Apex Laboratories Pvt. Ltd. Vs. Macleods Pharmaceuticals Ltd.

Honest concurrent use is not a defense unless the mark is registered

Introduction:This case pertains to a trademark infringement and passing-off dispute between Apex Laboratories Pvt. Ltd. (plaintiff) and Macleods Pharmaceuticals Ltd. (defendant). The dispute arises over the alleged deceptive similarity between the plaintiff’s registered trademark "BILTEN" and the defendant’s mark "BELATIN", both used for antihistamine pharmaceutical preparations containing Bilastine as the main ingredient. The plaintiff sought a permanent injunction restraining the defendant from using the mark "BELATIN" and demanded the surrender of infringing materials, account of profits, and damages.The defendant, however, contended that it was the prior adopter of the mark "BELATIN", having conceived it before the plaintiff’s trademark registration. The court was required to determine whether the defendant’s use of "BELATIN" constituted trademark infringement or passing off and whether prior adoption of a mark could be a defense against infringement.

Factual Background & Procedural History: Plaintiff’s Case (Apex Laboratories Pvt. Ltd.)  Laboratories adopted the trademark "BILTEN" in June 2019 and applied for registration on July 25, 2019, in Class 5 for pharmaceutical products.The trademark was officially registered under No. 4246358 in 2019.The product launch occurred in November 2019, following the grant of a drug license on October 15, 2019.The plaintiff noticed the defendant using the mark "BELATIN" for a Bilastine-based antihistamine in August 2020.Since both marks are phonetically and visually similar, Apex claimed this constituted infringement and passing off.Defendant’s Case (Macleods Pharmaceuticals Ltd.) conceived and adopted the mark "BELATIN" in May 2019 and applied for trademark registration on June 22, 2019 (Application No. 4214272).The defendant obtained a drug license on October 15, 2019, and launched the product in November 2019.It argued that pharmaceutical trademarks are often derived from the active pharmaceutical ingredient (API), and Bilastine-based trademarks are commonly formulated.The defendant claimed to be an honest and concurrent user and contended that the plaintiff's registration was based on a "proposed to be used" application, making Macleods the first actual user.

Court Proceedings:The case was filed under Sections 27, 28, 29, 134, 135 of the Trademarks Act, 1999, and Sections 51, 55, 62 of the Copyright Act, 1957.The Madras High Court granted an interim injunction restraining Macleods from using "BELATIN".Both parties submitted documentary evidence, including trademark applications, invoices, drug licenses, and promotional expenses.

Plaintiff’s Submissions (Apex Laboratories Pvt. Ltd.):Prior use: Apex argued that it adopted the mark in April 2019 and began actual sales in November 2019.Trademark registration: Apex’s trademark was officially registered, making it the first registered user.Deceptive similarity: "BILTEN" and "BELATIN" are phonetically and visually similar, causing a likelihood of confusion.Reputation and goodwill: Apex had established market presence and sales turnover, and the defendant’s mark diluted its brand identity.Judicial Precedents: The plaintiff relied on: Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) – Held that pharmaceutical trademarks require the highest degree of protection due to the risk of patient confusion.Neon Laboratories Pvt. Ltd. v. Medical Technologies Ltd. (2015) – Established that prior user rights take precedence over registration.

Defendant’s Submissions (Macleods Pharmaceuticals Ltd.): Prior adoption: Macleods conceived "BELATIN" in May 2019 and applied for registration before Apex’s application.Industry practice: Pharmaceutical trademarks often derive from the API (Bilastine), making similarities inevitable.Honest & concurrent use: Macleods had no intention to mislead consumers and had undertaken a trademark search before adoption.Defenses based on case law:Sun Pharmaceuticals v. Cipla (2007) – Held that prior trademark applicants have legitimate rights.Plus Systems v. Plus Computers (IPAB 2008) – Stated that actual use is not necessary to claim rights in a trademark.

Issues :The court examined the following: Whether "BILTEN" was a registered trademark?  Who was the prior user – Apex or Macleods?  Whether the trademarks "BILTEN" and "BELATIN" are deceptively similar?  Whether Macleods could claim "honest concurrent use"?

Prior Use Principle: Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 Cited by: Plaintiff (Apex Laboratories): The Supreme Court held that prior use of a trademark takes precedence over mere registration. Even if a defendant registers a mark earlier, the entity that first uses it in commerce has stronger rights.Relevance to this case:Apex Laboratories proved prior commercial use of "BILTEN" from November 2019, while Macleods only started selling "BELATIN" in February 2020.Thus, prior use rights overruled Macleods' claim of prior adoption.

Deceptive Similarity in Pharmaceutical Trademarks: Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952:Cited by: Plaintiff (Apex Laboratories):The Supreme Court emphasized higher protection standards for pharmaceutical trademarks due to the risk of consumer confusion and potential health hazards.Even minor phonetic or visual similarities can mislead doctors and patients, increasing the likelihood of prescribing errors.Key Observations (Paragraphs 22, 23, 26, and 27 of the Judgment):Courts should strictly assess confusion in pharmaceutical cases.The similarity of the names should be assessed from the perspective of an average consumer, not a highly trained expert.Relevance to this case:The marks "BILTEN" and "BELATIN" are phonetically and visually similar.Both are antihistamines containing Bilastine, increasing the risk of prescription errors.Following Cadila’s ruling, the court held that such similarity justified granting an injunction.

