C.O.(COMM.IPD-TM) 163/2025 Page 1 of 24

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment reserved on: 19.02.2026

Judgment delivered on: 26.02.2026

+ C.O.(COMM.IPD-TM) 163/2025 & I.A.16868/2025

ABBOTT PRODUCTS OPERATIONS AG .....Petitioner

versus

MS. APRAJITA SUSHMA PROPRIETOR OF ALROM

PHARMACEUTICALS PVT. LTD. & ANR. .....Respondents

Advocates who appeared in this case:

For the Appellant : Mr. Anirudh Bakra, Mr. Naqeeb Nawab, Ms. Nipuun

Sharma & Mr. Abhigyan Pandey, Advocates.

For the Respondents : Mr. S. P. Gairola, Advocate for R-1.

Ms. Nidhi Raman, CGSC alongwith Mr. Om Ram and Ms. Nikita Singh, Advocates for R-2/Registrar of

Trademarks

CORAM:

HON'BLE MR. JUSTICE TUSHAR RAO GEDELA

J U D G M E N T

TUSHAR RAO GEDELA , J.

1. Present petition has been filed under Section 57 of the Trade Marks Act,

1999, (hereinafter referred to as “Act” ) to rectify, cancel and remove the entry

relating to the registered trademark “KREOFLAT” bearing no.4694743 in Class

05 made in the name of the respondent no.1/Registry of Trade Marks.

BRIEF FACTS:-

2. The history of the petitioner is stated to date back to the year 1888 when

its founder Dr. Wallace Calvin Abbott began manufacturing alkaloid medicine

granules. Sometime in the year 1894, the petitioner was incorporated through its

parent company, “Abbott Alkaloidal Company”, a medical publisher and

C.O.(COMM.IPD-TM) 163/2025 Page 2 of 24

manufacturer. It claims to have established itself in India in the year 1910 and is

one of the oldest, leading healthcare companies devoted to the discovery,

development, manufacture and sale of healthcare products and services. Abbott

India Limited i.e., the Indian subsidiary, was incorporated in the year 1944.

3. The predecessors in interest and title of the petitioner sincerely and

bonafidely coined the unique mark “PANKREOFLAT” for the purpose of using

the mark to identify, promote and distinguish their goods in the marketplace. On

16.03.1964, the petitioner obtained registration of the mark “PANKREOFLAT”

bearing Registration No.221220, which is valid and subsisting till date. The

petitioner claims to have undertaken numerous efforts to promote, publicize and

popularize the said mark including conducting advertising campaigns.

4. The said “PANKREOFLAT” mark is specifically used for a medicinal

formulation designed to treat digestive issues and bloating, containing

Pancreatin and Dimethicone. Petitioner states that the said mark has been used

continuously since the 1970s. On account of the extensive, continuous and

uninterrupted use of “PANKREOFLAT” mark over six decades in connection

with the medicinal products, the said mark has garnered immense goodwill and

reputation across India. As a result thereof, the public, including the medical

community, trade professionals and more importantly, the consumers

exclusively associate “PANKREOFLAT” with the petitioner’s goods.

5. The sales figures in relation to the goods marketed under

“PANKREOFLAT” mark in India, which were Rs.21.1 crores in 2017, have

risen substantially to Rs.34.7 crores in the year 2024. The petitioner claims to

have invested an immense amount of resources, time and money in the

promotion of the “PANKREOFLAT” product across India via print media,

online platforms and various social media platforms. The promotional expenses

under the said mark in India amounted to over Rs.1.43 crores for the year 2024.

C.O.(COMM.IPD-TM) 163/2025 Page 3 of 24

On account of the aforesaid, the petitioner claims: (a) that the

“PANKREOFLAT” mark is a well-known mark; (b) that the documents on

record establish adoption and prior use of the said mark since the year 1963 and

(c) that the petitioner has established uniqueness and distinctiveness to its marks

and earned goodwill and reputation to the extent that the mark

“PANKREOFLAT” is exclusively associated with the petitioner and its

predecessors.

6. Petitioner claims that sometime in the first week of October, 2024, it

came across a trademark bearing registration no.4694743, dated 15.04.2021,

for the mark “KREOFLAT” registered in the name of respondent no.1 in

respect of Class 5, which are identical goods to those manufactured by the

petitioner. Respondent no.1’s products serve the same primary function as those

of the petitioner, namely, treatment of digestive issues and bloating. Both the

products are stated to contain the same molecular composition, are marketed

and used to address gastrointestinal concerns and have an absolutely common

consumer base.

7. Petitioner claims that there was absolute negligence exhibited by

respondent no.2 while examining the application seeking registration of the

mark “KREOFLAT” submitted by respondent no.1, by failing to cite the prior

registered mark of the petitioner as an objection. Petitioner states that the failure

of respondent no.2 to comply with the mandate of the Act has resulted in the

impugned registration of the trademark “KREOFLAT” in favour of respondent

no.1 overlooking the fact that both marks are almost identical and clearly the

mark of the respondent no.1 is deceptively similar, which is likely to cause

confusion among consumers.

8. Petitioner claims to have issued a cease and desist notice dated

04.10.2024 and a reminder was also sent on 23.10.2024 to respondent no.1.

