Bombay HC Gives Shreya Until 2027 To Replace Export-Only LEFOXIN BIOX, Finding Likely Confusion With Glaxo’s LANOXIN

Glaxo sought rectification under Section 57(2) of the Trade Marks Act, 1999 (“TM Act”) of Shreya’s Class 5 registration for LEFOXIN BIOX, granted in 2021 on a proposed-to-be-used basis.

Glaxo relied on its earlier registration for LANOXIN, in force since 1956, and alleged that the marks were deceptively similar and likely to cause confusion between pharmaceutical products.

Shreya used LEFOXIN BIOX on levofloxacin tablets manufactured in India for export and asserted that it made no domestic sales; Glaxo used LANOXIN for digoxin tablets.

Glaxo said it learned of the registration in June 2024 and filed the petition in April 2025; Shreya relied, among other matters, on the different active ingredients, prescription-only status, export-only use and delay.

Section 57(2) of the TM Act permits a “person aggrieved” to seek rectification; under Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., as applied in Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. and Infosys Technologies Ltd. v. Jupiter Infosys Ltd., standing in rectification matters is construed liberally, particularly where the entry may affect the applicant’s rights or the purity of the Register.

Section 11(1)(b) bars registration where similarity between an earlier mark and the later mark, together with the identity or similarity of the goods, creates a likelihood of public confusion, including association; the relevant assessment is made at the time of registration.

The marks are compared as wholes from the perspective of a person of average intelligence and imperfect recollection.

For medicines, Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. and the Bombay High Court Division Bench decision in Macleods Pharmaceuticals Ltd. v. Union of India require heightened caution and a lesser quantum of proof of confusing similarity because confusion may endanger health.

Section 56(1) deems application of a mark in India to goods intended for export to be use in India.

Sections 11(3), 11(10) and 18(1) were pleaded, but the Court found it unnecessary to make separate findings under them once rectification was warranted under Section 11(1)(b).

The Court held that Glaxo’s earlier registration and the potential effect of Shreya’s registration on its rights gave Glaxo a real grievance and standing to seek rectification.

Comparing the marks as wholes, it treated LEFOXIN as the dominant element of LEFOXIN BIOX and found BIOX to be descriptive and only marginally differentiating; it also found insufficient evidence that OXIN was common to the trade.

Given the visual and phonetic resemblance, the broad Class 5 specifications and the stricter approach required for pharmaceutical marks, the differences between the current products, their prescribers and their indications did not eliminate the likelihood of confusion at the time of registration.

Export-only use did not alter the result because Section 56(1) deems the application of the mark in India to export goods to be use in India.

The Court found no sufficient evidence of dishonest adoption, and held that delay and lack of proof of actual confusion did not defeat rectification.

It directed the Registrar to remove the registration with effect from December 31, 2026, allowing Shreya time to transition to a new mark and undertake a communications and rebranding campaign; no costs were awarded.