C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 1 of 35

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on : 24

th

September, 2025

Date of Decision :27

th

January, 2026

Uploaded on : 27

th

January, 2026

+ C.O. (COMM.IPD-TM) 111/2023 & I.A. 4946/2023

REXCIN PHARMACEUTICALS P LTD .....Petitioner

Through: Mr. Sachin Gupta, Mr. Rohit Pradhan,

Ms. Prashansa Singh, Mr. Ajay Kumar

and Mr. Adarsh Agarwal, Advocates.

versus

REKIN PHARMA P LTD & ANR. .....Respondents

Through: Mr. Manoj Kumar and Mr. Amit

Kumar, Advocates.

+ CS(COMM) 142/2023 & I.A. 4878/2023

REXCIN PHARMACEUTICALS PVT. LTD. .....Plaintiff

Through: Mr. Sachin Gupta, Mr. Rohit Pradhan,

Ms. Prashansa Singh, Mr. Ajay Kumar

and Mr. Adarsh Agarwal, Advocates.

versus

REKIN PHARMA PVT LTD .....Defendant

Through: Mr. Manoj Kumar and Mr. Amit

Kumar, Advocates.

CORAM:

HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA

% J U D G M E N T

MANMEET PRITAM SINGH ARORA, J:

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 2 of 35

1. CS(COMM) 142/2023 has been filed seeking permanent injunction

restraining infringement of trademark, tradename, domain name, passing off,

and other ancillary reliefs. The corporate name of the Plaintiff in CS(COMM)

142/2023 begins with the word/term ‘REXCIN’, and the Defendant’s

corporate name in CS(COMM) 142/2023 begins with ‘REKIN’. The Plaintiff

has certain registrations for the trademark ‘REXCIN’ in Classes 16, 44, and

45, with user claim dating 16.12.2003. The Plaintiff has also applied for

registration of the said mark in Class 5 and 35, which is pending registration.

However, the Plaintiff, as of now, is not using mark ‘REXCIN’ for any of its

products.

2. The Defendant, on the other hand, has registration for the mark

‘REKIN-SP’ in Class 5, against which the rectification petition

[C.O.(COMM.IPD-TM) 111/2023] has been filed by the Plaintiff. The

Defendant’s application for registration of ‘ ’ in Class 35 has

also been opposed by the Plaintiff before the Trademarks Registry.

3. Both the connected matters have been argued together by the learned

counsels for the parties. This Court shall first decide the rectification petition

[C.O.(COMM.IPD-TM) 111/2023] deciding the rights of the parties in their

respective marks, and subsequently this Court shall adjudicate the application

under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 [I.A.

4878/2023].

C.O.(COMM.IPD-TM) 111/2023

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 3 of 35

4. This is a petition filed under Section 57 of the Trade Marks Act, 1999

[‘Act of 1999’] seeking cancellation of the registered trademark ‘REKIN-SP’

under no. 3541661, which was filed on 04.05.2017 in Class 5 in the name of

Rekin Pharma Pvt. Ltd., advertised on 06.01.2020, registered on 01.09.2020,

and is valid till 04.05.2027, being in contravention to Section 9(1)(a), 9(2)(a),

11(1), 11(2), 11(3), 11(10), and 18(4) of the Act of 1999.

Submissions by the Petitioner

5. Case of the Petitioner has been set-up as under: -

5.1 It is stated that the Petitioner is a company incorporated in the year

2003, and has coined, adopted and continuously used the mark REXCIN

since 16.12.2003 in relation to its pharmaceutical and allied businesses, and is

the proprietor of several registered and pending trade mark applications for

REXCIN across multiple classes, details of which is given at paragraph 12.3

of the petition.

5.2 It is stated that the Petitioner has continuously, extensively and

uninterruptedly used the mark REXCIN as its trading style and house mark

across India, prominently displayed on all its product packaging, and has

incurred substantial promotional expenditure to build and protect the said

mark. It is stated that owing to long-standing use, high quality standards, wide

publicity and extensive sales, the mark REXCIN has become exclusively

associated with the Petitioner among the trade, medical fraternity and

consumers, resulting in significant reputation and goodwill. It is stated that

the Petitioner’s sales figures demonstrate sustained commercial use over the

years, with sales of Rs. 830.09 lakhs in the last financial year before filing the

present petition [i.e., 2021–2022].

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 4 of 35

5.3 It is stated that, to protect its statutory rights, the Petitioner has filed

various applications for registration of its mark REXCIN, details of which are

provided below: -

Trademark

Type

Application

No. and date

of filling

User Claim Date of

publication

in TM

Journal

Class and

Goods

Status of

registration

REXCIN

(WORD)

5426986

Dt.-28.4.2022

16.12.2003 25.07.2022 Class 16 Registered

on 8.12.2022

REXCIN

(WORD)

5426987

Dt.- 28.4.2022

16.12.2003 25.07.2022 Class 44 Registered

on 9.12.2022

REXCIN

(WORD)

5426988

Dt.- 28.4.2022

16.12.2003 25.07.2022 Class 45 Registered

on 7.12.2022

REXCIN

(WORD)

5407419

Dt.- 13.4.2022

16.12.2003 -- Class 5 Objected by

the Registry

REXCIN

(WORD)

5407420

Dt.- 13.4.2022

16.12.2003 16.01.2023 Class 35 Accepted

and

advertised

5.4 It is stated that Respondent No. 1 applied for registration of the

device-mark ‘ ’ under application no. 4102886 in Class 35 on

28.02.2019, which was advertised on 07.09.2020 and registered on

23.02.2021. It is stated that the Petitioner learnt about the Respondent No. 1’s

existence in May 2022, only when the registration of ‘’ was

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 5 of 35

advertised by the Trade Mark Registry, pursuant to the extended limitation

1

during the pandemic.The Petitioner thereafter filed an opposition on

30.05.2022 (Opposition No. 1171282), resulting in the said registration being

suspended and marked as ‘Opposed’, with the opposition proceedings

pending. The opposition is based on the ground that the mark REKIN/REKIN

PHARMA PVT. LTD. is deceptively and confusingly similar to the

Petitioner’s mark REXCIN.

5.5 It is stated that the Respondent No. 1 was granted registration of the

wordmark ‘REKIN-SP’ [‘impugned mark’] on 01.09.2020, bearing

application no. 3541661 filed on 04.05.2017 on ‘proposed to be used’ basis.

5.6 It is stated that the Petitioner has filed the present rectification petition

in anticipation that, while adjudicating the issue of infringement in the suit,

Respondent No. 1 will rely upon the registration of its mark REKIN-SP to

justify its use of the said mark in the market, and consequently, the validity of

the impugned registration will necessarily arise for consideration and

adjudication.

