Summary
The Delhi High Court ruled in favor of FDC Limited, granting an interim injunction against Palsons Derma Private Limited for using the mark "CHROMALITE", which the Court found deceptively similar to FDC's registered trademark "KROMALITE". The judgment highlights the judiciary's consistent approach to safeguarding well-established trademarks and preventing confusion, especially in the pharmaceutical and cosmetic sectors.
Background:
FDC Limited (Plaintiff), a pharmaceutical company incorporated in 1940, filed a suit seeking to restrain Palsons Derma (Defendant) from manufacturing or selling products under the mark CHROMALITE. FDC argued that the mark was deceptively similar to its registered mark KROMALITE, used in Class 5 for medicinal preparations and pending registration in Class 3 for cosmetic products.
FDC adopted KROMALITE in December 2014 and commercially launched its skin brightening cream products in April 2016. Palsons Derma, incorporated in 2008, had previously used FAIRLITE but switched to CHROMALITE in December 2016, launching products under this mark only in September 2022. FDC contended that the similarities in sound, structure, and market presence were likely to confuse consumers and dilute its brand identity.
Issues:
1. Whether CHROMALITE was deceptively similar to FDC’s mark KROMALITE.
2. Whether FDC had established prior use and goodwill in its mark.
3. Whether FDC had a prima facie case for passing off despite the defendant’s valid registrations.
Plaintiff’s Contentions
FDC emphasised its prior use since April 2016 and its substantial goodwill, supported by continuous high sales statements. It asserted a clear likelihood of confusion between the two marks and claimed protection under the common law doctrine of passing off.
Defendant’s Contentions:
The defendant argued that CHROMALITE was independently derived from the Greek word “CHROMA” (meaning color) and “LITE” (shortened for lighten), that its packaging featuring a distinctive double helix design was different from FDC’s products, and that the products were sold via prescriptions through chemists who could easily distinguish between the marks, thus minimizing consumer confusion. Further, the defendant registered the mark CHROMALITE in classes 3 and 5, respectively, whereas the plaintiff had no registration for the mark KROMALITE in class 3. Therefore, the suit of infringement was untenable.
Court’s Analysis:
The defendant was the registered proprietor of the mark CHROMALITE in classes 3 and 5, and it is well settled that a suit for infringement does not lie against a registered proprietor. However, a passing off action, within the meaning and scope of Section 27(2) of the Trade Marks Act, 1999 (hereinafter ‘Act’), was maintainable despite registration(s) in favour of the defendant. Applying the precedent in S. Syed Mohideen v. P. Sulochana Bai, the Court held that prior use rights are superior to registration rights in passing off actions. The Court observed that FDC had clearly demonstrated continuous use of KROMALITE since April 2016, supported by invoices and CA-certified financial records showing significant market presence and brand goodwill.
Placing reliance on the Cadila Health Care test for deceptive similarity, the Court concluded that KROMALITE and CHROMALITE were phonetically identical and structurally similar. The Court further stated that merely replacing ‘K’ with ‘CH’ without affecting pronunciation creates a significant likelihood of confusion among consumers in identical product categories.
Furthermore, the Court rejected Palsons Derma’s defences. It found that packaging differences and suffixes like “day cream” or “night cream” were insufficient to distinguish the core marks. The Court also observed that the defendant’s products were freely available on e-commerce platforms without prescriptions, and that the defendant had failed to conduct proper due diligence before adoption.
Following Supreme Court precedent in Laxmikant V. Patel v. Chetanbhai Shah, the Court held that innocent adoption is irrelevant in passing off actions. The Court also dismissed claims of forum shopping and delay, noting that FDC acted promptly upon discovering the defendant’s products in January 2023.
The Court also rejected arguments about pre-adopted CHROMA-formative marks, noting the defendant failed to show commercial use. The Court affirmed FDC’s coined term KROMALITE deserved the highest degree of protection.
Interim Order:
The Court found the balance of convenience in favour of the plaintiff and against the defendant. The plaint filed by the plaintiff was allowed. Till final adjudication, the defendant and all others acting in active concert with it were restrained from manufacturing, marketing, offering for sale, selling, advertising, or directly or indirectly dealing in the products under the mark CHROMALITE or any other mark identical with or deceptively similar to the plaintiff’s mark KROMALITE.
Take away:
This decision underscores the proactive stance on protecting pharmaceutical and cosmetic trademarks, especially where consumer trust is at stake. By granting an interim injunction, the Delhi High Court reaffirmed the importance of brand integrity and goodwill, sending a clear message against attempts to capitalize on deceptively similar branding. The judgment reinforces that companies must conduct proper trademark searches before adoption and that prior use with established goodwill can prevail even against registered proprietors in passing off actions.
Citation: FDC Limited vs. Palsons Derma Private Limited, I.A. 13241/2023 in CS(COMM) 487/2023, Delhi High Court, decided on April 15, 2025. The case may be accessed here.
Article Authored by Mr. Karthik KG
Article and Accessibility Reviewed by Ms. Naika Salaria