Summary
Dr. Reddy's Laboratories Limited, owner of the NISE pain-relief brand, opposed the registration of the device mark 'nice' by Nice Neotech Medical Systems Private Limited for neonatal intensive care equipment. The Assistant Registrar disallowed the opposition, and Dr. Reddy's appealed to the Madras High Court. The court held that the marks are phonetically similar but that differences in goods, purchasers and the degree of care weigh against confusion, and that well-known status, dishonest adoption and passing off were not established. The ruling matters because it shows that phonetic similarity alone cannot defeat a mark across pharmaceutical and medical equipment classes.
Background
A pain-relief brand adopted in 1995 and a neonatal equipment mark filed in 2008 met in an opposition that took more than a decade to reach a decision. The Madras High Court has now ruled on whether a pharmaceutical major’s NISE trademark opposition could stop a medical equipment maker from registering a phonetically similar word.
Dr. Reddy’s Laboratories Limited (“Dr. Reddy’s”), a pharmaceutical company incorporated in 1984, adopted NISE in 1995, derived from Nimesulide and the phrase “Novel Inducer of Soothing Effect”. It holds Class 5 registrations, including Nos. 803632 and 803620 dated 26 May 1998, along with variants such as NISE KID, NISE MR and NISE FLASH, for pain and inflammation medicines.
Nice Neotech Medical Systems Private Limited (“Nice Neotech”), incorporated on 10 July 2001, manufactures neonatal intensive care equipment. On 11 September 2008, it applied (No. 1730955) to register the device mark “nice” in Class 10 for medical equipment and apparatus, claiming use from its incorporation. The application was advertised on 15 October 2012 with a condition restricting it to South India.
Dr. Reddy’s filed Opposition No. 797238 on 3 January 2013 under Sections 9, 11, 12 and 18 of the Trade Marks Act, 1999 (“Trade Marks Act”), alleging deceptive similarity, well-known status, dishonest adoption and passing off. Nice Neotech said it had filed its evidence, but Registry records were damaged in the December 2015 floods and not fully digitised, and Dr. Reddy’s disputed the filing.
On 22 August 2025, the Assistant Registrar disallowed the opposition, finding that the goods, trade channels and purchasers differ across Classes 5 and 10. The mark proceeded to registration on 10 October 2025 under Certificate No. 3914323. Dr. Reddy’s then appealed to the Madras High Court, which reserved its decision on 15 September 2026 and pronounced it on 26 October 2026.
Issues
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- Whether NISE and the device mark “nice” are visually, phonetically and deceptively similar under Section 11(1) of the Trade Marks Act.
- Whether registration of “nice” for Class 10 medical equipment is likely to cause confusion or association with Dr. Reddy’s Class 5 pharmaceutical marks.
- Whether Dr. Reddy’s established well-known status, dishonest adoption and passing off under Sections 11(2) and 11(3).
- Whether the Assistant Registrar’s order disallowing the opposition warranted interference in appeal under Section 91.
Dr. Reddy’s Arguments
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- The Assistant Registrar treated classification differences as decisive, although classification under Section 7 serves registration purposes, while Section 11 concerns similarity of goods and the likelihood of confusion.
- Pharmaceuticals and medical equipment are allied goods in the healthcare sector with overlapping consumers.
- NISE and “nice” are phonetically identical, and the change from “S” to “C” does not remove confusion.
- The impugned order did not examine visual and phonetic resemblance independently, and its reasoning was inadequate.
- Reddy’s reputation could lead consumers to assume a commercial association, and its natural expansion into related goods must be considered.
- Nice Neotech’s claimed use from 2001 was unproven, since its invoices began only in 2005, and its explanations for the origin of the mark were inconsistent.
- Reddy’s relied on Corn Products, Cadila, Laxmikant Patel, K.R. Chinna Krishna Chettiar and several Delhi High Court decisions.
Nice Neotech’s Arguments
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- The goods differ in nature, purpose, price, packaging and trade channels. Pharmaceuticals sell through pharmacies, while neonatal equipment is bought by hospitals through specialised procurement.