C.O.(COMM.IPD-TM) 163/2025 Page 4 of 24

Vide the response dated 25.11.2024, the respondent no.1 categorically refused to

comply with the requisitions mentioned in the cease and desist notice on the

ground that there is no similarity between the two marks.

9. Aggrieved by the aforesaid, the petitioner has filed the present petition

seeking rectification.

CONTENTIONS OF THE PETITIONER:-

10. Mr. Anirudh Bakhru, learned counsel appearing for the petitioner, at the

outset, invited attention of this Court to the registration of the mark “PANKREOFLAT” in the name of the petitioner vide registration certificate

dated 16.03.1964, which is at page 385 of the petition. Drawing attention

thereto, learned counsel submits that though the registration is in respect of the

device mark, except for the name “PANKREOFLAT”, there is no other

distinctive feature in the said device. He would contend that though in the year

1964 the application was filed on proposed to be used basis, however, from the

year 1970 onwards the said mark has been in use by the petitioner. For the

purposes of the present petition, he submitted that the petitioner has placed on

record, invoices evidencing the manufacture and sale of products under the

mark “PANKREOFLAT” at least from the year 2005 and onwards. In

particular, he drew attention of this Court to an invoice dated 29.08.2005

wherein the PANKREOFLAT tablets were sold over the counter, amongst

others.

11. That apart, in order to sustain the contention that the petitioner has been

continuously manufacturing and offering for sale products carrying the mark

“PANKREOFLAT”, he relied upon the certificate issued by the Chartered

Accountant dated 28.04.2025, wherein the sales turnover of the product

“PANKREOFLAT” during the calendar years from 2017 to 2024 is annexed to

the petition. He also relied upon the certificate issued by the Chartered

C.O.(COMM.IPD-TM) 163/2025 Page 5 of 24

Accountant dated 30.04.2025, which evidences the expenses incurred by the

petitioner on account of advertisement and promotion of the

“PANKREOFLAT” brand from the year 2017 till 2024.

12. Predicated on the above, learned counsel strenuously argued that not only

is the petitioner a prior adopter and registrant of the mark “PANKREOFLAT”,

but also is a prior user of the said mark, which is evident from the aforesaid

documentary evidence placed on record by the petitioner. He further contended

that the substantial expenses incurred by the petitioner, as a test case, from the

year 2017 to the year 2024 clearly indicate the interest of the petitioner in

projecting its brand “PANKREOFLAT” by all means. The sales figures for the

period 2017 to 2024, yet again as a test case, would also clearly evidence the

growth in reputation and goodwill over the years in respect of the mark

“PANKREOFLAT”.

13. Learned counsel would also contend that the mark “KREOFLAT” of

respondent no.1 is phonetically, visually and structurally deceptively similar to

the petitioner’s registered and well- known mark “PANKREOFLAT”. He would

further contend that the impugned mark falls in the same class and that the

consumers would be common to both. In these circumstances, he submitted that

there is bound to be confusion between the marks. Additionally, he would

contend that the reputation and goodwill of the petitioner’s mark

“PANKREOFLAT” is most likely to get diluted in case the mark

“KREOFLAT” of respondent no.1 is permitted to be continued in the Register

of Trade Marks.

14. Learned counsel also contended that as per settled law, an entity having

prior use of a trademark holds superior rights over one having prior registration.

He would contend that the registration of a trademark does not create any right

other than what already existed. He would further contend that the respondent

C.O.(COMM.IPD-TM) 163/2025 Page 6 of 24

filed its application seeking registration of mark “KREOFLAT” on 09.10.2020

in Class 5 on a proposed to be used basis. He would further submit that the

registration was granted on 15.04.2021 despite the existence of the petitioner’s

trade mark “PANKREOFLAT”, to which the mark of the respondent no.1 is

almost identical and deceptively similar.

15. Inviting attention to the reply of the respondent no.1 dated 25.11.2024 to

the cease and desist notice dated 04.10.2024 issued by the petitioner, he

submitted that except for a bald assertion that the mark “KREOFLAT” is totally

distinguishable from “PANKREOFLAT”, no other substantial defence or

clarification has been issued as to how and under what circumstances the mark

“KREOFLAT” was bonafidely adopted by respondent no.1. He would submit

that though respondent no.1 has asserted goodwill and reputation of the mark

due to continuous use since 09.10.2020, no documentary or oral evidence has

been placed on record in support thereof. On that basis, he contended that the

adoption by respondent no.1 of the mark “KREOFLAT” is neither bonafide nor

is it in bonafide use. He stoutly contended that there is no product found in the

market by the name “KREOFLAT” till date.

16. Mr. Bakhru, would submit that it is trite that in the field of

pharmaceuticals and medicines, the test of deceptive similarity is very stringent,

in that even the slightest degree of deceptive similarity would entail removal of

the infringing mark from the Register of Trade Marks. He relied on the

following judgements of the Supreme Court and various High Courts:-

a. Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd: (2001) 5 SCC

73.

b. Glenmark Pharmaceuticals Ltd vs. Sun Pharma Laboratories Ltd: 2024

SCC OnLine Del 2707.

c. Hindustan Pencils (P) Ltd. v. India Stationary Products Co.: 1989 SCC

OnLine Del 34.

d. Slazenger & Sons v. Feltham & Co., (1989) 6 RPC 53 .