5.7 It is stated that the impugned mark REKIN-SP is deceptively similar to

the Petitioner’s prior mark REXCIN.

Grounds for Seeking Cancellation

6. Following grounds are raised by the Petitioner for seeking cancellation

of the impugned mark: -

a. The impugned mark REKIN-SP was filed on 04.05.2017 on a ‘proposed

to be used’ basis and obtained by suppressing the Petitioner’s prior,

registered, and extensively used trademark REXCIN, rendering the

1

Pursuant to the order dated 21.03.2022, passed by the coordinate Bench of this Court in ‘Dr. Reddy’s

Laboratories Ltd. v. Controller General of Patents Designs and Trademark’, extending limitation during the

pandemic for filing the opposition.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 6 of 35

registration fraudulent, without sufficient cause and liable to

cancellation under Section 57 of the Act of 1999.

b. The Petitioner’s mark REXCIN is inherently distinctive and had

acquired substantial goodwill and reputation prior to the filing of the

registration for the impugned mark; the Respondent dishonestly

adopted the impugned mark by merely replacing ‘XC’ with a

phonetically similar ‘K’ and adding the generic suffix ‘SP’, which does

not impart distinctiveness, thereby violating Section 9(1)(a) of the Act

of 1999.

c. The impugned mark is deceptively similar to REXCIN, creating the

same commercial impression and causing confusion and deception

among the public, in violation of Section 9(2)(a) of the Act of 1999.

d. Registration of the impugned mark for identical/similar goods in Class 5

is likely to cause confusion and association with the Petitioner’s prior

used mark, amounting to unfair advantage of the Petitioner’s goodwill

and violating Section 11(1) of the Act of 1999.

e. The impugned mark takes unfair advantage of goodwill associated with

the Petitioner’s mark and is detrimental to the distinctive character and

reputation of the Petitioner’s registered marks in Classes 16, 44 and 45,

attracting Section 11(2) of the Act of 1999.

f. Use of the impugned mark is likely to result in passing off, causing the

public to assume a nexus or association with the Petitioner, in

contravention of Section 11(3)(a) of the Act of 1999.

g. The Respondent adopted the impugned mark in bad faith to exploit the

well-known status of REXCIN, violating Section 11(10) of the Act of

1999.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 7 of 35

h. The Registrar/Respondent No. 2 failed to exercise judicial discretion

and erroneously granted registration despite the Petitioner’s prior

registrations, rendering the registration arbitrary, against public interest

and in violation of Section 18(4) of the Act of 1999.

i. Its mark REXCIN is distinctive in nature and has acquired reputation

due to its continuous, exclusive and long use on the date of application

by the Respondent No. 1 in 2017 for the impugned mark REKIN-SP.

Reply by the Respondent No. 1

7. Respondent No. 1 in reply has set out the following contentions: -

a. It has stated that Respondent No. 1 is a company which was

incorporated on 06.03.2017. Respondent No. 1 positions itself as a

new-age pharmaceutical company with the stated objective of providing

affordable medicines. It claims to offer more than sixty (60) products

across multiple formulations and therapeutic areas, including

gynaecology, dermatology, cardiology and general medicine, and

asserted that an indicative list of such products has been filed along with

the present petition.

b. It is further stated that Respondent No. 1 launched its products in 2017

under the brand ‘REKIN’ and claims use of a series of ‘REKIN’

formative marks for various pharmaceutical products since 2017. It also

relied on its online and social-media presence, including its website

[www.rekinpharma.in] and platforms such as Facebook and Instagram,

to contend that information relating to its products is widely available

and accessible to consumers across the country and abroad, and that its

marks and products have gained visibility through third-party websites,

publications and media reports.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 8 of 35

c. It is stated that Respondent No. 1 offers its products under its mark

REKIN along with suffixes/prefixes like Rekin-NP tablet, Rekin 250

Oral Suspension, Rekin-CT Tablet, Rekin-P tablet, etc. It is stated that

since its inception in 2017, Respondent No. 1’s business and products

under the ‘REKIN’ marks have received wide third-party coverage

across websites, online journals and publications, supported by a strong

online presence and listings on e-commerce platforms, resulting from

substantial investments in promotion and advertising, which, according

to Respondent No. 1, has led to nationwide accessibility of its products,

growth in business, and generation of significant revenues.

d. It is stated that Respondent has registration for the following marks:-

Trademark

Type

Application

No. and

date of

filling

User Claim Date of

publication

in TM

Journal

Class and

Goods

Status of

registration

(DEVICE)

4102886

Dt.-28.02.1

9

01.01.2017 07.09.2020 Class 35 Registered

on

23.2.2021,

subsequently

opposed by

the Petitioner

on

30.05.2022

REKIN-SP

(WORD)

3541661

Dt.-

04.05.17

Proposed to

be used

06.01.2020 Class 05 Registered

on

01.09.2020

e. Respondent No. 1 contended that the mark ‘REKIN’ is a coined and

fanciful word with no meaning in the English language and is, therefore,

inherently distinctive. It is further asserted that, owing to extensive use,

publicity and availability of products under the impugned mark

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 9 of 35

‘REKIN-SP’ and other REKIN formative marks on various third-party

websites, the mark has acquired distinctiveness, goodwill and

reputation within a short span of time, such that consumers exclusively

associate the mark with Respondent No. 1.

f. It is stated that the subsistence of its registered mark REKIN-SP is not

detrimental to the Petitioner, as there is no pleading or evidence of

actual or imminent confusion between the Respondent No. 1’s mark

‘REKIN-SP’ and the Petitioner’s mark ‘REXCIN’.

g. It is stated that the Respondent obtained registration of the mark

pursuant to application no. 4102886, following which

it lawfully used the ® symbol, resulting in increased goodwill and

recognition in trade circles. The Petitioner to tarnish the Respondent

No. 1’s reputation, initiated frivolous opposition and compelled

redaction of the ® symbol, causing substantial loss to the Respondent

No. 1. This led to the filing of a defamation suit, which is now

withdrawn with liberty to pursue the defences in these proceedings.

h. It is stated that, notably, the Petitioner has admitted that the present

proceedings were initiated only after receiving summons in the

defamation suit, and not due to any actual confusion or demonstrable

harm, thereby indicating that the rectification petition is retaliatory and

lacks bona fide cause.

i. Respondent No. 1 submitted that the Petitioner’s mark and the

Respondent’s mark are neither identical nor similar when compared as a

whole, as they differ visually, phonetically, structurally, and

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 10 of 35

conceptually; the Petitioner has made only vague allegations of

similarity and has failed to produce any evidence of actual confusion,

despite the marks having coexisted for over six years. It is stated that

‘REXCIN’ (pronounced ‘Rek-seen’) is clearly distinct from

‘REKIN-SP’ (pronounced ‘Rae-kin-es-pee’).

