“‘CROSSRELIEF Is a Wholly Arbitrary, Fanciful Term’: Delhi High Court Sets Aside Trademark Refusal, Holds No Likelihood of Confusion in Pharmaceutical Mark
Sanchayita Lahkar
The High Court of Delhi Single Bench of Justice Saurabh Banerjee, allowed the appeal of a pharmaceutical company challenging the rejection of its trademark application for the mark "CROSSRELIEF" under Section 11(1) of the Trade Marks Act, 1999. The Court set aside the Examiner's order dated October 17, 2023, thereby directing that the mark be allowed to proceed for registration.
The Court stated that the composite mark "CROSSRELIEF," coined by the appellant for medicinal and pharmaceutical goods under Class 5, is a distinctive and arbitrary term and does not give rise to confusion with any previously registered or pending marks.
The appellant, Mankind Prime Labs Private Limited, a subsidiary of Mankind Pharma Limited, applied on January 2, 2021, to register the word mark "CROSSRELIEF" in Class 5 on a 'proposed to be used' basis. On January 13, 2021, an Examination Report was issued by the Trade Marks Registry raising objections under Section 11(1) of the Trade Marks Act, 1999, citing the likelihood of confusion with existing trademarks covering similar goods and services.
The impugned order dated October 17, 2023, passed by the Examiner of Trade Marks, rejected the application. The order stated:
"The mark taken in its entirety is significantly identical with and/or deceptively similar to the cited marks. Also, the goods/services in respect of which the applicant is seeking registration are the goods/services of same description as those of the cited marks. Therefore, the balance of convenience is clearly in favor of the cited marks... Hence application no 4804262 cannot be accepted and refused accordingly."
Aggrieved by this order, the appellant filed the present appeal under Section 91 of the Trade Marks Act, read with Section 151 of the Civil Procedure Code, 1908, and Section 13 of the Commercial Courts Act, 2015.
The appellant argued that the mark "CROSSRELIEF" is a portmanteau of two common words: "CROSS," often used in the medical field, and "RELIEF." It was submitted that the combination results in a distinctive mark which is arbitrary and fanciful when used in the context of pharmaceutical goods.
The counsel for the appellant submitted that:
- The mark "CROSSRELIEF" is inherently distinctive and coined in the course of trade.
- No party can claim monopoly over common or generic terms such as "CROSS."
- Relying on precedents including R. Kapoor v. Micronix India, Indo-pharma Pharmaceuticals Works Ltd. v. Citadel Fine Pharmaceuticals Ltd., and Disposafe Health & Life Limited & Ors. v. Rajiv Nath & Anr., it was contended that individual descriptive components may result in a distinctive combination when viewed as a whole.
- The anti-dissection rule mandates that a trademark must be assessed in its entirety and not dissected into parts.
- There were clear visual, phonetic, and structural differences between "CROSSRELIEF" and the cited marks.
- Despite service of notice, the respondent—the Registrar of Trade Marks—did not file a reply.
The Court examined the relevant statutory framework and judicial precedents. It recorded:
"Though the mark 'CROSSRELIEF' of the appellant is a portmanteau of two words, 'CROSS' and 'RELIEF,' but they cannot be dissected and read/ taken separately. More so, since the mark 'CROSSRELIEF' of the appellant is admittedly a composite singular mark, it has to be taken/ read as a whole."
It was further observed that:
"The said mark 'CROSSRELIEF' of the appellant is not a colloquial term and does not appear in the Dictionary. The said mark 'CROSSRELIEF' of the appellant is when read together/ as a whole, has no meaning. In fact, it is completely an arbitrary, fanciful term coined by the appellant."
Referring to the principle laid down in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., the Court reiterated that invented and arbitrary marks, even if formed from common words, are entitled to registration if the resulting term has no descriptive or misleading connotation.
The Court also applied the anti-dissection rule. It noted:
"It is well settled that a mark cannot be dissected into its individual parts while examining its entitlement to registration... the principle would apply, mutatis mutandis, even at the stage when the mark is examined for its entitlement for registration..."
The Court concluded that the term "CROSS," being commonly used and generic, cannot be monopolized and its use as a prefix is widely prevalent in the pharmaceutical industry. It quoted the judgment in J.R. Kapoor v. Micronix India, where it was held that: "...the word 'micro' being descriptive... no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro-chip technology would be justified in using the said word as a prefix to his trade name."
The Court set aside the impugned order and allowed the appeal. It directed:
"Accordingly, the appeal is allowed and the impugned order dated 17.10.2023 passed by learned Examiner of Trade Marks, Trade Mark Registry, New Delhi, is set aside... the mark 'CROSSRELIEF' applied for registration vide trademark application no. 4804262 by the appellant is liable to proceed for registration."
The Court clarified that:
"The registration of the composite mark 'CROSSRELIEF' shall not confer any exclusive right over any individual component/ part of the mark i.e. 'CROSS' or 'RELIEF' upon the appellant."
A copy of the judgment was directed to be forwarded to the Registrar of Trade Marks for compliance.
Advocates Representing the Parties:
For the Appellant: Mr. Hemant Daswani, Ms. Saumya Bajpai, Ms. Pranjal, and Mr. Kunal Prakash
For the Respondent: Ms. Nidhi Raman, CGSC, Mr. Debasish Mishra
Case Title: Mankind Prime Labs Private Limited v. Registrar of Trade Marks
Neutral Citation: 2025: DHC:2611
Case Number: C.A.(COMM.IPD-TM) 7/2024
Bench: Justice Saurabh Banerjee
[Read/Download order]