- “nice” was independently adopted as an acronym for Neonatal Intensive Care Equipment, derived from the corporate name, and Nice Neotech is the first adopter in medical equipment.
- NISE is not a declared well-known mark and does not appear on the Registry’s list.
- The evidence was filed and lost in the 2015 floods, and the Registry never treated the application as abandoned.
- The Assistant Registrar passed a reasoned order. Nice Neotech relied on Cadila, Nandhini Deluxe and other authorities.
Registrar of Trademarks
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- The Registrar of Trademarks filed no counter statement.
Court’s Observations and Analysis
Phonetic Similarity Does Not Settle the Matter
The court noted that NISE and “nice” are phonetically similar, since both words have four letters and differ only in “S” versus “C”, and that the device form of “nice” does not dispel that similarity. The court observed, however, that phonetic resemblance begins the inquiry and does not conclude it. Applying the test in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC 73), the court reasoned that the nature of the marks, the nature and performance of the goods, the class of purchasers, the mode of purchase and the surrounding circumstances must all be weighed, with no single factor carrying fixed weight in the NISE trademark opposition.
Goods, Purchasers and the Degree of Care
The court found that Dr. Reddy’s medicines and Nice Neotech’s incubators, warmers, phototherapy units and ventilators differ materially in nature, function and use. The court held that a shared link to healthcare does not by itself create a commercial relationship between goods. The court further observed that patients usually buy medicines through pharmacies, often on prescription, while hospitals buy neonatal equipment through technical procurement, which implies a higher degree of care. In the court’s view, these factors weighed against confusion.
Association under Section 11(1)
The court stated that the question under Section 11(1) is whether purchasers would believe the goods share a commercial source or connection, and found that Dr. Reddy’s had not placed circumstances on record to support that inference. Following Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. ((2018) 9 SCC 183), the court held that phonetic similarity alone does not establish confusion, and that marks must be compared as a whole together with the products and the manner of trade.
Good Faith, Well-Known Status and Passing Off
The court noted that the incorporation documents, catalogue and business records supported Nice Neotech’s explanation that “nice” stands for Neonatal Intensive Care Equipment and derives from its corporate name. The court opined that incorporation alone does not prove use, yet it lent support to the explanation, and that dishonest adoption cannot be inferred from phonetic similarity without evidence of deliberate imitation.
The court accepted Dr. Reddy’s reputation in pharmaceuticals but found that the requirements of Section 11(2), namely well-known status in India and unfair advantage or detriment, were not met. The court reasoned that passing off under Section 11(3)(a) failed because misrepresentation of commercial origin was not shown.
The Disputed Evidence
The court held that it did not need to rest its decision on the disputed filing of evidence, since the substantive requirements for refusal under Section 11 were not made out. The NISE trademark opposition therefore failed on the merits, and the procedural objection left the outcome unchanged.
Findings
In view of the observations and the arguments presented by both the parties, the Madras High Court held that:
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- NISE and “nice” are phonetically similar.
- Differences in the nature of goods, the class of purchasers, the degree of care and the mode of purchase weigh against any likelihood of confusion or association between pharmaceuticals and neonatal equipment.
- Reddy’s failed to establish the additional requirements for well-known status under Section 11(2).
- Dishonest adoption by Nice Neotech was not proved.
- Passing off under Section 11(3)(a) was not established.
- The Assistant Registrar’s order dated 22 August 2025 does not warrant interference, so the appeal is dismissed, Opposition No. 797238 stands disallowed, and Application No. 1730955 for “nice” in Class 10 remains registered.
- No order as to costs is made, and the connected miscellaneous petition is closed.
Case Citation: Dr. Reddy’s Laboratories Limited v. The Registrar of Trademarks & Anr., CMA(TM) No. 31 of 2025, Madras High Court, decided on 26 October 2026. Available at https://indiankanoon.org/doc/20280487/.
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels