Introduction
In the realm of intellectual property, trademarks serve as the lifeblood of brand identity, distinguishing one entity’s goods from another in the marketplace. The case of Glanbia Performance Nutrition Limited vs Hercules Nutra Pvt. Ltd. & Anr., adjudicated by the High Court of Delhi on April 2, 2025, exemplifies a classic trademark dispute where the prior use, goodwill, and deceptive similarity of marks collide. This legal showdown pits Glanbia Performance Nutrition Limited, an Ireland-based nutritional giant, against Hercules Nutra Pvt. Ltd., an Indian company, over the use of the “ON” mark with a swoosh arrow device in the nutraceutical industry. The judgment not only resolves a contentious cancellation petition but also underscores the sanctity of prior adoption and the perils of dishonest imitation in trademark law.
Detailed Factual Background
Glanbia Performance Nutrition Limited, incorporated in Ireland in January 1948, has been a prominent player in the nutritional products sector since 1986. Operating under its flagship brand “Optimum Nutrition,” abbreviated as “ON” with a distinctive swoosh arrow, Glanbia has built a global reputation over 35 years. The company began using the “ON” mark internationally in 1986 and introduced its products in India through distributors as early as 2000, with consistent sales since 2003. Glanbia secured trademark registration for the “ON” mark with the swoosh in India on July 12, 2007, under Class 5 (pharmaceuticals and dietary supplements), claiming use since February 1, 2003. The company also holds registrations for related marks like “OPTIMUM” and “OPTIMUM NUTRITION” in India and various jurisdictions such as the USA, Canada, and Singapore.
In contrast, Hercules Nutra Pvt. Ltd., the respondent, obtained registration for a similar “ON” mark with a swoosh-like device under Class 5, bearing registration number 1763297. Hercules claimed use of this mark since May 19, 2002, asserting that it inherited the mark from its predecessor-in-title, USA Drugs Pvt. Ltd., via an assignment deed dated September 1, 2020. Glanbia discovered Hercules selling nutraceutical products identical to its own—such as whey protein—on platforms like Amazon India and operating a website (www.onnutrition.co.in) that echoed Glanbia’s branding. After a cease-and-desist notice issued on May 19, 2022, was met with denial from Hercules, Glanbia filed a cancellation petition on September 7, 2023, seeking removal of Hercules’ mark from the trademark register.
Detailed Procedural Background
The case unfolded before the High Court of Delhi under the Intellectual Property Division as C.O. (COMM. IPD-TM) 229/2023. Glanbia sought cancellation of Hercules’ trademark under Section 57 of the Trade Marks Act, 1999, alleging that the registration contravened Sections 11 (likelihood of confusion) and 18 (application requirements). The petition was argued orally before Hon’ble Mr. Justice Amit Bansal on April 2, 2025. Glanbia was represented by Senior Advocate Mr. Satvik Varma, assisted by Ms. Sugandha Bh, Mr. Shantanu Parmar, and Mr. Balram, while Hercules was represented by Mr. Nishant Mahtta and Mr. S. Nithin. Both parties submitted extensive documentary evidence, including invoices, catalogues, website analytics, and promotional materials, to substantiate their claims of prior use and goodwill.
Issues Involved in the Case
The case hinged on several pivotal issues: (1) Whether Glanbia was the prior user of the “ON” mark with the swoosh arrow in India; (2) Whether Hercules’ mark was deceptively similar to Glanbia’s, causing confusion in the market; (3) Whether Hercules’ adoption of the mark was dishonest, intended to trade on Glanbia’s goodwill; and (4) Whether Hercules’ registration warranted cancellation under the Trade Marks Act, 1999.
Detailed Submission of Parties
Glanbia’s counsel, Mr. Satvik Varma, argued that Glanbia was the prior adopter of the “ON” mark, having used it globally since 1986 and in India since 2003, with registration secured in 2007. He emphasized Glanbia’s extensive goodwill, evidenced by invoices from 2000-2003, archived distributor websites from 2003, and analytics showing Indian traffic to www.optimumnutrition.com from 2007-2021. Varma contended that Hercules’ mark was identical in design and product class, falsely claiming use since 2002, while its earliest credible evidence was from 2006. He accused Hercules of copying the swoosh arrow to deceive consumers and ride on Glanbia’s reputation.
Hercules’ counsel, Mr. Nishant Mahtta, countered that their “ON” mark was distinct, featuring a ring rather than a swoosh, and that Hercules was the prior user through its predecessor, USA Drugs Pvt. Ltd., since 2002. He relied on an assignment deed from 2020 and invoices from 2006 onward to establish continuity of use. Mahtta argued that the marks were visually dissimilar and that Hercules’ explanation—“ON” as an abbreviation for “organism with nutrients”—justified its independent adoption.
Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context
While the judgment does not explicitly cite case law, the legal principles applied reflect established precedents in Indian trademark jurisprudence. Glanbia’s arguments align with N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714, where the Supreme Court upheld the rights of a prior user with trans-border reputation, even against a registered proprietor. The emphasis on deceptive similarity echoes Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, which established that marks must be compared as a whole for visual and phonetic similarity. Hercules’ reliance on prior use through assignment draws from Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd. AIR 1965 Bom 35, where assignment was recognized as a valid transfer of rights, though subject to proof of use. The court’s rejection of Hercules’ explanation as an afterthought mirrors Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449, where vague justifications for mark adoption were dismissed.
Detailed Reasoning and Analysis of Judge
Justice Amit Bansal meticulously analyzed the evidence and arguments. He first established Glanbia’s prior use, noting its registration from July 12, 2007, with a user claim from February 1, 2003, supported by invoices from 2000-2003 and catalogues linking product codes to the “ON” mark. The archived website evidence from 2003 and analytics from 2007-2021 reinforced Glanbia’s market presence and goodwill in India. In contrast, Hercules’ earliest invoice was from 2006, with gaps in documentation (no invoices from 2007-2008 or 2016-2019) and no depiction of the mark on products. The court found Hercules’ 2006 invoice from “Canadian Corp.” unreliable due to missing details like VAT and batch numbers, and its FSSAI license from 2020 further undermined its 2002 user claim.
Comparing the marks, Justice Bansal rejected Hercules’ claim of a “ring” design, finding the swoosh arrow deceptively similar to Glanbia’s. He noted that “ON” dominated Hercules’ mark, with “NUTRITION” and “GOLD” in smaller font, amplifying the likelihood of confusion. The judge dismissed Hercules’ “organism with nutrients” explanation as an afterthought, absent from its cease-and-desist reply, indicating dishonest adoption. Given the identical goods (nutritional supplements), the court concluded that Hercules’ mark violated public interest by creating confusion and traded on Glanbia’s goodwill, contravening Sections 11 and 18 of the Trade Marks Act, thus justifying cancellation under Section 57.
Final Decision
The court allowed Glanbia’s petition, directing the Trade Marks Registry to remove Hercules’ mark (registration no. 1763297) from the register. The Registry was instructed to comply via email notification of the order.
Law Settled in This Case
This case reaffirms that prior use and goodwill trump subsequent registration in trademark disputes, particularly when the later mark is deceptively similar and dishonestly adopted. It underscores the importance of credible evidence in proving user claims and the judiciary’s role in protecting consumers from market confusion under the Trade Marks Act, 1999.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
