Pharmaceutical Mark ‘CALPOL’ Declared a Well-Known Trademark Under Section 2(1)(zg) of the Trade Marks Act

The Plaintiff, a member of the global GSK group, filed a suit for permanent injunction to restrain the Defendants from using the mark 'WALPOL' for pharmaceutical products, alleging it was deceptively similar to the Plaintiff's registered marks 'CALPOL' and 'CALPOL FAST'

The Plaintiff has used 'CALPOL' in India since 1991, achieving significant turnover (over Rs. 300 crores in 2024) and investing heavily in promotion

In September 2024, the Plaintiff discovered Defendant No. 2’s trademark application for 'WALPOL'

While the suit was pending, the parties settled the dispute; the Defendants agreed to a permanent injunction and payment of Rs. 2,00,000 as damages

The Court proceeded to determine the remaining prayer regarding the declaration of 'CALPOL' as a "well-known" trademark

1. Whether the trademark 'CALPOL' qualifies for declaration as a "well-known trademark" under the criteria specified in the Trade Marks Act, 1999?

Section 2(1)(zg) of the Trade Marks Act, 1999, which defines a "well-known trademark" as one that has become so known to a substantial segment of the public that use of a similar mark on other goods would be taken as indicating a connection with the proprietor

Statutory factors under Section 11(6) and 11(7) of the Act, which require the consideration of (i) knowledge/recognition in the relevant section of the public; (ii) duration, extent, and geographical area of use; (iii) duration and extent of promotion; (iv) record of successful enforcement; and (v) geographical area of registrations

The Court evaluated the evidence against the five-factor test under Section 11(6). It noted the Plaintiff's 35-year continuous use since 1991 and its extensive network of distributors and online presence

The Court examined the financial data, noting that the sale of over 20 crore units and a turnover exceeding Rs. 300 crores in a single year evidenced immense goodwill

The Court also highlighted the degree of recognition through pharmacy journals, news publications (e.g., Economic Times), and the Plaintiff's "vigilant" enforcement of rights through multiple successful litigations and injunctions against third-party infringers

The Court observed that 'CALPOL' has attained such distinctiveness that it is consistently visible across the country and associated exclusively with the Plaintiff

The trademark 'CALPOL' was formally declared a "well-known trademark" within the meaning of Section 2(1)(zg) of the Act for medicinal and pharmaceutical products

Per the settlement, the suit was also decreed in favor of the Plaintiff regarding the permanent injunction and damages of Rs. 2,00,000