Brief Introductory Head Note — Summary of Case
This case decides an important issue in pharmaceutical trademark law: Can a company claim exclusive rights over a trademark that is created by shortening (clipping) a generic medicine name that is internationally recognised by the World Health Organisation? The High Court held that it cannot. Even when a trademark is formally registered, if it is substantially taken from a globally recognised International Non-Proprietary Name (INN)—which by nature belongs to the public—it cannot be monopolised. The Court also clarified that the mere fact that the rival trademark contains the full clipped portion of the Plaintiff’s trademark is not automatically infringement if the common part is generic or descriptive. The ruling heavily relied on earlier decisions of the Supreme Court and the Delhi High Court on descriptive marks and public domain names.
Factual Background
The Plaintiff, Aristo Pharmaceutical Private Limited, is a pharmaceutical company engaged in manufacturing pain-relief medicines. In 2003, the Plaintiff invented the brand name “ACECLO” by trimming the last five letters from the generic name Aceclofenac, an anti-inflammatory pain medicine recognised as a global INN by the World Health Organisation. Initially, the Plaintiff applied for registration with the prefix “ARISTO ACECLO”, which was granted in 2005. However, instead of using the full mark as registered, the Plaintiff marketed its products using only “ACECLO” prominently, making the prefix ARISTO insignificant on medicine packaging. Later in 2011, the Plaintiff also secured registration of the word mark “ACECLO” and its variant “ACECLO-MR.”
In 2024, the Plaintiff discovered that the Defendant Healing Pharma India Private Limited launched tablets under the name “ACECLOHEAL-MR,” “ACECLOHEAL-SP,” and “ACECLOHEAL-PLUS.” The Plaintiff issued a cease-and-desist notice in October 2024, claiming infringement and alleging that the Defendant’s mark unfairly used its registered trademark. The Defendant denied this claim, stating that “ACECLOHEAL” was an honest adoption combining first six letters of INN “Aceclofenac” + its own business name suffix “Heal”, and that no company can claim exclusive rights over an INN or any shortened (clipped) part of it under Section 13 of the Trade Marks Act, 1999.
Procedural History and Procedural Details
The Plaintiff filed Commercial IP Suit (L) No. 25932 of 2025 along with Interim Application (L) No. 26226 of 2025 before the Commercial Division of the High Court at Bombay seeking a temporary injunction to stop the Defendant from using ACECLOHEAL or ACECLO in any form. The matter was heard by Hon’ble Justice Sharmila U. Deshmukh, reserved on 14 November 2025, and finally pronounced on 25 November 2025. The Court analysed evidence including photographs, invoices, registrations, and the list of INNs produced by the Defendant.
Aristo Pharmaceutical Vs Healin…
Core Dispute (Issue for Determination)
The central legal question was:
“Does formal registration of a trademark guarantee exclusive rights if the trademark is heavily derived from a globally accepted generic INN medicinal name?”
Detailed Reasoning and Judicial Discussion by the Court (With Case Law and Citations Examined for Reasoning)
The Court began by observing that the Plaintiff’s original 2005 registration was “ARISTO ACECLO.” However, the Plaintiff itself admitted that it did not use the mark in the manner it was registered, but instead used only the clipped term ACECLO prominently, reducing the ARISTO prefix to insignificance. The Court held that this inconsistent usage undermines any claim of acquired distinctiveness from 2003 onward, because a company cannot claim reputation for a mark it never actually commercially used.
The core legal defence was based on Section 13 of the Trade Marks Act, 1999, which prohibits registration of:
commonly used or accepted names of a chemical compound, and
names declared by the World Health Organisation as international non-proprietary names (INN), or any name deceptively similar to such INN.
Section 13 also creates a legal assumption (deeming fiction) that any such mark registered in violation of this rule shall be considered wrongly entered or wrongly remaining on the register under Section 57, even if there is no direct challenge to its validity filed by a party.
