'Acnestar' Phonetically Similar To 'Acnescar': Delhi High Court Rules In Favour Of Mankind Pharma In Trademark Infringement Suit

The Delhi High Court has restrained Maharashtra-based Brinton Pharmaceuticals from using the mark ACNESCAR, or any other mark which is confusing or deceptively similar to Mankind Pharma's ACNESTAR.

A division bench comprising Justices C. Hari Shankar and Om Prakash Shukla observed that ACNESCAR is phonetically nearly identical to ACNESTAR and unless the two words are pronounced syllable by syllable, they are indistinguishable.

“A clear case of near phonetic identity, therefore, exists between the marks…it is settled that, in respect of pharmaceutical products, a greater degree of care is required to be exercised by courts while assessing the aspect of infringement,” it said.

The Court was dealing with an appeal preferred by Mankind Pharma, following rejection of interim relief by the Commercial Court.

The Commercial Court was of the view that though the test is stricter for pharma products, ACNESTAR and ACNESCAR are qualitatively different, having different functions.

While Mankind's ACNESTAR is used to treat skin acne, Brinton's ACNESCAR is intended to treat the scars left behind after removal of acne.

Counsel appearing for the Defendant-company also argued that both products are used at different stages of the affliction, thereby there is no scope for confusion.

The High Court however held that at the end of day, both products are intended to treat associated skin ailments and they, therefore, cater to the same consumer segment.

“It cannot, therefore, be said that they are either qualitatively different or having different functions. Besides it has to be remembered that Section 29(2)(b) of the Trademarks Act uses the word “similar”. If two marks are similar, and are used for similar goods or services, and such use results in likelihood of confusion in the mind of a consumer of average intelligence and imperfect recollection, the tort of infringement ipso facto stands committed,” it held.

Defendant's counsel also contended that ACNESCAR is a coined portmanteau of “ACNE” and “SCAR”.

The High Court held that while it is open to any manufacturer to coin a mark under which it seeks to manufacture and sell its products, it has to take care that the mark is not confusingly or deceptively similar to any registered trademark.

“If it is, he risks the chance of an injunction. Innocence is no defence. Infringement is not dependent on mala fides or mens rea,” the Court said.

The Commercial Court had also held that the make and design of the two products are different.

The High Court however ruled that difference in appearance is of significance only in a case of passing off.

“Infringement is to be decided on a mark to mark basis,” it said and granted interim relief to Mankind.

Appearance: Mr. Amit Sibal, Sr. Adv. with Mr. Hemant Daswani, Ms. Saumya Bajpai, Ms. Pranjal, Mr. Ankit Handa and Ms. Suditi Batra, Advs. for Appellant; Mr. Rahul Vidhani, Adv. for Respondent

Case title: Mankind Pharma Limited v. Brinton Pharmaceuticals Limited

Case no.: FAO (COMM) 166/2024

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