C.O.(COMM.IPD-TM) 163/2025 Page 7 of 24

17. He would also contend that in so far as pharmaceutical and medicinal

preparations are concerned, the Court ought to consider the public interest

element inasmuch as substandard preparations of medicines and pharmaceutical

products or counterfeit products would drastically affect the public at large.

Predicated on the above, he would submit that the petition be allowed.

CONTENTIONS OF THE RESPONDENT NO.1:-

18. Per contra, Mr. S.P.Gairalo, appearing for the respondent no.1, submitted

that Respondent no.1 is a well established business company conducting

commercial activities which include, but are not limited to, pharmaceuticals, medical and veterinary preparations, sanitary preparations, dietetic food and

substances adapted for medical or veterinary use, food for babies etc., falling

within Class 5.

19. Respondent no.2 had bonafidely coined and adopted the trademark /device

“KREOFLAT”. It claims to have huge goodwill and reputation under the said

mark due to continuous use since 09.10.2020 and was registered on 15.04.2021

by respondent no.1.

20. The mark “KREOFLAT” is clearly distinguishable from

“PANKREOFLAT”. Respondent no.1 submitted that the names are totally

different, having different pronunciations and that there is no possibility of any

confusion between them.

21. Respondent no.1 has also claimed that it has undertaken tremendous

efforts to popularize the said trademark and has spent a sizable amount of

money for promotional activities. Respondent no.1 also claims to have

promoted the mark “KREOFLAT” through print and electronic media having

wide reach, visibility and circulation.

C.O.(COMM.IPD-TM) 163/2025 Page 8 of 24

22. Respondent no.1 further claimed to have built up valuable trade and

goodwill under the said mark, which has already become distinctive and is

associated with its goods and services on account of its long, continuous

extensive and exclusive use. It claimed that its goods are highly in demand in

the market on account of maintenance of high standards in quality.

23. Respondent no.1 also claims that at pre-advertisement stage, the Registrar

of Trade Marks was fully satisfied with the proprietary rights of respondent

no.1’s mark “KREOFLAT”. Respondent no.1 further claimed that

“KREOFLAT” is not a copy of “PANKREOFLAT” and both marks may co-

exist without any conflict or infringement.

ANALYSIS & CONCLUSIONS: -

24. This Court has heard the arguments of Mr. Bakhru, learned counsel for

the petitioner and Mr. S.P.Gairola for respondent no.1 and perused the records

of the case.

25. At the outset, it may be noted that respondent no.1 did not file its reply to

the petition. No documents worth its name, have been filed by respondent no.1,

except for the written submissions placed on record. There is no other pleading

or document on basis whereof this Court could ascertain the facts and other

contentions raised in the written submissions.

26. Be that as it may, the Court proceeds to dispose of the petition on the

basis of the records available.

27. Respondent no.1 has not denied the factual foundation laid by the

petitioner in so far as the history of the petitioner commencing from the year

1888 till the year 1961, when petitioner claimed to have coined and adopted the

unique trademark “PANKREOFLAT” for pharmaceutical preparations. It has

not denied the registration of the trademark “PANKREOFLAT” dated

16.03.1964 in Class 5, which is valid and subsisting.

C.O.(COMM.IPD-TM) 163/2025 Page 9 of 24

28. The petitioner has placed on record the registration certificate dated

16.03.1964 in respect of the mark “PANKREOFLAT”, issued in its favour by

the respondent no.2, which is in respect of a device mark. Though the

registration concerns a device mark, however, since the device mark essentially

comprises only the name “PANKREOFLAT”, registration can be construed as

that of the word “PANKREOFLAT”.

29. There is no denial to the assertion of the petitioner that since its adoption

in the 1970s, the trademark “PANKREOFLAT” has been specifically used for a

medicinal formulation to treat digestive issues and bloating. There is also no

dispute to the assertion that “PANKREOFLAT” contains Pancreatin and

Dimethicone. Petitioner has placed on record sufficient documents to show not

only its incorporation in the year 1944 but also international registrations for its

trademark.

30. The invoices placed on record, and as an example, the invoice dated

29.08.2005 clearly establishes that not only the petitioner was manufacturing

Pankreoflat tablets but also using the trademark “PANKREOFLAT” under

which such medicinal preparations were being sold, apart from other invoices

for the relevant period of time. The invoices dated 29.08.2005 and 26.03.2025

are extracted hereunder:-

C.O.(COMM.IPD-TM) 163/2025 Page 10 of 24

31. The petitioner has shown its significant growth in respect of the products

marketed under the mark “PANKREOFLAT” in India, particularly from the

year 2017, when its sales figures touched Rs.21.1 crores to Rs.34.7 crores in the

year 2024. The said growth establishes maintenance of high standards of quality

and acceptability in the market. Additionally, it also reflects growth in goodwill

and reputation too. The sales figure as per the Chartered Accountant is extracted

