Introduction
Background of the Marks and the Dispute
Blue Cross Laboratories is the registered proprietor of two trademarks in Class 05 under the Trade Marks Act, 1999. The mark MEFTAL carries registration number 384238 and has been in commercial use since 1981 as an invented, coined word with no descriptive meaning in pharmaceutical nomenclature. The mark MEFTAL-SPAS carries registration number 538416, adopted in 1982 as a variant of MEFTAL for analgesic and antispasmodic preparations in tablet and suspension forms. Both registrations were valid and subsisting at the time the suit was filed, and sales evidence going back to 1991 demonstrated continuous, uninterrupted commercial use over more than three decades. The plaintiff also holds copyright registration A-80641/2007 under the Copyright Act, 1957, covering the original artistic work depicted on the MEFTAL-SPAS strip, which was designed in 2004, in addition to the carton artwork that dates to 1982 itself. Click here to understand the basics of copyright law and trademark law.
Alto Healthcare marketed MEFIAL-SPAS as manufactured by the second defendant, also operating out of Gorakhpur. The alteration from the plaintiff's mark to the impugned mark involved a single character substitution, the fourth letter of MEFTAL, the letter T, was replaced with the letter I, yielding MEFIAL. What the defendants did not change was everything else. They reproduced the plaintiff's distinctive blue and red colour scheme, copied the geometric design bordering the mark on the strip and carton, and replicated the trade dress of the MEFTAL-SPAS packaging so faithfully that the two products were, on a visual comparison, virtually indistinguishable. Blue Cross Laboratories discovered the infringing product in October 2015 and purchased a sample from a retailer, for which no invoice was issued.
Procedural History
The Bombay High Court passed an ex-parte ad-interim injunction against the defendants on 18 November 2015. By 30 November 2015, the Court had extended interim reliefs in terms of further prayer clauses in the Notice of Motion. On 19 September 2016, the Court confirmed those interim orders and made the Notice of Motion absolute. None of those orders were ever challenged by the defendants, and they accordingly attained finality.
Defendant No. 1 filed a written statement on 31 March 2017 and then never appeared again. The suit accordingly proceeded ex-parte against Defendant No. 1 from that point. Defendant No. 2 never filed a written statement at all, and the suit was transferred to the list of undefended suits against Defendant No. 2 in July 2016. The plaintiff filed affidavits of evidence of two witnesses, the Company Secretary of the plaintiff, along with a certified compilation of documents and a certificate under Section 65B of the Evidence Act, 1872. Those affidavits and documents were marked in evidence without objection. The suit was then taken up for final hearing on 7 May 2026, reserved on 8 May 2026, and pronounced on 17 June 2026.
The Legal Framework
Three distinct causes of action supported the plaintiff's suit. The first was trademark infringement under Section 29 of the Trade Marks Act, 1999, which operates whenever a person uses in the course of trade a mark identical with or deceptively similar to a registered mark in relation to identical or similar goods. The second was infringement of copyright in the artistic work on the packaging under Section 51 of the Copyright Act, 1957, founded on the wholesale reproduction of the registered artwork by the defendants. The third was passing off at common law, grounded in the goodwill the plaintiff had built in the MEFTAL and MEFTAL-SPAS marks through four decades of continuous use and export sales to overseas markets. This combination of trademark, copyright, and passing off claims in a single pharmaceutical suit is not unusual in the Bombay High Court. The dispute covered in the post on Alkem Laboratories Ltd. v. Numen Pharma Pvt. Ltd. reflects the same layered approach that pharma companies adopt when their marks and packaging are simultaneously copied.
Deceptive Similarity Test
The court relied on three Supreme Court and Bombay High Court precedents that together form the received framework for testing deceptive similarity in Indian trademark law.
- K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., (1969) 2 SCC 131, established that marks must be compared as a whole, with attention to their distinctive and essential features, and that phonetic resemblance alone can create a real likelihood of confusion even where there is no visual similarity. The corollary is that visual dissimilarity between marks is not decisive when their sounds are deceptively alike.
- Hiralal Prabhudas v. Ganesh Trading Co., AIR 1984 Bom 218, is the Bombay High Court's own distillation of the operative propositions. Marks are remembered by general impressions and salient details rather than by photographic recollection of every element. The standard of comparison is the average purchaser with imperfect recollection. Both visual and phonetic similarity must be factored in. Microscopic comparisons of differences between marks are impermissible. It is the broad, salient features and the overall impression that determine whether deceptive similarity exists.
- Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618, added the practical instruction that a court should not place two marks side by side to catalogue their differences, but should instead ask whether the impugned mark bears such overall similarity to the registered mark as would be likely to mislead a person who ordinarily deals with one into accepting the other if offered to them.
