECOLITE”, which is deceptively similar to DRL’s
“MUCOLITE”. DRL asserts that this adoption of similar brand names
and product designs is likely to cause confusion and is an act of passing
off.
15.15 DRL states that on 10.10.2003, its representatives met with the
Managing Director of RPL and demanded that RPL cease the use of the
mark “REDDY”, change its corporate name, and alter its packaging.
While RPL indicated a willingness to modify its packaging, it did not
agree to discontinue the use of the mark “REDDY” or alter its corporate
name.
15.16 Despite subsequent discussions in October 2003 and November
2003, no resolution was reached. RPL continued to justify its adoption
of the impugned trading style and use of the mark “REDDY”. DRL
contends that RPL’s refusal to cooperate and resolve the matter
amicably necessitated the filing of the present suit.
15.17 Paragraph 25 of the plaint details the cause of action for the suit,
which is stated to have arisen at the following points:
“25. The cause of action for the present suit arose in September
2003 when the Plaintiffs’ came to know that the Defendant have also
adopted a similar tradename/trading style in respect of
pharmaceutical goods. The cause of action again arose in October
2003 and November 2003 when the representatives of the plaintiff
and defendants had a meeting to amicably solve the dispute and the
st
same was not resolved. The cause of action once again arose on 1
December, 2003 when the plaintiffs received a letter from the
defendant terming the meetings and conversation. The cause of
action is thus a continuous and recurring one and continues to arise
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 10 of 113
from day to day till the Defendant is restrained by an order of
injunction of this Hon’ble High Court.”
*
15.18 In light of the foregoing, DRL prays for the following orders:
PRAYER
“28. It is therefore prayed that the following orders be passed:
a) An order of permanent injunction restraining the Defendant,
its directors, servants and agents from using the Plaintiffs trademark
REDDY on any pharmaceutical preparation and from using the
trading style Reddy Pharmaceutical Ltd. in relation to
pharmaceutical preparations and from copying the layout and get
up of the Plaintiffs’ OMEZ product as described in paragraph 15(iv)
and from reproducing a logo that is substantially similar to the
Plaintiffs’ logo or do any other act amounting to passing off
pharmaceutical and medicinal goods as those originating from the
Plaintiff;
b) An order of permanent injunction restraining the
Defendant, its directors, servants and agents from operating the
domain name www.reddylimited.com for the marketing and sale of
pharmaceutical preparations;
c) An order of permanent injunction restraining the
Defendants, their servants and agents from manufacturing, selling,
offering for sale products bearing a logo that is a substantial
reproduction of the Plaintiffs’ logo;
d) An order of permanent injunction restraining the
Defendants, their servants and agents from manufacturing, selling,
offering for sale omeprazole tablets bearing the trademark OMRE
in a layout and colour scheme similar to that of the Plaintiffs’ OMEZ
products as described in paragraph 15(iv) of the Plaint, amounting
to an infringement of the copyright vested with the Plaintiff;”
16. WRITTEN STATEMENT
16.1 The defence set up by RPL in its written statement, insofar as it
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 11 of 113
pertains to the issues arising in the present appeal, can be summarised
thus:
16.2 RPL contended, at the outset that the suit filed by DRL was
misconceived and lacked a valid cause of action. RPL argued that DRL
cannot claim any monopolistic proprietary rights over the expression
“REDDY”, which, according to RPL, is a common surname widely
used in India and thus cannot be exclusively owned by DRL in the
pharmaceutical trade.
16.3 It was further pleaded that the Mr. Konda Raghurami Reddy, the
Managing Director of RPL, bears the surname “REDDY”, and, as such,
the adoption of the name “Reddy Pharmaceuticals Limited” was bona
fide and legitimate. RPL contended that its use of the surname in its
corporate name was not intended to infringe upon any trademark or
intellectual property rights of DRL.
16.4 RPL asserted that DRL itself claims rights over the composite
mark “Dr. Reddy’s” and not the word “REDDY” standing alone. RPL
argued that DRL’s claim for protection is based on the distinctive nature
of the composite mark “Dr. Reddy’s”, and not the common surname
“REDDY” in isolation, which RPL maintains is a generic term.
16.5 RPL further emphasized that DRL does not possess any
registered trademark in the word “REDDY”. RPL pointed out that both
parties had filed applications for registration of the trade mark
“REDDY”, but these applications were pending before the Registrar of
Trade Marks at the time of the suit. Thus, RPL contended that DRL
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 12 of 113
cannot claim exclusive rights over the word “REDDY” when it had not
obtained registration.
16.6 RPL affirmed that it had initially been engaged in the business of
purchasing and supplying APIs. Since 1997, RPL had been purchasing
APIs from DRL and supplying them to formulators and traders across
India. RPL contended that its long-standing business relationship with
DRL demonstrates the absence of any objection to the use of the name
“Reddy Pharmaceuticals Limited” by RPL for over several years.
16.7 RPL argued that using the first element of a corporate name as a
house mark is a common and well-established practice in the
pharmaceutical industry. RPL further contended that the use of the
expression “REDDY” in its corporate name was in line with this
industry practice and was therefore not dishonest or objectionable.
16.8 RPL pleaded that it had been carrying on business under the name
“Reddy Pharmaceuticals Limited” since 1996, and that DRL had been
fully aware of such use since 1997, when their commercial dealings first
commenced. RPL argued that despite this long period of coexistence in
the market, DRL had never objected to the use of the name “Reddy
Pharmaceuticals Limited”.
16.9 RPL further contended that DRL had even acknowledged RPL’s
use of the name “Reddy Pharmaceuticals Limited” by communicated
with RPL via email addresses that incorporate the surname “REDDY”,
such as [email protected] and [email protected]. This, RPL
argued, reflected DRL’s recognition of RPL’s trading name, and by
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 13 of 113
extension, DRL’s acquiescence in the use of the surname “REDDY” by
RPL.
16.10 RPL argued that DRL is estopped from raising any objections to
the use of the mark “REDDY”, by RPL, as DRL has acquiesced in the
use of the said trading name for several years, specifically for around
seven years. RPL contended that DRL had neither raised any objections
nor taken any legal action during this long period, which led to RPL’s
legitimate expectation that it was free to continue using the name.
16.11 RPL further submitted that, at no point in time, did DRL raise
any concerns regarding the use of the mark “REDDY” as a key and
distinguishing feature of RPL’s trade name. RPL contended that there
had been no instances of confusion or deception reported in the market
due to the use of the mark by RPL. This, RPL argued, demonstrates that
the use of the surname “REDDY” did not lead to any likelihood of
confusion between the parties’ products.
16.12 RPL emphasized that it had engaged in business relationships
with several pharmaceutical companies across India since 1996, and
both DRL and RPL had always been recognised as distinct and
independent commercial entities in the industry. RPL contended that
the products marketed by both parties were sufficiently differentiated,
with each party’s pharmaceutical goods being marketed under distinct
brand names, none of which incorporated the word “REDDY”.
16.13 Finally, RPL denied that its activities amounted to passing off or
that any confusion could arise between the products of the two parties.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 14 of 113
RPL contended that, in light of the distinctiveness of their respective
products and the longstanding commercial relationship, there was
likelihood of consumer confusion, and therefore, no legal basis of
DRL’s passing off claims.
16.14 RPL asserted that it had been independently engaged in the
pharmaceutical trade since 1996 and had developed its own goodwill
and reputation in the market. RPL categorically denied any intention to
pass off its products as those of DRL, emphasizing that its activities
were completely distinct and did not infringe upon DRL’s intellectual
property rights. RPL further denied any act of misrepresentation and
reiterated that it had not used any logo or trade dress similar to that of
DRL.
16.15 RPL contended that the trademark or trading style “Dr. Reddy’s”
had not acquired the level of distinctiveness claimed by DRL.
According to RPL, the word “REDDY” did not constitute the essential
feature of DRL’s trading style or mark, and therefore, DRL could not
claim exclusive rights over the use of the surname “REDDY” in the
context of its business. RPL argued that the mark “Dr. Reddy’s” as a
whole, including the additional elements (such as the full name and
logo), was the composite mark that distinguished DRL’s business, and
not merely the word “REDDY” in isolation.
16.16 RPL further clarified that it had never used DRL’s trademark or
trade style, specially “Dr. Reddy’s” or its logo, on any of its products
or packaging. As such, RPL argued that there was no question of
confusion or deceptions arising from the use of the name “REDDY” by
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 15 of 113
RPL, as there was no direct overlap in the trademarks or trade styles
used by both parties.
16.17 RPL emphasized that the products in question were scheduled
pharmaceutical drugs, which were dispensed by trained pharmacists
only upon presentation of prescriptions from qualified medical
practitioners. Given this, RPL argued that the likelihood of confusion
among consumers was significantly reduced, as the professional nature
of the pharmaceutical trade and the prescription-based distribution
mechanism would prevent any confusion about the source of the
products.
16.18 RPL further submitted that it had made public announcements
regarding its intention to enter the pharmaceutical formulations
business by publishing newspaper advertisements as early as November
2002, on an all-India basis. These advertisements, RPL contended,
clearly indicated RPL’s intention to launch a formulations division and,
therefore, DRL should have been aware RPL’s activities long before
the suit was filed.
16.19 RPL denies that the packaging of its OMRE product resembles
DRL’s OMEZ product, asserting that the layout and design of OMRE
are distinct and do not create any likelihood of confusion. RPL
emphasizes that pharmaceutical packaging, particularly for
Omeprazole formulations, often follows common industry standards,
with similar colour combinations and layouts used by various
manufactures. Such practices are widespread, and RPL argues that these
conventions are not unique to DRL’s OMEZ product. RPL further
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 16 of 113
contents that, under Indian law, the mere use of common trade practices
does not constitute infringement, especially when there is no likelihood
of confusion, as consumers in the pharmaceutical market are generally
aware of the distinguishing features of different products. There, RPL
maintains that its packaging does not infringe DRL’s rights.
16.20 RPL also argued that “RECOLITE” and “MUCOLITE” were
two separate and distinct brands, asserting that there was no similarity
between the two names, and thus no likelihood of confusion among
consumers. This stance aligned with RPL’s position that its use of the
mark “REDDY” and the associated product names were sufficiently
distinctive to avoid any confusion with DRL’s products.
16.21 RPL acknowledged a meeting with DRL on 10.10.2003 to
address the dispute but maintained that no objections were raised by
DRL regarding the use of the trademark or trade name “REDDY”
During that meeting. According to RPL, the discussion focused solely
on DRL’s concerns about the caricature on the label of RPL’s “RENIM
Suspension” product and the slit on the packaging of RPL’s “OMRE”
product. RPL contended that both of these issues were addressed and
modified to DRL’s satisfaction, suggesting that the dispute did not
pertain to the use of the surname “REDDY”.
16.22 RPL also submitted that they did not attempt to derive any unfair
advantage or tried to give any impression of connection, nexus or
association or affiliation between RPL and DRL and in a way that the
members of trade or consumers are likely to believe an association
between them.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 17 of 113
16.23 RPL also submitted that the trade activities cannot be considered
as illegal or the same as causing loss and damage to the goodwill and
business of DRL and that RPL hasn’t suffered any damage therein and
hence are not entitled to any reliefs prayed for and that the suit is liable
to be dismissed along with an order for exemplary costs in favour of
DRL.
17. THE REPLICATION
17.1 DRL asserted that it was the prior adopter and user of the mark
“Dr. Reddy’s” in relation to pharmaceutical preparations and that this
mark had, through long and continuous use, acquired distinctiveness
and secondary meaning within the pharmaceutical trade. DRL further
argued that this widespread use of its mark had created an exclusive
association of the mark “Dr. Reddy’s” with DRL’s goods, making it a
well- recognized and distinctive mark in the industry.
17.2 DRL denied that RPL possessed any legitimate or statutory right
to use the expression “REDDY” in relation to pharmaceutical
formulations. DRL contended that RPL’s adoption of the term
“REDDY” in relation to pharmaceutical goods was dishonest and
calculated to create a false association with DRL and its well-
established mark. DRL maintained that RPL’s use of “REDDY” was an
attempt to unfairly capitalize on the goodwill associated with DRL’s
“Dr. Reddy’s” mark.
17.3
DRL refuted the plea of acquiescence raised by RPL. DRL
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 18 of 113
clarified that RPL had initially been involved only in the business of
supplying bulk APIs and had not engaged in the marketing of finished
pharmaceutical products under the mark “REDDY”, until much later.
The dispute, DRL contended, arose only when RPL began to market
finished pharmaceutical formulations using the mark “REDDY”, which
led to an infringement of DRL’s rights.
17.4 DRL denied the claim that the institution of the suit was mala
fide. DRL emphasized that the proceedings were instituted in good faith
and solely to restrain RPL from misappropriating the goodwill and
reputation associated with DRL’s mark “Dr. Reddy’s”. DRL asserted
that the suit was filed with the legitimate objective of protecting its
intellectual property rights and preventing unfair competition by RPL.
17.5 DRL further reiterated that the adoption of the mark “REDDY”
in relation to pharmaceutical preparations by any entity other than DRL
was likely to cause confusion among consumers as to the source of the
goods. DRL argued that this confusion was particularly detrimental in
the pharmaceutical industry, where the heightened standard of care is
applicable. In matters concerning pharmaceutical products, DRL
contended that consumers reply on well-established brands, and any
attempt to pass off similar marks could result in harm to public health
and safety, in addition to the loss of goodwill.
17.6
On the basis of the above arguments, DRL reaffirmed the reliefs
sought in the plaint and prayed that the suit be decreed accordingly,
including a permanent injunction restraining RPL from using the mark
“REDDY” in relation to pharmaceutical products, as well as other
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 19 of 113
reliefs related to damages, delivery up, and rectification of the Trade
Marks Register.
IMPUGNED JUDGMENTS
18. CS(OS) 2194/2003
18.1 The learned Single Judge held that the adoption and use of the
expression “REDDY” by RPL in relation to pharmaceutical
preparations constituted passing off of its products as those of DRL.The
Court granted a decree of permanent injunction, restraining RPL from
using the mark “REDDY” in relation to any pharmaceutical products.
18.2 The learned Single Judge also found that the packaging adopted
by RPL in respect of its OMRE formulation infringed the copyright
subsisting in the artistic work embodied in DRL’s OMEZ strip
packaging. However, DRL claim of copyright infringement in respect
of its device logo depicting a man with outstretched arms was rejected
by the Court.
18.3 Upon completion of pleadings, the learned Single Judge framed
the following issues for adjudication, which are reproduced below:
1. “ Whether the plaint has been signed and verified by a competent
person
2. Whether the plaintiff is the proprietor of the trademark
“REDDY” in respect of pharmaceutical products?
3. Whether the use of the trademark and also trade name
“REDDY” by the defendants in relation to their pharmaceutical
products is likely to cause confusion or deception amounting to
passing off?
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 20 of 113
4. Whether the plaintiff is the proprietor of the copyright in the logo
as described in paragraph 9 of the plaint? If yes, whether the use
of the logo by the defendant is substantially similar to the logo
of the plaintiff as described in paragraph 9 of the plaint,
amounting to infringement of the said copyright?
5. Whether the plaintiff is the proprietor of the copyright in the get-
up, lay-out and colour combination of its OMEZ strips as
described in paragraph 15(iv) of the plaint? If yes, whether the
use of a get-up, lay-out and colour combination by the
defendants on its medical products, bearing the trademark
OMRE, amounts to infringement of the copyright that vests with
the plaintiff in its OMEZ strips as described in paragraph 15(iv)
of the plaint?
6. Whether the use of the domain name, www.ReddyLimited.com
by the defendant amounts to passing off?
7. Whether the suit is liable to be dismissed on account of delay,
laches and acquiescence?
8. Whether the plaintiff is entitled to rendition of accounts, profits
and damages? If so, how much?
9. Relief ”
18.4 In relation to the competence to institute the suit, the learned
Single Judge held that the suit had been validly instituted on behalf of
DRL. The Court noted that DRL/the plaintiff company had passed a
Board Resolution authorising certain officers, including Sh. N. L.
Narasimha Das, Manager (Legal), to institute and verify legal
proceedings on DRL’s behalf. Consequently, the objection raised by
RPL regarding the competence of the plaintiff was rejected.
18.5 The learned Single Judge next addressed the defence of delay,
laches, and acquiescence raised by RPL. RPL contended that DRL had
long been aware of RPL’s use of the name “Reddy Pharmaceuticals
Ltd.” and had continued commercial dealings with it, thereby
acquiescing in such use. The Court rejected this defence holding that
there was no real conflict between the parties so long as RPL was
involved merely in the supply of active pharmaceutical ingredients. The
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 21 of 113
dispute, the Court held, arose only when RPL commenced marketing
finished pharmaceutical formulations in August 2003, at which point
DRL promptly initiated legal proceedings. Therefore, the learned
Single Judge concluded that the defence of acquiescence was not
available to RPL.
18.6 The learned Single Judge then considered whether DRL could
claim proprietary rights in the expression “REDDY”. Although RPL
relied on its registration of the mark “REDDY” obtained in April 2003,
the Court held that such registration did not defeat the superior common
law rights of DRL, which has arisen from prior and continuous use of
the mark. The Court relied on the certificate of incorporation and other
evidence to conclude that DRL had been carrying on pharmaceutical
business under the name “Dr. Reddy’s Laboratories” since 1984.
Consequently, the Court found that DRL had acquired substantial
goodwill and reputation in the pharmaceutical industry, and therefore,
DRL had established proprietary rights in the mark “Dr. Reddy’s”
through prior adoption and continuous use.
