SANOFI v. INTAS PHARMACEUTICALS LTD. & ANR

Judgment

#1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trade marks of the plaintiff and from passing off of their goods as those of the plaintiff along with other ancillary reliefs. CASE SETUP BY THE PLAINTIFF 2. Brief facts relevant for adjudicating the present suit are as follows: 2.1. The plaintiff, a company registered under the laws of France, is engaged in research, development, manufacturing and marketing of inter alia medicinal and pharmaceutical preparations. Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016

2.2. The plaintiff is one of the world’s leading pharmaceutical companies and has over the years manufactured and sold a number of pharmaceutical products under several trade marks across the world including India. 2.3. One of the most renowned drugs of the plaintiff is its anti-thrombosis drug, namely PLAVIX which helps prevent heart attacks and strokes. 2.4. The trade mark PLAVIX was coined in the year 1995. 2.5. The plaintiff filed an application bearing no.806651 for registration of the device mark in class 5 on 17th June 1998, which was granted on 25th August 2005. The plaintiff also filed an application bearing no.652794 for registration of the word mark PLAVIX in class 5 on 20th January 1995, which was pending at the time of filing of the present suit. However, subsequently, the word mark PLAVIX got registered on 13th August

#2013. 2.6. The plaintiff’s drug under the mark PLAVIX was launched globally in the year 1998 and in the Indian market in January 2003. 2.7. The plaintiff’s goodwill and reputation under the mark PLAVIX is evident from its net global sales. The plaintiff’s global sales figures (in million Euros) under the mark PLAVIX since the year 2003 are set out below:

2.8. The plaintiff has also extensively advertised and promoted its drug under the mark PLAVIX through internet articles, medical journals and other Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 literature across the world including India. The plaintiff’s drug under the mark PLAVIX is also recognized by medical practitioners as synonymous with heart-care treatment. The aforesaid has resulted into greater recognition of the mark PLAVIX and its association with the plaintiff. The plaintiff’s advertisement expenses since the year 2004 are set out below:

2.9. A search for the term ‘PLAVIX’ on Google search engine results in links pertaining to the plaintiff’s drug. Further, Wikipedia page for Clopidogrel also associates it with the plaintiff’s drug PLAVIX. The plaintiff has therefore acquired immense and valuable common law rights over the mark PLAVIX. 2.10. The defendant no.1, a company based in Ahmedabad, is engaged in the business of manufacturing and selling pharmaceutical products. The defendant no.2 is engaged in the marketing of products of the defendant no.1 including those under the mark CLAVIX (hereinafter ‘impugned mark’/ ‘CLAVIX’). Both the defendants shall hereinafter be collectively referred to as the ‘defendant’, unless otherwise provided. 2.11. The plaintiff first became aware of the defendant’s use of the impugned mark in relation to identical medicinal preparations in or around mid-2005 through its marketing representative. Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016

2.12. In 2008, the plaintiff learnt that the defendant no.1 had filed an application bearing no.1634650 for registration of the impugned mark in class 5 on 26th December 2007. The said application was opposed by the plaintiff on 10th July 2009. 3. Accordingly, the present suit was filed seeking the following reliefs: aa) An order for permanent injunction restraining the defendants, their proprietor or partners as the case may be, their principal officers, servants and agents, dealers, distributors and all other representatives, from manufacturing, selling, offering for sale medicinal preparations and other allied or cognate goods under the mark CLAVIX or any other mark that is identical with or deceptively similar to the plaintiff’s label/ trade mark registered under no. 806651 in class 5 amounting to infringement thereof. a) An order for permanent injunction restraining the defendants, their proprietor or partners as the case may be, their principal officers, servants and agents, dealers, distributors and all other representatives, from passing off their medicinal preparations as those of the plaintiff by the use of the trade mark CLAVIX or any other that is identical or deceptively similar to the plaintiff’s trade mark PLAVIX or doing any other thing amounting to a misrepresentation of the defendants’ goods as those of the plaintiff; b) An order for delivery up by the defendants of all the goods, labels, dies, blocks, negatives, packaging material, cartons, printed matter, unfinished products and any other material bearing the impugned mark CLAVIX to the authorized representative of the plaintiff for the purpose of destruction/ erasure; c) An order for damages of INR 1,00,00,000 to be paid by the defendants on account of use of the impugned trade mark and name CLAVIX and also for loss of reputation; d) An order of rendition of account of profit illegally earned by the defendants on account of use of the impugned trade mark and grant of a decree in favour of the plaintiff for an amount so ascertained; e) An order for costs of the proceedings CASE SETUP IN THE WRITTEN STATEMENT 4. well as defences on merits, which are as follows: The defendants filed a written statement raising preliminary issues as Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016

