Bombay High Court: No Monopoly on Trademarks Derived from Generic Drug Names

Mumbai: In a significant ruling for the pharmaceutical industry, the Bombay High Court has held that a company cannot claim exclusive trademark rights over a name derived from an International Non-Proprietary Name (INN), or a drug's generic name. Justice Sharmila U. Deshmukh dismissed an interim application by Aristo Pharmaceutical Private Limited, which sought to restrain Healing Pharma India Private Limited from using the trademark "ACECLOHEAL".

The court ruled that Aristo's trademark "ACECLO" is a clipped version of the generic drug "Aceclofenac" and is therefore descriptive and publici juris (in the public domain), preventing Aristo from monopolizing it.

Background of the Case

The legal battle centered on a trademark infringement and passing-off suit filed by Aristo Pharmaceutical against Healing Pharma.

• Plaintiff: Aristo Pharmaceutical, the manufacturer of a pain and inflammation drug under the registered trademark "ACECLO" since 2003. They claimed significant goodwill, with sales reaching approximately Rs. 42 crores in 2020-2021.
• Defendant: Healing Pharma, which launched similar medicinal preparations under the trademarks "ACECLOHEAL-MR," "ACECLOHEAL SP," and "ACECLOHEAL PLUS."

Aristo discovered Healing Pharma's products in October 2024 and issued a cease-and-desist notice, which was denied, leading to the current suit.

Core Arguments

Aristo Pharmaceutical's Stance

Aristo’s counsel, Mr. Kamod, argued that "ACECLO" is a validly registered trademark, granting them exclusive rights under Section 28 of the Trade Marks Act, 1999 . They contended that Healing Pharma’s mark "ACECLOHEAL" was deceptively similar, as it subsumed their entire mark "ACECLO," leading to potential confusion and infringement. They further argued that Section 13 of the Act, which prohibits registering INNs, applies to the full name "Aceclofenac," not a derived, clipped version like "Aceclo."

Healing Pharma's Defense

Represented by Mr. Singh, Healing Pharma countered that "ACECLO" is derived from the INN "Aceclofenac" and is therefore descriptive and open to public use. They invoked Section 13 of the Trade Marks Act, arguing that no entity can claim proprietary rights over an INN or any part thereof. Their mark, "ACECLOHEAL," was an honest adoption, combining the clipped INN with their company suffix "Heal," which lends distinctiveness. They maintained that the rival marks were phonetically and visually different and that consumers would not be confused.

Court's Analysis and Legal Principles Applied

Justice Deshmukh's analysis was heavily anchored in Section 13 of the Trade Marks Act, which prohibits the registration of INNs or names "deceptively similar" to them.

The court observed that "ACECLO" is a mere "clipped version" of the INN "Aceclofenac." It held that the phrase "deceptively similar to such name" in Section 13 is broad enough to include such clipped versions.

> "The Plaintiff’s trade mark is a clipped version of the INN and is largely derived from the generic source and hence can only be termed as descriptive... The use of the words 'deceptively similar to such name' takes within its fold even the clipped version."

The court emphasized that INNs are inherently non-registrable and in the public domain to facilitate the global identification of pharmaceutical ingredients. Quoting legal precedents, including the Delhi High Court's decision in Sun Pharmaceutical Laboratories Ltd v. Hetero HealthCare Ltd , the bench affirmed the principle that no exclusive right can be claimed over a descriptive or generic term.

The judgment noted:

> "Where the rival marks are derived from an INN and incorporates letters of the INN, the usual test of deceptive similarity by reason of the entire mark being subsumed in the impugned mark cannot constitute the sole criteria."

Regarding the passing-off claim, the court found no evidence of misrepresentation by Healing Pharma. It noted that the packaging, font, and pricing of the two products were different, making the likelihood of confusion "bleak."

Final Decision and Implications

The High Court concluded that Aristo Pharmaceutical failed to establish a prima facie case for either trademark infringement or passing-off. Consequently, the Interim Application seeking an injunction was dismissed.

This judgment reinforces the legal principle that trademarks derived directly from generic, descriptive terms—especially INNs in the pharmaceutical sector—are afforded weak protection. It signals that companies cannot prevent competitors from using marks that are also derived from the same publici juris term, provided there is sufficient added matter to distinguish the products. The ruling serves as a crucial guideline for trademark adoption and enforcement strategies within the pharmaceutical industry.