18.7 The learned Single Judge also addressed RPL’s claim of an
exclusive right over the mark “REDDY”, as it was registered in its
favour. The Court found no merit in RPL’s contention, stating that
priority in adoption and use of a trademark takes precedence over
priority in registration. The learned Judge referred to several
6
precedents, including Nirma Limited v Nimma International & Anr ,
7
N.R. Dongre v Whirlpool Corporation , and Century Traders v
6
2010 SCC OnLine Del 22: (2010) 42 PTC 307
7
(1996) 5 SCC 714
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 22 of 113
8
Roshan Lal Dugggar , to affirm that the rights of DRL, arising from its
long and continuous use of the mark, were superior to RPL’s
registration .
18.8 The learned Single Judge then considered whether RPL’s use of
the expression “REDDY” amounted to passing off. In applying the
principles of deceptive similarity in the pharmaceutical industry, the
Court referred to the Supreme Court’s decision in Cadila Health Care
9
Ltd. v. Cadila Pharmaceuticals Ltd ., which emphasised the need for a
stricter approach in cases involving medicinal products. The Court
found that the marks “Dr. Reddy’s” and “REDDY” were phonetically
identical and used in relation to similar pharmaceutical products. The
Court also noted the mala fide intent on the part of RPL, particularly
the fact that RPL, despite being based in Delhi, had listed Ameerpet,
Hyderabad (the location of DRL’s laboratories) as the address on its
product packaging. This,the Court concluded, was likely to mislead
consumers and the trade into believing that RPL’s products originated
from DRL. The Court therefore held that RPL’s use of the mark
“REDDY” amounted to passing off.
18.9 The learned Single Judge, based on the evidence presented,
found that DRL’s mark “ Dr. Reddy’s” had demonstrated substantial
commercial use from 1997 to 2004 in the marketing of finished drug
formulations. This further corroborated DRL’s claim to exclusive rights
over the mark.
8
ILR (1977)2 DEL 709
9
2001 5 SCC 73
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 23 of 113
18.10 The Court observed that although RPL had been functioning
under the trade name “Reddy Pharmaceutical Ltd.” since 1996, there
was no evidence to suggest that RPL had been involved in the
manufacture of finished drug formulations prior to DRL’s entry into the
market. On the contrary, DRL had been engaged in the manufacture of
finished pharmaceutical products since its incorporation and had
established a strong presence in both the Indian and international
markets.
18.11 Despite RPL holding registration for the mark “REDDY”, the
learned Single Judge emphasized that DRL had superior proprietary
rights over the mark due to its prior and continuous use of the mark in
relation to pharmaceutical preparations. The dominant element of the
mark was found to be the expression “ REDDY ” , and by virtue of the
long and extensive use, DRL had acquired common law rights that
superseded the statutory registration of RPL.
18.12 The Court took note of certain circumstances that reinforced the
likelihood of confusion between the parties’ products. In particular, it
observed that RPL had prominently used the expression “REDDY” in
connection with pharmaceutical products. The learned Single Judge
also highlighted that RPL had mentioned Ameerpet, Hyderabad, a
location closely associated with DRL’s operations, on its packaging,
which the Court found to be likely to mislead consumers into believing
that RPL’s products originated from DRL. Furthermore, the Court
observed that RPL was initially appointed as a del credere agent for
DRL’s products, reinforcing the suspicion that RPL’s use of the mark
“REDDY” was an attempt to exploit DRL’s goodwill and reputation.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 24 of 113
18.13 In response to RPL’s defence that “REDDY” was a common
Indian surname and thus could not be monopolized, the Court noted that
when a common name is used in a manner that creates the impression
that it is associated with an established brand, such as DRL, the use of
the name is deemed to be made with mala fide intent. The learned Single
Judge concluded that RPL’s adoption of the mark “REDDY” was
intended to cash in on the goodwill, reputation, and consumer base built
by DRL, thereby misleading the public and infringing DRL’s rights.
18.14 Regarding the copyright infringement claim concerning DRL’s
device logo, a depicting of a man with outstretched arms, the Court
conducted a visual comparison between DRL’s logo and the logo
adopted by RPL, which consisted of the letter “R” enclosed within
crescents. The learned Single Judge found that the two logos were not
substantially similar in appearance or design. As a result, the Court
rejected DRL’s claim of copyright infringement concerning the logos,
concluding that no infringement had occurred in this regard.
18.15 The learned Single Judge also examined the use by RPL of the
domain name www.reddylimited.com . Citing precedents such as
10
Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd . and Tata Sons
11
Ltd. v. Fashion ID , the Court held that domain names, like
trademarks, serve as identifiers of the source of goods or services and
can lead to passing off if they are confusingly similar to established
marks. Given the confusion likely caused by RPL’s domain name,
10
(2004) 6 SCC 145
11
2005 SCC OnLine Del 72
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 25 of 113
which was identical to DRL’s “REDDY” mark, the Court ruled that
RPL’s use of the domain name constituted passing off.
18.16 Upon examining the packaging of the rival pharmaceutical
products, the Court found substantial similarity in the colour
combination, layout, and overall presentation of the packaging used by
DRL for its OMEZ formulation and that used by RPL for its MORE
formulation. The learned Single Judge held that the packaging used by
RPL infringed the copyright subsisting in the artistic work embodied in
the OMEZ strip packaging. The Court concluded that this infringement
of copyright occurred due to the visual similarity between the two
packaging designs, which was likely to cause confusion among
consumers.
18.17 In view of the findings, the learned Single Judge decreed the suit
substantially in favour of DRL. The Court granted the following relief:
RPL was permanently restrained from using the mark “REDDY” in
relation to pharmaceutical products and from operating the domain
name www.reddylimited.com for marketing pharmaceutical products;
RPL was further restrained from using the packaging that infringed
DRL’s copyright in the OMEZ strip packaging; DRL was entitled to the
rendition of accounts of profits, and the Court ordered RPL to disclose
the profits made from the infringing activities. However, DRL’s claim
of copyright infringement in relation to its device logo depicting a man
with outstretched arms was rejected by the Court, as the logos were not
substantially similar.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 26 of 113
19. ORA/78/2006/TIVI/DEL
19.1 DRL initiated rectification proceedings before the IPAB seeking
the removal of the trademark “REDDY” registered in favour of RPL
under Registration No. 1192732 in Class 05 for medicinal and
pharmaceutical preparations.
19.2 Upon hearing the parties and examining the pleadings and
documentary evidence, the IPAB framed the central issue as whether
the adoption and use of the mark “REDDY” by RPL was honest and
justified under the law.
19.3 At the outset, the IPAB expressed its prima facie view that the
use of the mark “REDDY” by RPL in relation to pharmaceutical
preparations was likely to create the impression that RPL was an
affiliate, associate or subsidiary of DRL. This observation was based on
the reputation and distinctiveness that DRL had established through the
longstanding use of the mark “Dr. Reddy’s” in the pharmaceutical
industry.
19.4 The IPAB also took note of the timeline of the applications. DRL
had applied for the registration of its mark in the year 2001, whereas
RPL’s application for registration of the mark “REDDY” was filed
subsequently in the year 2003. In this backdrop, the Board expressed
concern over the Trade Marks Registry’s decision to accept and proceed
with RPL’s application, particularly in light of DRL’s prior use and
reputation. The Board concluded that the Trade Mark’s Registry had
erred in allowing RPL’s application, and the registration granted to RPL
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 27 of 113
appeared, on its face, to have been wrongly entered and should not have
remained on the Register.
19.5 The IPAB then considered RPL’s defence that the adoption of
the mark “REDDY” was based on the surname of RPL’s Managing
Director, and thus was bona fide . While acknowledging that the use of
a surname as a trademark is not inherently impermissible or fraudulent,
the IPAB held that, in the specific facts of this case, RPL’s adoption of
the mark “REDDY” appeared to be a deliberate attempt to exploit the
goodwill associated with DRL’s well- established trading style. The
IPAB concluded that there was insufficient evidence presented by RPL
to substantiate its claim of honest adoption, and thus rejected the
defence.
19.6 Proceeding further, the IPAB examined the statutory defences
12
available under Sections 12 and 35 of the Trade Marks Act, 1999 ,
which provide for honest concurrent use and the bona fide use of a
personal name. These defences, the IPAB noted, are subject to the
requirement that the applicant must establish a bona fide claim of
proprietorship under Section 18(1) of the Act. Given that RPL failed to
present credible material to establish its bona fide claim of
proprietorship over the mark “REDDY”, the Board concluded that
RPL’s registration was invalid and could not remain on the Register.
19.7 In view of the aforesaid findings, the IPAB concluded that the
registration of the mark “REDDY” in favour of RPL had been obtained
12
“the Act” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 28 of 113
without sufficient cause and that it was wrongly remaining on the
Register. Consequently, the rectification application was allowed, and
an order was passed for the removal of the mark “REDDY”
(Registration No. 1192732 in Class 05) from the Register of Trade
Marks.
20. PROCEEDINGS BEFORE THIS COURT
SUBMISSIONS ON BEHALF OF THE APPELLANT/
DEFENDANT
20.1 Mr. C M. Lall, learned Senior Counsel, appeared on behalf of the
defendant in RFA(OS) 138/2013 and the petitioners in W.P.(C)
654/2014.
20.2 Mr. Lall argued that the impugned judgment was liable to be set
aside, as the findings therein were contrary to the pleadings,
documentary evidence, and admissions made by the witnesses of the
plaintiff. He further contended that the judgment was inconsistent with
the settled principles governing actions for trademark infringement and
passing off, which were not adequately applied to the facts of the case.
20.3 The Senior Counsel submitted that the defendant had honestly
and bona fidely adopted the trade name “Reddy Pharmaceuticals
Limited” upon the incorporation of the defendant company on
05.01.1996. It was submitted that the name had been openly and
continuously used since its incorporation in connection with their
business in medicinal and pharmaceutical preparations.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 29 of 113
20.4 Mr. Lall further submitted that the adoption of the word
“REDDY” was derived from the surname of the Managing Director and
promoter of the defendant company, Mr. K. Raghuram Reddy. It was
argued that this adoption was never intended to exploit the reputation
of the plaintiff, and no intent existed to create confusion regarding the
source of goods.
20.5 It was submitted that the plaintiff had been fully aware of the
existence and business activities of the defendants since at least 1997,
as the parties had commercial dealings during which the defendant had
been purchasing bulk pharmaceutical ingredients from the plaintiff and
supplying the same in the market. Further, Mr. Lall pointed out that the
plaintiff’s admissions (specifically, paragraph 12 of the plaint)
indicated that the plaintiff had never considered the use of the trade
name “Reddy Pharmaceuticals Limited” as detrimental or infringing
upon their rights.
20.6 Mr. Lall highlighted that the defendants had issued prominent
advertisements in leading newspapers on an all-India basis, announcing
the launch of their Generic Pharmaceutical Formulation Division. He
argued that these advertisements further demonstrated the transparency
of the defendant’s business activities, and there was no intent to conceal
or mislead consumers.
20.7 It was submitted that the plaintiff had approached the Court
without disclosing material facts related to its alleged trademark rights.
Specifically, Mr. Lall pointed out that the plaintiff had applied for
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 30 of 113
registration of the device mark “Dr. Reddy’s”, which was examined by
the Trade Marks Registry in February 2003. The examination report
indicated that the word “Dr.” was non-distinctive and that “REDDY”
was a common surname lacking inherent distinctiveness. Despite this,
the plaintiff failed to respond to the examination report, and the
application was treated as abandoned in September 2003. Mr. Lall
argued that the plaintiff’s failure to disclose this abandonment to the
Court was misleading and improper.
20.8 Mr. Lall further submitted that the word “REDDY” was a
common surname, especially prevalent in the State of Andhra Pradesh,
and therefore could not be monopolised by any single trader. In the
absence of evidence demonstrating exclusive goodwill or acquired
distinctiveness, the word “REDDY” could not be exclusively attributed
to the plaintiff. He contended that the Act does not allow the
monopolization of common surnames without sufficient evidence of
distinctiveness.
20.9 The Senior Counsel argued that the defendant had continuously
used the name “ Reddy Pharmaceuticals Limited” since their
incorporation, and this use was bona fide in connection with their
pharmaceutical business. The use of the surname was justified and
legitimate under the law and did not cause any confusion or passing off.
20.10 Mr. Lall also placed reliance on Section 35 of the Act which
protects the bona fide use of a personal name as a trademark. He
referred to the following cases to support this position, Vasundhara
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 31 of 113
13
Jewellers Pvt. Ltd. vs. Vasundhara Fashion Jewellery LLP & Anr .,
14
Jindal Industries Pvt. Ltd. vs. Jindal Sanitaryware Pvt. Ltd. & Anr .
In these cases, the Courts recognized the bona fide use of personal
names as statutorily protected, even if the names were common. Mr.
Lall argued that the use of the word “REDDY”, being the personal name
of the Managing Director of the defendant company, was thus protected
under Section 35 and did not infringe the plaintiff’s rights.
20.11 Mr. Lall also contended that the defendant’s transition from
selling APIs to pharmaceuticals formulations represented a legitimate
commercial expansion and did not retroactively invalidate the bona fide
adoption of the trade name. The change in the nature of the business
should not be used to invalidate the earlier legitimate adoption of the
name. He relied on the case of Laxmikant V. Patel v Chetanbhai
15 16
Shah and Leayan Global Pvt. Ltd. v. Bata India Ltd , where Courts
acknowledged the natural expansion of business into new categories.
20.12 Mr. Lall submitted that the plaintiff had failed to establish any
exclusive proprietary right in the word “REDDY”. The plaintiff did not
provide sufficient evidence to demonstrate that the word “REDDY” had
acquired distinctiveness or reputation exclusively in relation to its
goods. The plaintiff’s failure to prove the exclusivity of its trademark
rights further undermined its claim for infringement.
20.13 Mr. Lall contended that the plaintiff had failed to establish the
13
FAO(OS) (COMM) 232/2023 & CM. APPL. 55117/2023
14
CS(COMM) 251/2023, I.A. 888/2023 & I.A. 13154/2023
15
(2002) 3 SCC 65
16
2025 SCC OnLine Del 9128
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 32 of 113
goodwill or reputation specifically attached to the mark “Dr. Reddy’s”.
The plaintiff did not produce any documentary evidence of advertising
expenditure, certified sales figures, or market recognition related
specifically to the mark. Without such evidence, Mr. Lall argued, the
plaintiff’s passing off claim could not be substantiated. He referred to
the cases of Ms. Anuradha Sharma & Anr. vs. Jiva Ayurvedic
17
Pharmacy Ltd. & Ors order dated 01.12.2025 and Vishal Gupta &
18
Ors. vs. Rahul Bansal , to support the need for tangible evidence of
goodwill and reputation in passing off claims .
20.14 Mr. Lall also pointed out that the use of Ameerpet address in
Hyderabad did not make the adoption of the name “REDDY” dishonest.
He argued that the geographical reference to Ameerpet in Hyderabad
could not be grounds for claiming dishonesty unless the plaintiff could
prove exclusivity over the geographical name. The adoption of the
surname “REDDY” could at best be restricted if the plaintiff proved
such exclusivity.
20.15 Finally, Mr. Lall argued that the plaintiff had acknowledged the
defendant’s trade name “Reddy Pharmaceuticals Ltd.” in the Del
Credere agreement between the parties. The agreement recognized the
defendant as “Reddy Pharmaceuticals Ltd.” under Clause 2.7, which
was consistent with Recital No.2 of the agreement, which
acknowledged the use of the name. This, he argued, demonstrated the
plaintiff’s recognition of the defendant’s legitimate use of the name.
17
FAO (COMM) 334/2025
18
2025:DHC:3685-DB
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 33 of 113
20.16 It was submitted by learned Senior Counsel that the
Memorandum of Association of the defendant company also confirms
the fact that the company was incorporated to engage in pharmaceutical
business, which included both bulk drugs and final formulations. It was
further contended that the plaintiff contractually recognised defendant’s
incorporated name and its independent commercial operations, without
imposing any restrictions on the use of the corporate name “Reddy
Pharmaceuticals Ltd.”. This recognition further reinforced the
legitimacy of the defendant’s business operations under the name
“Reddy Pharmaceuticals Ltd.” and demonstrated that there was no prior
objection or restriction by the plaintiff regarding its use.
20.17 It was further submitted that the evidence relied upon by the
plaintiff to establish its prior use of the mark “Dr. Reddy’s” had not
been proved in accordance with law. Several of the documents relied
upon by the plaintiff were subsequent to the incorporation of the
defendant company in 1996 and thus did not substantiate the plaintiff’s
claim of prior use before the defendant’s incorporation.
20.18 Learned Senior Counsel highlighted that the admissions made by
the plaintiff’s witnesses, particularly regarding the evidence of prior
use, showed that the plaintiff failed to produced material evidence
establishing the actual use of the mark “Dr. Reddy’s” as a trademark for
the years preceding the suit. The evidence presented by the plaintiff
mainly consisted of trademark applications and assignment deeds, none
of which establishes actual commercial use.
20.19 Learned Senior Counsel argued that the facts admitted by the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 34 of 113
plaintiff in its pleadings constituted the best evidence and therefore did
not require further proof. The Court should have given significant
weight to the plaintiff’s admissions, which undermined its own claims.
20.20 Further, it was pointed out that PW-3, a witness for the plaintiff,
admitted that only annual reports for the years 2002-03 and 2005-06
had been produced, and that the complete set of annual reports from the
inception of the plaintiff’s business had not been placed on record. This
undermines the plaintiff’s claim to continuous and consistent use of the
mark.