4.1. The defendant derived the impugned mark CLAVIX from Clopidogrel, being the active ingredient, and its therapeutic indication viz Atherosclerotic Vascular Incidences. The last letter X in the impugned mark indicates reduction in the reoccurrence of acute events. 4.2. The defendant coined and adopted the impugned mark in the year 2001 and has been using the same since then. 4.3. The defendant obtained necessary approvals from the relevant authorities for manufacturing of CLAVIX tablets on 27th June 2001 and 12th July 2001. 4.4. The defendant no.1 applied for registration of the impugned mark in class 5 vide application no.1634650 dated 26th December 2007 and the same is pending. 4.5. Since the adoption and first use of the impugned mark in 2001, the defendant has built up an enviable reputation thereunder. The defendant’s sales figures under the impugned mark since the financial year 2001-02 are set out below:

4.6. The defendant has spent a huge amount of money for promoting the sale of its drug under the impugned mark such as through publicity media Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 covering specialty doctors, hospitals, chemists, symposiums, CME programs, medical journals, etc. The defendant’s marketing expenditure figures towards the impugned drug since the financial year 2001-02 are set out below:

4.7. The defendant’s drug under the impugned mark has acquired distinctiveness and enjoys great reputation and goodwill among the medical professionals and other members of trade and public across India. 5.

In its replication, the plaintiff has reaffirmed its assertions made in the plaint. Additionally, the plaintiff has provided its global sales figures (in million Euros) since the year 1998, which are reproduced below: Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 PROCEEDINGS IN THE SUIT 6. 7. 8. Summons in the suit were issued on 12th December 2008. The defendants entered appearance on 11th February 2009. The suit was initially filed only as an action for passing off. The plaintiff filed an application, being I.A. 8876/2009, seeking amendment of plaint in order to make averments in relation to infringement of its registered trade mark and seek a decree of permanent injunction on the basis of infringement. The said application was allowed on 4th September 2009 and the plaint was amended qua inclusion of averments in relation to infringement of the mark 9. suit: . On 17th March 2010, the following issues were framed in the present Whether the defendant’s mark CLAVIX is deceptively similar to the Whether the plaintiff is the registered proprietor/ owner of the mark

#1. PLAVIX, as claimed? OPP 2. Whether the defendant’s use of the mark CLAVIX constitutes infringement and/ or passing off of the plaintiff’s mark/ label PLAVIX? OPP 3. plaintiff’s mark PLAVIX? OPP 4. Whether the defendant’s trade mark CLAVIX does not infringe the plaintiff’s registered mark PLAVIX, as a result of Section 17 of the Trade Marks Act, 1999? OPD 5. mark CLAVIX for medicinal products in India? OPD 6. 7. Whether there is any delay in filing the present suit? Relief. Whether the defendant is the prior and/ or bona fide user of the

#10. The plaintiff filed an application, being I.A. 12027/2011, seeking to place additional documents on record. On 1st August 2011, the Court allowed the said application and permitted the additional documents filed on behalf of Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 the plaintiff along with the affidavits of its witnesses to be taken on record, reserving the right of the defendant to object to the said additional documents. 11. The plaintiff changed its name from Sanofi Aventis to Sanofi and filed an application, being I.A. 184/2012, to bring the aforesaid change of name on record. The Court allowed the aforesaid application vide order dated 6th January 2012. 12. The plaintiff filed an application, being I.A. 185/2012, for appointment of a local commissioner to record evidence in the suit. The said application was allowed on 28th March 2012 and the Court appointed Mr. Raman Kapur, senior advocate as the local commissioner for recording of evidence of the parties. 13. The plaintiff filed I.A. 6930/2013 for amending the list of witnesses and I.A. 6931/2013 seeking leave to place additional documents on record. On 4th January 2014, the Joint Registrar dismissed I.A. 6931/2013. Vide the same order, the plaintiff was permitted to lead evidence of its additional witness Mr. Subarto Panda. 14. The plaintiff filed a chamber appeal against the aforesaid order passed by the Joint Registrar. Vide order dated 19th March 2014, the chamber appeal was allowed subject to costs. Accordingly, the documents mentioned at serial numbers 1 to 7, 10 and 11 of Annexure A to I.A. 6931/2013 were permitted to be taken on record and the plaintiff was also permitted to examine its additional witness Ms. Kalpana Jaswal. However, the documents mentioned at serial numbers 8 and 9 of Annexure A to I.A. 6931/2013 were not pressed by the plaintiff in the chamber appeal. Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016