hereunder:-

C.O.(COMM.IPD-TM) 163/2025 Page 11 of 24

C.O.(COMM.IPD-TM) 163/2025 Page 12 of 24

32. Another significant milestone achieved by the petitioner is in respect of

the extensive promotion and advertisement carried out by it from the last many

years, particularly from 2017 till 2024. In support thereof, the petitioner has

placed on record documents supporting the said assertion as also the CA

Certificate dated 30.04.2025, which establishes that the petitioner has been

consistent in promoting the trade mark “PANKREOFLAT”, by way of every

possible means in the market. The same is extracted hereunder:-

C.O.(COMM.IPD-TM) 163/2025 Page 13 of 24

33. The cumulative assessment of the aforesaid facts lead to the conclusion

that, the mark “PANKREOFLAT” was adopted prior in time; the mark

“PANKREOFLAT” was used prior in time to that of respondent no.1, at least

since 1970s; the mark “PANKREOFLAT” was registered in the year 1964,

while respondent no.1’s registration of “KREOFLAT” was on 15.04.2021;

respondent no.1’s registration was on proposed to be used basis, while the

petitioner had already gained substantial goodwill and reputation in the market

by that time, lead to the credible inference that the petitioner is not only a

bonafide adopter and prior user of the mark “PANKREOFLAT”, but also its

registered proprietor much before respondent no.1.

34. It is also pertinent to note that the mark “PANKREOFLAT” has no

dictionary meaning and is an invented and coined term. The said mark was

originally conceived and adopted by the petitioner. Respondent No. 1 has

merely copied the essential and distinctive part of the petitioner’s mark by

removing the prefix “PAN” and adopting the mark “KREOFLAT,” which is

deceptively similar to the petitioner’s trademark. The respondent no.1’s

adoption is neither honest nor independent, but clearly an attempt to ride upon

the goodwill and reputation acquired by the petitioner in respect of the mark

“PANKREOFLAT.” Such conduct amounts to infringement and is likely to

cause confusion and deception among the trade and the general public.

35. Since there is no document or other evidence to indicate that respondent

no.1 had adopted the mark “KREOFLAT” bonafidely , the only inference that

can be drawn is that the said adoption is unauthorized and dishonest. That apart,

having regard to the fact that the mark “KREOFLAT” was applied on a

proposed to be used basis, coupled with the fact that no evidence, documentary

or otherwise has been placed by respondent no.1 to support its contentions that

it has sold its products in the market or that it has incurred expenses on

C.O.(COMM.IPD-TM) 163/2025 Page 14 of 24

promotion or that it has achieved substantial sales or turnover, it can be safely

inferred that apart from mere registration of the mark “KREOFLAT” on

15.04.2021 in Class 5 respondent no.1 has never come into the market at all. In

fact, respondent no.1 appears to be having no bonafide use of the said mark

“KREOFLAT” at all.

36. In so far as the similarity in the mark of the petitioner in comparison with

that of respondent no.1 is concerned, this Court finds that between

“PANKREOFLAT” and “KREOFLAT”, there is not only visual similarity, but

the mark of respondent no.1 is phonetically and structurally deceptively similar

to the mark “PANKREOFLAT” of the petitioner. This Court has also kept in

mind the fact that respondent no.1 has admitted in its written submissions, as

also the reply to the cease and desist notice, that it claims to be manufacturing

similar products to those of the petitioner and that the class of goods fall within

Class 5. Bearing in mind the said reply to the cease and desist notice and the

written submissions of respondent no.1, it is evident that the consumer base too

would be common.

37. In that view of the matter, it is clear that an unwary consumer of average

intelligence would undoubtedly be confused or deceived when confronted with

the products “PANKREOFLAT” of the petitioner with “KREOFLAT” of

respondent no.1. This would be impermissible in view of the substantial and

long catena of judgments in this regard.

38. It is trite that in case of medicinal and pharmaceutical preparations, the

threshold laid down for deciding deceptive similarity is very low. In that, in

case there is even slight similarity which is bound to deceive or confuse the

general public, such infringing mark ought to be directed to be removed from

the Register of Trade Marks. It would be worthwhile to reproduce hereunder the

C.O.(COMM.IPD-TM) 163/2025 Page 15 of 24

relevant law laid down by the Supreme Court and by this Court, which is as

under:

Cadila Health Care (supra) :-

“25. The drugs have a marked difference in the compositions with completely

different side effects, the test should be applied strictly as the possibility of

harm resulting from any kind of confusion by the consumer can have

unpleasant if not disastrous results. The courts need to be particularly vigilant

where the defendant's drug, of which passing- off is alleged, is meant for curing

the same ailment as the plaintiff's medicine but the compositions are different.

The confusion is more likely in such cases and the incorrect intake of medicine

may even result in loss of life or other serious health problems. In this regard,

reference may usefully be made to the case of Glenwood Laboratories,

Inc. v. American Home Products Corpn. [173 USPQ 19 (1972)455 F Reports

2d, 1384 (1972)] where it was held as under:

“The products of the parties are medicinal and the applicant's product

is contraindicated for the disease for which opposer's product is

indicated. It is apparent that confusion or mistake in filling a

prescription for either product could produce harmful effects. Under

such circumstances it is necessary for obvious reasons, to avoid

confusion or mistake in the dispensing of the pharmaceuticals.”

xxx xxx xxx

27. As far as the present case is concerned, although both the drugs are sold

under prescription but this fact alone is not sufficient to prevent confusion

which is otherwise likely to occur. In view of the varying infrastructure for

supervision of physicians and pharmacists of medical profession in our country

due to linguistic, urban, semi-urban and rural divide across the country and

with high degree of possibility of even accidental negligence, strict measures to

prevent any confusion arising from similarity of marks among medicines are

required to be taken.

