Isabella Mariam

The High Court of Delhi, Single Bench of  Justice Amit Bansal, on April 15, 2025, granted an ad interim injunction restraining the defendant from manufacturing, marketing, selling, or advertising any product under the mark "CHROMALITE" or any other mark identical or deceptively similar to "KROMALITE". The interim relief was granted pending the final adjudication of a civil suit alleging passing off in a trademark dispute involving cosmetic skin brightening products.

The court found that the plaintiff, who has been using the mark "KROMALITE" since 2016, had established a prima facie case of passing off against the defendant, who launched the allegedly infringing mark "CHROMALITE" in September 2022. It further observed that the balance of convenience was in favour of the plaintiff and that irreparable harm would be caused if the defendant continued using the mark during the pendency of the suit.

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The plaintiff, FDC Limited, incorporated in 1940, markets and sells prescription and dermatological formulations under various marks, including "KROMALITE". The plaintiff asserted that the mark was coined and adopted in December 2014 and that its products were launched in April 2016. According to the pleadings, the mark has no dictionary meaning and has been associated exclusively with the plaintiff in the dermatology segment.

The plaintiff submitted evidence of substantial annual revenue and nationwide presence through both traditional distribution channels and e-commerce platforms. Sales data from 2016 to 2023 was presented to demonstrate continued commercial use of the mark "KROMALITE", with supporting documentation including invoices and a Chartered Accountant certificate.

The plaintiff stated it became aware in January 2023 of the defendant's use of the mark "CHROMALITE", which it contended is deceptively similar. Registrations under the impugned mark, allegedly on a "proposed to be used" basis, were found to exist since December 2016 in classes 3 and 5. The plaintiff issued a cease-and-desist notice and filed rectification applications in January 2023 against the defendant’s trademarks.

The defendant, Palsons Derma Private Limited, established in 2008, claimed to have independently adopted the mark "CHROMALITE" in 2016 and launched products under it in September 2022. It argued that the mark derived from the Greek word "CHROMA" and the suffix "LITE" and was intended to replace its earlier mark "FAIRLITE" following social criticism of fairness-related branding. The defendant submitted that its packaging, use of suffixes (such as "NITE cream" and "toner"), and distinct trade dress would prevent consumer confusion.

The defendant further contended that it had no knowledge of the plaintiff’s legal notice, which was sent to a rarely used email address, and asserted that its products are prescribed by dermatologists and sold at higher prices, which would preclude confusion among skilled buyers.

Objections on the grounds of jurisdiction, delay, and forum shopping were also raised, asserting that neither party was located within the territorial jurisdiction of the court.

The court observed that since the defendant is a registered proprietor of the impugned mark, a claim of infringement would not be maintainable. However, it held that a passing off action under Section 27(2) of the Trade Marks Act, 1999, remains tenable.

Quoting S. Syed Mohideen v. P. Sulochana Bai, the court recorded: "the rights of a prior user are superior to the rights of a subsequent user irrespective of trade mark registration(s) in favour of the subsequent user." It reiterated that passing off is "essentially an action in deceit" requiring proof of goodwill, misrepresentation, and resultant damage.

It was not in dispute that the plaintiff had launched "KROMALITE" products in 2016 and the defendant began using "CHROMALITE" only in 2022. The court found "the plaintiff is the prior user of the mark KROMALITE in relation to its products."

It further noted that the plaintiff submitted continuous usage supported by sales figures and marketing evidence and held that the plaintiff had prima facie established "its goodwill and reputation in the market under the mark KROMALITE" by 2022.

Regarding similarity, the court stated: "Plainly, the impugned mark CHROMALITE used by the defendant is phonetically identical and structurally similar to the plaintiff’s mark KROMALITE." It noted that suffixes like "day cream" or "serum" do not alter the nature of the impugned mark and that the defendant's products target the same consumer base through common e-commerce platforms.

The court cited Cadila Health Care v. Cadila Pharmaceuticals in outlining criteria to assess deceptive similarity, including phonetic resemblance, nature and character of goods, trade channels, and consumer class. It rejected the defendant’s argument regarding the awareness of consumers and expert sellers, stating: "the impugned products are freely available on e-commerce platforms where a purchase can be made... without a prescription."

On the defendant’s contention of bona fide adoption, the court held that "the defendant was reckless in launching the impugned products" and that "a simple due diligence exercise... would have informed it about the existence of the plaintiff’s products under the mark KROMALITE."

The judgment cited Laxmikant V. Patel v. Chetanbhai Shah to hold that "Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."

Regarding other similar marks cited by the defendant, the court stated that the defendant had "failed to show any commercial use of these marks" and that "KROMALITE" being a coined term deserved higher protection.

The court concluded that the marks were "phonetically identical and structurally similar", the goods and trade channels "identical and overlapping", and therefore confusion was likely. It found that the plaintiff had moved promptly, and the defendant had failed to demonstrate use prior to 2022.

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Granting interim relief, the court ordered:

"The defendant and all others acting in active concert with it are restrained from manufacturing, marketing, offering for sale, selling, advertising, directly or indirectly dealing in the impugned products or any other similar product under the mark CHROMALITE or any other mark identical with or deceptively similar to the plaintiff’s mark KROMALITE in any manner whatsoever, till the final adjudication of the suit."

The matter is listed before the Joint Registrar on 16th May 2025 for admission and denial of documents.

Advocates Representing the Parties

For the Plaintiff: Mr. Prithvi Singh, Advocate

For the Defendant: Mr. Mohan Vidhani, Mr. Saurabh Kumar, Ms. Mokshita Gautam, Ms. Nidhi Pandey, and Ms. Urvashi Arora, Advocates

Case Title: FDC Limited v. Palsons Derma Private Limited

Neutral Citation: 2025: DHC:2576

Case Number: CS(COMM) 487/2023

Bench: Justice Amit Bansal

[Read/Download order]