Aura of phonetic similarity in medicinal marks requires stricter scrutiny to prevent public health risks despite generic suffixes.

The Plaintiffs, registered proprietors of the trademark "GRILINCTUS" since 1972, filed a suit for trademark infringement and passing off against the Defendant.

The Defendant adopted the mark "PIL-LINCTUS" in 2008 for an identical product (cough syrup).

The Plaintiffs became aware of the impugned mark in 2021 after the Defendant filed for registration, which was subsequently abandoned and refiled.

The Plaintiffs alleged that "PIL-LINCTUS" is phonetically, visually, and structurally similar to "GRILINCTUS," leading to a likelihood of confusion, especially given the medicinal nature of the goods.

The Defendant argued that "LINCTUS" is a descriptive, generic term publici juris in the pharmaceutical trade, and that the prefix "PIL" (a house mark) and a hyphen sufficiently distinguished the marks.

The court applied Section 28 and 29 of the Trade Marks Act regarding the rights of registered proprietors and infringement.

It relied on Amritdhara Pharmacy v. Satya Deo Gupta and Hiralal Parbhudas v. Ganesh Trading Company, establishing that marks must be compared as a whole based on the impression of a person of average intelligence.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court mandated a stricter standard for medicinal products where confusion could be life-threatening.

UltraTech Cement Limited v. Alkandanda Cement Pvt. Ltd. established that a party seeking registration of a mark is estopped from claiming that a part of that mark is descriptive or common to trade.

The court found that both marks are three-syllable words where the suffix "LINCTUS" dominates the phonetic and structural impression.

Despite the Defendant's use of a hyphen, the court held it was insufficient to obviate confusion, particularly as medicinal products in India are often ordered over the phone or sold without prescriptions.

The court noted that the Defendant admitted to a "very high degree" of phonetic and visual similarity in its Counter Statement before the Registry.

Regarding the "generic" argument, the court ruled that since the Defendant sought registration of its own mark containing "LINCTUS," it was estopped from claiming the term was publici juris.

The court rejected the defense of acquiescence because the Plaintiffs had actively opposed the Defendant's trademark applications, negating any claim of "standing by".

Finally, consistent with Cadila, the court emphasized that different compositions in identical-use drugs (cough syrups) necessitated an injunction to prevent health risks.

The court held that the Plaintiffs established prior registration and long-standing use, whereas the Defendant’s adoption appeared to be a deliberate attempt to come as close as possible to the Plaintiffs' mark.

A 4-week stay on the operation of the order was granted upon the Defendant's request.