Cause Title: FDC Limited v. Palsons Derma Private Limited
Case Number: CS(COMM) 487/2023
Neutral Citation: 2025 SCC OnLine Del 144843
Date of Order: 15 April 2025
Court: High Court of Delhi at New Delhi
Presiding Judge: Hon’ble Mr. Justice Amit Bansal
This matter involved a commercial intellectual property dispute between the plaintiff, FDC Limited, and the defendant, Palsons Derma Private Limited. FDC sought an ad interim injunction restraining the defendant from using the mark "CHROMALITE", alleging it to be deceptively similar to its own registered mark "KROMALITE".
FDC Limited, the plaintiff, a pharmaceutical company incorporated in 1940, claimed to be the proprietor and prior user of the coined mark "KROMALITE", used in connection with dermatological formulations, specifically skin brightening creams. The mark was adopted in December 2014 and commercially launched in April 2016. FDC registered the mark in Class 5 and also filed a subsequent application in Class 3. Their product was available nationwide and across major online pharmacies, with net sales from 2016 to 2023 evidencing commercial usage and public association with the mark.
In January 2023, FDC discovered the defendant's products under the mark "CHROMALITE", which was adopted by Palsons in 2016 and launched in September 2022. FDC issued a cease-and-desist notice and filed rectification petitions against Palsons’ registrations. As no counter statements were filed, they proceeded with the suit alleging passing off and infringement.
Palsons, in its defense, claimed independent and bona fide adoption of the mark derived from the Greek word "CHROMA" and denied knowledge of the plaintiff’s brand. It stated that it had previously marketed similar products under the mark "FAIRLITE" but rebranded due to social pressures against the term “fair.” It also argued that their products were distinct in packaging and trade dress, used a different customer base, and were sold primarily on prescriptions.
Justice Amit Bansal assessed the case primarily on the principles of passing off, holding that infringement would not apply due to both parties holding trademark registrations. Relying on Supreme Court precedent, particularly S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the Court reiterated that common law rights of a prior user take precedence over statutory rights of a subsequent registered proprietor. The criteria for passing off were emphasized—goodwill, misrepresentation, and damage.
The Court found that FDC was indeed the prior user of the mark "KROMALITE", having consistently marketed the product since April 2016, and that it had achieved substantial goodwill and market presence. In contrast, Palsons only began use in September 2022. The marks "KROMALITE" and "CHROMALITE" were found to be phonetically identical and structurally similar, with the only difference being the substitution of “K” with “CH”, a distinction held to be phonetically negligible.
The trade dress used by Palsons was also found to resemble that of FDC’s product. Despite Palsons’ assertions of distinctive packaging, the Court held that minor variations such as geometric patterns (e.g., a double helix) were insufficient to overcome the likelihood of consumer confusion, especially considering overlapping trade channels and the identical purpose of the products—skin brightening and depigmentation.
Arguments that the impugned products were sold only via prescription or at a premium price were dismissed. The Court observed that the products were readily available on online platforms, making them accessible to the general public without prescriptions, thereby increasing the potential for confusion.
Further, the Court dismissed Palsons’ arguments of innocent adoption and lack of knowledge, emphasizing that such a defense is not tenable in cases of passing off, as per Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65. The failure to conduct a due diligence search, especially for a commercially significant player in the pharmaceutical domain, was deemed reckless.
Palsons’ reliance on coexistence of other "CHROMA"-formative marks was also rejected for want of evidence showing active commercial use or degree of similarity to the plaintiff’s mark. The coined nature of "KROMALITE" warranted a higher threshold of protection.
Allegations of forum shopping and delay were also found meritless. The Court held that jurisdiction was established through a purchase of the impugned product by the plaintiff’s representative in Delhi. Moreover, the timeline between the plaintiff gaining knowledge of the defendant’s product in January 2023, issuing a legal notice, filing rectifications, and then the present suit in July 2023, indicated no inordinate delay.
Accordingly, the Court found a prima facie case in favour of the plaintiff, noting irreparable harm and balance of convenience also tilted towards the plaintiff. The interim injunction was granted.
Final Relief Granted :
The Court, vide its order dated 15 April 2025, allowed I.A. 13241/2023. The defendant, Palsons Derma Private Limited, and persons acting in concert with it were restrained from manufacturing, marketing, advertising, offering for sale, or selling any product under the mark “CHROMALITE” or any deceptively similar mark to “KROMALITE”, until the final adjudication of the suit.
