Neutral Citation: Mankind Prime Labs Private Limited Vs. Registrar of Trade Marks, 2025:DHC:2611
Date of Order: April 16, 2025/Case Number: C.A. (COMM.IPD-TM) 7/2024/Saurabh Banerjee
In the matter of Mankind Prime Labs Private Limited v. Registrar of Trade Marks, the Delhi High Court, adjudicated an appeal under Section 91 of the Trade Marks Act, 1999, read with Section 151 of the Code of Civil Procedure, 1908, and Section 13 of the Commercial Courts Act, 2015. The appellant challenged the order dated October 17, 2023, passed by the learned Examiner of Trade Marks, New Delhi, which had refused registration of the trademark application no. 4804262 for the word mark “CROSSRELIEF” in Class 5 of the Act.
The appellant, a company incorporated under the Indian Companies Act, 2013 and a subsidiary of Mankind Pharma Limited, one of the leading pharmaceutical companies in India, applied on January 2, 2021, for the registration of the trademark “CROSSRELIEF” on a ‘proposed to be used’ basis. The Trade Marks Registry issued an Examination Report on January 13, 2021, objecting to the application under Section 11(1) of the Trade Marks Act, 1999, stating that the mark was deceptively similar to existing trademarks in respect of similar goods, which may cause a likelihood of confusion among the public.
The impugned order upheld the objection raised in the Examination Report. The Examiner concluded that the mark “CROSSRELIEF” was identical or deceptively similar to earlier marks and covered goods of similar description, thereby refusing registration under Section 11(1). The appellant, aggrieved by this decision, filed the present appeal.
The appellant argued that “CROSSRELIEF” is a coined term, a portmanteau of the terms “CROSS” and “RELIEF.” The term “CROSS,” it was argued, is commonly used in the medical industry to denote aid or assistance and is thus generic and publici juris. Likewise, the word “RELIEF” is descriptive in nature. However, their combination forms a new, arbitrary and fanciful term which has no existing dictionary meaning and is capable of functioning as a trademark with its own distinct identity. The appellant further contended that the mark should be assessed as a whole and not dissected into individual parts. Citing the anti-dissection principle, the appellant relied on the decision in Ticona Polymers, Inc. v. Registrar of Trade Marks, 2023 SCC OnLine Del 1234, which emphasized that a composite mark must be evaluated as a whole and that dissecting its elements is impermissible in assessing registrability.
The appellant also cited F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716, where the Supreme Court upheld registration of the coined term “Dropovit,” which, though composed of known words, formed a novel expression not easily recognizable without analysis. In line with this precedent, the Court was urged to consider “CROSSRELIEF” as an invented word entitled to registration.
In further support, the appellant relied on the Supreme Court’s judgment in J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, wherein it was held that descriptive words used commonly in the trade, such as “micro,” cannot be monopolized and do not justify refusal of trademark registration when forming part of a larger distinctive mark. Additionally, the Madras High Court in Indo-pharma Pharmaceuticals Works Ltd. v. Citadel Fine Pharmaceuticals Ltd., 1998 SCC OnLine Mad 414, observed that where a common element such as “Enerj” is used in rival marks, customers tend to focus on the distinctive suffixes and are unlikely to be confused by the common prefix.
It was the appellant’s submission that the word “CROSS” is widely used in the pharmaceutical industry and is incapable of being monopolized. The term “CROSSRELIEF,” though incorporating a generic component, creates a unique commercial impression when read as a whole. Reference was also made to Disposafe Health & Life Limited v. Rajiv Nath, 2025 SCC OnLine Del 1271, which reiterated that even combinations of common words can acquire distinctiveness and be eligible for registration if they produce a unique identity.
The High Court analyzed the matter under Section 11(1) of the Trade Marks Act, which disallows registration of a trademark that is identical or similar to an earlier mark and is used in respect of similar goods or services, thereby giving rise to a likelihood of confusion. The Court noted that “CROSSRELIEF” is a coined expression and is not found in any dictionary. It was further noted that the mark does not directly describe the nature or quality of the goods, and when viewed in its entirety, is arbitrary and fanciful.
The Court strongly affirmed the anti-dissection rule, holding that a trademark must be evaluated holistically, both at the stage of registration and in infringement proceedings. The Court referred to Ticona Polymers to reinforce this principle, noting that it applies mutatis mutandis even at the stage of assessing entitlement for registration, and not only post-registration in infringement scenarios.
The Court accepted that while “CROSS” may be common in pharmaceutical marks, its combination with “RELIEF” in a non-standard, creative fashion resulted in a mark that is visually, phonetically, and structurally distinct from the cited marks. The Court concluded that the likelihood of confusion was remote and unsupported by any material placed on record by the respondent.
Accordingly, the Delhi High Court set aside the impugned order dated October 17, 2023, and allowed the appeal. It directed that trademark application no. 4804262 for the mark “CROSSRELIEF” be allowed to proceed for registration. However, it clarified that the registration of the composite mark “CROSSRELIEF” shall not grant any exclusive rights to either component part, “CROSS” or “RELIEF,” in isolation. A copy of the judgment was ordered to be sent to the Registrar of Trade Marks for necessary compliance.