20.21 Learned Senior Counsel submitted that PW-3 had admitted in
cross-examination that the name of the plaintiff company and that of
the defendant company were entirely different, further distancing the
parties and negating the likelihood of confusion between the two
companies. This admission significantly weakened the plaintiff’s claim
of passing off and likelihood of confusion.
20.22 Learned Senior Counsel also submitted that PW-1, another key
witness for the plaintiff, admitted in cross-examination that the plaintiff
had no evidence on record to establish use of the trade name “Dr.
Reddy’s” for the previous 13-14 years. This lack of evidence for
continuous use prior to 1997 undermined the plaintiff’s case for prior
rights over the mark.
20.23 It was further submitted that the annual reports relied upon by the
plaintiff, which dated to the years 2002-03 and 2005-06, were
subsequent to the adoption and use of the mark by the defendants in
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 35 of 113
1997. This indicated that the plaintiff had failed o provide evidence
establishing the continuity of use before the defendant’s entry into the
market.
20.24 Learned Senior Counsel also submitted that the learned Single
Judge had erred in holding that the plaintiff possessed proprietary rights
in the mark “REDDY”. The document relied upon by the Court,
particularly those from the year 1997, were subsequent to the
incorporation of the defendant company in 1996 and thus could not
have established prior use or rights over the mark.
20.25 It was contended that the learned Single Judge had failed to
consider the evidence on record adequately and had returned findings
based on insufficient evidence. The documents produced by the
plaintiff did not prove the priority of adoption or use of the mark
“REDDY”, especially in the context of the defendant’s admitted use of
the mark since 1997.
20.26 Learned Senior Counsel emphasized that the plaintiff had itself
admitted that the defendant had been conducting business under the
name “Reddy Pharmaceuticals Ltd.” since 1997 and that prior to 2003,
the relationship between the parties was on a principal-to-principal
basis. This admission of independence further undermined the
plaintiff’s claim that the defendant was trying to pass off its products as
those of DRL.
20.27 Learned Senior Counsel also submitted that the dispute raised by
the plaintiff was actually confined to the defendant’s entry into the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 36 of 113
Generic Formulation Division, not to the pharmaceutical trade as a
whole. However, the learned Single Judge had proceeded with findings
as though the defendant was to be restrained from carrying on their
pharmaceutical business altogether, which was an overreach.
20.28 Learned Senior Counsel argued that the findings on passing off
and the likelihood of confusion were contrary to the admissions made
by the plaintiff’s witnesses during cross-examination. It was pointed out
that PW-3 admitted that the names of the plaintiff and defendant
companies were completely different, and PW-1 admitted that there
was no visual similarity between the packaging of the respective
products.
20.29 Mr. Lall submitted that the defendants had consistently and
continuously maintained a distinctive saffron color packaging and trade
dress across all their pharmaceutical products. This packaging style had
remained uniform and was clearly distinguishable from the plaintiff’s
packaging. The consistent use of this distinct packaging further
undermined the plaintiff’s claim of passing off and likelihood of
confusion.
20.30 Learned Senior Counsel emphasized the Classical Trinity Test in
actions for passing off, which requires the establishment of
misrepresentation, deception, and the likelihood of damage to goodwill.
Mr. Lall contended that the defendant’s consistent use of a distinctive
saffron coloured trade dress effectively negated any claim of
misrepresentation or an attempt to ride on the goodwill of the plaintiff.
He argued that the distinctiveness of the defendant’s trade dress
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 37 of 113
rendered any confusion or deceptive practices unlikely.
20.31 Learned Senior Counsel also relied on the testimony of PW-2,
who admitted that the plaintiff company would have no objection to Mr.
Raghu Rami Reddy carrying on business under the name “Reddy
Pharmaceuticals Ltd” for bulk drugs. This, Mr. Lall argued, reinforced
the defence that the use of the name had not been objectionable to the
plaintiff in the context of the defendant’s pharmaceutical operations.
20.32 It was contended that these admissions by the plaintiff’s
witnesses clearly demonstrated that the use of the trade name “Reddy
Pharmaceuticals Ltd.” had never been considered detrimental by the
plaintiff. Yet, the learned Single Judge failed to consider these material
admissions, which should have weighed heavily in favour of the
defendant’s when arriving at the conclusions in the judgment.
20.33 Learned Senior Counsel also submitted that PW-1 testified that
physicians generally prescribe medicines by brand names and not by
the trade name “Dr. Reddy’s”. Mr. Lall argued that this admission
showed that the possibility of confusion arising merely from the
similarity of corporate names in the pharmaceutical industry was
extremely remote. Prescriptions are made based on established brand
names and generic names, not the corporate identity of the
manufacturer.
20.34 Building on the testimony of PW-1, Mr. Lall further argued that
the possibility of confusion in the pharmaceutical trade was minimal.
Given that prescriptions are made based on brand names and generic
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 38 of 113
names, the similarity of corporate names would not likely mislead
medical professional or patients into confusing the two entities.
20.35 Learned Senior Counsel further pointed out that PW-1 had
admitted during cross-examination that when terminating the
agreement, no prohibition had been imposed on the defendant’s from
using the word “REDDY” as part of their corporate name, trade name
or trademark. This admission suggested that the plaintiff had actively
allowed the defendants to use the name without raising any objections
at the time of contract termination.
20.36 It was further submitted that there was no document or evidence
showing that the plaintiff raised any objection to the defendant’s use of
the word “REDDY” in the meeting held on 10.10.2003. The plaintiff’s
failure to raise an objection during this meeting, despite the opportunity,
supported the argument that the plaintiff had acquiesced in the use of
the name “Reddy Pharmaceuticals Ltd.”.
20.37 Learned Senior Counsel argued that the plaintiff had allowed the
defendants to continue using the name “Reddy Pharmaceuticals Ltd.”
for several years without objection, leading to the defence of
acquiescence and delay. Mr. Lall contended that the plaintiff’s failure
to object to the defendant’s use of the name from 1997 to 2003 meant
that the plaintiff had waived its right to challenge the use of the name
after several years of commercial acceptance.
20.38 It was further argued that the learned Single Judge failed to apply
the correct principles governing passing off actions, as outlined by the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 39 of 113
Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna
19
Pharmaceutical Laboratories . The principles of misrepresentation,
deception, and damage to goodwill were not properly considered, which
led to the incorrect findings of passing off.
20.39 Mr. Lall contended that the learned Single Judge had ignored the
nature of pharmaceutical trade, where products are typically identified
by brand names or generic names rather than by the corporate name of
the manufacturer. This is a fundamental distinction in the industry, and
the corporate name would not be a primary identifier for consumers or
medical professionals in the context of pharmaceuticals.
20.40 Learned Senior Counsel relied on the del credere Agency
Agreement dated 01.04.2003 between the plaintiff and the defendant,
which expressly recognised the defendant as “Reddy Pharmaceuticals
Ltd.”. The agreement further acknowledged the defendant’s
engagement in the pharmaceutical trade and appointed them as
commercial del credere agents for promoting the plaintiff’s APIs. Mr.
Lall argued that the agreement did not impose any restrictions on the
use of the corporate name “Reddy Pharmaceuticals Ltd.”.
20.41 It was pointed out that the del credere agreement did not contain
any covenants preventing the defendant from carrying on their
independent pharmaceutical business under the name “Reddy
Pharmaceuticals Ltd.”. The plaintiff’s failure to challenge the use of the
name at the time of entering into the agreement further supported the
19
(1965) 1 SCR 737
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 40 of 113
defendant’s case that their use of the name had been acknowledged and
accepted by the plaintiff.
20.42 Mr. Lall emphasized that the plaintiff, having knowingly entered
into the del credere agreement recognising the defendants’ corporate
identity, could not subsequently challenge the use of the name “Reddy
Pharmaceuticals Ltd.”. The plaintiff’s knowledge of the defendant’s
business activities since 1997 and its failure to object during this period
amounted to acquiescence in the use of the name.
20.43 Learned Senior Counsel further submitted that the plaintiff’s
failure to raise an objection to the use of the name “Reddy
Pharmaceuticals Ltd.” From 1997 to 2003 was a clear instance of
acquiescence and delay. The plaintiff had knowingly allowed the
defendant to conduct their business without raising any objection for
several years, and this delay in challenging the name amounted to
waiver of any legal rights.
20.44 Learned Senior Counsel also contended that the learned Single
Judge had failed to consider the defence of acquiescence despite the
admissions made by PW-1 during cross-examination, which revealed
the longstanding commercial relationship between the parties. The
defence of acquiescence should have been properly applied in this case,
and the learned Single Judge’s failure to consider this defence led to an
erroneous conclusion.
20.45 It was also argued that the learned Single Judge had ignored the
principles laid down by the Supreme Court in Power Control
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 41 of 113
20
Appliances v. Sumeet Machines Ltd , which related to acquiescence
and delay in passing off actions. These principles were directly
applicable to the facts of the case and should have been properly
considered in determining whether the plaintiff’s claim was barred by
acquiescence and delay.
20.46 Learned Senior Counsel further submitted that the learned Single
Judge had erred in deciding Issue No.4 relating to the assignment and
ownership of copyright. The assignment deed had not been proved in
accordance with law, as neither the execution nor the contents of the
said document had been established. Merely exhibiting the document
without proving its authenticity was insufficient to substantiate the
plaintiff’s claim of copyright ownership.
20.47 Learned Senior Counsel further submitted that the findings on
Issue No.5 regarding copyright were erroneous, as the plaintiff had
failed to establish the subsistence and ownership of copyright in
21
.
accordance with the provisions of the Copyright Act, 1957 The
absence of documentary evidence supporting the plaintiff’s claim of
copyright ownership rendered the judgment on this issue incorrect.
20.48 Learned Senior Counsel argued that the plaintiff had failed to
produced evidence regarding the originality of the work, the identity of
the author, or the date of first publication, all of which are mandatory
requirements under Sections 13, 14, 17 and 18 of the Copyright Act.
Without satisfying these legal requirements, the plaintiff’s claim for
20
(1994) 2 SCC 448
21
“Copyright Act” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 42 of 113
copyright infringement could not stand, as it had not proven its
copyright ownership or the validity of its copyright in the work.
20.49 Learned Senior Counsel further submitted that the documents
relied upon by the plaintiff, including Assignment Deed and
Assignment Deed for OMEZ artwork had not been proved in
accordance with the Indian Evidence Act, 1872. The legal requirements
for the admissibility of such documents were not met, and as such, these
documents could not be considered valid evidence to support the
plaintiff’s claims.
20.50 Learned Senior Counsel argued that the learned Single Judge had
erred in deciding Issue No.6 concerning domain names. The plaintiff
had been communicating with the defendant using the same domain
name since 1997, and there was no similarity between the domain
names of the parties. Since the plaintiff had actively engaged with the
defendant using the same domain name, it could not claim that the
defendant’s domain name constituted passing off. This, according to the
Senior Counsel, undermined the plaintiff’s claim.
20.51 Learned Senior Counsel also submitted that the plaintiff had
failed to establish ownership of the alleged domain name in accordance
with the law. Without properly demonstrating its ownership of the
domain name or proving that it had established exclusive rights, the
plaintiff could not invoke the principles relating to domain name
disputes. This constituted another reason why the passing off claim
relating to the domain name should be dismissed.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 43 of 113
20.52 Learned Senior Counsel further contended that the learned Single
Judge had erred in deciding Issue No.7, which concerned acquiescence
and delay. The plaintiff had admitted in the plaint that it had knowledge
of the defendant’s business activities since 1997, and that the defendant
had been selling bulk APIs of the plaintiff as a distributor from that
time. The relationship had been on a principal-to-principal basis prior
to 2003, which clearly demonstrated that the plaintiff had known of and
implicitly accepted the defendant’s use of the name “Reddy
Pharmaceuticals Ltd.”
20.53 It was admitted by the plaintiff that it had never attempted to
ascertain the nature or extent of the pharmaceutical business carried on
by the defendants under the name “Reddy Pharmaceuticals Ltd.”. This
omission on the plaintiff’s part further reinforced the argument that the
plaintiff had knowingly permitted the defendants to continue their
business under the name, thereby disentitling the plaintiff from seeking
equitable relief such as an injunction.
20.54 Given the above, learned Senior Counsel argued that the plaintiff
had acquiesced in the defendant’s use of the name “Reddy
Pharmaceuticals Ltd.” for several years. As such, the plaintiff was
disentitled from seeking injunctive relief after allowing the defendant
to build their business under the said name. This principle of
acquiescence barred the plaintiff from seeking to restrain the defendant
at this stage.
20.55 It was further contended that the learned Single Judge had erred
in deciding Issue No.8, which dealt with damages and rendition of
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 44 of 113
accounts. It was pointed out that none of the plaintiff’s witnesses had
claimed any such relief in their examination-in-chief, and as a result,
the claim for damages and accounts should not have been entertained.
Moreover, the learned Single Judge itself had recorded that the plaintiff
had not produced any evidence regarding the pecuniary loss allegedly
suffered by it, which further weakened the plaintiff’s claim.
20.56 Given that the plaintiff had failed to provide evidence
demonstrating any financial loss caused by the defendant’s actions,
learned Senior Counsel argued that the relief of damages and rendition
of accounts could have been granted. Without documentary evidence of
actual loss, there was no basis for granting relief for damages or profits.
20.57 Mr. Lall argued that the conclusions recorded by the learned
Single Judge in para 61 of the judgment regarding the relief were based
on no evidence or incorrect appreciation of the evidence on record.
These findings were erroneous and should be set aside, as the Court had
failed to consider the lack of evidence and had relied on inadequate
grounds to grant the reliefs sought by the plaintiff.
20.58 Learned Senior Counsel further emphasized that the defendant’s
mark “REDDY” had been duly registered after advertisement in the
Trade Marks Journal without opposition. Under the Act, such
registration carries a statutory presumption of validity, which could not
be lightly disregarded. The learned Single Judge had failed to give due
regard to this presumption of validity while deciding the case.
20.59 Learned Senior Counsel further contended that the learned Single
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 45 of 113
Judge had relied on certain judicial precedents which were
distinguishable on the facts. Specifically, reliance on Nirma Limited
(supra) was misplaced, as that case involved a temporary injunction
based on a registered trademark and an assignment agreement, which
were not present in the current case. Similarly, the reliance on N.R.
Dongre (supra) was erroneous, as that decision dealt with a temporary
injunction involving an internationally reputed mark, and the
observation regarding Sections 27 and 28 of the Act had been
subsequently clarified by the Supreme Court.
20.60 It was further submitted that the reliance placed on Century
Traders (supra) was misplaced, as that judgment merely addressed the
grant of interim relief based on a prima facie finding of prior user. The
facts in Century Traders (supra) were distinguishable as it did not deal
with the full merits of trademark infringement and passing off, as in the
current case. Mr. Lall argued that the principles applied in Century
Traders (supra) did not justify the findings in the present case,
especially given the substantial differences between the marks,
packaging, and business operations of the parties.
20.61 Further, Mr. Lall pointed out that even if the principles laid down
in the Cadila Health Care Ltd. (supra) were applied, the marks,
packaging, colour scheme, and overall presentation of the parties’
products were clearly distinct. Moreover, the company names
themselves, “Dr. Reddy’s” and “Reddy Pharmaceuticals Ltd.”, were
entirely different, thereby reducing the likelihood of confusion in the
market. Thus, even under the stricter scrutiny no passing off or
likelihood of confusion could be substantiated against the defendant.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 46 of 113
20.62 Learned Senior Counsel argued that, based on the above
submissions, the defendant had demonstrated that their marks and
packaging were sufficiently distinct from the plaintiff’s. The
defendant’s use of the name “Reddy Pharmaceuticals Ltd.” did not lead
to any likelihood of confusion or passing of, and therefore, the
plaintiff’s claim of trademark infringement were without merit.
20.63 Regarding the appeal against the order passed by the IPAB, Mr.
Lall contended that the IPAB erred in law in holding that the
defendant’s registration of the mark “REDDY” contravened Section
158 of the Act. He argued that Section 158 of the Act only amends
provisions of the Companies Act and does not provide an independent
ground for the cancellation of a registered trademark. The IPAB’s
decision to cancel the defendant’s trademark registration was, therefore,
inconsistent with the statutory framework under Sections 47 and 57 of
the Act, which govern the removal of trademarks from the register.
20.64 Mr. Lall further argued that the IPAB’s reliance on the
subsequent amendment of the Companies (Amendment) Act, 2003 to
retrospectively invalidate a pre-existing corporate name and trademark
was contrary to the settled legal principle against retroactive
impairment of vested rights. The defendant’s company had been
incorporated on 05.01.1996, and the IPAB’s approach of applying a
later amendment to invalidate the corporate name and trademark was
unjust and against established legal principles protecting vested rights.
20.65 Learned Senior Counsel also pointed out that the IPAB had
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 47 of 113
ignored the statutory framework of Sections 20 and 22 of the
Companies Act, which govern objections to company names. Under
these provisions, any objections to a corporate name must be raised
within five years of incorporation. since the defendant company was
incorporated in 1996, any challenge to its corporate name was barred
by the limitation period.
20.66 Mr. Lall further contended that the plaintiff’s alleged trademark
rights arose only pursuant to an assignment deed dated 18.12.2002, and
therefore, the plaintiff’s claim of having used the mark since the year
2001 was false and inconsistent with the assignment document. This
inconsistency in the plaintiff’s claim further undermined its case for
trademark infringement and passing off.