j. It is stated that despite peaceful coexistence since 2017, the Petitioner

has failed to produce any evidence of actual confusion between the

marks even after more than six years of concurrent use; additionally,

independent Google search results for each mark do not overlap, further

negating any likelihood of confusion.

k. It is further contended that, the Trade Marks Registry itself did not cite

the Respondent No. 1’s mark as a conflicting mark while examining the

Petitioner’s applications, reinforcing the absence of likelihood of

confusion.

l. It is stated that the Respondent No. 1 is the bona fide and prior adopter

of the mark, having continuously used its house mark ‘REKIN’ and the

impugned mark ‘REKIN-SP’ since 2017 in the course of trade for

pharmaceutical and medicinal products sold directly to end consumers.

m. It is stated that, the Respondent No. 1 is the registered proprietor of the

impugned mark in Class 5, whereas the Petitioner has no valid or

subsisting registration for use of its mark REXCIN in Class 5 for

pharmaceutical products; there is no overlap in the goods, services, or

consumer base of the Petitioner and Respondent No. 1, as the

Respondent No.1 uses the mark REKIN and its formatives as a product

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 11 of 35

brand in a B2C

2

model for pharmaceutical products sold to end

consumers, while the Petitioner operates solely in a B2B

3

capacity as a

white-label manufacturer for third-party brands and does not sell any

products under its own mark. The parties’ function in distinct spheres of

the pharmaceutical industry with entirely different trade channels and

consumers, thereby eliminating any likelihood of confusion.

n. It is stated that the rectification petition is, therefore, false and frivolous,

reflecting the Petitioner’s mala fide intent to undermine the Respondent

No. 1’s statutory rights despite knowing that the parties operate in

distinct spheres with no instances of confusion.

ANALYSIS AND FINDINGS

8. This Court has heard the learned counsel for the parties and perused the

record.

9. The relevant facts pertaining to the Petitioner discernible from the

record are as under: -

i. Petitioner applied for registration of its trademark ‘REXCIN’ on

28.04.2022 for goods and services falling in Classes 16, 44 and 45

respectively, claiming use since 16.12.2003. The registration was

granted in these classes on separate dates in December 2022.

ii. Petitioner applied for registration of its trademark ‘REXCIN’ on

13.04.2022 for services falling in Class 35 claiming use since

16.12.2003, which has been accepted and advertised.

iii. Petitioner has also applied for registration of its trademark ‘REXCIN’

on 13.04.2022 for goods falling in [relevant] Class 5 claiming use since

2

Business to Consumer

3

Business to Business

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 12 of 35

16.12.2003, which has been objected to by the trademark registry under

Section 11 of the Act of 1999 on the ground that a same or similar

trademark is already on the record of the register for same or similar

goods. The marks of the third parties have been cited in the

examination report, and the Respondent No. 1’s impugned mark

‘REKIN-SP’ is not cited in the said report.

iv. Petitioner has placed on record a certificate of the Chartered

Accountant dated 17.01.2023

4

, which enlists the details of the revenue

earned by the Petitioner company through manufacture and sale of

pharmaceutical products during the period F.Y.

5

2012-13 to 2021-22.

However, annexure enlisting the pharmaceutical products as referred to

in the said certificate has not been filed, and it is, therefore, an

incomplete document.

v. Petitioner has placed on record sample sales invoices

6

, for the year

2004, 2005, 2006 and 2022, which shows that it carries on business

under its tradename Rexcin Pharmaceutical Pvt. Ltd. The said invoices,

however, do not show use of the mark ‘REXCIN’ as a trademark for the

goods enlisted therein.

vi. Class 5 is the relevant class in the present proceedings, since

Respondent No. 1’s impugned wordmark ‘REKIN-SP’ bearing TM No.

3541661 dated 04.05.2017 is registered under Class 5 for

pharmaceutical and medical preparations. The goods and services

details in the Respondent No. 1’s certificate under Class 5 are as

under:-

4

Document No. 7 filed along with the petition.

5

Financial Year

6

Document No. 6 filed along with the petition.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 13 of 35

Goods & Service Details [CLASS: 5]

PHARMACEUTICAL AND MEDICAL

PREPARATION INCLUDED

IN CLASS- 05

vii. It is stated that the impugned mark ‘REKIN-SP’ is wrongly remaining

on the register and is causing confusion as well as deception being

deceptively similar to the Petitioner’s trademark ‘REXCIN’.

viii. In these facts, the Petitioner on 06.03.2023 filed the present petition

under Section 57 of the Act of 1999 for removal of the mark

‘REKIN-SP’ bearing TM No. 3541661 dated 04.05.2017, registered

under Class 5, from the register of trademarks.

ix. The petition was first listed before Court on 14.03.2023, and notice was

issued to the Respondent No. 1 vide order dated 20.09.2023.

x. Vide order dated 04.03.2024 the coordinate Bench of this Court

recorded following directions: -

1. “The corporate name of Plaintiff in CS(COMM) 142/2023 begins with the

word/ term “REXCIN”, and the Defendant’s corporate name in CS(COMM)

142/2023 with “REKIN”. The Plaintiff has certain registrations for the

trademark “REXCIN” in classes 16, 44, 45 and 35, with user claim dating 16th

December, 2003. They have also applied for registration of the said term in

class 05, which is pending registration. However, the Plaintiff, as of now, is

not using “REXCIN” for any of their products.The Defendant, on the other

hand, has registration for the mark “REKIN-SP” in class 05, against which a

rectification petition [C.O.(COMM.IPD-TM) 111/2023] has been filed. Their

application for registration of “” in class 35 has also been opposed by

the Plaintiff before the Trademarks Registry.

2. With that being the position, the Court has queried from Mr. Sachin Gupta,

counsel for Rexcin Pharmaceuticals Pvt. Ltd., as to whether the Plaintiff would

be willing to consider permitting Rekin Pharma Private Limited to use the term

“REKIN” only as a part of their corporate name. The counsel for Rekin Pharma

Private Limited has similarly been queried as to whether they would be willing

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 14 of 35

to restrict its use of “REKIN” only as a part of corporate name, where they

could retain their trademark registrations, but not use it as a trademark or as a

trade name. On the above aspect, both counsel state that they will have to

consult their clients and seek instructions.

3. In case both the parties find that their clients are amenable to consider the above

arrangement, they shall be free to apply to the Court for being referred to

mediation.

