The main legal point established in the judgment is the application of the anti-dissection rule, comparing rival marks as a whole and considering the likelihood of confusion in the minds of unwary purchasers, especially in the pharmaceutical products market.

Sanjeev Sachdeva, J.

IA Nos. 19390/2013 (under Order 39 Rules 1 & 2 CPC) and IA No. 21074/2013 (under Order 39 Rule 4 CPC

1. Plaintiffs have filed the present suit for permanent injunction for restraining the Defendant from infringing the trademark of the Plaintiff CLINDOXYL and from manufacturing, advertising and marketing its products under the deceptively similar marks CLINOXID/CLINOXIDE/CLINOXIDE-A, passing off and damages.

2. Plaintiffs claim to be the members of GlaxoSmithKline group of companies. Plaintiff No. 1 is stated to be engaged in research, development, manufacture, marketing and distribution of a wide range prescription and over-the-counter skin care products of highest quality around the world. In India, Plaintiff No. 1 carries on its business through its subsidiary the Plaintiff No. 2. As per the Plaintiffs, in close association with the subsidiaries and affiliate companies under the GlaxoSmithKline group of companies, the Plaintiffs manufacture and market various dermatology products in India, one of them being CLINDOXYL.

3. As per the Plaintiffs, the trademark CLINDOXYL is an invented word having no dictionary meaning and has the highest degree of distinctiveness. The Plaintiffs claim to have adopted the mark in the year 1994 in United States of America in relation to topical gel for the treatment of acne. The said trademark is stated to be continuously and extensively used since then. The Plaintiff claims to have commenced the user of mark CLINDOXYL in India in October, 2010, and is stated to be used in India continuously and extensively since then.

4. The Plaintiff claims to have registered the said mark in various countries across the world and in India the Plaintiff No. 1 is the registered proprietor of the mark CLINDOXYL in class 5 since 06.03.2006.

5. As per the Plaintiffs, the products of the Plaintiffs sold under the mark CLINDOXYL are extremely popular and the Plaintiffs have been consistently promoting their medicinal preparations under the CLINDOXYL mark through various media channels both electronic as well as print. The Plaintiffs claim to have incurred substantial expenditure towards establishing their goodwill and reputation. As per the Plaintiffs the worldwide sale figures of the Plaintiffs under the said trademark is in several million dollars and in India in several crores of Rupees. The Plaintiffs have spent several lacs in the promotional expenses of the said mark. Plaintiffs claim to be using a unique trade dress and packaging style for their product.

6. As per the Plaintiff, the Defendant has recently adopted a deceptively similar mark CLINOXID that is confusingly and deceptively similar to the Plaintiffs’ registered trademark CLINDOXYL. The trademark adopted by the Defendant is also for an identical product that is skin ointment for treatment for acne.

7. The Plaintiffs claim to have issued cease and desist notice dated 14.08.2012 to the Defendant to cease and desist from using the said mark and to amicably settle the matter. The Defendant is claimed to have replied vide its reply dated 04.09.2012, contending that the rival marks were not deceptively similar, however it offered to amend its mark CLINOXID to CLINOXIDE to distinguish the same from the Plaintiffs’ mark CLINDOXYL. The offer of the Defendant was not accepted by the Plaintiffs on the ground that as per them, the said change was merely cosmetic and the mark would continue to remain deceptively similar. As per the Plaintiffs, the Defendant vide its reply dated 26.12.2012 informed the Plaintiffs that it had discontinued the trademark CLINOXID, and would continue its mark CLINOXIDE, which has also been registered.

8. As per the Plaintiffs, the Defendant’s marks CLINOXID/CLINOXIDE/CLINOXIDE-A are deceptively and confusingly similar to the Plaintiffs’ registered mark CLINDOXYL. The Plaintiffs accordingly filed the present suit for restraining the Defendant from infringing the registered trademark of the Plaintiffs and from passing