Summary
In the case of Aristo Pharmaceutical Pvt. Ltd. v. Healing Pharma India Pvt. Ltd., the dispute turned on whether ACECLO could enjoy exclusivity despite being clipped from the INN aceclofenac. The decision treats INN-derived fragments as publici juris, weakening both infringement and passing off claims where the competing marks and trade dress differ.
Background
Aristo Pharmaceutical Private Limited (hereinafter referred to as “Plaintiff”) claimed to have adopted the trade mark ACECLO, derived from the drug name aceclofenac in 2003. The first registration was obtained for the word mark ARISTO ACECLO in 2005 and thereafter ACECLO trademark was registered by the Plaintiff in February 2011, claiming use since December 2003. Since its adoption and use, the Plaintiff had been manufacturing aceclofenac sustained release tablets under the mark, ACECLO SR and Aceclofenac, Paracetamol and Chlorzoxazone combination tablets under the mark, ACECLO MR.
Healing Pharma India Private Limited (hereinafter referred to as “Defendant No. 1”) introduced similar tablets of the composition Aceclofenac, Paracetamol and Chlorzoxazone in or around Oct 2024 using marks “ACECLOHEAL-MR”, “ACECLOHEAL SP and “ACECLOCHEAL PLUS”. A cease-and-desist notice was issued by the Plaintiff on 30 October 2024. The allegation of infringement was denied by the Defendant, which resulted in the institution of the present suit seeking relief for trade mark infringement and passing off.
The Defendant No. 1 raised the primary defence that the marks were derived from the name of the generic nonsteroidal anti-inflammatory drug viz. “Aceclofenac” which has been accepted as an International Non-proprietary Name (INN). Such INNs, were contended to be publici juris and cannot be monopolised as per Section13 of the Trade Marks Act, 1999 (hereinafter referred to as “Act”).
Questions / Issues Raised
a. Whether a prima facie case of trade mark infringement was established by the Plaintiff against the Defendant’s use of ACECLOHEAL-style marks, despite the Plaintiff’s registrations.
b. Whether exclusive rights could be claimed by the Plaintiff in the mark ACECLO (or its clipped version), which was derived from an INN (aceclofenac), and the legal effect of Section 13 vis-à-vis Section 28 of the Act.
c. Whether a prima facie case of passing off was made out, particularly with respect to misrepresentation likely to deceive consumers or chemists.
Parties’ Arguments
Plaintiff’s Arguments
- The Plaintiff contended that under Section 28 of the Act, they were entitled to claim exclusive rights over their registered trademark “ACECLO” since the validity of its registration had not been challenged.
- it was further argued that Section 13 of the Act, which prohibits use of deceptively similar name to an INN, was applicable only where the mark closely resembles the INN (e.g., “Aceclodenac”). Whereas “ACECLO” was not deceptively similar to “Aceclofenac.”
Therefore, the Plaintiff maintained that its mark was protectable and the Defendant’s use was alleged to amounts to infringement.
Defendant’s Arguments
- The Defendant No.1 submitted that they coined the word “ACECLOHEAL” combining the characters from the INN, “Aceclofenac,” and suffixing four characters of its name, “HEAL” making it legitimate and non-infringing.
- In view of Section 13 of the Act, the Plaintiff could not claim any proprietary right in respect of INNs or any part thereof irrespective of its registration, as such terms were publici juris.
- It was further argued that the Plaintiff’s mark was descriptive and lacked distinctiveness, since several other pharmaceutical companies were using similar clipped versions of the INN.
The Defendant No.1 further submitted that there is no deceptive similarity or misrepresentation because the packaging, appearance, and pricing of the products were materially different.
Analysis
- Use vs. Registered Mark — conduct disentitling reliance on earlier user: It was noted that although the Plaintiff obtained registration for the mark “ARISTO ACECLO” in 2005, the registration for the standalone mark “ACECLO” was obtained only in 2011. Consequently, the Plaintiff could not claim use of the mark “ACECLO” since 2003 so as to establish that the mark had become well-known or had acquired distinctiveness.
- INN provenance & application of Section 13: The Court noted that ACECLO was a clipped form derived from Aceclofenac (an INN included in the list). Section 13 of the Act makes INNs (and deceptively similar names) non-registrable and publici juris. The Court declined to adopt a restrictive interpretation of Section 13 of the Act and held that the provision applies to names derived from INNs, even where they are not identical. Consequently, court held that ACECLO, being derived from an INN, attracted the application of Section 13, and therefore exclusivity could not be claimed over such generic components.
- Comparison of marks and deceptive similarity test: The Court held that, where marks were derived from an INN, the usual test of deceptive similarity (solely whether the whole mark is subsumed) would not be decisive. A more nuanced approach was considered to compare the uncommon elements and packaging/depiction. In this case, ACECLO vs ACECLOHEAL were both clipped from the INN and the Defendant had suffixed “HEAL” to its mark. On prima facie comparison, the marks were displayed in different styles and were therefore found unlikely to cause confusion.
- Schedule-H (i.e. a prescription-only drug) / pricing: The Plaintiff’s argument based on Schedule-H status was given limited weightage in reliance of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. The differences in pricing and the prescription-only nature of the drugs were found to reduce the likelihood of confusion on a prima facie basis.
- Passing off: Along with reputation, goodwill and likelihood of damages, prima facie the Plaintiff had to demonstrate the Defendant’s attempt to misrepresent goods as that of the Plaintiffs. The photographs of the respective product packaging’s along with the depiction of the respective trademarks on the products clearly highlighted visual difference between the two marks. Furthermore, photographs of third-party use of clipped INN further diluted the Plaintiff’s claim, making the passing-off allegation even weaker.
Findings
- The Court held that the Plaintiff was disentitled from claiming early use or acquired distinctiveness of “ACECLO” since 2003, as the registered mark was not used in its entirety, instead it was used such a way that “ARISTO” appeared insignificantly or barely visible.
- Clipped marks derived from INN are descriptive / publici juris and cannot be monopolised; Section 13 operates to render such names non-registrable and to negate exclusive rights even where registration exists.
- No prima facie case of infringement or passing off established by Plaintiff. The marks were not found to be deceptively similar, and the way they are used is different. So, based on materials before the court, the Plaintiff has not shown a strong case of infringement or passing off.
Case Citation
Aristo Pharmaceutical Pvt. Ltd. v. Healing Pharma India Pvt. Ltd. & Ors.,
2025 BHC-OS 22177 (Bom.) (Commercial Div.). Available at: Aristo Pharmaceuticals Private … vs Healing Pharma India Private Limited on 25 November, 2025 (Visited on 18 December 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.
Authored by: Ms. Ananya Nadajoshi