The Defendant produced official WHO INN lists showing that “Aceclofenac” is an INN, meaning it is a public domain generic medicine name that no company can own exclusively. The Court rejected the Plaintiff’s interpretation that “deceptively similar” means only similar sounding words like “Aceclodenac” and not shortened words like “Aceclo.” The Court reasoned that:
A shortened or clipped mark that still carries the same meaning, association, or connotation of the original INN is also non-proprietary, descriptive, and falls within Section 13 prohibition.
To support this reasoning, the Court cited the Supreme Court decision in F. Hoffmann-La Roche & Co. Ltd. vs. Geoffrey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062 (Neutral Citation not provided), holding that when part of a rival trademark is descriptive, the court must compare only the “distinct portions,” not the common descriptive part.
The Court also relied on a landmark principle from McCarthy on Trademarks and Unfair Competition, which states that abbreviated versions of a generic medicine name are still generic if they continue to carry the original meaning or association.
Further, the Court strongly applied the Delhi High Court’s ruling in Sun Pharmaceutical Laboratories Ltd. vs. Hetero Healthcare Ltd., 2022 SCC OnLine Del 2580 (marked before Supreme Court for principle reference), which held that when both parties adopt parts of INN name “Letrozole,” no exclusivity can be claimed for clipped portions.
Another crucial citation examined was Panacea Biotec Ltd. vs. Recon Ltd., 1996 PTC 16, where the Delhi High Court ruled that a mark derived from a generic medicine name is descriptive, cannot claim monopoly, and exclusive rights must be denied, because allowing ownership over generic pharmaceutical name is dangerous for public interest, competition, and free trade.
The Court then compared rival marks ACECLO vs. ACECLOHEAL, holding:
Both are clipped from “Aceclofenac” by deleting last five letters. The Defendant only added its own company identity word “Heal” to it. This is prima facie honest adoption. Because the shared part is INN-derived and descriptive, the Defendant cannot be restrained from using it.
On passing-off, the Court held that passing-off requires intentional misrepresentation, i.e., Defendant must attempt to sell its goods by pretending they are Plaintiff’s goods. The Court saw no such misrepresentation in packaging, font, style, or pricing. Both medicine packs visibly looked different. The Defendant also produced evidence showing several other companies also use clipped term “Aceclo,” proving it is widely used in the market. Pricing difference between rival products was also admitted.
Thus, the likelihood of public confusion is very low, because:
Medicine is Schedule-H drug (only on prescription),
Packaging is visually distinguishable,
Price is different,
And the common part of mark is descriptive and public domain.
Finally, the Court held:
When a trademark is taken substantially from an INN or its shortened part, registration does not grant exclusive monopoly, Section 13 overrides exclusivity claims, and infringement and passing-off relief must fail.
Decision (Operative Order)
The Interim Application seeking injunction was dismissed, holding that the Plaintiff has failed to establish a prima facie case of infringement or passing-off, because the trademark is derived from a global INN which is non-proprietary and public property.
Aristo Pharmaceutical Vs Healin…
Concluding Note
This ruling reinforces a balanced, fair, and public-interest-aligned approach in pharmaceutical trademark disputes. It highlights that trademark law, even when deployed in a commercial suit, must serve competition, consumer welfare, and prevent unfair monopolies—especially in medicines which directly impact the common man. It makes clear that while innovators can brand their medicines, they cannot own or block generic or internationally recognised medicine names, even in clipped form, if the shortened mark continues to reflect the same global INN association. The judgement is helpful not only for law students but also for manufacturers of generic medicines, chemists, and consumers fighting inflated monopoly claims.
Case Details (As Asked to be Reflected at Bottom)
Case Title: Aristo Pharmaceutical Private Limited Vs. Healing Pharma India Private Limited & Others
Order Date: 25 November 2025
Case Number: Commercial IP Suit (L) No. 25932 of 2025
Neutral Citation: 2025:BHC-OS:22177
Court: High Court of Judicature at Bombay, Commercial Division
Judge: Hon’ble Justice Sharmila U. Deshmukh
At the end, add this text:
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.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested Journal Article Titles
Here are five suitable research paper titles for legal journal publication:
“Public Domain vs Private Monopoly: The ACECLO Trademark Battle and Section 13 Interpretation.”