xxx xxx xxx

28. Here it will be useful to refer to the decision of Morgenstern Chemical Co.

case where it has been held as under:

“(5) In the field of medical products, it is particularly important that

great care be taken to prevent any possibility of confusion in the use of

trade marks. The test as to whether or not there is confusing similarity

in these products even if prescribed and dispensed only by

professionally trained individuals does not hinge on whether or not the

medicines are designed for similar ailments. The rule enunciated by

Judge Helen in Cole Chemical Co. v. Cole Laboratories [DC Mo 1954,

118 F Supp 612, 616, 617, 101, USPQ 44, 47, 48] is applicable here:

C.O.(COMM.IPD-TM) 163/2025 Page 16 of 24

‘The plaintiff and the defendant are engaged in the sale of medical

preparations. They are for ultimate human consumption or use. … They

are particularly all for ailments of the human body. Confusion in such

products can have serious consequences for the patient. Confusion in

medicines must be avoided.

***

Prevention of confusion and mistakes in medicines is too vital to be

trifled with.’

The observations made by Assistant Commissioner Leeds of the Patent

Office in R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc. [106

USPQ 379 (1955)] USPQ 380 are particularly apt, that:

‘Physicians are not immune from confusion or mistake. Furthermore it

is common knowledge that many prescriptions are telephoned to the

pharmacists and others are handwritten, and frequently handwriting is

not unmistakably legible. These facts enhance the chances of confusion

or mistake by the pharmacists in filling the prescription if the marks

appear too much alike when handwritten or sound too much alike when

pronounced.’

The defendant concedes that physicians and pharmacists are not

infallible but urges that the members of these professions are carefully

trained to detect difference in the characteristics of pharmaceutical

products. While this is doubtless true to dos (sic) not open the door to

the adoption by manufacturers of medicines of trade marks or names

which would be confusingly similar to anyone not exercising such great

care. For physicians and pharmacists are human and in common with

the rest of mankind are subject to human frailties. In the field of

medicinal remedies the courts may not speculate as to whether there is

a probability of confusion between similar names. If there is any

possibility of such confusion in the case of medicines public policy

requires that the use of the confusingly similar name be enjoined

(see Lambert Pharmacol Ltd. v . Bolton Chemical Corpn. [DCNY 1915,

219 F 325.326] ).”

31. Trade mark is essentially adopted to advertise one's product and to

make it known to the purchaser. It attempts to portray the nature and, if

possible, the quality of the product and over a period of time the mark

may become popular. It is usually at that stage that other people are

tempted to pass off their products as that of the original owner of the

mark. That is why it is said that in a passing- off action, the plaintiff's

right is

“against the conduct of the defendant which leads to or is intended or

calculated to lead to deception. Passing- off is said to be a species of

unfair trade competition or of actionable unfair trading by which one

person, through deception, attempts to obtain an economic benefit of

C.O.(COMM.IPD-TM) 163/2025 Page 17 of 24

the reputation which another has established for himself in a particular

trade or business. The action is regarded as an action for deceit”.

[See Wander Ltd. v. Antox India (P) Ltd. [1990 Supp SCC 727] , SCC

p. 734, para 16.]

xxx xxx xxx

35. Broadly stated, in an action for passing- off on the basis of unregistered

trade mark generally for deciding the question of deceptive similarity the

following factors are to be considered:

(a) The nature of the marks i.e. whether the marks are word marks or label

marks or composite marks i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and

hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity in the nature, character and performance of the goods of the

rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks

they require, on their education and intelligence and a degree of care they are

likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent

of dissimilarity between the competing marks.”

Glen Pharma (supra) :-

55. However, Cadila Healthcare assumes significance insofar as medicines and

drugs are concerned in light of the following observations which were rendered:

“21. It will be useful to refer to some decisions of American courts relating to

medicinal products. In the case of American Cynamid Corpn. v. Connaught

Laboratories Inc. [231 USPQ 128 (2nd Cir 1986)] it was held as under:

“Exacting judicial scrutiny is required if there is a possibility of confusion over

marks on medicinal products because the potential harm may be far more dire

than that in confusion over ordinary consumer products.”

22. It may here be noticed that Schedule ‘H’ drugs are those which can be sold

by the chemist only on the prescription of the doctor but Schedule ‘L’ drugs are

not sold across the counter but are sold only to the hospitals and clinics.

Nevertheless, it is not uncommon that because of lack of competence or

otherwise, mistakes can arise specially where the trade marks are deceptively

similar. In Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc. [25

USPQ 2, 1473 (TTAB 1993)] it was held as under:“Confusion and mistake is

likely, even for prescription drugs prescribed by doctors and dispensed by

pharmacists, where these similar goods are marketed under marks which look

alike and sound alike.”