#15. On 14th July 2015, the Court allowed the defendant’s application, being I.A. 11737/2015, seeking leave to place additional documents on record subject to costs. 16. The plaintiff filed an application, being I.A. 25880/2015, seeking amendment of plaint, i.e., paragraph 18 (regarding alleged loss suffered by the plaintiff from several lakhs to crores), paragraph 21 (valuation clause from Rs. 20,01,800/- to Rs. 2,00,01,300/-) and paragraph 22 (prayer clause claiming damages of Rs. 1 crore). On 5th January 2016, the said application was allowed. On the same date, the Registry was directed to re-register the suit and assign it a fresh number as the present suit involves a commercial dispute. 17. The following witnesses appeared on behalf of the plaintiff: (i) Mr. Tarun Bhatnagar (PW-1) (ii) Ms. Kalpana Jaswal (PW-2) (iii) Mr. Subroto Panda (PW-3) (iv) Mr. Rajesh Oberoi (PW-4)

#18. On behalf of the defendant, Mr. Chandrashekhar Yagnik appeared as the sole witness. 19. As per the report of the local commissioner, the recording of evidence of the parties was closed on 23rd April 2018. 20. 15th January 2025, 18th February 2025, 20th March 2025, 15th May 2025, 18th I have heard submissions on behalf of the parties on 10th January 2025, July 2025, 1st August 2025, 31st October 2025, 5th December 2025, 16th February 2026 and 19th March 2026, when the judgment was reserved. 21. My issue-wise findings are as under: Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 Issue no.1 – Whether the plaintiff is the registered proprietor/ owner of the mark PLAVIX, as claimed? OPP 22. At the outset, the defendant has raised an objection that the plaintiff is not the registered proprietor/ owner of the mark PLAVIX as the plaintiff in the present suit is Sanofi Aventis whereas the application for registration of the mark PLAVIX has been filed in the name of Sanofi. It is thus submitted that the plaintiff has failed to show the flow/ transfer of rights over the mark PLAVIX in its favour. 23. It is submitted on behalf of the plaintiff that an entity Sanofi Synthelabo had acquired the pharmaceutical and lab testing company Aventis and changed its name to Sanofi Aventis in August 2004. Later on, in May 2011, the plaintiff’s name was changed to Sanofi. Analysis 24. It is an undisputed position that the word mark PLAVIX is registered in the name of Sanofi and the device mark is registered in the name of Sanofi Synthelabo. The plaintiff has placed on record the legal proceeding certificates in respect of the registrations obtained for the aforesaid trade marks. The details of the aforesaid legal proceeding certificates are as follows: a. Trade mark application for the word mark PLAVIX bearing no.652794 filed on 20th January 1995 in class 5, registered in the name of Sanofi on 13th August 2013 [Exhibit PW-4/3 and Exhibit PW-4/4]. b. Trade mark application for the device mark bearing no.806651 filed on 17th June 1998 in class 5, registered in the name of Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 Sanofi Synthelabo on 25th August 2005 [Exhibit PW-1/9, Exhibit PW- 4/1 and Exhibit PW-4/2].

#25. Mr. Tarun Bhatnagar, PW-1 has deposed in his evidence that the application for the device mark was initially filed in the name of Sanofi Synthelabo, the plaintiff’s predecessor. Subsequent to change of name of the plaintiff from Sanofi Aventis to Sanofi, it has taken necessary steps to record the change of name before the Registrar of Trade Marks by filing the form TM-33, which has been marked as Mark K. 26. As noted above, issues were framed in the present suit on 17th March