4. List on 13th May, 2024.”

[Emphasis supplied]

10. Separately, Respondent No. 1 on 28.02.2019 applied for registration of

a device mark ‘REKIN PHARMA PVT. LTD./ ’ under Class

35, with the user date of 01.01.2017 and the same was duly registered on

23.02.2021. The Petitioner herein filed its opposition on 30.05.2022 before

the trademark registry, which was duly registered and due to this opposition,

the said registration certificate is suspended. The goods and service details in

the certificate under Class 35 are as under: -

Goods & Service Details [CLASS: 35]

TRADING AND WHOLESALE BUSINESS

OF PHARMACEUTICAL, MEDICINAL

PREPARATION INCLUDED

IN CLASS- 35

This registration, however, is not a subject matter of challenge in the

present rectification petition.

11. The relevant submissions made on behalf of the Respondent No. 1 in

opposition to the present rectification petition are as under: -

i. Respondent No. 1 uses the impugned mark ‘REKIN-SP’ as a trademark

on its products and also uses REKIN as part of its corporate name,

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 15 of 35

which is printed on its products and packaging. It also uses the mark

REKIN with different extensions like Rekin-NP Tablet, Rekin 250 Oral

Suspension, Rekin-CT Tablet and Rekin-P Tablet.

ii. Respondent No. 1 contends that Petitioner is merely a white label

manufacturer for pharma preparations such has Gel and Cream. The

said products are sold to a single commercial entity Sun

Pharmaceutical Industries Ltd., which sells these products under

distinct registered trademarks. For instance, the white label products

manufactured by the Petitioner are sold by Sun Pharmaceutical

Industries Ltd. under distinct trademarks such as Volini Gel, Diprovate

G, Moisturex Cream and Gentalene Plus. Earlier, Petitioner was

exclusively dealing with Ranbaxy Laboratories Ltd. and presently it is

dealing with Sun Pharmaceutical Industries Ltd. The Petitioner thus

exclusively sells its products under distinct trademarks in the B2B

segment and not to the end consumers.

iii. In contrast, the products of the Respondent No. 1 sold under its

trademark REKIN-SP and other REKIN formative marks are

purchased by the end consumers, who recognise the medicines under

the REKIN marks and hence there is no overlap in the consumers of the

Petitioner and Respondent No. 1.

iv. The Petitioner’s mark REXCIN is used only as a part of its tradename,

and no products are being manufactured by the Petitioner under the

mark REXCIN.

v. The Petitioner and Respondent No.1 operate in two different spheres of

the pharmaceutical industry and co-exist as a supplier for different

goods and services.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 16 of 35

vi. Respondent No. 1 has, therefore, bonafidely adopted the mark

REKIN-SP in the year 2017 with respect to pharmaceutical and

medicinal products, which fall in Class 5; and the Petitioner admittedly,

did not have any registration in Class 5, in the year 2017 at the time

Respondent No. 1 applied for registration; and also the Petitioner does

not carry on any business even today in the trade of pharmaceutical

products under its mark REXCIN.

12. Before proceeding with the analysis, it would be relevant to briefly

enlist the details of the trademarks visible on the products produced by the

Petitioner for Court’s inspection as well as the details of the Petitioner

mentioned on the said products:

Produc

t

Registered

trademark

appearing

on the

product

Manufacturer

Name

Form/role in

which

Petitioner’s

name

appears on

the product

Details

of the

drug

Photograph of

the product

Cream Gentalene

Plus

Sun

Pharmaceutical

Ind. Ltd.

Marketed by

Petitioner

company

Schedule

H

prescript

ion

drugs

Gel Silverex

ionic

Manufactured

by Virchow

Biotech (P)

Limited and

marketed by

Sun

Pharmaceutical

Ind. Ltd.

The

packaging

states ‘under

the trademark

user ship of

Rexcin’

To be

sold on

prescript

ion

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 17 of 35

Cream Moisturex Sun

Pharmaceutical

Ind. Ltd.

Packaging

states that the

product has

been

manufactured

for Petitioner

To be

sold on

prescript

ion

Bodyw

ash

Moisturex

Wash

Sun

Pharmaceutical

Ind. Ltd.

Packaging

states that the

product has

been

manufactured

for Petitioner

-----

I. Registration Status of the rival marks

13. At the outset, in the aforenoted facts, it is evident that on 04.05.2017

when Respondent No. 1 applied for the registration of the word

mark/impugned mark ‘REKIN-SP’ in Class 5, which was granted on

01.09.2020; the Petitioner’s trademark ‘REXCIN’ was not registered in any

classes with the trademark registry. It is a matter of record that the Petitioner

had not even applied for registration of its trademark ‘REXCIN’ in any class,

with the trademark registry, at any time prior to 13.04.2022.

The Petitioner’s mark REXCIN is, therefore, not an earlier trademark

as contemplated in Section 11 of the Act of 1999. The impugned mark

‘REKIN-SP’ is thus an earlier registered mark in the register of the trademark

registry.

II. Use of the mark REXCIN as a trademark by the Petitioner for its products

not established

i. No proof that Petitioner carries on services for which it holds registration in

Classes 16, 44and 45

14. Upon perusal of the petition, it is evident that the Petitioner has not

pleaded that it carries on any business of manufacturing goods or rendering

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 18 of 35

the services for which the trademark REXCIN is registered in Classes 16, 44

and 45 since the year 2022. The sample invoices filed as Document No. 6 also

do not reflect that the Petitioner is rendering any of its goods or services

corresponding to the said classes. There is, therefore, no material on record to

demonstrate use of the trademark REXCIN by the Petitioner in respect of the

goods and services for which registrations have been obtained by it in Classes

16, 44 and 45.

ii. No proof that Petitioner sells products falling in Class 5 under the mark

REXCIN

15. The Petitioner has an application pending for registration in Class 5.

However, as recorded in the order dated 04.03.2024, the Petitioner admits that

it does not use the mark ‘REXCIN’ as a trademark in relation to any

pharmaceutical products. This position stands corroborated by the products

produced before this Court for inspection. As discussed hereinafter, the

Petitioner’s assertion in the trademark application that it has been using the

mark REXCIN for products falling in Class 5 since 16.12.2003 is incorrect.

16. The Petitioner has filed its sample invoices for the year 2004, 2005,

2006 and 2022 as Document No. 6 to prove user since 16.12.2003; however, a

perusal of the said invoices shows that Petitioner has been trading and/or

selling Gel and Creams to a single third-party pharmaceutical company. In the

invoices for 2004, 2005 and 2006 the name of the purchaser is recorded as

Ranbaxy Laboratories Pvt. Ltd. In addition, Petitioner has filed sample

invoices for the year 2022 which is again for sale of Cream and the name of

the purchaser is recorded as Sun Pharmaceuticals Industries Ltd.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 19 of 35

The invoices bear out the submission of the Respondent that currently

the Petitioner exclusively sells its products to Sun Pharmaceuticals Industries

Ltd.