20.67 Mr. Lall further submitted that during the hearing before the
IPAB on 20.08.2013, the defendant had raised several objections
regarding the maintainability and evidentiary insufficiency of the
rectification petition. These objections, he noted, were recorded by the
IPAB itself. Specifically, it was pointed out that the rectification
petition had not been supported by affidavit evidence as required under
Rule 8 of the IPAB (Procedure) Rules, 2003. The lack of affidavit
evidence rendered the petition legally deficient.
20.68 According to the defendants, the findings made by the IPAB
were directly contradicted by the documentary record and that there was
a complete non-application of mind by the IPAB. The material facts and
objections raised by the defendants were not duly considered by the
IPAB, and this failure led to an erroneous and unjust decision.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 48 of 113
20.69 Learned Senior Counsel further submitted that in paragraphs X
to XIV of the impugned order, the IPAB had failed to refer to the
material facts and objections raised by the defendant, which were
crucial for adjudication. The omission to consider these material facts
made the order non-speaking and arbitrary, and Mr. Lall argued that
such omissions rendered the IPAB’s decision legally flawed.
20.70 On the basis of the aforesaid submissions, Mr. Lall contended
that the findings of both the learned Single Judge and the IPAB were
liable to be set aside. He argued that the factual inconsistencies, the
failure to properly consider evidence, and the misapplication of legal
principles by both authorities warranted a reversal of the decisions and
a favourable ruling for the defendant.
SUBMISSIONS ON BEHALF OF THE RESPONDENT/
PLAINTIFF
21. Ms. Swathi Sukumar, learned Senior Counsel, appeared on
behalf of the plaintiff in both the matters.
21.1. Ms. Sukumar opposed the appeal and submitted that the
judgment and decree dated 13.09.2013 passed by the learned Single
Judge, granting a permanent injunction against the defendant, was
rendered after a thorough and meticulous examination of the pleadings,
documentary evidence and settled principles governing trademark law
and the law of passing off. She contended that the present appeal seeks
to re-agitate issues that have already been conclusively adjudicated by
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 49 of 113
the learned Single Judge and, therefore deserves to be dismissed.
21.2. Ms. Sukumar submitted that the present dispute arises from the
defendant’s adoption and use of the mark “REDDY” as the essential
and dominant element of its trade name, trademark and domain name
in relation to pharmaceutical products. Such use is inherently deceptive
and is likely to create confusion in the marketplace, thereby resulting in
the passing off of the defendant’s goods as those of the plaintiff. The
defendant was, therefore, rightly restrained from using the mark
“REDDY” in relation to pharmaceutical preparations and from
operating the domain name www.reddylimited.com .
21.3. Learned Senior Counsel submitted that the plaintiff has been
engaged in pharmaceutical business since 1984 and has built substantial
goodwill and reputation under the trade name and house mark “Dr.
Reddy’s”. The plaintiff has achieved significant recognition in
pharmaceutical research and development, with an annual turnover of
approximately USD 380 million (INR 18,070 million) in the financial
year 2002-03. Through long, continuous and extensive use, the mark
Dr. Reddy’s has acquired distinctiveness and has become exclusively
associated with the plaintiff in the pharmaceutical industry.
21.4. It was further submitted that the plaintiff operates in two
principal segments of the pharmaceutical industry, namely (i) APIs
supplied in bulk to pharmaceutical manufacturers, and (ii) Finished
Formulations sold to end consumers in the form of tablets, capsules,
and other medicinal preparations. Both segments are marketed under
the trade name and house mark “Dr. Reddy’s Laboratories”, which
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 50 of 113
signifies the source and quality of the plaintiff’s pharmaceutical
products.
21.5. Learned counsel submitted that by virtue of its extensive,
continuous and uninterrupted use, the plaintiff has acquired enormous
goodwill and reputation in the mark “Dr. Reddy’s”, which has also been
recognised as a well-known mark by this Hon’ble Court in the
injunction order dated 26.08.2004. Reliance was placed on Section
2(1)(zg) of the Act, which defines a well-known mark and recognizes
the exclusive rights of a proprietor over such marks.
21.6. It was further submitted that the plaintiff had placed on record
extensive documentary evidence establishing its goodwill and
reputation in the mark, including annual reports, sales invoices since
1997, advertisement invoices, and newspaper publications, all
demonstrating substantial commercial use and promotional
expenditure. This documentary evidence strongly corroborates the
plaintiff’s claim of exclusive rights over the mark “Dr. Reddy’s”.
21.7. Learned Counsel further pointed out that even in the written
statement filed before the learned Single Judge, the defendant did not
seriously dispute the goodwill and reputation enjoyed by the plaintiff.
On the contrary, there were categorical admissions acknowledging the
plaintiff’s established presence in the pharmaceutical industry.
21.8. It was submitted that the defendant initially operated merely as a
supplier of third-party pharmaceutical products and used to procure
APIs in bulk from manufacturers and distribute the same to
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 51 of 113
pharmaceutical companies. However, the adoption and use of the mark
“REDDY” by the defendant was in clear violation of the plaintiff’s
proprietary rights, and such use amounts to passing off under Section
27 of the Act.
21.9. Learned counsel further submitted that the evidence produced by
the plaintiff to establish its goodwill and reputation remained
unchallenged and unrebutted during the trial. The plaintiff produced,
inter alia, newspaper publications, sales invoices since and
advertisement invoices, all of which demonstrated the long, continuous,
and extensive commercial use of the mark. This evidence was not
disputed by the defendant, who failed to undertake meaningful cross-
examination regarding these documents.
21.10. As per settled law, when documentary evidence is not challenged
in cross-examination, such evidence is deemed to have been accepted
and cannot be subsequently disputed. Reliance was placed on
Muddasani Venkata Narasaiah (Dead) through LRs v. Muddasani
22 23
Sarojana and State of U.P. v. Nahar Singh (Dead) & Ors. , which
established that unchallenged evidence stands admitted.
21.11. It was further submitted that newspaper publications, sales
invoices, and advertisement material constitute valid evidence of
goodwill and reputation of a trademark and must be considered while
determining proprietary rights in a passing off action. In this regard,
reliance was placed on the case S. Syed Mohideen v. P. Sulochana
22
(2016) 12 SCC 288
23
(1998) 3 SCC 561
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 52 of 113
24
Bai and Satyam Infoway Ltd. (supra), which confirm that the
reputation of a trademark, even based on advertising, is significant in
passing off actions.
21.12. Learned counsel submitted that the present case is clearly
distinguishable from Brihan Karan Sugar Syndicate Pvt. Ltd. v.
25
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana , where
the proof of goodwill was disputed. In the present matter, the plaintiff’s
evidence of goodwill remains substantially uncontroverted, and the
defendant has not put forth any valid arguments or evidence to dispute
the plaintiff’s established reputation.
21.13. It was further submitted that in 1997, the defendant was
appointed as a distributor of the plaintiff for distribution of APIs, and
subsequently, by an Agency Agreement dated 01.04.2003, the
defendant was appointed as a del credere agent of the plaintiff for
promotion of its pharmaceutical products. Despite this agency
relationship, the defendant’s subsequent actions in using the mark
“REDDY” and operating the domain “ www.reddylimited.com ” clearly
infringe upon the plaintiff’s rights.
21.14. In conclusion, it was submitted that the learned Single Judge had
rightly granted the permanent injunction, having regard to the
overwhelming evidence of the plaintiff’s goodwill, the defendant’s
deceptive use of the mark “REDDY”, and the principles governing
passing off under Indian law.
24
(2016) 2 SCC 683
25
(2024) 2 SCC 577
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 53 of 113
21.15. Learned counsel relied upon the Agency Agreement dated
01.04.2003 and submitted that the said agreement clearly
acknowledged the plaintiff’s goodwill and proprietary rights in the
pharmaceutical business. In particular, Recital 1 recognised the
plaintiff’s goodwill in the business of pharmaceutical products; Clause
1.1 identified the scope of the agreement as the promotion of the
plaintiff’s APIs; Clause 2.7 prohibited the defendant from dealing in
competing products or acting prejudicially to the plaintiff’s interests;
and Clause 2.8 required the defendant to keep the plaintiff informed
about market conditions and competitive activities. These provisions
clearly indicate the acknowledgment of the plaintiff’s exclusive rights
and goodwill.
21.16. It was therefore submitted that the defendant, having entered into
such an agreement, is estopped from denying the plaintiff’s goodwill
and reputation in the mark “Dr. Reddy’s”. The doctrine of estoppel
arises from the facts that the defendant acknowledged the plaintiff’s
proprietary rights in the agreement and cannot now seek to deny or
challenge the goodwill it previously recognized.
21.17. In support of the principle of estoppel arising from contractual
acknowledgment of goodwill, reliance was placed on Rob Mathys
26
India Pvt. Ltd. v. Synthes AG Chur and Morgardshammar India Ltd.
27
v. Morgardshammar AB . In these cases, the courts held that parties
are estopped from asserting contradictory claims when they have
26
(1997) 17 PTC 669
27
2012 SCC OnLine Del 4945
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 54 of 113
previously acknowledged or represented certain facts, including
goodwill and proprietary rights in trade names and marks.
21.18. Despite such commercial association, the defendant
subsequently began using the mark “REDDY” for its own
pharmaceutical products, thereby attempting to trade upon the goodwill
and reputation of the plaintiff. This act of adopting a mark that is so
similar to the well-known mark of the plaintiff constitutes a classic case
of passing off, as it is likely to mislead the public into believing that the
defendant’s goods originate from the plaintiff.
21.19. Learned Counsel submitted that until August 2003, the defendant
was not engaged in the business of finished drug formulations and
merely supplied bulk drugs to pharmaceutical formulators. However, in
August-September 2003, the defendant began marketing finished
pharmaceutical formulations under the mark “REDDY”, prominently
displaying the mark on packaging so as to create an association with the
plaintiff, thereby infringing upon the plaintiff’s exclusive rights in the
mark.
21.20. It was submitted that the defendant’s adoption of the mark
“REDDY” was dishonest and mala fide , intended to take unfair
advantage of the enormous goodwill and reputation enjoyed by the
plaintiff in the pharmaceutical market. This constitutes a dishonest
misrepresentation under the law of passing off, as it misleads the public
into believing the defendant’s goods are associates with the plaintiff.
21.21. Learned counsel further submitted that the defendant had no
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 55 of 113
manufacturing facility or research and development infrastructure in
Hyderabad, yet it mentioned a Hyderabad address at Ameerpet on the
packaging of its products, creating a deceptive association with the
plaintiff, whose actual business operations were based in Hyderabad. It
was further submitted that while the defendant’s invoices from August
2003 continued to mention its Delhi office, the packaging displayed a
Hyderabad address, thereby misleading consumers to believe the
defendant’s products were associated with the plaintiff.
21.22. It was submitted that such conduct amounted to passing off, as
purchasers encountering pharmaceutical products bearing the mark
“REDDY” would naturally assume that the goods originated from the
plaintiff. The defendant’s intention to deceive consumer from the fact
that it displayed the word “REDDY” more prominently than the actual
product name, thereby attempting to appropriate the plaintiff’s
reputation and goodwill.
21.23. It was submitted that the defendant demonstrated a pattern of
dishonest adoption of marks, including the adoption of OMRE in
relation to the plaintiff’s mark OMEZ, and RECOLITE in relation to
the plaintiff’s mark MUCOLITE. Such instances further demonstrate
the defendant’s mala fide intent and repeated attempts to trade on the
goodwill of the plaintiff.
21.24. It was further submitted that the defendant itself admitted in its
written statement that “REDDY” constitutes the key and distinguishing
feature of its trade name, while simultaneously seeking to claim that the
word is merely a common surname. Such contradictory positions render
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 56 of 113
the defence untenable and highlight the defendant’s deceptive practices
aimed at misleading consumers.
21.25. It was contended that the defendant cannot claim protection
under Section 35 of the Act while simultaneously seeking to
monopolise the use of the mark “REDDY” for pharmaceutical products,
thereby excluding others. The defendant’s attempt to claim the mark as
a common surname does not negate the fact that it is being used in a
manner that amounts to passing off, as outlined under Section 27 of the
Act.
21.26. In support of this proposition, reliance was placed upon Chhavi
28
Poplai & Anr. v. Rajesh Chugh & Anr and Modi-Mundipharma Pvt.
29
Limited v Speciality Meditech Pvt. Ltd. & Anr , where the courts held
that the defendant’s actions of attempting to use marks identical or
deceptively similar to well-known trademarks amount to passing off,
even if the defendant claims to have prior usage or adoption of the mark.
21.27. Learned counsel further submitted that the defendant’s
dishonesty is evident from the fact that, within 16 days of the Agency
Agreement, the defendant applied for registration of the mark REDDY
under TM No.1192732 in Class 5 on a “proposed to be used” basis on
17.04.2003. This was clearly done with the intent to appropriate the
plaintiff’s goodwill and reputation by registering a mark that was
virtually identical to the plaintiff’s well-established mark.
28
2019 SCC Online Del 7165
29
2025 SCC Online Del 4627
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 57 of 113
21.28. It was submitted that under Sections 2(1)(m), 2(1)(zb), and
2(2)(c) of the Act, even the use of a name in relation to goods can
constitute use as a trademark, provided that the name distinguishes the
goods of one trader from another. Reliance was placed on Mahendra &
30
Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. , and KRB
31
Enterprises v. KRBL Ltd. , which recognized that use of names or
marks, even without registration, may be protected if they have become
distinctive and are associated with a particular trader.
21.29. Learned counsel submitted that the plaintiff was the prior adopter
and user of the mark “Dr. Reddy’s” and, therefore, its common law
rights in the mark were superior to any subsequent registration obtained
by the defendant. The plaintiff’s prior use and recognition of the mark
in the marketplace establishes its exclusive rights, which supersede the
defendant’s later adoption and registration of the mark “REDDY”.
21.30. In this regard reliance was placed on Century Traders (supra),
which held that trademark rights arise from the actual use of the mark
in commerce and not merely from registration. The Supreme Court in
this case affirmed that prior use of a mark confers proprietary rights,
irrespective of registration, emphasizing that use, rather than
registration, is the cornerstone of trademark rights in India.
21.31. Learned counsel further relied upon Cadila Health Care Ltd.
(supra), Mahendra & Mahendra Paper Mills Ltd. (supra), Laxmikant
30
(2002) 2 SCC 147
31
2025 SCC OnLine Del 4064.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 58 of 113
32
Patel (supra), T.V. Venugopal v. Ushodaya Enterprises Ltd . , MAC
33
Personal Care v. Laverana , N.R. Dongre (supra), Bajaj Electricals
34
Ltd. v. Metals & Allied Products , and Montari Overseas Ltd. v.
35
Montari Industries Ltd. to submit that passing off occurs where a
trader dishonestly adopts a mark or trade name so as to deceive or
confuse the public and trade upon the goodwill of another.
21.32. Ms. Sukumar submitted that the defendant’s adoption of the
domain name incorporating the word “REDDY” also amounted to
passing off, as a domain name performs the same function as a
trademark in the digital environment. Reliance was placed upon Satyam
Infoway Ltd (supra), wherein the Supreme Court held that domain
names are entitled to protection under the law of passing off, as they
function as identifiers of source in the online marketplace and can
mislead the public into believing that the goods or services are
associated with a particular source.
21.33. Learned counsel further submitted that the defence of delay,
laches, and acquiescence raised by the defendant was misconceived.
The plaintiff became aware of the defendant’s misrepresentation only
in September 2003, after which the plaintiff promptly terminated the
Agency Agreement on 12.12.2003 and filed the present suit on
18.12.2003. Therefore, there was no undue delay or acquiescence, and
the defendant cannot derive benefit from its own dishonest conduct.
Delay and acquiescence cannot be used as a shield by a defendant when
32
(2011) 4 SCC 85
33
2016 SCC OnLine Del 530
34
1987 SCC OnLine Bom 225
35
1995 SCC OnLine Del 865
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 59 of 113
the plaintiff acts promptly upon discovering a dishonest act.
21.34. Learned counsel also submitted that the order passed by the IPAB
removing the defendant’s mark from the Register of Trade Marks
further reinforced the plaintiff’s claim of prior rights and the
defendant’s dishonest adoption of the mark. The decision of the IPAB
to remove the defendant’s mark is an important factor in establishing
the plaintiff’s superior rights in the mark “REDDY”.
21.35. It was submitted that Sections 33 and 35 of the Act, apply only
to injunction claims and not to trademark registration proceedings.
Section 33 provides protection to a registered proprietor of a trademark
in proceedings related to infringement and passing off, while Section
35 pertains to defences against claims for infringement based on honest
use. These provisions are not applicable to challenges regarding
registration where the issue at hand concerns the dishonest adoption of
a mark.
21.36. Learned counsel submitted that the IPAB rightly relied upon the
defendant’s dishonest conduct in adopting the mark REDDY. The
inference of dishonesty drawn by the IPAB is based on the defendant’s
conduct, which clearly demonstrated an attempt to appropriate the
plaintiff’s goodwill. This finding cannot be faulted, as the IPAB’s
findings were based on a thorough examination of the facts and
evidence.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 60 of 113
36
21.37. Further, the defendant concealed the filing of a RTI application
and the receipt of a response from the Trade Marks Registry, which
confirmed that the plaintiff’s trademark TM No. 1020533 in Class 5
would continue to subsist until the year 2021. This act of concealment
further demonstrates the defendant’s intention to deceive the public and
the registry.