C.O.(COMM.IPD-TM) 163/2025 Page 18 of 24

23. In the case of Glenwood Laboratories, Inc. v. American Home Products

Corpn. [173 USPQ 19 (1972) 455 F Reports 2d, 1384 (1972)] the Court of the

United States had held that:

“The fact that confusion as to prescription drugs could produce harm in

contrast to confusion with respect to non- medicinal products is an additional

consideration for the Board as is evident from that portion of the opinion in

which the Board stated:‘The products of the parties are medicinal and the

applicant's product is contraindicated for the disease for which the opposer's

product is indicated. It is apparent that confusion or mistake in filling a

prescription for either product could produce harmful effects. Under such

circumstances, it is necessary for obvious reasons, to avoid confusion or

mistake in the dispensing of the pharmaceuticals.’

The board's view that a higher standard be applied to medicinal products finds

support in previous decisions of this Court, Clifton v. Plough [341, F 2d 934,

936, 52, CCPA 1045, 1047 (1965)] (‘it is necessary for obvious reasons, to

avoid confusion in the dispensing of pharmaceuticals’), Campbell Products,

Inc. v. John Wyeth & Bro. Inc. [143, F 2d 977, 979, 31 CCPA 1217 (1944)] (‘it

seems to us that where ethical goods are sold and careless use is dangerous,

greater care should be taken in the use of registration of trade marks to assure

that no harmful confusion results’).”

24. In the case of R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc. [106

USPQ 379 (1955)] as noted in the decision of Morgenstern Chemical Co. case,

it had been held that:“Physicians are not immune from confusion or mistake.

Furthermore it is common knowledge that many prescriptions are telephoned to

the pharmacists and others are handwritten, and frequently handwriting is not

unmistakably legible. These facts enhance the chances of confusion or mistake

by the pharmacists in filling the prescription if the marks appear too much alike

when handwritten or sound too much alike when pronounced.”

25. The drugs have a marked difference in the compositions with completely

different side effects, the test should be applied strictly as the possibility of harm

resulting from any kind of confusion by the consumer can have unpleasant if not

disastrous results. The courts need to be particularly vigilant where the

defendant's drug, of which passing- off is alleged, is meant for curing the same

ailment as the plaintiff's medicine but the compositions are different. The

confusion is more likely in such cases and the incorrect intake of medicine may

even result in loss of life or other serious health problems. In this regard,

reference may usefully be made to the case of Glenwood Laboratories,

Inc. v. American Home Products Corpn. [173 USPQ 19 (1972) 455 F Reports

2d, 1384 (1972)] where it was held as under:

“The products of the parties are medicinal and the applicant's product is

contraindicated for the disease for which opposer's product is indicated. It is

apparent that confusion or mistake in filling a prescription for either product

could produce harmful effects. Under such circumstances it is necessary for

obvious reasons, to avoid confusion or mistake in the dispensing of the

pharmaceuticals.””

C.O.(COMM.IPD-TM) 163/2025 Page 19 of 24

56. The aforesaid principles as propounded clearly point towards a more

exacting and stringent test being adopted when an action of infringement

or passing- off comes to be laid in respect of drugs. As was pertinently

observed by the Supreme Court in Cadila Healthcare, in the case of drugs,

the tests to be adopted is that of “exacting judicial scrutiny”. It was

further held that the mere fact that the drug was being sold on the basis of

a prescription or dispensed by pharmacists would also not constitute a

reliable determinant which would dilute the strict view test as articulated

by it while attempting to answer the question of possibility of confusion.

This the Supreme Court so held bearing in mind the injurious or

detrimental possibilities attendant to an inadvertent purchase, sale and

consequential consumption of a drug. It also took into consideration the

harmful effect that a usage of a drug may have even though the competing

products may be meant for curing an identical ailment. Not stopping at

this, the Court also found that notwithstanding the pharmaceutical market

being regulated by prescriptions and the dispensation of products being

overseen and supervised by trained physicians, those factors would not

allay the fears and apprehensions attendant to an incorrect or

inappropriate drug being accidentally dispensed. This is evident from the

following observations appearing in Paras 27 and 28 of the report:

“27. As far as the present case is concerned, although both the drugs are

sold under prescription but this fact alone is not sufficient to prevent

confusion which is otherwise likely to occur. In view of the varying

infrastructure for supervision of physicians and pharmacists of medical

profession in our country due to linguistic, urban, semi -urban and rural

divide across the country and with high degree of possibility of even

accidental negligence, strict measures to prevent any confusion arising

from similarity of marks among medicines are required to be taken.

28. Here it will be useful to refer to the decision of Morgenstern Chemical

Co. case where it has been held as under:

“(5) In the field of medical products, it is particularly important that great

care be taken to prevent any possibility of confusion in the use of trade

marks. The test as to whether or not there is confusing similarity in these

products even if prescribed and dispensed only by professionally trained

individuals does not hinge on whether or not the medicines are designed

for similar ailments. The rule enunciated by Judge Helen in Cole Chemical

Co. v. Cole Laboratories [DC Mo 1954, 118 F Supp 612, 616, 617, 101,

USPQ 44, 47, 48] is applicable here:

‘The plaintiff and the defendant are engaged in the sale of medical

preparations. They are for ultimate human consumption or use. … They

are particularly all for ailments of the human body. Confusion in such

products can have serious consequences for the patient. Confusion in

medicines must be avoided.

***

C.O.(COMM.IPD-TM) 163/2025 Page 20 of 24

Prevention of confusion and mistakes in medicines is too vital to be trifled

with.’