The products sold through these invoices do not refer to the trademark

REXCIN and merely evidence trading transactions with a third-party. The

sample invoices only show the use of the tradename of the Petitioner. The

invoices, however, fail to show use of the word REXCIN as a trademark by

the Petitioner for pharmaceutical products falling in Class 5.

The nature of business carried out by the Petitioner, as garnered from

the invoices appears to be of trading in the pharmaceutical products. Such

services would fall in Class 35, for which its application under Class 35 is

pending.

17. The Petitioner has relied upon a Chartered Accountant certificate dated

17.01.2023 at Document No. 7, however the product-wise details annexed to

the said certificate has not been placed on record. The said certificate only

shows the turnover of the Petitioner and does not evidence the use of the

trademark ‘REXCIN’ by the Petitioner for its products. Moreover, the said

certificate is incomplete in the absence of annexure and for this reason as well

it cannot be relied upon.

18. During the hearing, the Petitioner has produced its products for

inspection by the Court, as depicted in the table above, however the said

products also do not show the use of the trademark ‘REXCIN’ by the

Petitioner. The products produced by the Petitioner bear distinctive

trademarks enlisted in Column no. 2 of the table and prominently disclose the

name of the manufacturer, Sun Pharmaceutical Industries Ltd., a well-reputed

pharmaceutical company. The Petitioner’s trade name appears

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 20 of 35

inconspicuously on the product as the marketer and/or licensor of the

trademark. In the considered opinion of the Court, such affixation of the

Petitioner’s trade name does not constitute use as a trademark for sale of

goods within the meaning of Section 29(6) of the Act of 1999.

19. The material on record unequivocally establishes that the Petitioner has

not used the mark ‘REXCIN’ as a source identifier in relation to

pharmaceutical products, nor was it selling any pharmaceutical products

under the said mark the time of adoption of the impugned mark ‘REKIN-SP’

by Respondent No. 1 in 2017, and even thereafter. Even the product samples

produced before the Court depict the word ‘REXCIN’ as a part of the trade

name only in an ancillary and inconspicuous manner, such as in the

expressions ‘manufactured for’ or ‘trademark usership’, printed on the

reverse of the packaging in the smallest font, which does not serve the

function of identifying the commercial source of the goods; such incidental

disclosure of a corporate or trade name cannot, in law, be equated with use as

a trademark.

20. A perusal of the reference to the role of the Petitioner entity on these

products also shows that it markets the products manufactured by other

pharmaceutical companies and these products itself are sold under distinctive

trademarks enlisted in Column no. 2 of the table above. There is, therefore, no

evidence on record to show that the Petitioner uses the trademark REXCIN

for its pharmaceutical products as alleged in the petition.

21. In support of its averments, the Petitioner relied on the judgment of

Radheshyam Tourism v. Radheshyam Travels

7

. The said judgment has no

application to the present case, as it proceeded on a factual finding that the

7

AIR 2017 Guj 179 (SJ), at paragraph no. 17

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 21 of 35

respondent therein had placed on record cogent and contemporaneous

evidence of prior and continuous use of the trademark, including sales

figures, advertisement and promotional expenses, and income tax returns

spanning over several decades, thereby establishing a clear commercial nexus

between the mark and the business. The subject matter of the said case was

tourism services offered by the respondent/plaintiff under the mark

Radheshyam; the respondent’s mark Radheshyam was a registered mark, and

the continuous use of the said mark by the respondent was assessed by the

Court in the background of the documents produced before the Court.

In contrast, in the present case in hand, the Petitioner has failed to

adduce any reliable evidence of prior use of the mark REXCIN as a trademark

for its pharmaceutical products, either through sales under the mark,

promotional expenditure, or consumer-facing use; the invoices relied upon

merely evidence white-label trading in products and use of the corporate

name, and not trademark use.

iii. Section 29(5) of the Act of 1999 has no applicability to hold that the use of

tradename by the Petitioner constitutes as a trademark

22. The Petitioner has averred that the use of the mark REXCIN by it as a

part of its trading name since 16.12.2003 constitutes use as a trademark and it

relies upon Section 29(5) of the Act of 1999 to substantiate its contention.

This Court is unable to accept the submission of the Petitioner. Section

29(5) of the Act of 1999 postulates a situation where the proprietor of the

registered mark is the plaintiff in a suit for infringement, and such a plaintiff is

aggrieved by the adoption of the registered mark by the defendant as a part of

the latter’s tradename constituting infringement for the goods or services for

which the plaintiff’s mark is registered. The phrase tradename, in this

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 22 of 35

sub-section, is stipulated in the context of the tradename of the defendant and

not the tradename of the plaintiff. In the considered opinion of the Court,

Section 29(5) of the Act of 1999 does not stipulate that the tradename of the

plaintiff/Petitioner constitutes use as a trademark and, therefore, this

submission of the Petitioner is rejected. For reference, Section 29(5) of the

Act of 1999 reads as under: -

“29 (1) A registered trade mark is infringed by a person who, not being a registered

proprietor or a person using by way of permitted use, uses in the course of trade, a

mark which is identical with, or deceptively similar to the trade mark in relation to

goods or services in respect of which the trade mark is registered and in such

manner as to render the use of the mark likely to be taken as being used as a trade

mark:

…...

(5) A registered trademark is infringed by a person if he uses such registered

trade mark, as his trade name or part of his trade name, or name of his

business concern or part of the name of his business concern dealing in

goods or services in respect of which the trade mark is registered.

…..”

The forms of use of a registered mark by a proprietor has been

statutorily enlisted in Section 29(6) of the Act of 1999 and it does not include

use only as a tradename, which section includes as under: -

“29 (1) A registered trade mark is infringed by a person who, not being a registered

proprietor or a person using by way of permitted use, uses in the course of trade, a

mark which is identical with, or deceptively similar to the trade mark in relation to

goods or services in respect of which the trade mark is registered and in such

manner as to render the use of the mark likely to be taken as being used as a trade

mark:

……..

(6) For the purposes of this section, a person uses a registered mark, if in particular

he—

(a) affixes it to goods or the packaging thereof:

(b) offers or exposes goods for sale puts them on the market, or stock them

for those purposes under the registered trade mark, or offers or supplies

services under the registered trade mark:

(c) imports or exports goods under the mark:

(d) or uses the registered trade mark on business papers or in advertising.

……..”

