Reckitt and Colman Overseas Health Limited appealed against the Registrar of Trade Marks' order dated 09.02.2024 dismissing its opposition and allowing registration of Ind Swift Limited's mark 'DECA-NEROPHEN' in Class 05, applied for on 26.02.1999 with claimed use since 1992, for pharmaceutical preparations. Reckitt, proprietor of the prior registered mark 'NUROFEN' (registered since 1983), contended that 'DECA-NEROPHEN' was deceptively similar as 'NUROFEN' was wholly subsumed and 'DECA' was descriptive of Nandrolone Decanoate, that adoption was dishonest given 'NUROFEN' being a coined word and Respondent's failure to search the register, and that no concurrent honest use was established due to lack of credible evidence predating or contemporaneous with the application. The Registrar erred in holding the marks dissimilar yet granting benefit under Section 12 for alleged concurrent use, and in accepting post-application evidence. The Delhi High Court found the marks phonetically similar, adoption dishonest, no honest concurrent use proven, and Registrar's contradictory findings unsustainable, set aside the impugned order, allowed the opposition, and refused registration of 'DECA-NEROPHEN'.
- In pharmaceutical trademarks, a higher degree of scrutiny is required, and honest concurrent use under Section 12 of the Trade Marks Act, 1999 cannot be claimed where adoption is dishonest, especially when the prior mark is a coined word and the later mark subsumes it with a descriptive prefix (Paras 28-32, relying on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73).
- The Registrar cannot simultaneously hold rival marks as dissimilar and yet apply Section 12 (honest concurrent use), as the provision presupposes similarity; such contradictory findings vitiate the order (Paras 20-22).
- Dishonest adoption is inferred where no explanation is provided for choosing a mark incorporating a prior registered coined mark, and the applicant fails to conduct a trademark search despite the stringent duty in pharmaceutical cases (Paras 25-30, citing Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd., 2002 (24) PTC 226 (Bom)).
- Evidence of use post-dating the application cannot establish honest concurrent use for Section 12, and illegible or inadequate documentary proof fails to discharge the burden (Paras 33-35).
Case Title: Reckitt and Colman Vs. Ind Swift Limited Order Date: December 24, 2025 Case Number: C.A.(COMM.IPD-TM) 51/2024 & I.A. 33412/2024 Neutral Citation: Not available in document Name of Court: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Tejas Karia
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation] [Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
