Sanchayita Lahkar

The Delhi High Court Single Bench of Justice Saurabh Banerjee set aside the order dated May 29, 2023, passed by the Deputy Registrar of Trade Marks. The Court directed the removal of the trademark application bearing no. 4330041 for the mark 'FLORASIS' under Class 5 from the Register of Trade Marks. The Court found the mark 'FLORASIS' deceptively similar to the registered trademark 'FLORA', held by the appellant since 2007. This decision arises from an appeal filed under Section 91 of the Trade Marks Act, 1999.

The appellant, Mankind Pharma Limited, is a fully integrated pharmaceutical company engaged in the manufacture and marketing of medicinal and pharmaceutical products. The company has been using the trademark 'FLORA' since 1995 and obtained registration under Class 5 in 2007 for pharmaceutical preparations related to diarrhea and related health products.

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In contrast, respondent no.1, Zhejiang Yige Enterprise Management Group Co. Ltd., applied for the trademark 'FLORASIS' on August 21, 2019, under Class 5 for sanitary towels, anti-overflow breast pads, baby napkins, sanitary pads, and baby’s diapers, on a 'proposed to be used' basis.

Mankind Pharma filed opposition proceedings on March 19, 2020, under opposition no. 2477318, contesting the registration of 'FLORASIS' on the grounds of deceptive similarity, lack of bona fide adoption, and likelihood of confusion among the public. The Deputy Registrar dismissed this opposition, finding that the two marks were visually, phonetically, and structurally distinct.

Counsel for the appellant argued that the impugned order overlooked principles relating to prior statutory rights and the need for heightened scrutiny in pharmaceutical and healthcare trademarks. It was submitted that 'FLORA' is a coined and inherently distinctive mark, continuously used since 1995. Further, the entire trademark 'FLORA' forms the dominant component of the respondent’s mark, and the mere addition of 'SIS' does not distinguish the impugned mark.

The appellant relied on several precedents, including Cadila Healthcare Limited vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, asserting that stricter standards apply to trademarks in the pharmaceutical sector due to public health considerations.

The respondent no.1 neither appeared in the proceedings nor filed a reply despite being served. Consequently, the Court proceeded ex parte against the respondent no.1.

Justice Saurabh Banerjee recorded that the absence of a response from the respondents meant that the appellant's pleadings stood admitted. The Court observed: "Considering the rival marks on hand, there can hardly be any doubt... that the impugned mark 'FLORASIS' is not identically and deceptively similar to that of the registered trademark 'FLORA' of the appellant herein."

It was further observed that "there are hardly any visible differences and/or change noticeable to the naked eye of any average person with imperfect recollection belonging to the trade and/or to the general public." The Court found that the impugned mark was likely to create confusion and suspicion in the minds of consumers, especially since both marks pertained to the same class of goods.

Justice Banerjee also noted that the respondent no.1’s trademark application was filed much later and on a 'proposed to be used' basis, while the appellant had already acquired substantial goodwill and reputation in the 'FLORA' trademark.

The Court rejected the Deputy Registrar’s finding that the presence of a Mandarin character added uniqueness to the impugned mark. It was recorded: "In India, merely adding a mandarin character cannot add any distinctiveness thereto for being granted registration, and that too qua a pharmaceutical product, especially, when the said character cannot be deciphered by the general public and/or the members of trade."

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The Court concluded that the adoption of the mark 'FLORASIS' by merely adding the suffix 'SIS' to the registered trademark 'FLORA' was insufficient to avoid confusion.

The Delhi High Court, while allowing the appeal, issued the following directives:

• "The present appeal is allowed and the impugned order dated 29.05.2023 passed by the respondent no.2 is set aside."

• "The Registrar of Trade Marks is directed to remove the entry pertaining to application bearing no. 4330041 of the respondent no.1 for the mark 'FLORASIS' in Class 5 from the Register of Trade Marks forthwith."

• "The present appeal along with the pending application stands disposed of."

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

For the Respondents: Mr. Amit Tiwari with Mr. Vikram Singh Dalal, Mr. Yashpriya Sahran, and Mr. Pratham Chawla

Case Title: Mankind Pharma Limited vs. Zhejiang Yige Enterprise Management Group Co. Ltd. & Anr.

Neutral Citation: 2025: DHC:3706

Case Number: C.A.(COMM.IPD-TM) 2/2024

Bench: Justice Saurabh Banerjee

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