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 23 of 35

III. Respondent No. 1’s use and adoption of the impugned mark ‘REKIN-SP’

w.e.f. 04.05.2017 is admitted on record

23. Respondent No. 1 has placed on record samples of its pharmaceutical

products sold under the marks REKIN-NP, REKIN-S, REKIN-E, REKIN-CT,

REKIN-P, and REKIN-SP, all of which are marketed as Schedule H drugs,

prominently displaying Respondent No. 1’s mark REKIN along with various

formatives. The Respondent’s trade name also separately appears on its

products under the head ‘Marketed By’. Relevant photographs of Respondent

No. 1’s REKIN products are reproduced hereinbelow: -

/ / /

/ / / /

24. The aforesaid products show that the Respondent No. 1 uses its

trademark REKIN-SP and other REKIN formative marks on pharmaceutical

preparations falling within Class 5.

25. The Respondent No. 1 was incorporated on 06.03.2017 and applied for

registration of the impugned mark on 04.05.2017 which was granted

registration on 01.09.2020. It is thus, the bonafide adopter of the mark

REKIN/REKIN-SP in the year 2017 with respect to pharmaceutical and

medical products falling in Class 5. Additionally, Respondent No. 1 is also

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 24 of 35

using the mark REKIN as part of its tradename/corporate name and as a part

of its domain name for its website.

The Petitioner applied for registration of the mark REXCIN in Class 5

on 13.04.2022, five years after Respondent No. 1’s adoption of the impugned

mark. The Petitioner has been unable to show any use of the mark REXCIN as

the trademark for its pharmaceutical products prior to 13.04.2022, or even

today.

26. In the considered opinion of this Court, Respondent No. 1 is a bonafide

and prior adopter of the trademark REKIN-SP.

IV. No deceptive similarity between the rival marks

27. The Respondent No. 1 at paragraph nos. 28 to 30 of its reply has

specifically raised a preliminary objection that the Petitioner has failed to

furnish any document to show actual confusion amongst the consumers due to

the impugned mark REKIN-SP despite concurrent use of the mark/tradename

for 6 years (in the year 2023 when the petition was filed).

The Petitioner in its rejoinder has pleaded that the Petitioner’s

tradename ‘Rexcin Pharmaceutical Pvt. Ltd.’ is shown on the packaging and

products marketed by it. It states that the consumers are therefore directly

aware of the Petitioner’s tradename. However, looking at the products handed

over to the Court by the learned counsel for the Petitioner, the Petitioner’s

mark REXCIN is only appearing at the backside of the products in the

smallest form and is inconspicuous, it appears either as ‘manufactured for

Rexcin Pharmaceuticals Pvt. Ltd.’ or ‘under the trademark usership of

‘Rexcin’ as shown above in the table [reproduced at paragraph no. ‘12’ of the

judgment]. The said products marketed by the Petitioner are sold under

distinct registered brand names/trademarks.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 25 of 35

28. As noted above, this Court finds in the facts of this case that the

Petitioner does not sell any pharmaceutical products under the trademark

‘REXCIN’. As held hereinabove that the Petitioner has failed to show any use

of the trademark REXCIN as a source identifier for pharmaceutical products

sold by it whether in 2017 or even at the present time; therefore, the question

of similarity or deceptive similarity of the trademark does not arise for

consideration.

The evidence further establishes that the Petitioner and Respondent No.

1 operate in distinct and non-overlapping spheres of business. While

Respondent No. 1 is the prior adopter and bona fide user of the trademark

‘REKIN-SP’ and other ‘REKIN’ formative marks on pharmaceutical

preparations falling within Class 5, which are sold to end consumers, the

Petitioner neither manufactures nor markets any pharmaceutical products

under the mark ‘REXCIN’ and is, at best, engaged in rendering marketing or

trading services under its corporate name for goods manufactured by third

parties like Sun Pharmaceuticals Industries Ltd and the said goods have

prominent distinct trademarks used on them. Significantly, despite more than

eight years of concurrent existence of the impugned mark, the Petitioner has

failed to place on record any evidence of actual confusion or even a likelihood

of confusion among consumers, as in the opinion of this Court none can arise.

29. The Petitioner has placed reliance on Nutrica Pusti Healthcare Pvt.

Ltd. v. Morepen Laboratories Ltd.

8

, to aver that differences in packaging

etc. is irrelevant for assessing deceptive similarity in pharma marks.

However, this reliance is misconceived and distinguishable on facts, as it

presupposes a situation where both rival marks are being used as trademarks

8

2021 SCC OnLine Del 2631, at paragraph no. 9.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 26 of 35

on pharmaceutical products competing in the same market, thereby requiring

an assessment of deceptive similarity from the perspective of an unwary

consumer of medicines.

In the present case, however, this Court has categorically found that the

Petitioner does not use the mark REXCIN as a trademark on any

pharmaceutical product at all, and does not sell medicines under the said

mark, either at the time of adoption of the impugned mark or thereafter. In the

absence of any trademark use by the Petitioner, the threshold requirement for

comparing rival pharmaceutical trademarks does not arise. Consequently, the

principles relating to heightened scrutiny of deceptive similarity in

pharmaceutical trademarks, as laid down in the cited judgment, have no

application to the present facts where there is no competing pharmaceutical

trademark of the Petitioner in the market capable of causing confusion.

30. The Petitioner has not placed on record any proof of actual instances of

confusion despite the concurrent use of the mark for more than 8 years (in the

year 2025), as on date. Thus, the subsistence of the registration of the

impugned mark REKIN-SP in favour of Respondent No. 1, has not been

proved to be detrimental to the Petitioner.

31. It is also pleaded that the impugned mark REKIN-SP is deceptively

similar to the Petitioner’s trademark REXCIN, already registered in India in

favour of the Petitioner for different goods falling in Class 16, 44 & 45,

however, the Petitioner’s mark was registered for the aforesaid classes only in

2022, five years after the Respondent No. 1’s products under the impugned

mark were present in market. This submission of the Petitioner is therefore,

misleading and incorrect. Moreover, the Respondent No.1 has registration in

Class 5 which is distinct from Class 16, 44 and 45. The Petitioner has not even

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 27 of 35

placed on record any evidence of its business activities carried out by it under

Class 16, 44 and 45.

V. Absence of Goodwill in the Petitioner’s mark REXCIN

32. The Petitioner has not placed on record any details of expenses

incurred on advertisement and promotion of the trademark REXCIN, as none

would exist. This is relevant as the Petitioner was not using the mark

REXCIN as a trademark. The Petitioner has thus failed to place on record any

evidence of its reputation and goodwill in the mark REXCIN in the year 2017,

when Respondent No. 1 adopted the impugned mark REKIN-SP as a

trademark for its products in Class 5.

