Subsequent adoption of "family of marks" prefix for identical pharmaceutical compounds constitutes deceptive similarity and dishonest adoption.

The Petitioner, successor-in-title to Dutch Pharmaceuticals (who coined the term ‘DUPHAR’ in 1949), is the registered proprietor of a family of marks containing the prefix "DUPHA" (e.g., DUPHASTON, DUPHALAC, DUPHAR).

The Petitioner’s earliest Indian registration dates back to 1951.

In August 2024, the Petitioner discovered Respondent No. 1 had registered the mark "DUPHACHRIT" in Class 5 for identical pharmaceutical products (dydrogesterone preparations).

Despite a cease-and-desist notice, Respondent No. 1 refused to cancel the mark, claiming phonetic dissimilarity and that the prefix was common to the trade.

The Petitioner filed this petition under Section 57 of the Trade Marks Act, 1999, seeking rectification and removal of the impugned mark from the Register.

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

2. Whether the adoption of the impugned mark by Respondent No. 1 was bona fide or dishonest.

3. Whether the prefix "DUPHA" is publici juris (common to the trade) or a distinctive coined term.

4. Whether the purity of the Register and public interest necessitate the removal of the impugned mark.

The Court applied Sections 11, 47, and 57 of the Trade Marks Act, 1999, concerning grounds for refusal and rectification of the register.

It relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., which established that pharmaceutical marks require a stricter standard of similarity and a "lesser quantum of proof" of confusion due to health risks.

It followed Macleods Pharmaceuticals Ltd. v. Union of India, mandating that marks be compared as a whole from the perspective of a man of average intelligence.

The "anti-dissection" rule and the "essential features" test were applied alongside Ciba Ltd. v. M. Ramalingam, emphasizing the Court's duty to maintain the "purity of the register" in the public interest.

The principle from Corn Products Refining Co. v. Shangrila Food Products Ltd. was used to hold that mere presence on the register does not prove a mark is "common to the trade" without evidence of actual use.

The Court found "DUPHACHRIT" phonetically, visually, and structurally similar to the Petitioner’s marks, particularly "DUPHASTON".

It rejected the Respondent's "anti-dissection" argument, noting that "DUPHA" is the essential feature and source identifier of the Petitioner’s coined "family of marks".

Applying the Cadila standard, the Court held that since both marks are used for identical dydrogesterone preparations, even the "slightest probability of confusion" could have disastrous health consequences.

The Respondent’s adoption was deemed dishonest because they entered the dydrogesterone market only after the Petitioner’s proprietary API became commercially available, making ignorance of the Petitioner's goodwill impossible.

The Court dismissed the "common to trade" defense as the Respondent failed to provide evidence of commercial use by third parties for the cited search reports.

Finally, the Court ruled that under Section 57, maintaining the purity of the Register outweighs any plea of delay or hardship to the Respondent.

The Petition was allowed, and the Court ordered the Trade Marks Registry to rectify the Register by cancelling and removing the mark "DUPHACHRIT" (No. 5027549) in Class 5.