Strength of API-Based Trademarks: Wockhardt Limited v. Aristo Pharmaceuticals Ltd., (1999) 5 CTCOL 921 (Madras HC)Cited by: Plaintiff (Apex Laboratories):The Madras High Court ruled that even if a trademark is derived from an active pharmaceutical ingredient (API), it can still be protected if another mark deceptively resembles it.The defendant's use of SPASMO-FLEXON was found deceptively similar to the plaintiff’s SPASMO-PROXYVON, even though both derived from the word "Spasmo".Relevance to this case:Macleods argued that "BELATIN" was coined from the API "Bilastine", making it generic and non-protectable.The court rejected this defense, holding that API-based names can be protected if another mark is deceptively similar.

Honest Concurrent Use as a Defense: Abdul Rasul Nurullah v. Regal Footwear, 2023 SCC OnLine Bom 10:Cited by: Plaintiff (Apex Laboratories):The Bombay High Court ruled that "honest concurrent use" is a defense available only in trademark registration cases, not in infringement suits.If a mark is not registered, the defendant cannot claim concurrent use as a defense in an infringement case.Relevance to this case:Macleods had not obtained registration for "BELATIN", making its "honest concurrent use" defense invalid.The court ruled in favor of Apex, stating that concurrent use does not justify infringement.

No Defense of Honest and Concurrent Use in Infringement Cases: D. Adinarayana Setty v. Brook Bond Tea of India Ltd., 1959 SCC OnLine Kar 79 Cited by: Plaintiff (Apex Laboratories) & Considered by the Court:The Mysore High Court ruled that an "honest and concurrent user" can only be a valid argument if the defendant has successfully registered its trademark.A defendant who has not obtained trademark registration cannot claim this defense in an infringement lawsuit.Relevance to this case:Macleods was still awaiting registration for "BELATIN".Since Macleods' trademark was not yet registered, its defense under "honest concurrent use" was invalid.The court reaffirmed that only a registered concurrent user can claim protection under Section 12 of the Trade Marks Act, 1999.

Delay and Acquiescence: Dhariwal Industries Ltd. v. M.S.S. Food Products, AIR 2005 SC 1999 Cited by: Plaintiff (Apex Laboratories):The Supreme Court ruled that mere delay in filing a lawsuit does not amount to acquiescence unless the plaintiff actively permits or tolerates the defendant’s use.Relevance to this case:Macleods argued that Apex delayed filing the suit (filed in August 2020 while BELATIN was in use since February 2020).The court rejected this argument, stating that Apex filed the lawsuit soon after discovering Macleods' use.Since Apex opposed Macleods' trademark application, it could not be said to have acquiesced.

Court’s Final Conclusion Based on These Judgments:Apex Laboratories was the prior user, giving it stronger trademark rights (Syed Mohideen case). BILTEN and BELATIN were deceptively similar, justifying an injunction (Cadila Healthcare case). API-based trademarks can still be protected if confusion exists (Wockhardt case). Macleods could not claim honest concurrent use since its mark was unregistered (Regal Footwear and Adinarayana Setty cases). Delay did not amount to acquiescence, as Apex opposed Macleods' trademark application (Dhariwal Industries case).

Court’s Reasoning:Trademark Registration: Apex proved that it held the first registered trademark for "BILTEN".Prior Use vs. Prior Adoption: The court found that Macleods applied for registration first but used the mark commercially only in February 2020. Since Apex’s commercial use began in November 2019, Apex was the prior user.Deceptive Similarity: The court held that "BELATIN" was deceptively similar to "BILTEN", increasing the risk of consumer confusion.Honest Concurrent Use: The court ruled that honest concurrent use is not a valid defense in an infringement suit unless the mark is registered. Macleods had not obtained trademark registration, so the defense was invalid.Acquiescence: The court rejected Macleods’ claim that Apex acquiesced to its use of "BELATIN".

Final Decision:Injunction Granted: The court permanently restrained Macleods from using the mark "BELATIN".Liquidation Period: Macleods was given four months to sell existing inventory of "BELATIN".Damages Rejected: The court ruled that Apex had not proven financial loss, so no damages were awarded.Counterclaim Dismissed: Macleods' claim for ₹50,00,000 in damages was dismissed.

Concluding Note:This case reinforces the principle of prior use in trademark law. Key takeaways include: Trademark registration provides stronger protection, but prior use can override it. Pharmaceutical trademarks require a higher standard to prevent consumer confusion. Honest concurrent use is not a defense unless the mark is registered. Prior adoption does not automatically confer rights unless commercial use is established first.

Case Title: Apex Laboratories Pvt. Ltd. Vs. Macleods Pharmaceuticals Ltd.

Date of Order: January 23, 2025

Case No.: C.S. (Comm. Div.) No. 232 of 2020

Neutral Citation: 2025:MHC:211

Court: Madras High Court

Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.