33. The Petitioner has sought to contend that its tradename Rexcin

Pharmaceutical Pvt. Ltd., allegedly used since 16.12.2003, has acquired

reputation and goodwill. It is contended that the Respondent No. 1’s use of the

impugned mark REKIN-SP on its pharmaceutical products is likely to

mislead consumers into believing that the said goods originate from the

Petitioner, thereby resulting in passing off. However, in the facts of the

present case, the Petitioner has failed to persuade this Court that it enjoys any

goodwill or reputation associated with the tradename Rexcin Pharmaceutical

Pvt. Ltd. amongst the general public in relation to pharmaceutical products,

which could result in confusion among the consumers.

34. The invoices placed on record demonstrate that the Petitioner’s

dealings are confined to one or two regular purchasers such as Sun

Pharmaceutical Industries Ltd. (and earlier Ranbaxy Laboratories Ltd.),

where the goods are further sold under distinct and independently registered

trademarks, and not under the mark REXCIN. The Petitioner has not

produced any material to show consumer-facing sales, advertisement,

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 28 of 35

promotion, or public recognition of the tradename REXCIN as a badge of

origin for pharmaceutical products. In these circumstances, the Petitioner has

failed to establish the existence of protectable goodwill in its tradename

capable of being misappropriated.

35. In the considered opinion of this Court, the turnover and the invoices

fail to show any goodwill attached with the mark REXCIN in 2017 or

thereafter amongst the general public for pharmaceutical products.

36. The Petitioner has placed reliance on the judgment of Laxmikant V.

Patel v. Chetanbhai Shah and Anr.

9

to aver that a trading name that gains

reputation is protected as property, which is inapplicable to the present case,

as its foundational premise is the existence of protectable goodwill in a

trading name that functions as a source identifier and is capable of misleading

consumers upon imitation. In the facts of that case, the plaintiff was providing

services of a photo studio, and the Court was satisfied that the trading name

had acquired goodwill for those services.

In the present facts, however, the Petitioner has failed to establish any

use of the mark REXCIN as a trademark or badge of origin in relation to

pharmaceutical products, either prior to or at the time of adoption of the

impugned mark by the Respondent; the material on record shows that the

mark REXCIN was used only as a corporate or trade name in an

inconspicuous manner and not in a manner recognizable by consumers as

identifying the source of goods. The Petitioner neither sold nor marketed any

pharmaceutical products under the mark REXCIN, had no goodwill or

reputation in the market as on 2017, and produced no evidence of actual or

likely consumer confusion despite long concurrent existence.

9

(2002) 3 SCC 65, at paragraph no. 10.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 29 of 35

VI. Statutory objections raised by the Petitioner under the Act of 1999

37. Keeping in view the aforesaid findings, this Court is now proceeding to

deal with the objections of the Petitioner raised in its grounds by relying upon

different provisions of the Act of 1999.

i. Section 9(1)(a) and 9(2)(a) of the Act of 1999

38. The Petitioner has averred that the impugned registration is violative of

Section 9(1)(a) of the Act of 1999 as the impugned mark REKIN-SP is devoid

of any distinctive character and is not capable of distinguishing the goods of

the Respondent No. 1 from those of the Petitioner. It has also averred that the

impugned mark REKIN-SP is deceptively similar to the Petitioner’s mark

REXCIN causing confusion and deception among the public, thus violating

Section 9(2)(a) of the Act of 1999. The said provisions read as under: -

“9. (1) The trade marks-----(a) which are devoid of any distinctive character,

that is to say, not capable of distinguishing the goods or services of one person

from those of another person:

Shall not be registered : Provided that a trade mark shall not be refused

registration if before the date of application for registration it has acquired a

distinctive character as a result of the use made of it or is a well-known trade

mark.

…….

(2) A mark shall not be registered as a trade mark if ---

(a) it is of such nature as to deceive the public or cause confusion:

……”

39. The impugned mark REKIN-SP is per se distinctive for the goods and

services offered by the Respondent No.1; and this Court having concluded

that the goods marketed by Petitioner are sold under distinctive trademarks

such as SILVEREX IONIC, MOISTUREX etc., and not under the mark

REXCIN, this Court finds no merit in the submission of the Petitioner.

40. Moreover, as held hereinabove, the Petitioner is not using the mark

REXCIN as a source identifier on its products, and therefore, it is not

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 30 of 35

associated as a trademark by the consumers. However, Respondent No. 1’s

mark REKIN-SP and its formative marks are prominently used on the all the

pharmaceutical products of the Respondent No. 1, as a source identifier, and

the consumers ordinarily would identity the products of the Respondent No. 1

with its impugned mark REKIN-SP and its formative marks.

41. Thus, there is no possibility of causing confusion amongst the public.

ii. Section 11(1), 11(2), 11(3)(a) and 11(10) of the Act of 1999

42. The Petitioner has averred that the impugned registration is violative of

Section 11(1) of the Act of 1999, which reads as under:

“11. (1) Save as provided in section 12, a trade mark shall not be registered if,

because of---

(a) its identity with an earlier trade mark and similarity of goods or services

covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods

or services covered by the trade mark.

there exists a likelihood of confusion on the part of the public, which includes the

likelihood of association with the earlier trade mark

……

Explanation--- For the purposes of this section, earlier trade mark means—

(a) a registered trade mark or convention application referred to in section 154

which has a date of application earlier than that of the trade mark in question taking

account, where appropriate, of the prioprities claimed in respect of the trade marks:

(b) a trade mark which, on the date of the application for registration of the trade

mark in question, or where appropriate, of the priority claimed in respect of the

application, was entitled to protection as a well-known trade mark.

…..”

43. As is apparent on a bare reading of the provision, the said provision

would only apply if the Petitioner’s trademark was registered prior to the

Respondent No.1’s registration or where the Petitioner’s application seeking

registration of the mark was pending prior to the date of application of the

Respondent No.1.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 31 of 35

It is a matter of record that the impugned mark was applied for by the

Respondent No.1 on 04.05.2017 and registered on 01.09.2020 and as on the

said date the Petitioner’s mark REXCIN was neither applied for nor

registered with the trademark registry and therefore the said provision has no

application in the facts of this case. So also, given the finding of this Court

that the Petitioner does not use the word REXCIN as a trademark for the

goods it trades in, there is no question of it being considered a well-known

trademark. (Re: BPI Sports LLC v. Saurabh Gulati &Anr.

10

)

44. The Petitioner has next averred that the impugned registration is

violative of Section 11(2) of the Act of 1999, which reads as under:

“11. ……

(2) A trade mark which---

(a) is identical with or similar to an earlier trade mark and

(b) is to be registered for goods or services which are not similar to those for which

the earlier trade mark is registered in the name of a different proprietor.

shall not be registered if or to the extent the earlier trade mark is a well-known trade

mark in India and the use of the later mark without due cause would take unfair

advantage of or be detrimental to the distinctive character or repute of the earlier

trade mark.