#2010. The objection taken on behalf of the defendant that the plaintiff in the present case is Sanofi Aventis whereas the mark PLAVIX has been applied for registration by Sanofi, no longer survives in view of the amendment of plaint carried out in terms of the order dated 6th January 2012 wherein it was noted that the name of the original plaintiff Sanofi Aventis has been changed to Sanofi. A copy of the commercial register evidencing the change of name of the plaintiff on 6th May 2011 has also been filed [Exhibit PW-1/23]. 27. In view of the above, the issue no.1 is decided in favour of the plaintiff. Issue no.2 – Whether the defendant’s use of the mark CLAVIX constitutes infringement and/ or passing off of the plaintiff’s mark/ label PLAVIX? OPP Issue no.3 – Whether the defendant’s mark CLAVIX is deceptively similar to the plaintiff’s mark PLAVIX? OPP Issue no.4 – Whether the defendant’s trade mark CLAVIX does not infringe the plaintiff’s registered mark PLAVIX, as a result of Section 17 of the Trade Marks Act, 1999? OPD Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 Issue no.5 – Whether the defendant is the prior and/ or bona fide user of the mark CLAVIX for medicinal products in India? OPD 28. Since all the aforesaid issues are connected, I shall take them up for adjudication together. 29. shall take up the aspect of infringement. Issue no.2 is premised on infringement as well as passing off. First, I Insofar as infringement is concerned, the plaintiff has made the Submissions of the plaintiff – Infringement 30. following submissions: 30.1. The plaintiff is the registered proprietor of the word mark PLAVIX with effect from 20th January 1995 and the device mark effect from 17th June 1998 in class 5. On the other hand, the defendant’s impugned mark CLAVIX has not been registered till date. 30.2. The defendant’s alleged use of the impugned mark since 2001 is subsequent to the date of registration of the plaintiff’s marks PLAVIX and . Thus, the defendant is not entitled to a defence under Section 34 of the Trade Marks Act, 1999 (hereinafter ‘Act’). 30.3. The impugned mark is visually, structurally and phonetically similar to the plaintiff’s marks. The defendant has merely substituted the letter ‘P’ in the plaintiff’s mark with the letter ‘C’ to form the impugned mark. 30.4. The word PLAVIX the essential element of the mark . Therefore, Section 17 of the Act is not attracted in the present case. Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016

