Madras HC Upholds ‘NICE’ Registration For Neonatal Equipment Despite Phonetic Similarity To Dr Reddy’s ‘NISE’ Drug Mark, Citing Different Goods And Specialist Buyers

Dr. Reddys Laboratories Limited, proprietor of registered “NISE” marks in Class 5 for pharmaceutical and medicinal preparations, opposed Nice Neotech Medical Systems Pvt. Ltd.’s application to register the device mark “nice” in Class 10 for medical equipment and apparatus.

The applicant claimed use from 10 July 2001; the opposition alleged deceptive similarity, likely confusion, dishonest adoption and infringement of the appellant’s reputation.

The Assistant Registrar disallowed the opposition on 22 August 2025, principally finding the goods, purchasers and trade channels different.

Dr. Reddys appealed under Section 91 of the Trade Marks Act, 1999.

Section 11(1) of the Trade Marks Act, 1999 bars registration where similarity between an applied-for mark and an earlier mark, together with similarity of goods or services, creates a likelihood of confusion, including association.

Under Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the assessment considers the marks’ nature and resemblance, the goods’ nature and characteristics, the class of purchasers, their care and intelligence, the mode of purchase and surrounding circumstances; the weight of each factor depends on the case.

Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. confirms that marks must be considered as a whole, in the context of the products and their trade, and phonetic similarity alone is not conclusive.

Section 11(2) requires, among other things, a well-known earlier mark and unfair advantage or detriment; the passing-off ground under Section 11(3)(a) requires a likelihood of misrepresentation as to commercial origin.

The Court found “NISE” and “nice” phonetically similar, but assessed that resemblance alongside the goods and purchasing context.

NISE was used for medicines, while the second respondent’s products were specialised neonatal equipment, including incubators, warmers and ventilators; their different functions and uses, together with institutional procurement by informed purchasers exercising care, weighed against confusion or commercial association.

The appellant established reputation in pharmaceuticals but did not sufficiently establish the additional requirements for protection under Section 11(2), or likely misrepresentation for passing off.

The second respondent’s business records and corporate name supported its account of independent adoption, and the Court found no sufficient evidence of dishonesty.

The disputed filing of the second respondent’s evidence did not alter the result because the Court considered the appellant’s earlier rights and found the substantive grounds for refusal unmade out.

It dismissed the appeal and confirmed the Assistant Registrar’s order disallowing Opposition No. 797238; there was no order as to costs, and the connected miscellaneous petition was closed.