……”

45. For the reasons recorded above, this objection of the Petitioner is also

not maintainable. The Petitioner does not use the mark REXCIN for its

products as a trademark even today and, therefore, there is no question of it

being a well-known mark.

46. The Petitioner has averred that the impugned registration is violative of

Section 11(3)(a) of the Act of 1999, which reads as under:

“11. ……

(3) A trade mark shall not be registered if, or to the extend that, its use in India is

liable to be prevented --(a) by virtue of any law in particular the law of passing off

protecting an unregistered trade mark used in the course of trade: or

10

C.O. (COMM.IPD-TM) 16/2021, Judgment (Oral) dated 27.04.2023, at paragraphnos. 22 to 26.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 32 of 35

…….”

47. The three essential ingredients of a passing off action are goodwill,

misrepresentation, and damage. To succeed in such a claim, the claimant must

establish that the defendant has made a misrepresentation in the course of

trade to prospective purchasers or ultimate consumers of goods or services,

which is calculated to injure, or is reasonably foreseeable to injure, the

claimant’s business or goodwill, and which has resulted in actual damage or is

likely to do so. Central to the applicability of this principle is the existence of

protectable goodwill generated by the claimant through use of the mark as a

source identifier in the course of business, as it is only the proprietor who has

established such goodwill by prior and continuous use of the mark that can

maintain an action for passing off.

In the absence of any use of the mark ‘REXCIN’ as a badge of origin

recognizable by consumers, the foundational element of passing off action

i.e., misrepresentation, is wholly absent, and consequently no issue of

deceptive similarity arises for consideration. Moreover, having concluded in

the earlier part of the judgment that the Petitioner does not use ‘REXCIN’ as a

trademark in relation to its pharmaceutical products and that Respondent No.

1 is the prior adopter of the impugned mark ‘REKIN-SP’, the Petitioner’s

claim of passing off is devoid of merit. The record further discloses that the

Petitioner has failed to establish any goodwill associated with the mark

‘REXCIN’as a trademark, or any likelihood of consumer confusion or

resultant damage, all of which are essential constituents for the act of passing

off. In these circumstances, no cause of action for passing off is made out

against Respondent No. 1.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 33 of 35

48. The reliance on Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar

Proprietary Ltd.

11

, by the Petitioner is misplaced in the present case. While

it is undisputed that a trade name may, in a given case, constitute a ‘mark’ for

the purposes of a passing off claim, the sine qua non remains the existence of

a real and perceptible nexus between the name and the goods/services in the

minds of consumers, such that the name functions as a badge of origin. In the

present facts, the Petitioner has failed to establish any such nexus for the

products sold by it, as the mark REXCIN has never been used in relation to

pharmaceutical products as a source identifier, but only appears incidentally

as part of the corporate or trade name in an inconspicuous manner on the

reverse of packaging, while the goods themselves are sold under entirely

different and distinctive registered trademarks.

49. Therefore, the objection raised by the Petitioner under Section 11(3)(a)

of the Act of 1999 is unfounded on merits of this case.

50. The Petitioner has averred that the impugned registration is violative of

Section 11(10) of the Act of 1999, which reads as under:

“11. ……

(10) While considering an application for registration of a trade mark and

opposition filed in respect thereof, the Registrar shall--(i) protect a well-known

trade mark against the identical or similar trade marks: (ii) take into consideration

the bad faith involved either of the applicant or the opponent affecting the right

relating to the trade mark.

……”

51. In view of the aforesaid findings, that the Petitioner does not use the

mark REXCIN for its products as a trademark, the reliance on the aforesaid

provision is also not made out.

52. Accordingly, the petition is dismissed.

11

1995 SCC OnLine Bom 312, at paragraph no. 9.

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 34 of 35

53. Pending applications stand disposed of.

CS(COMM) 142/2023

I.A. 4878/2023

54. This is an application filed by the Plaintiff under Order XXXIX Rule 1

and 2 CPC seeking a restraint against the Defendant from using the impugned

mark REKIN-SP and its formative marks.

55. While disposing of the rectification petition, this Court held that the

Petitioner failed to establish any use of the mark ‘REXCIN’ in relation to

pharmaceutical products, holding that the Petitioner neither used ‘REXCIN’

as a trademark nor as a source identifier for pharmaceutical goods falling in

Class 5 at any relevant time. On the date when Respondent No. 1 adopted and

applied for registration of the mark ‘REKIN-SP’ in 2017, the Petitioner had

no trademark registration or even a pending application in Class 5, and its

subsequent registrations in other Classes in 2022 are of no assistance. The

evidence on record, including invoices and product samples, showed that the

Petitioner merely acted as a marketer for third-party pharmaceutical

companies, with ‘REXCIN’ appearing only inconspicuously as a trade name,

which does not constitute trademark use under the Act of 1999. In contrast,

Respondent No. 1 has been held to be the bona fide and prior adopter and user

of the mark ‘REKIN-SP’ and other REKIN-formative marks, which were

prominently used on pharmaceutical products sold to end consumers by the

Respondent No. 1.

The Court has further held that the parties operate in distinct and

non-overlapping spheres, there was no overlap of goods, trade channels, or

consumer base, and despite several years of concurrent existence, no evidence

C.O. (COMM.IPD-TM) 111/2023 & connected matter Page 35 of 35

of actual or likely confusion, goodwill, or reputation of the Petitioner’s mark

REXCIN was shown. Consequently, the essential ingredients of deceptive

similarity, confusion, and passing off are found to be absent.

56. The Plaintiff has placed reliance on Stiefel Laboratories v. Ajanta

Pharma Ltd.

12

, which is misplaced in the present case, as there is no case for

grant of an injunction since Defendant has a registered mark. Moreso, none of

essential preconditions for grant of an interim injunction are satisfied by the

Plaintiff. The Plaintiff has failed to establish priority in use, failed to

demonstrate commercial and continuous use of the mark REXCIN as a source

identifier for its goods, and in the absence of trademark use and consumer

recognition, the question of deceptive similarity between the rival marks does

not arise.

57. In view of the findings returned hereinabove, the Plaintiff is not entitled

to an interim injunction as prayed for in this application and the same is

dismissed.

58. The Court Master is directed to send the products, handed over by the

learned counsels for Plaintiff and Defendant, to the Registry.

CS(COMM) 142/2023

59. List this suit before the Roster Bench on 06.02.2026, for directions.

MANMEET PRITAM SINGH ARORA

(JUDGE)

JANUARY 27,2026/mt/AM

12

2014 SCC OnLine Del 3405, at paragraph no. 24.