21.38. Learned counsel lastly submitted that the scope of appellate
interference with discretionary orders is extremely limited. Where the
trial court has exercised its discretion based on a proper appreciation of
the evidence, an appellate court cannot substitute its own view merely
because another conclusion is possible. Reliance was placed upon
37
Skyline Education Institute (Pvt.) Ltd. v. S.L. Vaswani & Ors and
38
Wander Ltd. & Ors. v. Antox India Pvt. Ltd. , where the Supreme
Court held that appellate courts should not interfere with discretionary
orders unless there is a clear error of law or a miscarriage of justice.
21.39. It was therefore submitted that the judgment and decree dated
13.09.2013 did not suffer from any legal infirmity and the present
appeal deserved to be dismissed with costs. The learned Single Judge
had correctly applied the legal principles of passing off and trademark
protection, and the appeal raised no substantial grounds for interference.
FINDINGS AND ANALYSIS
22. We have carefully considered the present lis in its entirety, heard
extensive submissions advanced by learned Senior Counsels on both
36
Right to Information
37
(2010) 2 SCC 142
38
1990 Supp SCC 727
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 61 of 113
sides, undertaken a detailed scrutiny of the record placed before us, and
engaged in a careful and holistic evaluation of the decision of the IPAB
and learned Single Judge.
23. As noted earlier, the present dispute has given rise to two parallel
proceedings before this Court. The first is W.P.(C) 654/2014, instituted
by the defendant challenging the order dated 29.10.2013 passed by the
IPAB directing the removal of the trademark “REDDY” registered in
the defendant’s name from the Register of Trade Marks. The second is
RFA(OS) 138/2013, preferred by the defendant against the judgment
and decree dated 13.09.2013 passed by the learned Single Judge in
CS(OS) 2194/2003, whereby the plaintiff’s suit alleging passing off and
related reliefs was substantially decreed.
24. The two proceedings arise out of the same underlying
controversy, namely the competing claims of the parties over the use of
the expression “REDDY” in relation to pharmaceutical products. The
appeal challenges the decree of permanent injunction granted in favour
of the plaintiff restraining the defendant from using the mark
“REDDY”, whereas the writ petition challenges the order passed by the
IPAB as regards to the removal of mark “REDDY”, which was granted
in favour of the defendant.
25. The defendant’s registration of the mark “REDDY” under
Registration No. 1192732 in Class 05 constituted an important element
of the defendant’s defence in the civil proceedings. The subsequent
removal of that mark from the Register by the IPAB therefore has a
direct and material bearing upon the rights asserted by the parties in the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 62 of 113
civil suit. In these circumstances, we must carefully examine the legal
implications of the removal of the mark from the Register in the context
of the plaintiff’s passing off claim.
26. It is therefore necessary, at the outset, to determine the sequence
in which these two matters ought to be addressed. The statutory scheme
governing trademark disputes makes it clear that questions concerning
the validity of a trademark registration occupy a foundational position
and must ordinarily be determined before adjudicating upon claims of
infringement or passing off which rely upon or are affected by such
registration. This sequence ensures that disputes concerning the use of
a mark are properly evaluated in light of the trademark’s registration
status, which effects the legal rights of the parties.
27. Further, the Supreme Court has explained the legislative design
underlying this principle in Patel Field Marshal Agencies v. P.M.
39
Diesels Ltd . . The Court held that questions relating to the validity of
the registration of a trademark must be adjudicated by the statutory
forum entrusted with maintaining the Register of Trade Marks under
the Act. It emphasized that the outcome of such proceedings binds the
civil court adjudicating an infringement or passing off dispute. The
Court, while recognizing the primacy of the statutory forum, reaffirmed
the principle that registration of a trademark confers certain rights, but
those rights can be subject to challenge on the grounds of invalidity,
including on the grounds of passing off.
39
(2018) 2 SCC 112
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 63 of 113
28. Thus, as the IPAB has already determined the invalidity of the
defendant’s trademark registration and given the implications this has
on the civil proceedings, it is appropriate for this Court to first address
the findings of the IPAB regarding the registration status of the mark
“REDDY”, as it directly affects the validity of the defendant’s defence
in the passing off action.
29. The removal of the trademark “REDDY” from the Register by
the IPAB, due to its dishonest adoption by RPL and the findings
regarding their conduct, is a critical factor in determining the
defendant’s rights to the mark. In light of these findings, it is imperative
that the claim of passing off be evaluated based on the true status of the
defendant’s rights to the mark.
30. We are therefore of the considered view that the challenge raised
in W.P.(C) 654/2014 to the IPAB’s order should be addressed first. The
determination of the writ petition will clarify the legal standing of the
defendant’s trademark registration, thereby providing a framework for
adjudicating the issues raised in RFA(OS) 138/2013, which is grounded
in the same dispute over the use of the mark “REDDY”.
31. With that, we now turn to the writ petition filed before us.
W.P.(C) 654/2014
32. The present writ petition challenges the order passed by the IPAB
which directed the removal of the defendant’s mark “REDDY” from
the Register of Trade Marks.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 64 of 113
33. The resolution of this petition is critical to determining whether
the defendant can continue relying on the statutory registration of the
mark or if the dispute should be evaluated purely on the basis of
common law rights, which have a distinct legal framework.
34. In these circumstances, the validity of the IPAB’s rectification
order assumes foundational significance for the determination of the
rights asserted by the parties in the connected appeal arising from the
civil suit. If the IPAB’s order is upheld, it would mean that the
defendant’s registered rights are effectively invalidated, thereby
altering the basis on which the defendant can defend itself in the passing
off action.
35. Needless to say, this Court, exercising jurisdiction under Article
226 and 227 of the Constitution, does not sit as an appellate authority
over the IPAB’s findings. Interference in writ jurisdiction is permissible
only where the impugned order suffers from manifest illegality,
perversity, non-application of mind, or disregard of material evidence
A writ petition does not provide forum to re-assess the facts or evidence
but serves to examine whether the decision impugned suffers from a
legal error or is perverse.
36. The Court may only intervene where the IPAB’s order is found
to suffer from a clear misapplication of statutory provisions, failure to
consider material evidence, or conclusions which are manifestly
perverse. The test for interference in a writ petition is well-established
that, judicial review in writ jurisdiction is limited to examining whether
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 65 of 113
the statutory authority has followed the correct procedure or misapplied
the law.
37. Bearing the principles in mind as to the scope of interference in
exercise of writ jurisdiction, we now proceed to examine whether the
order dated 29.10.2013, passed by the IPAB directing the removal of
the defendant’s mark “REDDY” from the Register of Trade Marks,
warrants interference by this Court.
38. Before delving into the merits of the case, we deem it relevant to
highlight the statutory provisions governing the removal of trademarks
from the register, specifically under Section 57 of the Act. This Section
empowers the High Court or the Registrar to remove or rectify entries
in the Register of Trade Marks when they are found to be incorrect,
either due to error or contravention of the Act. As per Section 57(2), the
procedure allows for the expunction of a mark when the entry on the
Register is deemed to have been made without sufficient cause, or
where it is found that the mark ought not to remain on the Register.
39. Section 9 of the Act stipulates the absolute grounds for refusal of
registration of a trademark, including, (a) Trademarks that are devoid
of any distinctive character, meaning they cannot distinguish the goods
or services of one person from those of another, (b) Trademarks
consisting exclusively of signs that may serve to describe the goods or
services (e.g. kind, quality, geographical origin), (c) Trademarks that
have become customary in the trade or in everyday language. These
grounds are fundamental in ensuring that trademarks serve their core
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 66 of 113
function of distinguishing goods or services in the marketplace. The
section reads as follows:
9. Absolute grounds for refusal of registration.—(1) The trade
marks—
(a) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from
those of another person;
(b) which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of production of the
goods or rendering of the service or other characteristics of the
goods or service;
(c) which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive
character as a result of the use made of it or is a well-known trade
mark.
(2) A mark shall not be registered as a trade mark if—
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention
of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists
exclusively of—
(a) the shape of goods which results from the nature of the goods
themselves; or
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
Explanation.—For the purposes of this section, the nature of goods
or services in relation to which the trade mark is used or proposed
to be used shall not be a ground for refusal of registration.
40. Section 11 of the Act outlines the relative grounds for refusal of
registration, including situation where, (a) A trademark is identical or
similar to an earlier registered trademark, which could result in
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 67 of 113
confusion or association, (b) The use of a later mark could take unfair
advantage of or harm the reputation of a well-known trademark. The
section is reproduced as below:
11. Relative grounds for refusal of registration.—(1) Save as
provided in section 12, a trade mark shall not be registered if,
because of—
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade
mark; or
(b) its similarity to an earlier trade mark and the identity or
similarity of the goods or services covered by the trade mark,there
exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.
(2) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to
those for which the earlier trade mark is registered in the name of a
different proprietor,shall not be registered if or to the extent the
earlier trade mark is a well-known trade mark in India and the use
of the later mark without due cause would take unfair advantage of
or be detrimental to the distinctive character or repute of the earlier
trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its
use in India is liable to be prevented—
(a) by virtue of any law in particular the law of passing off protecting
an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade
mark where the proprietor of the earlier trade mark or other earlier
right consents to the registration, and in such case the Registrar may
register the mark under special circumstances under section 12.
41. This Court, in Mr. Sumit Vijay & Anr. vs. Major League
40
Baseball Properties Inc. & Anr , speaking through one of us (C. Hari
Shankar, J.) had observed the following with regards to removal of
trademark under Section 57:
5. The statutory scheme
“
5.1 Sections 47 and 57 are the only provisions, in the Trade Marks
Act, under which a registered trade mark of one person can be
40
2026:DHC:6-DB
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 68 of 113
removed from the Register of Trade Marks at the instance of
another. Section 47 allows the mark to be removed on the ground of
continuous disuse. Section 57(1) allows removal of a registered
trade mark if any condition, in relation to the mark and entered in
the Register, is contravened or not observed.
5.2 These provisions do not concern us. We are concerned with
Section 57(2).
5.3 Section 57(2) can be invoked by any person who is aggrieved
(i) by the absence from the Register of any entry, or
(ii) by any entry made without sufficient cause, or
(iii) by any entry which wrongly remains on the Register, or
(iv) by any error or defect in any entry in the Register,
and empowers the Registrar, or the High Court, to make, expunge
or vary the entry. Circumstances (ii) and (iii), if accepted, would
naturally result in expunction of the entry, as has happened here.
5.4 The circumstances in which a trade mark can be said to be
“wrongly remaining” on the Register are not elucidated in Section
57. Nor are they to be found elsewhere in the Trade Marks Act. In
the circumstances, one has to refer, for the purpose, to Sections 9
and 11, which set out the grounds on which registration of a trade
mark can be refused. If a mark ought not to have been registered in
the first place, as it breached the proscriptions contained in Section
9 or Section 11, the sequitur is, naturally, that it ought not to remain
on the Register either.
5.5 The circumstances in which the Registrar can refuse to register
a trade mark, as envisaged in Sections 9 and 11, are many and
varied. Of these, Section 9 contains “absolute” grounds of refusal,
whereas Section 11 contains “relative” grounds of refusal. Section
9 does not concern us, as the respondent has not invoked any clause
thereof.
5.6 The impugned judgment has removed the appellants’ BLUE-JAY
trade mark from the Register under Section 11(10)(ii). However, the
grounds urged by the respondent in its Section 57 petition would
also require us to address Section 11(3)(a).
5.7 In order to avoid any confusion, we may observe, here, that
though the main grievance of the respondent, against the appellants’
BLUE-JAY trade mark, was its similarity to the respondent’s BLUE
JAYS trade mark, neither Section 11(1) nor Section 11(2) would
apply in the present case, in view of the definition of “earlier trade
mark” provided in the Explanation following Section 11(4), which
covers only marks which are registered, or in respect of which an
application for registration is pending. Neither on 19 August 1998,
when the appellants applied for registration of the BLUE-JAY mark,
nor even at any later point of time till the date of institution of CO
(Comm IPD-TM) 279/2023, was the respondent the proprietor of
any registered trade mark, nor was any application for registration
of any trade mark, filed by it, pending. We refer, of course, to India.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 69 of 113
5.8 Of the various circumstances outlined in para 5.3 supra, CO
(Comm IPD-TM) 279/2023 was instituted by the respondent
invoking circumstance (iii). The respondent’s contention, which the
learned Single Judge has accepted, is that the appellants’ BLUE-
JAY mark ought not to be permitted to remain on the Register. This
contention has found favour with the learned Single Judge, to the
chagrin of the appellants.
5.9 Ergo, the present appeal ”.
42. Upon the plain reading of the above, it could be understood that
rectification of the Register under Section 57(2) is a broad and
independent remedy that allows any “aggrieved person” to challenge a
registered trademark not only on technical errors but also on substantive
grounds.
43. Although, the Act does not define the circumstances under which
a trademark can be said to be “wrongly remaining” on the Register, it
is clear that such a term must be understood in light of the refusal
provisions under Sections 9 and 11. If a mark was registered in violation
of these provisions, it can later be removed through rectification under
Section 57. The Act provides that if a trademark should not have been
registered initially because it violated the prohibitions under Sections 9
or 11, it logically follows that it should not continue to remain on the
Register. Consequently, Section 9(which deals with absolute grounds
for refusal) and Section 11(which deals with relative grounds for
refusal) are crucial in determining whether a mark should remain on the
Register.
44. Thus, having under understood the statutory framework, we now
proceed to examine the impugned order passed by IPAB. In doing so,
we reiterate that this court, exercising powers under Articles 226 and
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 70 of 113
227 of the Constitution, does not sit as an appellate court. Judicial
review in writ proceedings is limited to examining errors of law
apparent on the face of record and does not extend to factual findings.
41
As held in Syed Yakoob v. K.S Radhakrishnan interference under
writ jurisdiction is only permissible when there is a manifest error of
law or flagrant miscarriage of justice, not merely to correct errors of
fact.
45. The IPAB while allowing rectification in the impugned order
observed as follows:
XI. We in the Board at first got the impression that the respondent
was an affiliate or subsidiary company of the applicant and not
a competing business rival. There is little doubt in our mind that
the presence of the respondent mark 'Reddy' is bound to cause
material confusion and deception in the market. It clearly
indicates a 'connection with the applicants company name Dr.
Reddy's Laboratories. The subject rectification application is a
classic sample of how even big companies and business house
neglect and ignore to seek statutory brand protection on timely
basis.
XII. In our judgement the registration of the respondent trade mark
was in contravention of Section 158 of the Act. Section 158
consists of a Schedule to amend Section 20 and 22 of the
Companies Act, 1956 in the following terms:
Sub-section (2) of Section 20 of the Companies Act has been
amended and the law inter-alia seeks to prohibit the use of
someone else's trade mark as a part of corporate name or name
of business concern. Consequently, two kinds of objections
would arise under the law:-
(a) when the name of the company is identical with or nearly
resembles the name by which a company in existence has been
previously registered:
(b) when the name of the new company is identical with or nearly
resembles a registered trade mark, or a trade mark which
pending for registration by any other person.
XIII. 'The first offence is within the domain of Registrar of
Companies. But the second situation is clearly attracted in the
41
AIR 1964 SC 477
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 71 of 113
instant case. The applicant were the first to apply for
registration in 2001. 'The respondent applied for a similar mark
subsequently in 2003. The registry erred in accepting the
respondent's subsequent application. Therefore, the
respondent’s trade mark ex-facie is wrongly registered and
wrongly remaining on the register. The applicant company
headed by a scientist/technocrat have indulged in benign
neglect of not seeking timely protection for their brand name
and are now ruing its decision. The respondent are seeking to
justify adoption and use of 'Reddy' by virtue of the owners name
coincidently carrying the same surname. It is true law
recognizes and preserves the right which every man has to use
his own name including for carrying on trade or business
provided such use is not fraudulent. In the instant case,
everything points to the fact that the respondent has
deliberately adopted the impugned mark to deceive the public
and is in every way a willful misrepresentation to the customer.
Thus, there is not even a prima-facie arguable case to support
the contentions of the respondent that his adoption and use is
honest. Both Section 12 and 35 are subject to the test of bona
fide claim of proprietorship of the mark under Section 18(1). if
he fails to prove ownership under Section 18(1), his mark
cannot remain on the register. Hence, it should go .
46. Thus, it is clear that while the IPAB did not expressly cite
Sections 9 and 11 of the Act its reasoning clearly aligns with the
principles embodied in these provisions. Section 9 prohibits the
registration of marks that are devoid of distinctiveness or are likely to
deceive or cause confusion, while Section 11 deals with the refusal of
marks that are identical or similar to existing trademarks, thus creating
a likelihood of confusion, The IPAB’s findings are substantively based
on these grounds.
47. The IPAB has categorically held that the defendant’s mark
“REDDY” was bound to cause “material confusion and deception in
the market” and falsely suggest a connection with the plaintiff. This
finding directly corresponds to the inquiry under Section 11 regarding
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 72 of 113
deceptive similarity and the likelihood of confusion or association with
an earlier mark.
48. Furthermore, the IPAB’s finding that the defendant’s adoption of
the mark was deliberate, dishonest, and intended to deceive the public
invokes the statutory framework of Section 9(2)(a), which prohibits the
registration of marks that are liable to deceive or cause confusion. In
such cases, the mark should not remain on the register.
49. Accordingly, we have no doubt that, even without express
citations of Sections 9 and 11, the grounds for refusal contained in these
provisions were effectively applied by the IPAB in concluding that the
respondent’s mark was invalidly registered and should be removed
from the Register.
50. At this stage, it is also relevant to note that, as per the principles
laid down in Syed Yakoob (supra), we are bound by the factual findings
of the IPAB, which are based on its appreciation of the evidence. This
Court, in its writ jurisdiction, cannot reopen or re-evaluate these factual
findings unless there is a manifest error of law.