Reading these three decisions together, the standard requires a holistic, impression-based comparison from the perspective of a consumer who is neither particularly attentive nor entirely careless, who relies more on overall recall than careful scrutiny, and who encounters the product in the ordinary flow of retail purchase rather than in a laboratory comparison. For a deeper reading of how Indian courts draw the line between confusing and non-confusing marks under this standard, the post on deceptive similarity and brand protection in Indian trademark law is a useful companion to the present analysis.
The Court's Findings
On visual and phonetic similarity, the Court concluded that the defendants had simply copied the plaintiff's mark MEFTAL-SPAS and replaced one letter, producing MEFIAL-SPAS. This was blatant imitation and admitted of no other characterisation. Beyond the mark itself, the defendants had reproduced the blue and red colour scheme, the geometric design bordering the strip and carton, and the overall trade dress of the plaintiff's product. The similarity between the two sets of packaging was such that even a careful side-by-side comparison produced no meaningful difference in overall impression, let alone the comparison an average consumer would conduct. The phonetic resemblance between MEFTAL and MEFIAL was found to be self-evident; the two words, when spoken by a consumer asking for the medication at a pharmacy, would sound nearly identical. The Court noted both visual and phonetic similarity, then found that together they demonstrated deceptive similarity that was likely to cause confusion and deception among the trade and the public.
On trademark validity and distinctiveness, the Court accepted that both MEFTAL and MEFTAL-SPAS were valid, subsisting registrations, supported by uncontroverted sales evidence demonstrating continuous domestic and export use from the early 1980s. The Plaintiff's Witness No. 1 established use through sales invoices from 1991, sales figures certified by the Company Secretary, and export invoices covering sales to overseas markets between 2001 and 2016. The marks had acquired distinctiveness through that use and were exclusively associated with the plaintiff.
On copyright infringement, the Court found that the defendants had reproduced the plaintiff's registered artistic work in its entirety on the MEFIAL-SPAS packaging. This finding was independent of the trademark infringement finding but reinforced the conclusion that the copying was deliberate and comprehensive. Layering copyright protection over pharmaceutical packaging is a practice that courts have consistently upheld, and the post on copyright infringement in India sets out the principles that govern such claims in detail.
Conduct, Costs, and the Damages Finding
Under Section 35 of the Code of Civil Procedure, 1908, as amended by Section 16 of the Commercial Courts Act, 2015, costs in commercial suits must ordinarily follow the event and be awarded to the successful party, and the Court must take into account the conduct of the parties when determining the quantum. The regime expressly requires realistic costs rather than nominal ones.
In the present case, the defendants' conduct was described by the Court as dishonest. Defendant No. 1 had filed a written statement and then never returned to contest a single hearing over more than nine years. Defendant No. 2 never engaged with the proceedings at all. The Court held that this failure to contest, even after service was duly effected, was a relevant circumstance that lent further credence to the plaintiff's case. There was nothing on the record to suggest that the adoption of MEFIAL-SPAS was honest or bona fide, and the defendants' silence only reinforced that conclusion. The Court awarded Rs. 5,00,000 in compensatory costs against each defendant, totalling Rs. 10,00,000, with interest at 8 per cent per annum if the amounts were not paid within eight weeks.
The plaintiff had also claimed Rs. 1,00,000 in damages. That claim was denied as the plaintiff had not led any evidence in support of the damages claim, and a court cannot award damages in a vacuum. This is a consistent position in the Bombay Commercial Division, and it is an important reminder to IP owners filing comprehensive suits to ensure that evidence of actual loss is placed on record when damages are sought, rather than treating the claim as a residual one that the court will fill in.
Conclusion
One letter changed, a packaging design copied wholesale, a coined trademark built over four decades reproduced by a Gorakhpur firm that then declined to appear in court. The outcome was foreordained from the moment one placed the two strips side by side. The Commercial Courts Act was designed precisely to end the practice of nominal costs that made infringement litigation a commercially rational choice for bad actors. A total award of Rs. 10,00,000 against defendants who chose not to contest is not a deterrent in any real sense for large infringers, but the reasoning is that non-participation in proceedings is not a shield. It is itself evidence of bad faith, and the court treated it as such.
Blue Cross Laboratories came to court with both its registered trademark and its registered copyright in the packaging artwork. Either claim would have been sufficient for a permanent injunction. Together, they eliminated every argument the defendants might have made about the scope of protection. A pharmaceutical brand owner who relies only on its trademark registration, and does not bother to register the copyright in the strip and carton artwork, is leaving a second line of defence unused for no good reason.
A company that discovered infringement in October 2015 received its final decree in June 2026. That is nearly eleven years. The preliminary injunction was granted quickly and confirmed swiftly, which meant the harm was contained. But the suit itself ground through the system at the pace Indian commercial IP litigation has long been accustomed to. The Commercial Courts Act was meant to change that calculus. In some respects it has. In others, the backlog remains. For every pharmaceutical trademark owner watching this case, the lesson is not just to register and protect aggressively, but to do so early, because the system will take its time regardless.
~ Adv. Koushik Chittella
Disclaimer: None of the contents of this post constitute legal advice.