The observations made by Assistant Commissioner Leeds of the Patent

Office in R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc. [106 USPQ

379 (1955)] USPQ 380 are particularly apt, that:‘Physicians are not

immune from confusion or mistake. Furthermore it is common knowledge

that many prescriptions are telephoned to the pharmacists and others are

handwritten, and frequently handwriting is not unmistakably legible. These

facts enhance the chances of confusion or mistake by the pharmacists in

filling the prescription if the marks appear too much alike when

handwritten or sound too much alike when pronounced.’

The defendant concedes that physicians and pharmacists are not infallible

but urges that the members of these professions are carefully trained to

detect difference in the characteristics of pharmaceutical products. While

this is doubtless true to dos (sic) not open the door to the adoption by

manufacturers of medicines of trade marks or names which would be

confusingly similar to anyone not exercising such great care. For

physicians and pharmacists are human and in common with the rest of

mankind are subject to human frailties. In the field of medicinal remedies

the courts may not speculate as to whether there is a probability of

confusion between similar names. If there is any possibility of such

confusion in the case of medicines public policy requires that the use of the

confusingly similar name be enjoined (see Lambert Pharmacol

Ltd. v. Bolton Chemical Corpn. [ DCNY 1915, 219 F 325, 326]).”

58. Equally instructive are the following principles which came to be identified by

our Court in Novartis AG:

21. I do not accept the submission of the learned counsel for the defendant

as I feel that it is more dangerous if the pharmaceuticals products bearing

the same mark is used for different purposes for the same ailment or even

otherwise. I also do not accept the contention of the defendant's counsel

that there would be no confusion if the product contain different

ingredients/different salt. In my opinion, it is more dangerous and harmful

in the trade if the same trade mark is used for different ailments. The Apex

court has already dealt with this proposition of law in the case of Cadila

Healthcare Ltd. v. Cadila Pharmaceuticals, (2001) 5 SCC 73 : (2001) 21

PTC 300 (SC) and held as under:

“25. The drugs have a marked difference in the compositions with

completely different side effects, the test should be applied strictly as the

possibility of harm resulting from any kind of confusion by the consumer

can have unpleasant if not disastrous results. The courts need to be

particularly vigilant where the defendant's drug, of which passing off is

alleged, is meant for curing the same ailment as the plaintiffs medicine but

the compositions are different. The confusion is more likely in such cases

and the incorrect intake of medicine may even result in loss of life or other

serious health problems. In this regard, reference may usefully be made to

C.O.(COMM.IPD-TM) 163/2025 Page 21 of 24

the case of Glenwood Laboratories, Inc. v. American Home Products

Corp, 173 USPQ 19 (1972) 455 F. Reports 2d, 1384 (1972), where it was

held as under:

“The products of the parties are medicinal and applicant's product is

contraindicated for the disease for which opposer's product is indicated. It

is apparent that confusion or mistake in filling a prescription for either

product could produce harmful effects. Under such circumstances, it is

necessary for obvious reasons, to avoid confusion or mistake in the

dispensing of the pharmaceuticals.”

22. The other argument of the counsel for the defendant that the plaintiffs

product is available in tablets and oral suspension form and the

defendant's product is available in injection form has also no force as it

has been seen from experience of the pharmaceuticals products available

in all over the world that most of the companies are making

pharmaceuticals products in both the forms i.e. tablets as well as in

injection form under the same trade mark. As per well settled law, the

actual confusion and deception is not required in order to prove the case

of passing, off even if the defendant has adopted the mark innocently and

the court comes to the conclusion that the two trade marks are deceptively

similar, injunction under the said circumstances has to be granted. Actual

deception is not required in an action of passing off. Century

Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250 : 1 Supp PTC

720 (Del) (DB). Therefore there is no chance of confusion and deception.

59. As is evident from the aforesaid extracts, our Court found that a

difference in ingredients or salts which make up competing

pharmaceutical products, would not be aspects which could be said to be

germane when it come to the question of likelihood of confusion. It also

negated the mode and method of ingestion as well as the form of the

competing products. This is evident from para 22 of the report and where

the Court held that the fact that the competing products were dispensed

either in the form of a tablet or an oral suspension would be wholly

irrelevant.”

xxx xxx xxx

63. On an overall consideration of the aforesaid, we are of the considered

opinion that the finding of deceptive similarity and likelihood of confusion

as ultimately rendered by the learned Judge clearly merits no interference.

The learned Judge has on a prima facie evaluation come to conclude that

a comparison of the marks “ISTAMET” and “INDAMET” meets the test

of structural and phonetic similarity. That conclusion cannot, by any

stretch of imagination, be said to be either manifestly erroneous or

perverse. We are inclined to accept the principles as lucidly culled out

in Macleods Pharmaceuticals and where their Lordships propounded the

test in respect of drugs to be the “mere existence of the slightest

possibility” of confusion. The aforesaid enunciation of the legal position is

clearly in accord with the tests laid down by the Supreme Court in Cadilla

C.O.(COMM.IPD-TM) 163/2025 Page 22 of 24

Healthcare. In our considered opinion, the question of likelihood of

confusion in case of competing drugs would have to be answered on a

basis distinct from those that we may employ for ordinary consumer

products. We would be erring if we were to fail to adopt strict principles of

proof when it comes to drugs bearing in mind the need to completely

obviate the possibility of an error or mistake. The test of confusing

similarity, as McCarthy in his seminal work explains, stands “modified”

and spoke of a “lesser quantum of proof” being required when the subject

be drugs and medicinal preparations.