51. Upon examination the IPAB’s order in light of the above
statutory framework under Section 57 of the Act, we find no error of
law apparent on the face of the record. The IPAB has properly applied
the relevant legal principles, and we agree with its conclusion that the
respondent’s trademark was wrongly registered and should be removed
from the Register.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 73 of 113
52. The learned Senior Counsel for the petitioner submitted that the
IPAB erroneously relied on Section 158 of the Companies Act, 1956,
and travelled beyond its statutory remit Sections 47 and 57 of the Act.
However, even assuming arguendo that Section 158 was incorrectly
invoked, the IPAB’s findings regarding confusion, false trade
connection, dishonest adoption, and absence of bona fide proprietorship
independently justify the removal of the defendant’s mark from the
Register. These factors are directly relevant to whether the entry was
wrongly made or continues to wrongly remain on the Register under
Sections 9 and 11.
53. Furthermore, the submissions made by the petitioner, being
based on disputed questions of fact, are not appropriate for adjudication
in writ proceedings. It is well-settled that writ courts are not the
appropriate forums for resolving factual disputes, which must be
addressed by the relevant statutory authorities or tribunals. This Court
cannot re-evaluate evidence or resolve factual issues within the scope
of writ jurisdictions. Therefore, the submissions raised by the petitioner
on these grounds do not merit consideration.
54. Accordingly, we are not persuaded to allow the present writ
petition.
55. The writ petition is, accordingly, dismissed.
RFA(OS) 138/2013
56. Having upheld the order dated 29.10.2013 passed by the IPAB,
which affirmed the removal of the defendant’s mark “REDDY” from
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 74 of 113
the Register of Trade Marks, the statutory foundation upon which the
defendant sought to assert its rights has been effectively nullified.
57. In light of this, the dispute between the parties must now be
examined purely on the touchstone of common law principles
governing passing off, prior use, and the protection of goodwill,
independent of statutory rights.
58. The present appeal arises from the judgment and decree dated
13.09.2013 passed by the learned Single Judge in CS(OS) 2194/2003,
wherein the plaintiff’s suit was decreed, and the defendant was
restrained from using the mark “REDDY” in relation to pharmaceutical
products.
59. Before proceeding to examine the merits of the rival contentions,
it is necessary to delineate the scope of interference in an appeal of this
nature, particularly in the light of the established principles.
60. The present proceedings arise out of a RFA under Section 96 of
the CPC. It is well settled that in a first appeal, the appellate court is
primarily tasked with reviewing the factual findings of the lower court.
However, it is also entitled to independently assess and re-appreciate
the entire evidence on record, provided the conclusions drawn are based
on a sound evaluation of the facts.
61. Further, in accordance with Order XLI, Rule 31 of CPC, we
proceed to address the points of determination in the present dispute,
which are as follows:
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 75 of 113
I. Whether the learned Single Judge was correct in
holding that the plaintiff was not acquiesced to the
adoption of the impugned trademark as per Issue No.
7?
II. Whether the use or adoption of the trademark
“REDDY” by the defendant amounts to passing off?
III. Whether the adoption of the trademark “REDDY” is
protected under Section 35 of the Act?
IV. Whether the learned Single Judge erred in deciding the
Issue No.6 relating to domain name in favour of
plaintiff?
V. Whether the learned Single Judge was correct in
holding Issue no.5 in favour of plaintiff?
VI. Whether the learned Single Judge erred in deciding
Issue no. 8 relating to damages and rendition of
accounts in favour of plaintiff?
Issue No.I. - Whether the learned Single Judge was correct in
holding that the plaintiff was not acquiesced to the adoption of the
impugned trademark?
62. We consider it appropriate, as done by the learned Single Judge,
to first address the issue of delay, laches, and acquiescence, as this issue
goes to the very root of the plaintiff’s entitlement to equitable relief.
The doctrine of acquiescence is crucial, as it determines whether the
plaintiff, having full knowledge of the defendant’s use of the mark, had
waived its right to seek judicial relief.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 76 of 113
63. The defendant has strenuously maintained the stance that it has
been using the name “Reddy Pharmaceuticals Limited.” since its
incorporation in the year 1996, and that the plaintiff was fully aware of
such use at least since 1997, when the commercial dealings between the
parties commenced. The defendant has argued that despite this
knowledge, the plaintiff raised no objection for several years.
Furthermore, the plaintiff continued to engage with the defendant, even
appointing it as a del credere agent under the Agreement dated
01.04.2003. The defendant, therefore, claims that the plaintiff is guilty
of acquiescence and, as a result, is disentitled from seeking the equitable
relief of an injunction.
64. The plaintiff, on the other hand, has submitted that until August-
September 2003, the defendant was merely engaged in the business of
distribution of bulk pharmaceutical ingredients (APIs) and was not in
the business of finished drug formulations. It was argued that since
there was no overlap in the activities of the parties, there was no risk of
confusion or deception at that time. The plaintiff further contends that
the cause of action only arose when the defendant expanded its business
into finished pharmaceutical formulations and began marketing
pharmaceutical products under the impugned mark “REDDY”. Upon
this expansion, the plaintiff acted promptly by raising objections,
terminating the Agreement, and filing the suit in December 2003.
65. The learned Single Judge, after considering the pleadings and
evidence, rejected the defendant’s plea of acquiescence and held that
there was no delay attributable to the plaintiff. The Court found that
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 77 of 113
there was no conflict of interest between the parties prior to 2003, and
that the threat to the plaintiff’s goodwill only emerged when the
defendant entered the field of finished pharmaceutical formulations.
The Court also highlighted the observation made at the interim stage of
the suit. The same merits production:
“ 27.At this juncture, it is pertinent to take note of the Order dated
August 26, 2004, wherein this Court had looked into the defendant's
contention regarding acquiescence and laches by the plaintiff, at the
preliminary stage of this suit, before granting the interim injunction
in favour of the plaintiff. This Court observed:
"This plea of the defendant is also prima facie untenable for the
reason that till August 2003, there was no clash u/interest between
the plaintiff and the defendant company and in fact, the defendant
was engaged in advancing and promoting the business of the
plaintiff company by acting as its agent for the sale of bulk drugs.
The threat came in August 2003, when the defendant introduced in
the market, its pharmaceutical preparations and thereby threatened
the business interest of the plaintiff company. This move of the
defendant was mala fide on the face of it as it was not manufacturing
pharmaceutical preparations earlier but now is trying to market the
pharmaceutical preparations manufactured by others under the
trademark "REDDY". The plaintiff immediately raised objections,
meetings were held, and when nothing came out, the plaintiff rushed
to the Court. As such, there was neither any acquiescence nor any
laches on the part of the plaintiff to object to the impugned action of
the defendant. It cannot be said that the plaintiff has allowed the
defendant to build a reputation of goodwill in trade name "REDDY"
for use on pharmaceutical preparations. Moreover, the owners of
trademarks or copyrights are not expected to run after every
infringer and thereby remain involved in litigation at the cost of their
business time. if the impugned infringement is too trivial or
insignificant and is not capable of harming their business interests,
they may overlook and ignore petty violations till they assume
alarming proportions. If a roadside dhaba puts up a board of 'Taj
Hotel', the owners of Taj Group are not expected to swing into action
and raise objections forthwith. They can wait till the time the user of
their name starts harming their business interests and start
misleading_. and confusing their customers."
(emphasis supplied).
28.It is also pertinent to note that the Division Bench of this Court
vide Order dated October 12, 2007 has observed that the Order of
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 78 of 113
the Ld. Single Judge dated August 26, 2004 was '1egally
unexceptionable and based on sound principles of law and a correct
appreciation of the factual matrix that was presented before him.'
(emphasis supplied). Therefore, I do not find any reason to decide
otherwise. In light of the abovementioned observations, I find this
issue in favour of the plaintiff. I shall now proceed to decide the
remaining Issue on Merits. 1 shall now proceed to decide the issues
regarding passing off .”
66. Upon a careful reappraisal of the material on record, we find no
infirmity in the learned Single Judge’s finding. It is undisputed that the
defendant was primarily engaged in the business of supplying bulk
drugs until 2003 and was, in fact, associated with the plaintiff in a
commercial capacity.
67. The plaintiff’s tolerance of the defendant’s use of the corporate
name “Reddy Pharmaceuticals Ltd.” in a non-competing segment
cannot, in our view, be construed as acquiescence to its subsequent use
in a directly competing line of business. There was no likelihood of
confusion or deception before 2003, when the defendant was engaged
in bulk drug distribution. The situation changed only when the
defendant began to market pharmaceutical formulations, which directly
conflicted with the plaintiff’s interest.
68. The doctrine of acquiescence is not to be applied in a mechanical
or rigid manner. Mere delay or knowledge of the defendant’s activities
does not, by itself, constitute acquiescence. It must be shown that the
plaintiff, with full knowledge of its rights and the defendant’s infringing
conduct, deliberately stood by and allowed the defendant to build its
business to such an extent that granting relief would be inequitable. This
is not the case here.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 79 of 113
69. The defendant has placed considerable reliance on the fact that it
issued newspaper advertisements across India announcing the launch
of its pharmaceutical formulations, claiming that these advertisements
prove openness and negate any allegation of dishonesty. The defendant
further argues that these publications were within the plaintiff’s
knowledge, and yet the plaintiff took no immediate action.
70. We are unable to accept this contention. The fact that the
defendant published advertisements does not establish a waiver of the
plaintiff’s rights. The plaintiff was not required to act immediately upon
each advertisement, especially when the defendant was not in direct
competition with the plaintiff at that time. It was only when the
defendant entered the market for finished pharmaceutical formulations
that the plaintiff’s rights were directly threatened, prompting the
plaintiff to take legal action without undue delay.
71. The mere issuance of advertisements or public announcements
regarding business activities does not, by itself, constitute a valid
defence of acquiescence. What is required to be established is not mere
knowledge of use, but conscious encouragement or assent to a use that
is legally objectionable and would be detrimental to the plaintiff’s
rights.
72. The law in this regard stands authoritatively settled by the
Supreme Court in Power Control Appliances (supra) where the Court
held that acquiescence involves a positive act of encouragement or
assent and is distinct from mere delay. Mere inaction or delay does not,
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 80 of 113
by itself, amount to acquiescence unless it is accompanied by conduct
that supports the defendant’s position.
42
73. Similarly, in Midas Hygiene Industries v. Sudhir Bhatia it was
held that where the adoption of a mark is dishonest or tainted with mala
fide intent, delay or laches cannot defeat the grant of an injunction,
particularly in cases of passing off.
74. More importantly, the Supreme Court emphasised that the cause
of action in a passing off action arises not merely from the adoption or
use of a mark but from misrepresentation that leads to deception or the
likelihood of confusion in the minds of the public. This principle
squarely applies to the present case.
75. Applying the aforesaid principle, it becomes evident that the
defendant’s initial adoption of the corporate name “Reddy
Pharmaceuticals Ltd.” in 1996, and its use in relation to the business of
bulk pharmaceutical ingredients, did not, by itself, give rise to a cause
of action in passing off. At that point, both parties were engaged in
commercial dealing in a non-competing segment, and there was no
actionable misrepresentation or deception.
76. The cause of action arose only when the defendant expanded its
business into finished pharmaceutical formulations and began
marketing products under the impugned mark “REDDY” in a manner
capable of creating a false association with the plaintiff’s established
42
(2004) 3 SCC 90
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 81 of 113
business. This marked a significant transformation in the nature of the
defendant’s use.
77. It is at this stage that the defendant’s use crossed the threshold
into misrepresentation, thereby attracting the law of passing off. The
relevant point for examining acquiescence, therefore, is not the initial
adoption in 1996, but rather the point when the defendant’s conduct
became legally objectionable due to the introduction of competing
products under a similar mark.
78. In such circumstances, the defendant’s newspaper publications
announcing its entry into the formulation business do not advance its
defence of acquiescence. At best, these publications indicate an
intention to expand the defendant’s business. However, they do not
establish that the plaintiff consented to or acquiesced in the defendant’s
use of the “REDDY” mark in a manner that misrepresents the
defendant’s goods as those of the plaintiff.
79. The material on record clearly indicates that the plaintiff acted
with reasonable promptitude once it became aware of the defendant’s
expansion into the formulation segment.
80. The sequence of events, as noted by the learned Single Judge,
demonstrates that upon becoming aware of the defendant’s entry into
the formulation segment, the plaintiff immediately raised objections,
engaged in discussions with the defendant, and when these efforts
failed, the plaintiff instituted the present suit without undue delay.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 82 of 113
81. In such circumstances, the defendant cannot invoke the equitable
doctrine of acquiescence to avoid liability. The delay in raising
objections must be reasonable, and the plaintiff acted within a
reasonable time once the risk to its business became apparent.
82. The defendant’s contention that the plaintiff had acknowledged
its corporate name in the Agreement dated 01.04.2003 is also
unsubstantiated. The acknowledgment of the defendant’s corporate
name in the context of a commercial arrangement concerning a non-
competing segment cannot be construed as consent to the defendant’s
subsequent use of the impugned mark in a competing line of business,
especially when such use is likely to cause confusion in the market
83. The doctrine of acquiescence must therefore be applied with
reference to the point of actionable misrepresentation and not merely
the initial inception of use. When applied in this manner, it becomes
evident that the plaintiff is not guilty of any delay or acquiescence, as
the cause of action only arose when the defendant’s conduct became
legally objectionable.
84. In view of the aforesaid discussion, we concur with the finding
of the learned Single Judge that there was neither delay, nor laches, nor
acquiescence on the part of the plaintiff in challenging the defendant’s
actions. The defendant’s defence of acquiescence is accordingly
rejected.
85. We now turn to the issue of passing off.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 83 of 113
Issue No.II. Whether the use or adoption of the mark “REDDY” by
the defendant amounts to passing off?
86. The issue at hand pertains to whether the plaintiff has sufficiently
established prior adoption, goodwill, and usage of the mark “Dr.
Reddy’s”, to be entitled to protection under an action for passing off,
notwithstanding the absence of statutory registration.
87. At the outset, before delving into the merits of the case, it is
important to first outline the principles relating to passing off actions.
88. In Cadila Health Care Ltd (supra), the Supreme Court laid down
the essential ingredients for determining a claim of passing off, which
are as follows:
“35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks
or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade
marks.
(d) The similarity in the nature, character and performance of the
goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing
the marks they
require, on their education and intelligence and a degree of care
they
are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the
goods.
(g) Any other surrounding circumstances which may be relevant in
the extent of dissimilarity between the competing marks.
36. Weightage to be given to each of the aforesaid factors depending
upon facts of each case and the same weightage cannot be given to
each factor in every case.”
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 84 of 113
89. Additionally, the Division Bench of this Court, speaking through
one of us (C. Hari Shankar, J) in VIP Industries Ltd v Carlton Shoes
43
Ltd & Anr , has clearly identified and summarised the essential
ingredients of passing off. The same merits reproduction:
“94 . Following the judgments of the Supreme Court in Wockhardt
Ltd v Torrent Pharmaceuticals Ltd, Satyam Infoway and Cadila
Health Care Ltd v Cadila Pharmaceuticals Ltd , this Court,
speaking through one of us (C. Hari Shankar J.), had identified the
following ingredients of passing off, in FDC Ltd v Faraway Foods
(P) Ltd:
“(i) Passing off, though an action based on deceit, does not require
the establishment of fraud as a necessary element to sustain the
action. Imitation or adoption, by the defendant, of the plaintiffs trade
mark, in such manner as to cause confusion or deception in the mind
of prospective customers, is sufficient.
(ii) The principles for grant of injunction, in passing off actions, are
the same as those which govern the grant of injunctions in other
cases, i.e. the existence of a prima facie case, the balance of
convenience, and the likelihood of irreparable loss in issuing to the
plaintiff, were injunction not to be granted.
(iii) Proof of actual damage is not necessary, to establish passing
off. However, proof of misrepresentation is necessary, even if intent
to misrepresent is not approved. The question of intent may,
nevertheless, be relevant, when it comes to the ultimate relief to be
granted to the plaintiff.
(iv) Passing off may be alleged by a claimant who owns sufficient
proprietary interest in the goodwill associated with the product,
which is really likely to be damaged by the alleged
misrepresentation.
(v) Grant of injunction, in cases where passing off is found to exist,
is intended to serve two purposes, the first being preservation of the
reputation of the plaintiff, and the second, safeguarding of the public
against goods which are “passed off as those of the plaintiff.
(vi) The ingredients/indicia of the tort of passing off are the
following:
(a) There must be sale, by the defendant, of goods/services in a
manner which is likely to deceive the public into thinking that the
goods/services are those of the plaintiff.
(b) The plaintiff is not required to prove long user to prove
established reputation. The existence, or otherwise, of reputation,
43
2025:DHC:5042-DB
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 85 of 113
would depend upon the volume of the plaintiffs sales and the extent
of its advertisement.
(c) The plaintiff is required to establish
(i) misrepresentation by the defendant to the public, though not
necessarily mala fide,
(ii) likelihood of confusion in the minds of the public (the public
being the potential customers/users of the product) that the goods of
the defendant are those of the plaintiff, applying the test of a person
of “imperfect recollection and ordinary memory”,
(iii) loss, or likelihood of loss, and
(iv) goodwill of the plaintiff, as a prior user.
Elsewhere, the five elements of passing off have been identified as
(a) misrepresentation, (b) made by the trader in the course of trade,
(c) to prospective customers or ultimate consumers of the goods or
services supplied by him, (d) calculated to injure the business or
goodwill of another (i.e. that such injury is reasonably foreseeable)
and (e) actual damage, or the possibility of actual damage, to the
business or goodwill of the plaintiff.
