The court ruled that trademark rights cannot be claimed over generic names that are public domain, emphasizing the distinction between Plaintiff’s and Defendant’s marks.

ORDER :

1. This is an action for infringement of trade mark and passing-o The Plaintiff and the Defendants are pharmaceutical companies engaged in the business of manufacturing and marketing medicinal and pharmaceutical preparations.

2. The Plaintiff’s case is that in or about October, 2003, they originally conceived the trade mark “ACECLO” for use and registration in respect of medicinal and pharmaceutical preparations and similar goods. The mark “ACECLO” is derived from the name Accclofenac. Initially, the Plaintiff had prefixed the trade mark “ACECLO” with “ARISTO” and applied for trade mark registration on 8^th October, 2003 in Class 5 on proposed to be used basis, which came to be registered on 3^rd September, 2005. It is stated that registered trade mark was used in such a manner that the word “Aristo” was depicted insignificantly and the word “Aceclo” was displayed prominently. In or around December 2003, the Plaintiff commenced use of the mark “Aceclo” in respect of the said goods and obtained registration of its variant “Aceclo Sera”. In or about June 2004, the Plaintiff commenced the manufacturing and marketing of tables being aceclofenac sustained release tablets under the mark “ACECLO SR” and in or about July, 2005, combination of Aceclofenac, Paracetamol and Chlorzoxazone under trade mark “ACECLO MR”.

3. The trade mark “ACECLO” was registered with effect from 7th February, 2011 claiming user since 31^st December, 2003. To demonstrate the reputation and goodwill, the global sales figures and copies of invoices are annexed to the Plaint.

4. It is stated that in or about October, 2024, the Plaintiff became aware of the Defendants having commenced manufacturing and/or marketing of medicinal and pharmaceutical preparations or similar goods of the composition Aceclofenac, Paracetamol and Chlorzoxazone in the form of tablets bearing the trade mark “ACECLOHEAL-MR” and subsequent adoption of “ACECLOHEAL SP” and “ACECLOHEAL PLUS”. A Cease-and-Desist Notice was issued on 30^th October, 2024 and in response, there was denial by Defendant No. 1. Hence, the present suit came to be filed.

5. The defense as set out in Affidavit-in-Reply of Defendant No. 1 is that in the field of medicinal and pharmaceutical preparations, the names derived from main pharmaceutical ingredient of the drug or from the name of organ/ailment which the drug seeks to treat, are publici juris. It is further stated that the name of the generic non- steroidal anti-inflammatory drug viz. “Aceclofenac” is accepted as an International Non-Proprietary Name [for short, “INN”] and accordingly, published by Registry of Trade Marks in India. It is contended that nomenclature for the drug “Aceclofenac” is descriptive of characteristic of such chemical composition/ingredient. The Defendant No. 1 has coined the word “Acecloheal” being a combination of first six characters of INN, i.e. “Aceclofenac” indicating its acetyl nature along with its NSAID purpose, i.e. Nonsteroidal Anti- Inflammatory Drug and suffixed by first four characters of its name and therefore, there is honest and bona fide adoption. It is stated that in view of Section 13 of Trade Marks Act, 1999 , the Plaintiff cannot claim any proprietary right in respect of INNs or any part thereof irrespective of its registration. It is stated that use of suffix “Heal” lends distinctiveness to the overall mark “Acecloheal”. It is further stated that the marks are phonetically, visually and conceptually different from the Plaintiff’s mark “ACECLO” and is Schedule-H drug sold on the