“Clipped INN-Derived Pharmaceutical Trademarks: The Thin Line Between Branding and Descriptive Public Property.”
“Trademark Exclusivity in Medicines: Why Global INN Names Cannot Be Owned Even After Registration.”
“Pharmaceutical Trademark Infringement and Passing-Off Claims in INN-Derived Marks: A Consumer Welfare Perspective.”
“Section 13 of the Trade Marks Act, 1999 as a Shield Against Monopolization of Generic Drug Names: The ACECLOHEAL Dispute.”
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The High Court of Judicature at Bombay, Commercial Division, in the case Aristo Pharmaceutical Private Limited vs. Healing Pharma India Private Limited & Others, by order dated 25 November 2025, in Commercial IP Suit (L) No. 25932 of 2025, decided by Hon’ble Justice Sharmila U. Deshmukh, has refused to grant interim injunction to the Plaintiff in a pharmaceutical trademark infringement and passing-off suit.
The dispute arose when the Plaintiff, holder of the registered trademark ACECLO, claimed that the Defendant’s adoption of ACECLOHEAL-MR, ACECLOHEAL-SP, and ACECLOHEAL-PLUS amounted to infringement and dishonest imitation. The Plaintiff argued that Section 28 of the Trade Marks Act, 1999 gave it exclusive rights over the mark and that no similarity challenge had been raised against its registration.
The Defendant countered that ACECLO is merely a clipped version of the WHO-recognised International Non-Proprietary Name “Aceclofenac,” and therefore falls under Section 13 of the Trade Marks Act, 1999, which prohibits monopoly or proprietary claims over INNs or any part thereof if the clipped form still carries the same meaning. The Defendant also argued that it had honestly added the suffix “Heal”—taken from its own company identity—to create a distinct composite mark.
The Court agreed with the Defendant, holding that a clipped or shortened version of an INN, which still points to the generic medicine, remains descriptive and public property (publici juris), and cannot be monopolized or protected exclusively, even if registered. The Court also noted that both marks were visually, phonetically and conceptually different in font, packaging and trade dress, and that the medicines were Schedule-H prescription drugs, further reducing the possibility of confusion. No evidence of intentional misrepresentation for unlawful gain (a core element of the tort of passing-off) was found.
Accordingly, the Interim Application seeking injunction was dismissed.=======
The High Court of Judicature at Bombay, Commercial Division, in the case Aristo Pharmaceutical Private Limited vs. Healing Pharma India Private Limited & Others, by order dated 25 November 2025, in Commercial IP Suit (L) No. 25932 of 2025, decided by Hon’ble Justice Sharmila U. Deshmukh, has refused to grant interim injunction to the Plaintiff in a pharmaceutical trademark infringement and passing-off suit.
The dispute arose when the Plaintiff, holder of the registered trademark ACECLO, claimed that the Defendant’s adoption of ACECLOHEAL-MR, ACECLOHEAL-SP, and ACECLOHEAL-PLUS amounted to infringement and dishonest imitation. The Plaintiff argued that Section 28 of the Trade Marks Act, 1999 gave it exclusive rights over the mark and that no similarity challenge had been raised against its registration.
The Defendant countered that ACECLO is merely a clipped version of the WHO-recognised International Non-Proprietary Name “Aceclofenac,” and therefore falls under Section 13 of the Trade Marks Act, 1999, which prohibits monopoly or proprietary claims over INNs or any part thereof if the clipped form still carries the same meaning. The Defendant also argued that it had honestly added the suffix “Heal”—taken from its own company identity—to create a distinct composite mark.
The Court agreed with the Defendant, holding that a clipped or shortened version of an INN, which still points to the generic medicine, remains descriptive and public property (publici juris), and cannot be monopolized or protected exclusively, even if registered. The Court also noted that both marks were visually, phonetically and conceptually different in font, packaging and trade dress, and that the medicines were Schedule-H prescription drugs, further reducing the possibility of confusion. No evidence of intentional misrepresentation for unlawful gain (a core element of the tort of passing-off) was found.
Accordingly, the Interim Application seeking injunction was dismissed.=======
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