*
(x) Passing off differs from infringement. Passing off is based on the
goodwill that the trader has in his name, whereas infringement is
based on the trader's proprietary right in the name, registered in his
favour. Passing off is an action for deceit, involving passing off the
goods of one person as those of another, whereas an action for
infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for vindication of its exclusive
right to use the trade mark in relation to the goods in respect of
which registration has been granted. Use of the trade mark by the
defendant is not necessary for infringement, but it is a sine qua non
for passing off. Once sufficient similarity, as is likely to deceive, is
shown, infringement stands established. Passing off, however, may
be resisted on the ground of added material, such as packing,
procurement through different trade channels, etc., which would
distinguish the goods of the defendant from those of the plaintiff and
belie the possibility of confusion or deception.”
90. Thus, the enquiry in the present case shall be governed by the
principles and ingredients of passing off, as identified in the
aforementioned judgments.
91. The learned Single Judge, on the aspect of passing off, returned
the following findings:
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 86 of 113
43. In light of the abovementioned discussion, it is amply clear to me
“
that the class of purchasers who are likely to buy the drugs bearing
the marks "REDDY" are likely to be deceived and mistake it to be
the drugs originating from the plaintiffs reputed pharmaceutical
laboratory viz. "Dr. REDDY's" Laboratories. Moreover, as noted in
the Sun-Pharma Case (supra), the likely hood of deception is all the
more not only since the composition of the drugs are the same, but
also because there is a common field of activity between the parties,
in the sense that the defendant has now expanded its business to sale
and marketing of finished drug formulations. The common field of
activity also fulfills the requirement in placitum (f) of the test in the
Cadilla Case (supra).
44. With regard to placitum (g) of the test in the Cadila Case (supra),
this Court is required to consider the surrounding circumstances
which maybe relevant. For instance, the defendant has strongly
contended that its adoption of the trademark/trade name "REDDY"
was bona fide because it merely adopted the surname of its
Managing director. At this juncture, it is necessary to carefully
consider this submission to determine if the adoption was merely an
honest and concurrent use, or was it made with the intention to cash-
in upon the plaintiff’s pre-existing goodwill.
45. From the evidence led by both the parties, it is apparent that the
plaintiff has been in the business many years before the defendant
actually decided to start marketing and selling its finished drug
formulations: Besides, the reputation and goodwill which the
plaintiff has earned over a long period of time, owing to its extensive
focus on research and development as well as international
partnerships, is something that has been conceded by the defendant
witness during his cross examination.
46. It is also pertinent to note that the defendant was initially
engaged as a delcredere agent who used to supply the plaintiffs
drugs until 2003. Viewing the abovementioned in light of the fact
that the defendant chose to use a trademark/trade name identical to
the plaintiff's and also mention Ameerpet, Hyderabad on its
packaging despite having its Registered Office at Patparganj, Delhi
only goes to show the mala fides. Moreover, the defendant witness
has stated during his cross examination that the defendant does not
have any facilities in Hyderabad. This only goes to show that the
defendant has mentioned Ameerpet, Hyderabad on its packaging to
deceptively lead consumers to believe that its products arise from
the plaintiffs labs, which are located in Ameerpet.
47. It is also reasonable to infer that by adopting an identical
trademark /trade name, procuring finished drugs, from other
manufacturers and marketing the same drug formulations as the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 87 of 113
plaintiff, the defendant is only trying to target those consumers of
the drug who were once purchasing the plaintiffs drug from the
defendant in its capacity as the plaintiffs del credere agent.
48. Moreover, the position of law regarding use of common Indian
names as trademarks is well-settled in a catena of precedents such
as Mahendra and Mahendra and Mahendra Paper Mills Ltd. v.
Mahindra and Mahindra Ltd., 2002(24) PTC 121 (SC), Manju
Monga v. Manju Mittal, 2012 (51) PTC 293 (Del.), Kirloskar
Diesel Precon (P) Ltd. & Ors. v. Kirloskar Proprietory Ltd. & Ors.,
1997 PTC (17), Baja] Electricals Ltd. v .Metals & Allied Products
& Anr., AIR 1988 Born 167, B. K. Engineering Company v. U. B.
H. I. Enterprises (Regd.), Ludhiana, AIR 1985 Del 210. In fact,
interim injunction granted in the instant case vide Order dated
August 26, 2004 was relied upon in the Manju Monga Case , where
this Court succinctly summarized the position of law on adoption of
common names as the trademark/trade name:
"In Parker v. Parker , (1965) RPC 323, the Court held - The question
is not simply whether the defendant 'can be prevented from using his
own name, but whether the defendant can be prevented from
garnishing that name in such a way that it looks as lithe name were
being used not by him but by the plaintiff's.”
49.Therefore, by considering the surrounding circumstances, it is
evident that the defendant has adopted the impugned trademark with
the malafide intention of cashing-in upon the goodwill, reputation
and consumer base of the plaintiff. Having regard to the test in the
Cadila Case (supra). I find that the plaintiff has been able to make
out a clear case of passing off. issue No. 3 is therefore decided in
favour of the plaintiff .”
92. The learned Senior Counsel for the defendant has challenged the
findings of impugned order and raised the following grounds:
(i) The plaintiff has failed to file a Chartered
44
Accountant’s certificate and has not provided
contemporaneous evidence to substantiate the goodwill
tied to “REDDY” mark.
44
“CA” hereinafter
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 88 of 113
(ii) The defendant uses a distinctive saffron trade dress,
which renders it clearly distinguishable from the plaintiff’s
packaging.
(iii) The plaintiff has failed to show any misrepresentation
on the part of the defendant.
(iv) The plaintiff has failed to establish any exclusive
proprietary right in the word “REDDY” or demonstrate
that the word has acquired distinctiveness exclusively in
relation to its goods.
(v) The evidence relied upon by the plaintiff to establish
prior use has not been properly proven in accordance with
the law, and several of the documents relied upon by the
plaintiff are subsequent to the incorporation of the
defendant company in 1996.
(vi) The admissions made by the plaintiff’s witnesses
clearly demonstrate that the plaintiff has not produced any
material to establish the use of the mark “Dr. Reddy’s” as
a trademark for the years preceding the defendant’s
incorporation, and the plaintiff’s evidence mainly consists
of trademark applications and assignment deeds, which do
not establish actual commercial use.
93. In light of the submissions made, we now proceed to examine
whether the plaintiff has succeeded in establishing goodwill as a prior
user of the mark.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 89 of 113
94. It is a settled law that at the final stage of the suit, the court moves
beyond the prima facie standard of proof and requires a higher standard
of proof than that applicable at the interim stage.
95. The plaintiff’s case, as set forth in the plaint, is that they
commenced their business in 1996, and that the defendants have been
aware of their business since 1997, yet chose to adopt the infringing
trademark and are now passing off their goods as those of the plaintiff.
96. On the other hand, the defendant contend that they adopted the
impugned trademark in 1996 and that the plaintiff has been aware of
their adoption of the mark since 1997, when their commercial dealing
began.
97. It is undisputed that in the year 2003, the defendant, in order to
expand their business, entered the field of finished pharmaceutical
formulations i.e., the business of the plaintiff. Until 2003, it is
undisputed that the defendant was merely in the business of distributing
the plaintiff’s products and were not directly competing with the
plaintiff.
98. In these circumstances, it is pertinent to note that it is well settled
law that an action for passing off and infringement are distinct in their
scope and requirements. While an action for infringement is founded on
a statutory right and is primarily concerned with the unauthorised use
of the registered trademark, an action for passing off is a common law
remedy directed against misrepresentation in the course of trade and is
to be assessed on the basis of the defendant’s goods. The mere fact that
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 90 of 113
defendant is using a trademark which is deceptively similar to that of
45
the plaintiff is not sufficient to establish a claim for passing off.
99. Furthermore, needless to say, a passing off action is based on the
principle that no one is entitled to misrepresent their goods as if they
were the goods of another. In other words, a person cannot, by way of
misrepresentation, create an impression that their goods originate from
or are associated with another. In this backdrop, it is incumbent upon
the plaintiff to establish that it had acquired goodwill and reputation in
the relevant market prior to the defendant’s adoption and use of the
impugned mark. In the present case, where the defendant commenced
use of the mark on finished goods and began direct engagement with
consumers from 2003, the relevant enquiry would be whether the
plaintiff had acquired protectable goodwill in the market prior to such
use.”
100. Upon examination of the record placed before us, the plaintiff
has relied upon several documents to demonstrate its goodwill as a prior
user. These documents include: (i) Newspaper publications, (ii) Various
sales invoices, (iii) Advertisement invoices, (iv) a review of the
plaintiff’s company in Business Line , (v) A printout from the plaintiff’s
website showing unaudited financial results for the half-year ending
30.09.2003, and (vi) Coloured photocopies of various products of the
plaintiff.
45
Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 91 of 113
101. According to the plaintiff, all these documents, when considered
collectively, establish the goodwill attributed to the plaintiff’s company
as of 2003.
102. The defendant has sought to challenge the evidentiary value of
these documents on the ground that the sales figures are not supported
by CA certificates and that the data reflects composite corporate
activity, which may not be entirely reflective of the specific goods in
question.
103. In reply to this argument, our attention was rightly drawn to the
cross-examination of DW-1, where he categorically accepted that the
plaintiff company enjoys a reputation in the market and unequivocally
stated: “ I am aware that the plaintiff company enjoys a reputation in
the market.”
104. Thus, the position is placed beyond any doubt by the categorical
admission of the defendant’s own witness, DW-1.
105. This admission is of decisive significance. It constitutes a clear
and unambiguous acknowledgment, made under oath, of the plaintiff’s
reputation and goodwill in the relevant trade. Such an admission,
emanating from the defendant’s own witness, carries substantial
evidentiary weight and binds the defendant.
106. It is a settled principle of evidence that admissions are the best
evidence against the party making them. Unless satisfactorily
explained, admissions dispense with the need for further proof. In the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 92 of 113
present case, the defendant has made no attempt to qualify, retract or
explain away the said admission.
107. This admission must also be read in conjunction with the recitals
and clauses of the Agency Agreement dated 01.04.2003, which
expressly acknowledge the plaintiff’s business and market presence.
108. The oral admission of DW-1 thus corroborates the documentary
evidence and reinforces the conclusion that the defendant had full
knowledge of the plaintiff’s goodwill.
109. Additionally, in our view, the plaintiff has produced primary,
contemporaneous and exhibited material, including newspaper
publications, sales invoices dating back to at least 1997, and
advertisement invoices. These are direct commercial records reflecting
continued trading activity and promotional efforts under the mark.
110. In S. Syed Mohideen (supra), while affirming the decree, the
Supreme Court relied on the plaintiff’s “plethora of evidences” to hold
that long use had generated distinct reputation and goodwill. Thus,
newspaper publications and invoices are not only relevant but are
among the very categories of evidence that the Supreme Court has
treated as relevant to establish reputation and public association.
111. Furthermore, no cross-examination was directed against the
authenticity or relevance of the exhibited documents in establishing
goodwill. The law is well settled that where a witness is not cross-
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 93 of 113
examined on a material part of their testimony, that part remains
unchallenged and ordinarily must be accepted.
112. In State of U.P. (supra), the Supreme Court held that the un-
cross-examined portion of a witness’s statement remains unchallenged
and should be accepted as true.
113. Similarly, in Muddasani Venkata Narsaiah (supra), the
Supreme Court held that failure to challenge a witness’s testimony in
cross-examination leads to the presumption that the witness’s account
has been accepted. Consequently, matters sworn to and not challenged
in pleadings or cross-examination must ordinarily be taken as
established.
114. While it is true that these records are not CA certified, the law on
passing off does not require goodwill to be proved solely through CA
certified records. What is required is proof that the mark has generated
reputation and public association in the market, which may be
established through a mosaic of evidence showing actual trade,
promotion, and public recognition.
115. Unlike Brihan Karan Suhar Syndicate(P) Ltd .(supra), where
the plaintiff relied on unproved CA-certified summaries, the plaintiff in
the present case has presented primary and contemporaneous evidence
of use, sales, advertising, and market recognition, which largely went
unchallenged in cross-examination. Brihan Karan Suhar Syndicate(P)
Ltd. (supra) is therefore distinguishable on facts and does not assist the
defendant’s contention that goodwill fails for want of a CA certificate.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 94 of 113
116. Therefore, on the basis of preponderance of evidence, the
plaintiff has successfully established goodwill.
117. Having established goodwill as a prior user, we now turn to the
other ground raised by learned Senior Counsel for the defendant,
namely, that no misrepresentation has taken place by the use of the
impugned trademark.
118. It was submitted that in an action for passing off,
misrepresentation leading to deception is a necessary ingredient. The
defendant asserted that its consistent and distinctive saffron trade dress
negates any allegation of misrepresentation or an attempt to capitalize
on the plaintiff’s goodwill.
119. The defendant further contended that no confusion could arise
due to the dissimilarity in packaging, colour scheme, and overall trade
dress, the difference in corporate names, and the fact that
pharmaceutical products are prescribed by brand names rather than by
the name of the manufacturer.
120. Before delving into the facts, it is apposite to refer to the
judgment of the Supreme Court in Cadila Health Care Ltd (supra)
wherein the Court laid down that the degree of scrutiny in examining
passing off and infringement in pharmaceutical matters is considerably
higher because of the element of public interest. In para 27, the Court
observed as under:
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 95 of 113
“As far as the present case is concerned, although both the drugs
are sold under prescription but this fact alone is not sufficient to
prevent confusion which is otherwise likely to occur. In view of the
varying infrastructure for supervision of physicians and
pharmacists of medical profession in our country due to linguistic,
urban, semi-urban and rural divide across the country and with high
degree of possibility of even accidental negligence, strict measures
to prevent any confusion arising from similarity of marks among
medicines are required to be taken.”
121. On the issue of misrepresentation, the Supreme Court in S atyam
Infoway Ltd (supra) set out the elements of misrepresentation, which
shall guide us in the effective adjudication of the present matter:
“14. The second element that must be established by a plaintiff in a
passing-off action is misrepresentation by the defendant to the
public. The word misrepresentation does not mean that the plaintiff
has to prove any mala fide intention on the part of the defendant. Of
course, if the misrepresentation is intentional, it might lead to an
inference that the reputation of the plaintiff is such that it is worth
the defendant's while to cash in on it. An innocent misrepresentation
would be relevant only on the question of the ultimate relief which
would be granted to the plaintiff [Cadbury Schweppes v. Pub
Squash, 1981 RPC 429 : (1981) 1 All ER 213 : (1981) 1 WLR 193
(PC); Erven Warnink v. Townend, 1980 RPC 31 : (1979) 2 All ER
927 : 1979 AC 731 (HL)] . What has to be established is the
likelihood of confusion in the minds of the public (the word
“public” being understood to mean actual or potential customers
or users) that the goods or services offered by the defendant are
the goods or the services of the plaintiff. In assessing the likelihood
of such confusion the courts must allow for the “imperfect
recollection of a person of ordinary memory ” [Aristoc v. Rysta,
1945 AC 68 : (1945) 1 All ER 34 (HL)].”
122. Adverting to the facts of the present case, the impugned mark
“REDDY” is, on its face, a common surname. The defendant itself has
pleaded that the mark is derived from the surname of its Managing
Director and is widely prevalent in Andhra Pradesh. However, as
established above, the plaintiff’s corporate name “Dr. Reddy’s
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 96 of 113
Laboratories”, by virtue of long, continuous, and extensive use, has
acquired substantial goodwill.
123. At this juncture, it is instructive to refer to the decision of the
Division Bench of this Court in Montari Overseas Limited (supra),
where the Court held that where a defendant adopts a corporate name
similar to that of an established entity, and no satisfactory explanation
is forthcoming, the Court is entitled to infer a lack of bona fidenes and
the likelihood of deception. The same principle is directly applicable to
the present case.
124. Furthermore, it is established above that the plaintiff’s corporate
name has transcended its primary function of mere identification and
has acquired trademark significance through consistent commercial
use.
125. It is also well settled law that a common surname is prima facie
non-distinctive and cannot ordinarily be monopolised. However, it is
equally established that a surname, through long, continuous and
extensive use, may acquire distinctiveness and secondary meaning. The
decision in Mahendra & Mahendra Paper Mills Ltd . (supra)
recognises that even a common name may become distinctive of a
particular source if it is shown to have acquired a reputation in trade.
126. Applying the test of imperfect recollection, it is evident that the
impugned mark “REDDY” is deceptively similar to the plaintiff’s mark
“Dr. Reddy’s”. The dominant and essential feature of both marks is the
word “REDDY”, which is likely to leave a lasting impression on the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 97 of 113
average consumer. The likelihood of confusion is further heightened by
the fact that the marks are used in relation to medicinal products, where
even a remote possibility of confusion must be avoided, as held in
Cadila Health Care Ltd . (supra)
127. In terms of visual, phonetic and structural similarity, the marks
are deceptively similar. Phonetically, the marks are identical in their
dominant component. Structurally, the defendant’s mark is wholly
subsumed within the plaintiff’s mark. Visually, the impression
conveyed is such that an average consumer would likely associate one
with the other.
128. Thus, while assessing likelihood of confusion, and adopting the
perspective of a person of average intelligence and imperfect
recollection, and not that of a meticulous or discerning observer, the
similarity between the marks is such that it would inevitably lead to
confusion or deception.