64. The appellant, however, questioned the exclusion of the words “XR

CP” while returning the aforenoted findings. This argument was

addressed in the backdrop of Sun Pharma's registration itself being for a

composite mark and the registration itself mandating that the mark was

liable to be viewed as a whole. However, and in our considered opinion,

the learned Single Judge was clearly justified in identifying the dominant

feature of the mark. While it is true and well-settled that the principle of

anti-dissection applies, we note that in South India Beverages itself the

Court had accorded judicial sanction to a process of identification of the

dominant feature of a trademark. As is manifest from a reading of

paragraph 19 of the report, the Court had held that notwithstanding the

first principle being of viewing two competing marks in their entirety, it

would be open to acknowledge a dominant element of the mark for the

purposes of examining questions of infringement and passing- off. We

consequently note that the acknowledgement of a dominant element of a

mark would not fall foul of the anti-dissection rule. This since even when a

trademark is viewed as a whole and in its entirety, there may be situations

where the question would have to be answered on the basis of what

emerges to be the prominent feature of the mark. Undisputedly, “XR” and

“CP” are publici juris in the pharmaceutical industry and are easily

recognizable as referring to “extended release” and “combipack”. It is in

the aforesaid backdrop that the learned Judge appears to have identified

the prominent features of the two competing marks to be “ISTAMET” and

“INDAMET”.”

39. In view of the ratio laid down by the aforesaid judgments, this Court is of

the opinion that the mark “KREOFLAT” of respondent no.1 would not surpass

the tests laid down therein and is liable to be removed from the Register of

Trade Marks. In para 57, the learned Division Bench of this Court in Glen

Pharma (supra) also took into consideration the “public interest” involved and

held as under:-

C.O.(COMM.IPD-TM) 163/2025 Page 23 of 24

“57. More significantly, the Supreme Court proceeded to hold and spoke of a

lesser degree of proof being applicable in the case of medicinal products while

answering the question of confusing similarity and the same being warranted

in order to subserve large public interest. These observations are found in para

32 of the report, which is extracted hereinbelow:

“32. Public interest would support lesser degree of proof showing

confusing similarity in the case of trade mark in respect of medicinal

products as against other non- medicinal products. Drugs are poisons, not

sweets. Confusion between medicinal products may, therefore, be life

threatening, not merely inconvenient. Noting the frailty of human nature

and the pressures placed by society on doctors, there should be as many

clear indicators as possible to distinguish two medicinal products from

each other. It is not uncommon that in hospitals, drugs can be requested

verbally and/or under critical/pressure situations. Many patients may be

elderly, infirm or illiterate. They may not be in a position to differentiate

between the medicine prescribed and bought which is ultimately handed

over to them. This view finds support from McCarthy on Trade Marks,

3

rd

Edn., para 23.12 of which reads as under:

“The tests of confusing similarity are modified when the goods involved

are medicinal products. Confusion of source or product between medicinal

products may produce physically harmful results to purchasers and

greater protection is required than in the ordinary case. If the goods

involved are medicinal products each with different effects and designed

for even subtly different uses, confusion among the products caused by

similar marks could have disastrous effects. For these reasons, it is proper

to require a lesser quantum of proof of confusing similarity for drugs and

medicinal preparations. The same standard has been applied to medical

products such as surgical sutures and clavicle splints.””

40. As noted above, respondent no.1 has not placed on record any proof or

evidence, documentary or otherwise, to substantiate or support the contentions

raised in the written submissions filed on its behalf. This Court finds no merit in

the resistance raised on behalf of respondent no.1.

41. Another important aspect is that the impugned mark has been wrongly

registered and is wrongly remaining on the Register of Trade Marks.

Respondent No. 2 registered the mark “KREOFLAT” under Class 5 despite the

prior existence of the registered mark “PANKREOFLAT” in the same class.

The registration was granted without properly considering the earlier mark and

C.O.(COMM.IPD-TM) 163/2025 Page 24 of 24

is contrary to the provisions of the Act. Therefore, the impugned mark is liable

to be removed from the Register.

42. In view of the foregoing analysis, this Court finds merit in the case/

submissions of the petitioner and is satisfied that the petitioner has been able to

make out a case for cancellation of the trademark ‘KREOFLAT’ registered in

favour of the respondent no.1 vide trademark application no.815236 in Class 05.

43. Accordingly, and in view of the aforesaid analysis, the petition is

allowed. Resultantly, respondent no.2 is directed to rectify the Register of Trade

Marks by removing the registered trademark “KREOFLAT” bearing

no.4694743 in Class 05 from the Registry of Trade Marks.

44. In view of the above, the present petition is disposed of with no order as

to costs. The aforesaid exercise shall be completed by respondent no.2 within

four weeks from the date of receipt of this order.

45. A copy of this judgment be forwarded to the Registrar of Trademarks for

compliance.

TUSHAR RAO GEDELA

(JUDGE)

FEBRUARY 26, 2026

sumit/rl