Family of marks' protection applies to pharmaceutical prefixes to maintain Register purity and prevent public confusion.

The Petitioner, Abbott Product Operations AG, sought rectification and removal of the trade mark "DUPHACHRIT" (impugned mark) registered by Respondent No. 1 in Class 5.

The Petitioner is the successor-in-title to the "DUPHA family of marks," originating with the acronym "DUPHAR" (Dutch Pharmaceuticals) in 1949.

The Petitioner holds multiple registrations for DUPHA-formative marks (e.g., DUPHASTON, DUPHALAC, DUPHAR), with the earliest Indian registration dating to 1951.

The Petitioner’s products, particularly DUPHASTON (a dydrogesterone preparation), have significant global and domestic sales.

The Respondent obtained registration for "DUPHACHRIT" in 2021 on a "proposed to be used" basis for identical goods (dydrogesterone).

The Petitioner filed this petition under Section 57 of the Trade Marks Act, 1999, alleging deceptive similarity and dishonest adoption.

1. Whether the impugned mark "DUPHACHRIT" is deceptively similar to the Petitioner’s "DUPHA" family of marks under Sections 11 and 57 of the Trade Marks Act, 1999.

2. Whether the adoption of the impugned mark by Respondent No. 1 was dishonest and intended to trade upon the Petitioner’s goodwill.

3. Whether the prefix "DUPHA" is publici juris (common to the trade) or if the Petitioner’s rights were diluted by fragmentation and third-party use.

The Court primarily applied Section 57 of the Trade Marks Act, 1999, regarding the power to cancel or vary registration.

The Supreme Court’s decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., which establishes that a stricter standard and lesser quantum of proof for deceptive similarity apply to pharmaceutical products due to the potential for disastrous health consequences.

Following Macleods Pharmaceuticals Ltd. v. Union of India, the Court held marks must be compared as a whole from the perspective of an ordinary man of average intelligence.

Under Ciba Ltd. v. M. Ramalingam, the Court prioritized the "purity of the register" and public interest over the private interests of traders.

Per Corn Products Refining Co. v. Shangrila Food Products Ltd. and Pidilite Industries Ltd. v. Riya Chemy, the burden of proving that a mark is "common to the trade" lies on the party asserting it, and mere presence on the register without evidence of commercial use is insufficient.

The Court found "DUPHACHRIT" to be phonetically, aurally, and visually similar to the Petitioner’s marks, particularly "DUPHASTON," especially as both identify the same active ingredient, dydrogesterone.

Applying the Cadila "stricter standard," the Court rejected the Respondent’s argument that "CHRIT" distinguished the mark, noting that "DUPHA" serves as the essential source identifier for the Petitioner’s well-established family.

The Court dismissed the Respondent’s defense that the drugs are "Schedule H" (prescription only), citing judicial notice that prescriptions are often ignored or misread in the Indian market.

On the issue of "common to the trade," the Court observed that the Respondent failed to produce evidence of actual commercial use of the cited third-party marks, many of which were abandoned or refused.

The Respondent’s adoption was deemed dishonest because they entered the dydrogesterone market when it was formerly the Petitioner’s proprietary domain, making ignorance of the Petitioner's mark impossible.

The Court ordered the rectification and removal of Trade Mark No. 5027549 ("DUPHACHRIT") in Class 5 from the Register of Trade Marks.