129. The surrounding circumstances further reinforce the likelihood
of confusion. The plaintiff has established a significant market presence
and goodwill associated with the mark “Dr. Reddy’s”. The adoption of
the mark “REDDY” by the defendant, within the same field of activity,
is likely to create an impression of association, affiliation, or
continuation with the plaintiff’s business.
130. The argument based on dissimilarity of corporate names is
equally unpersuasive. The use of the common element “REDDY” in the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 98 of 113
same field of activity is sufficient to give rise to a likelihood of
association, particularly in light of the plaintiff’s established reputation.
131. In view of the above discussion, we find that the use of impugned
trademark by the defendant would lead to misrepresentation, and the
submission that the defendant’s distinctive saffron trade dress makes it
clearly distinguishable from the plaintiff’s packaging cannot be
accepted.
132. The essential elements of a passing off action, namely goodwill,
misrepresentation, and likelihood of damage, are satisfied based on the
material on record.
133. The reasoning of the learned Single Judge reflects a proper
application of settled principles and does not suffer from perversity.
134. The question of bona fide adoption must next be considered.
Issue-III - Whether the adoption of the trademark “REDDY” is
protected under Section 35 of the Act?
135. The defendant has taken a defence of bona fide use.
136. According to the defendant, the onus of proving dishonesty lies
on the person asserting it, and since the corporate name was derived
from the surname of the Managing Director, the use was bona fide .
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 99 of 113
137. It was further urged that the plaintiff was well aware of the
defendant’s bona fide adoption of the mark since 1997, and that the
defendant’s transition from being a distributor of APIs to selling
formulations represents a legitimate commercial expansion, which does
not retroactively invalidate the initial bona fide adoption.
138. It is necessary to first understand the contours of Section 35 of
the Act. The provision reads as under:
35. Saving for use of name, address or description of goods or
services.—Nothing in this Act shall entitle the proprietor or a
registered user of a registered trade mark to interfere with any bona
fide use by a person of his own name or that of his place of business,
or of the name, or of the name of the place of business, of any of his
predecessors in business, or the use by any person of any bona fide
description of the character or quality of his goods or services.
139. A reading of the above Section reveals that the defence under
Section 35 is contingent on the use being “ bona fide ”. Thus, the issue
for consideration is whether the defendant’s use and adoption of the
mark “REDDY” was bona fide.
140. It is a trite law that the honesty of adoption must be assessed at
the inception of use since 1997. In Midas Hygiene Industries (supra),
the Supreme Court held that where the adoption is dishonest, delay or
laches is of no consequence.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 100 of 113
141. Similarly, in Hindustan Pencils Pvt. Ltd. v. India Stationery
46
Products Co . , it was held that if the adoption of a mark is tainted at
its origin, subsequent use cannot cleanse it.
142. Adverting to facts of the present case, it is now clear that the
defendant had full knowledge of the plaintiff’s goodwill. This is further
corroborated by the clauses of the Agency Agreement dated
01.04.2003, which expressly acknowledge the plaintiff’s business and
market presence.
143. Additionally, the oral admission of DW-1 supports the
documentary record and reinforces the conclusion that the defendant
was aware of the plaintiff’s goodwill.
144. Upon examining the material on record, it is evident that the
defendant was fully aware of the plaintiff’s business and reputation.
145. Furthermore, the parties were engaged in a commercial
relationship, and it is undisputed that the defendant had full knowledge
of the plaintiff’s operations in the pharmaceutical sector.
146. Further, the Agency Agreement dated 01.04.2003, coupled with
the admissions regarding prior dealings, demonstrates that the
defendant was not an innocent adopter but had direct exposure to the
plaintiff’s goodwill and trademark.
46
AIR 1990 Delhi 19
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 101 of 113
147. The defence of the defendant that “REDDY” is a common
surname must be examined in context of its own conduct. The
defendant itself applied for registration of the mark “REDDY” in Class
5 and has asserted proprietary rights over it. Such conduct is
fundamentally inconsistent with the plea that the mark is publici juris .
148. A party cannot simultaneously claim exclusivity over a mark and
deny its distinctiveness. This position attracts the principle of approbate
and reprobate, which disentitles the defendant from invoking the
defence of commonality.
149. The defendant was fully aware of the plaintiff’s goodwill and
reputation in the pharmaceutical market. The parties were engaged in a
subsisting commercial relationship, and the defendant had direct
knowledge of the plaintiff’s business operations.
150. The subsequent adoption of the impugned mark “REDDY” in the
same field of activity, coupled with the use of the Ameerpet address on
its packaging despite having no manufacturing facility in Hyderabad,
clearly points towards a lack of bona fide s.
151. Additionally, it was pointed out that within 16 days of the
Agency Agreement, the defendant filed Trade Mark No. 1192732 in
Class 5 on a ‘proposed to be used’ basis. This filing is wholly
inconsistent with any case of long, honest, natural or inherited use of
the name in the relevant trade.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 102 of 113
152. The defendant claimed to have manufacturers in Hyderabad but
failed to provide any supporting evidence to justify the use of the
Ameerpet address as its ‘head office’ or as a legitimate business
location.
153. On the contrary, PW-1’s visit disclosed the nameplate of an
altogether different individual, and the defendant still failed to produce
contemporaneous proof of actual operations from that premises
154. Therefore, the defendant has failed to establish the foundational
requirement of bona fide adoption and use. Therefore, the defendant’s
use of the mark is not protected under Section 35 of the Trade Marks
Act, as the requirement of bona fide use has not been met.
155. The defendant’s conduct reveals not an honest use of a personal
name but an attempt to create market association and secure exclusivity
over the disputed name.
156. The adoption and use of the trademark “REDDY” by the
defendant are tainted from the outset and cannot be save by subsequent
use or by claiming that “REDDY” is a common surname. The
defendant’s actions indicate an attempt to capitalize on the plaintiff’s
established goodwill in the pharmaceutical sector, and as such, it cannot
claim protection under Section 35.
ISSUE IV - Whether the learned Single Judge erred in deciding
the issue no.6 relating to domain name in favour of plaintiff?
]
157. This issue pertains to the plaintiff’s claim relating to the
defendant’s use of a domain name incorporating the expression
“REDDY” and whether such use is liable to be restrained.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 103 of 113
158. The defendant has contended that there exists no similarity
between the domain names of the parties and that the plaintiff has failed
to establish ownership of any exclusive right in respect of the impugned
domain name.
159. It is further urged that the principles governing trademark law
have been incorrectly applied to the domain name in question.
160. We are unable to accept the aforesaid submissions.
161. The legal position relating to domain names is clear. The
Supreme Court in Satyam Infoway Ltd .(supra) has authoritatively held
that a domain name is not merely an internet address but serves the same
function as a trademark, namely, identifying and distinguishing the
source of goods or services.
162. The Court further recognised that the internet has become a
significant platform for commercial activity, and that a domain name,
being the primary means by which consumers locate a business online,
carries with it the goodwill and reputation of the enterprise.
163. Consequently, the misuse of a domain name is capable of
resulting in the diversion of business and deception of consumers,
thereby attracting the principles of passing off.
164. The essential test, therefore, is whether the impugned domain
name is likely to cause confusion or deception by leading internet users
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 104 of 113
to believe that the website of the defendant is associated with or
originates from the plaintiff.
165. It must also be borne in mind that internet users often rely upon
imperfect recollection and may access websites by recalling the
dominant part of a name.
166. The adoption of the word “REDDY” in the domain name is,
therefore, sufficient to attract users seeking the plaintiff’s website,
thereby resulting in diversion of traffic.
167. The contention of the defendant that the plaintiff has failed to
establish ownership of the domain name is misplaced.
168. In an action for passing off, it is not necessary for the plaintiff to
demonstrate ownership of an identical domain name. What is required
is the existence of goodwill and the likelihood of misrepresentation.
Once these elements are established, protection follows.
169. The learned Single Judge had also taken into consideration the
status of plaintiff’s domain name at that time and accordingly granted
relief, as the plaintiff’s website was dysfunctional.
170. Thus, in view of the above discussion, we find no infirmity with
the findings of the learned Single Judge in Issue No.6.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 105 of 113
ISSUE V – Whether the learned Single Judge was correct in
holding issue no.5 against defendant?
171. This issue pertains to the plaintiff’s claim of copyright in the
artistic work forming part of its packaging and label, and the correctness
of the findings returned by the learned Single Judge regarding
ownership and alleged infringement thereof.
172. The findings of the learned single judge is challenged on the
following grounds:
“(i) The plaintiff has failed to establish subsistence and ownership
of copyright in accordance with the provisions of the Copyright
Act,1957.
(ii) The plaintiff had not produced any evidence regarding the
originality of the work, identity of the author, or the date of first
publication, as required under Sections 13, 14, 17 and 18 of the
Copyright Act.
(iii) Documents relied upon by the plaintiff, including Ex. PW-1/7
and Ex. PW-1/8, have not been proved in accordance with the
provisions of the Evidence Act.”
173. We do not agree with the submissions advanced by the learned
Senior Counsel for the defendant.
174. The defendant’s contention that the plaintiff failed to establish
the subsistence and ownership of copyright is untenable, both on
pleadings and the evidence adduced.
175. At the outset, we note the findings of the learned Single Judge on
copyright infringement, the same reads as under:
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 106 of 113
“57.With regards to the copyright of the plaintiff in the get-up and
lay-out of its OMEZ strips, in paragraph I 5(iv) of the plaint, the
plaintiff has described the distinctive and artistic features of its
OMEZ strip. The strip is said to he made up of silver foil, with pink
(magenta) coloured stripes on it bearing the registered trademark
OMEZ at equal intervals. in between two consecutive pink strips,
towards the centre, appears a pink block bearing the aforesaid
trademark. Right above the trade mark, appears the words
'Omeprazole Capsules I.P printed in black. Towards the left side of
the trademark, appear directions for consumption of the drug,
followed by storage and dosage instruction along with the
"warning" box. Towards the right side of the trademark OMEZ,
appears the plaintiffs trading name, Dr. Reddy's, followed by M.L.
No. along with the plaintiffs address. The plaintiff has stated that
initially, the artwork for the OMEZ getup was developed by M/s.
Script Services. The copyright in the said artwork vests with the
plaintiff through an Assignment Deed dated August 28, 2002, which
is placed on record as Ex. PW1/8. A specimen of the plaintiffs OMEZ
strip is also placed on record as EX. D4. From the specimen of the
strip, it is also seen that there is a logo of a stomach enclosed in a
pink (magenta) rhombus.
58.A specimen of the defendant's OMRE strip is also placed on
record as EX. D2. Upon a visual comparison, it is seen that the
defendant's packaging is also made up of silver foil with the name
OMRE written in pink (magenta) colour. Right above the trademark
OMRE, the words 'Omeprazole Capsules I.P.' is printed in black.
Towards the left side of the trademark, appear directions for
consumption of the drug, followed by storage and dosage instruction
along with the "warning" box, similar to that of the plaintiffs,
towards the right side of the trademark OMRE appears the
defendant's trading name, REDDY, followed by the address of the
defendant, at Ameerpet, Hyderabad. It is also seen, that the
defendant's strip also contains a logo of a stomach enclosed within
a pink (magenta) square, similar to that of the plaintiffs strip. From
an overall visual co11parison, I am of the opinion that the get-up,
lay-put and colour combination of the defendant's drug OMRE is in
infringement of the plaintiffs copyright over its OMEZ strip. Hence,
Issue No .5 is decided accordingly in favour of the plaintiff.”
176. We agree with the findings of the learned Single Judge.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 107 of 113
177. Clearly, the OMEZ strip packaging, including its overall trade
dress, get-up, layout, and colour scheme, qualifies as an “artistic work”
within the meaning of Section 2(c) of the Copyright Act.
178. The plaint itself specifically pleads the distinctive artistic features
of the OMEZ strip in para 15(iv), and these features were reiterated in
the evidence of PW-1.
179. The learned Single Judge, in paras 57-58 of the judgment, records
these very features in detail and expressly finds that the plaintiff’s strip
possesses a distinctive visual arrangement, comprising silver foil,
pink/magenta stripes, repeated use of the mark “OMEZ”, a central pink
block, black descriptive matter above the mark, left-side dosage and
warning material, right-side trading name and address, and a stomach
logo within a pink rhombus.
180. As to ownership, the plaintiff’s case was never that PW-1
personally authored the artwork.
181. The pleaded case, accepted in para 57 of the impugned judgment,
is that the artwork was initially developed by M/s Script Services and
that the copyright vested in the plaintiff by virtue of the Assignment
Deed dated 28 August 2002, exhibited as Ex. PW1/8. That directly
answers the objection under Sections 17 and 18. Section 17 deals with
first ownership, while Section 18 permits assignment by the owner.
182. Once the plaintiff proved that the artwork originated with the
Script Services and that the rights therein had been assigned to the
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 108 of 113
plaintiff under Ex. PW1/8, and since the contents of the said document,
namely, the factum that such assignment had in fact taken place, were
never denied by the defendant, the plaintiff successfully established the
chain of title.
183. The objection regarding originality is equally misconceived. In
the case of artistic works, such as packaging artwork, originality lies in
the author’s selection, arrangement, layout, colour combination and
visual presentation. It does not necessarily require novelty in the patent
sense.
184. The plaintiff’s case is precisely that the original expression
resides in the combination and arrangement of the visual elements
making up the OMEZ strip.
185. The learned Single Judge accepts this by undertaking a visual
comparison between Ex. D4 and Ex. D2 and recording that the
defendant adopted the same silver foil base, the same pink/magenta
lettering, the same black descriptive text placement, the same left-right
distribution of dosage/warning and trading particulars, and even a
similar stomach logo device. That finding necessarily proceeds on
recognition of a protectable artistic expression in the plaintiff’s get-up
and layout.
186. Thus, we find no satisfactory ground to set aside the findings of
the learned Single Judge.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 109 of 113
Issue VI - Whether the learned Single Judge erred in deciding issue
no. 8 relating to damages and rendition of accounts in favour of
plaintiff?
187. This issue pertains to the plaintiff’s claim for damages and
rendition of accounts, and the correctness of the findings returned by
the learned Single Judge in that regard.
188. The defendant has contended that the plaintiff failed to lead any
evidence to establish actual loss or damage suffered on account of the
alleged acts of passing off, and that none of the witnesses for the
plaintiff deposed to any quantifiable loss or unlawful gain attributable
to the defendant.
189. It is further urged that, in the absence of such evidence, no relief
by way of damages or rendition of accounts could have been granted.
190. The findings pertaining to this issue by the learned Single Judge
are as follows:
“60. In accordance with Section 135 of the Act, the plaintiff is either
entitled to a relief of damages or an account of profits. In the prayer,
the plaintiff has prayed for an Order of rendition of accounts,
delivery of infringing products and labels, and damages to the tune
of Rs. 20 Lakhs. Since the plaintiff has not led any evidence
regarding the pecuniary harm caused to it by the defendant's action
of passing off. there is no parameter for this Court to determine the
damages to be awarded. Similarly, there is no parameter to deduce
the damages to be paid for the infringement of the plaintiffs
copyright in its OMEZ strip. Therefore, the plaintiff is entitled to an
Order on rendition of accounts and delivery up of the impugned
products and labels.”
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 110 of 113
191. It is well settled that a claim for damages in an action for passing
off requires proof of actual loss or, at the very least, a reasonable basis
for the assessment of such loss.
192. Similarly, a decree for rendition of accounts is an equitable
remedy, which is ordinarily granted where it is shown that the defendant
has made profits by the wrongful use of the plaintiff’s mark.
193. It is settled law that under Section 135(1) of the Trade Marks Act,
the plaintiff may, at its option, seek either damages or an account of
profits . Once infringement or passing off is established, the absence of
proof of quantifiable loss may defeat a money decree for compensatory
damages, but it does not, by itself, extinguish the alternative relief of
rendition of accounts or delivery up.
47
194. In Titan Industries Ltd. v. Nitin P. Jain , the Court held that
damages and an account of profits are alternative remedies, and that the
plaintiff may claim both in the alternative and make an informed
election at the conclusion of the trial. Crucially, the Court observed that
this is because a successful plaintiff may not have sufficient knowledge
of the defendant’s activities unless disclosure is first made.
195. Thus, the defendant is right only to the limited extent that,
without evidence of pecuniary harm, the Court may not be able to
47
(2006) 126 DLT 132
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 111 of 113
quantify compensatory damages. However, that does not mean that no
order for rendition of accounts could be passed.
196. Hence, the absence of quantified evidence of loss could at best
disentitle the plaintiff to compensatory damages. However, it could not
defeat the grant of an order for rendition of accounts and delivery up,
once infringement, passing off, and copyright violation have been
established.
197. Therefore, we concur with the conclusion reached by the learned
Single Judge and find no grounds to set aside the same.
CONCLUSION
198. In view of the foregoing discussion, we find no ground to
interfere with the appeal.
199. This Court concurs with the conclusion of the learned Single
Judge that a case for grant of a permanent injunction against the
defendant/appellant has been made out.
200. Consequently, RFA (OS) 138/2013 is dismissed.
201. Furthermore, for the reasons outlined above, this Court finds no
reason to set aside the order rendered by the IPAB. Hence, W.P. (C)
6461/2018 is dismissed.
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 112 of 113
202. Accordingly, both W.P. (C) 6461/2018 and RFA (OS) 138/2013,
along with the pending application(s), are disposed of in the above
terms.
OM PRAKASH SHUKLA, J.
C.HARI SHANKAR, J.
MAY 18, 2026/pa/ss
Signature Not Verified
Signed By:PRAGYA
ARORA
Signing Date:18.05.2026
19:18:33
RFA(OS) 138/2013 and connected matter Page 113 of 113