The court established that prior trademark use confers superior rights, emphasizing that mere modifications do not distinguish similar marks, especially in the pharmaceutical industry.

JUDGMENT :

SAURABH BANERJEE, J.

PREFACE:

1. The appellant, has preferred the present appeal under Section 91 of the Trade Marks Act, 1999, [hereinafter referred to as “TM Act] assailing the order dated 29.05.2023, [hereinafter referred to as “impugned order], passed by the learned Deputy Registrar of Trade Marks, [hereinafter referred to as “respondent no.2], whereby its opposition proceedings against the registration of the impugned mark [hereinafter referred to as “FLORASIS”] filed under application no.4330041 in Class 5 has been dismissed.

BRIEF CONSPECTUS:

2. The appellant, Mankind Pharma Limited, a fully integrated pharmaceutical company involved in the business of manufacturing and marketing of a wide range of medicinal, pharmaceutical, veterinary preparations as also therapeutic product ranges under various brand names, including under the trademark ‘FLORA’, coined in the year 1995.

3. For carrying on with its business activities, the appellant has in the year 2007, under application being no.1554350, been granted registration for the trademark ‘FLORA’ in India under Class 5 with a user claim since 1995 in respect of pharmaceutical preparations for the treatment of ‘diarrhea’ and related health products. In fact, the appellant has been continuously and uninterruptedly using the trademark ‘FLORA’ for medicinal and pharmaceutical preparations since its adoption for the first time in the year 1995.

4. In contrast, the respondent no.1 has on 21.08.2019 under application no.4330041, [hereinafter referred to as “impugned application] applied for the mark ‘FLORASIS’ with respect to sanitary towels, anti-overflow, breast pads, baby napkins, sanitary pads, baby’s diapers in Class 5 on a ‘proposed to be used’ basis.

5. Subsequent thereto, the appellant on 19.03.2020 filed its opposition proceedings being no.2477318 contesting the registration of the respondent no.1’s mark on the grounds of deceptive similarity, lack of bona fide adoption and likelihood of causing confusion among the public, to which the respondent no.1 filed its counter statement on 08.06.2020. Thereafter, the appellant filed its evidence along with supporting documents under Rule 45 of the Trade Mark Rules, 2017, [hereinafter referred to as “the Rules”] on 29.06.2020 and the respondent no.1 filed its evidence under Rule 46 of the Rules on 07.09.2020.

6. Vide the impugned order, the said opposition proceedings was rejected by the respondent no.2 inter alia holding that even by stricter measures the registered trademark ‘FLORA’ of the appellant herein is visually, phonetically or structurally different from the impugned mark ‘FLORASIS’ of the respondent no.1 and the combination of mandarin characters with a unique device of ‘FLORASIS’ gives the impugned mark a unique impression, depiction and recollection in the Indian context as also that the application of the respondent no.1 is honest and bona fide as the impugned mark is already registered in various countries. As such, the impugned mark ‘FLORASIS’ was allowed to proceed for registration.

7. Aggrieved thereby, the appellant by way of the present appeal, prayed for setting aside of the impugned order.

8. The respondent no.1, despite service, has never entered appearance in the present proceedings and the respondent no.2, despite entering appearance, has not filed its reply either. As such, vide order dated 24.04.2025 passed by this Court, the respondent no.1 was proceeded ex-parte and its right to file a reply was also closed.

SUBMISSIONS OF THE APPELLANT:

9. Mr. Hemant Daswani, learned counsel for the appellant made the following submissions:-

9.1. The impugned order suffers from manifest legal infir