30.5. The competing marks are used for identical pharmaceutical preparation with the active ingredient Clopidogrel bisulphate and are used in relation to an anti-thrombosis drug. 30.6. As the competing marks are deceptively similar, and the competing products are identical and are sold side-by-side in pharmacies, likelihood of confusion is inevitable and a case for infringement is made out under Section 29 of the Act. 30.7. Even if the competing products are categorized under Schedule H of the Drugs and Cosmetics Rules, 1945, the plaintiff’s claim for infringement is not diluted as likelihood of confusion still subsists on account of factors such as negligence or mistake in reading the prescription, etc. 30.8. It is well settled that courts must be stricter in assessing likelihood of confusion in infringement/ passing off disputes involving medicinal products especially in a country like India where the ordinary consumer may be illiterate or semi-literate and the potential for harm is much higher. Further, the competing products are of an emergency/ life-saving nature and thus extra caution ought to be exercised. Reliance is placed on Cadila Health Care v. Cadila Pharmaceuticals1. Submissions of the plaintiff – Dishonest Adoption 30.9. The reasoning given by the defendant to adopt the impugned mark is dishonest and merely an afterthought. The term Atherosclerotic Vascular Incidences does not exist in medical literature. The correct term for the disease is Atherosclerotic Cardiovascular Disease (ASCVD). Further, the letter X 1 2001 SCC OnLine SC 578 Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 denotes an increase/ multiplication of activities, and not a reduction as asserted by the defendant. 30.10. The defendant was already using the marks PREVA and PRASUGEL for the impugned drug and had no bona fide reason to adopt a deceptively similar impugned mark. The reason for adoption of the impugned mark is only to boost sales by causing confusion in the market and association with the plaintiff’s drug. 30.11. The defendant failed to show proof of having carried out any market survey or search on the database of the Trade Marks Registry before adopting the impugned mark. Reliance in this regard is placed on the judgments in FMI v. Midas Touch Metalloys2, Adidas AG v. Keshav H. Tulsiani3 and Himalaya Wellness Company v. Wipro Enterprises4. Submissions of the defendant – Infringement 31. With respect to the issue of infringement, the defendant has made the following submissions: 31.1. The defendant’s use of the impugned mark since 2001 is not disputed by the plaintiff. Being the user of the impugned mark since 2001 as opposed to the plaintiff’s alleged use of the mark PLAVIX in India since 2003, the defendant is the prior user of the impugned mark. 31.2. The plaintiff has failed to place any documentary evidence on record to show use of the mark PLAVIX in India until the year 2006. Since the plaintiff has failed to use the mark PLAVIX in India till 2006, the defendant is entitled to the defence under Section 34 of the Act. Reliance is placed on the 2 2025 SCC OnLine Del 4 3 2024 SCC OnLine Del 4940 4 2023 SCC OnLine Del 4035 Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 judgement of the Supreme Court in Neon Laboratories v. Medical Technologies5. 31.3. First letter of any mark is the most significant, which, in the present case, is phonetically and visually different in both the competing marks. Thus, the competing marks are significantly dissimilar. 31.4. The plaintiff obtained registration for the mark PLAVIX despite opposition by a third-party which owned the mark FLAVIX. Thus, the competing marks in the present case, having different first letters, cannot be contended to be similar. 31.5. A single bench of the High Court of Punjab and Haryana has also held that the marks FLAVIX and CLAVIX are phonetically, structurally and visually different. Thus, the competing marks in the present suit ought to be held different in order to maintain judicial consistency. 31.6. In any event, the amended plaint filed by the plaintiff asserts infringement of the mark . Thus, the plaintiff cannot assert any right over the word mark PLAVIX in terms of Section 17 of the Act. 31.7. The competing products are completely distinct in their overall getup, look and appearance. The packaging, colour scheme, price, etc. of the competing products are different in the present case, which factors are sufficient to rule out any likelihood of confusion between the competing marks. 31.8. The plaintiff has failed to provide any proof of likelihood of confusion or actual confusion also on account of the fact that both the competing products are Schedule H medicines, which requires a medical prescription for 5 2015 SCC OnLine SC 905 Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 its dispensation. This precludes any likelihood of confusion or deception in the minds of the purchasing public or members of the trade. Submissions of the defendant – Dishonest Adoption 31.9. The defendant bona fidely adopted the impugned mark CLAVIX, i.e., the letters Cl from Clopidogrel being the active ingredient and the letters AVI from its therapeutic indication viz Atherosclerotic Vascular Incidences. The letter X indicates variables and such use of the letter X is common in medicinal and non-medicinal products. Analysis – Infringement 32. The plaintiff is the registered proprietor of the word mark PLAVIX and the device mark in class 5. The registration of the device was granted in favour of the plaintiff on 25th August 2005 with effect from 17th June 1998 [Exhibit PW-1/9, Exhibit PW-4/1 and Exhibit PW-4/2] and of the word mark PLAVIX was granted in favour of the plaintiff on 13th August 2013 with effect from 20th January 1995 [Exhibit PW- 4/3 and Exhibit PW-4/4]. 33. The defendant applied for registration of the impugned mark CLAVIX in class 5 on 26th December 2007 with the user claim since 12th July 2001 [Exhibit DW-1/4]. However, it is an admitted position that the registration is yet to be granted in favour of the defendant on account of opposition filed by the plaintiff. 34. As per Section 29(1) of the Act, a registered trade mark is infringed by a person who, not being a registered proprietor, uses, in the course of trade, a mark identical with or deceptively similar to the mark in relation to goods or Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 services in respect of which it is registered. In terms of Section 29(2)(b) of the Act, infringement would occur when a person, who is not a registered proprietor, uses, during the course of trade, a similar mark in relation to similar or identical goods in respect of which the trade mark is registered and such use is likely to cause confusion. 35. The Supreme Court, in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories6, highlighted the distinction between the ingredients for an action for passing off and an action for infringement of trade marks in light of Section 21 of the Trade Marks Act, 1940, which is pari materia with Section 29 of the Trade Marks Act, 1999. The relevant observations of the Supreme Court in Kaviraj Pandit (supra) are set out below: “28. …While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered, trade mark for the vindication of "the exclusive right to the use of the trade mark in relation to those goods" (Vide S. 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, 6 1964 SCC OnLine SC 14 Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

#29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.” [emphasis supplied]

#36. The legal position that emerges from the aforesaid judgement can be summarized as under: Signature Not Verified Signed By:VIVEK MISHRA Signing Date:28.04.2026 15:48:26 CS(COMM) 120/2016 (a) Infringement is a statutory remedy available to a registered proprietor of a trade mark whereas passing off is a common law remedy. (b) In an action for infringement, where the similarity between the competing marks is evident and the Court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff’s rights are violated. (c) When the competing marks are not identical, the plaintiff is required to establish that the impugned mark is deceptively similar to the plaintiff’s registered trade mark and the same is likely to deceive or cause confusion.

#37. The aforesaid judgment has been consistently followed by courts across India including the Supreme Court and this Court [please see Ramdev Food Products v. Arvindbhai Rambhai Patel7, Renaissance Hotel Holdings v. B. Vijaya Sai8 and Zydus Wellness Products v. Cipla Health9]. 38. At this stage, it may be apposite to compare the registered trade marks of the plaintiff with the impugned mark of the defendant. Plaintiff’s Marks Defendant’s Impugned Mark PLAVIX CLAVIX

#39. The plaintiff’s mark PLAVIX is a coined term and thus inherently distinctive. It does not bear any reference to the active ingredient the drug is derived from or the ailment it is prescribed for. Hence, the plaintiff’s mark qualifies for the highest level of protection.