The Delhi High Court directed the removal of the trademark “DECA-NEUROPHEN” from the Register of Trade Marks on the ground that it was deceptively similar to the well-known pain-relief brand “NUROFEN” and was likely to cause confusion among consumers. The order was delivered in an appeal filed by Reckitt and Colman Overseas Health Limited against an earlier decision of the Trade Marks Registry that had permitted registration of the impugned mark in favour of Ind Swift Limited. The High Court set aside the Registry’s order and ruled that the trademark “DECA-NEUROPHEN” must be removed from the register due to its similarity with “NUROFEN” and the risk of deception it posed in the marketplace.
In its reasoning, the High Court observed that “NUROFEN” was adopted in 1981 and registered in India in 1983, and is used globally for medicines containing ibuprofen marketed for pain relief. The appellant contended that this trademark enjoyed distinctiveness and was well recognised in the pharmaceutical sector for pain-relief medications. Ind Swift Limited had applied to register the mark “DECA-NEUROPHEN” in 1999 for pharmaceutical and medicinal preparations, claiming use of the mark since 1992. The trademark application was advertised, after which Reckitt opposed the registration on the basis of its earlier rights in the “NUROFEN” mark.
Despite the opposition, the Trade Marks Registry dismissed Reckitt’s objection and allowed the mark “DECA-NEUROPHEN” to proceed toward registration. Reckitt subsequently challenged the Registry’s decision before the High Court, asserting that the earlier mark had priority and that the later mark was confusingly similar. Upon comparing the two marks, the court found that there were significant visual and phonetic similarities between “NUROFEN” and “DECA-NEUROPHEN”, and that the addition of the prefix “DECA” did not sufficiently distinguish the later mark from the earlier one in a way that would prevent confusion among ordinary consumers, medical practitioners and pharmacists.
The High Court emphasised that in the context of pharmaceutical and medicinal products, a higher degree of scrutiny was required because the potential for confusion was not merely commercial but could also carry risks to public health. The court noted that if consumers were misled into purchasing or using the wrong medicine due to similarity in trademarks, the consequences could be serious or even harmful. It held that the likelihood of confusion and deception was real because both the impugned mark and the earlier mark were associated with similar goods that were marketed through overlapping trade channels. The presence of such similarity, the court ruled, could mislead an ordinary person of average intelligence and imperfect recollection into believing there was a connection between the products.
On the issue of priority, the High Court observed that the “NUROFEN” trademark clearly had earlier adoption and registration in India compared to “DECA-NEUROPHEN”, positioning Reckitt’s mark as having senior rights. The court rejected the Trade Marks Registry’s suggestion that Reckitt had failed to establish use of the “NUROFEN” mark in India, clarifying that actual use is not a prerequisite for enforcing rights deriving from a valid and subsisting registration. Therefore, the fact that “NUROFEN” was registered and validly subsisting provided sufficient basis for Reckitt to enforce its rights against confusingly similar marks, regardless of specific evidence of use in the Indian market.
Ind Swift argued that it had used the mark “DECA-NEUROPHEN” honestly and that both parties had been using their respective marks concurrently. However, the High Court dismissed this claim, noting that a basic search of the Trade Marks Register before applying would have revealed the existence of the earlier “NUROFEN” registration. The court indicated that such searches are an essential part of due diligence before applying for a trademark, and the failure to identify the prior mark undermined the claim of honest and concurrent use. The delay in deciding opposition proceedings, which had led to the eventual registration, was also not accepted as a reason to benefit the later applicant, and the court clarified that procedural delays should not prejudice the rights of senior trademark owners.
The High Court stressed the principle that trademarks serve to identify the source of goods and to protect consumers from confusion and deception in the marketplace. In this case, given the proximity of the goods, both falling under pharmaceutical preparations, the risk that the public might mistakenly associate “DECA-NEUROPHEN” with the established “NUROFEN” brand was substantial. The court held that this risk of confusion was heightened because both marks shared a common dominant component that could lead to initial interest confusion, where a consumer’s initial attraction to a mark may cause them to assume a connection that did not exist.
Accordingly, the court concluded that the trademark “DECA-NEUROPHEN” should not remain on the Register of Trade Marks and that the order permitting its registration should be quashed. The High Court’s decision to remove the mark from the register reflected its position that protecting senior trademark rights and preventing consumer confusion were paramount, especially in the context of healthcare and medicinal products where errors could have serious consequences. By directing the removal of the impugned mark, the court reinforced the application of legal standards that prevent deceptively similar trademarks from coexisting in a manner that could mislead the public.
The case before the Delhi High Court was heard as part of trademark litigation under the Trade Marks Act. The decision underscored the judiciary’s approach to applying established trademark principles, including considerations of similarity, priority, public interest and the potential impact on consumer safety. Through its order, the High Court set aside the previous registry decision and ensured that the trademark register did not contain marks that could infringe on prior rights or deceive consumers.
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