Madras HC Enforces ‘ARK PAIN RELIEF SPRAY’ in Medifame Suit

In Apex Laboratories Pvt Ltd Vs Medifame Biotech [C.S(COMM DIV).237/2026], the Madras High Court decreed a commercial suit enforcing proprietary trade dress and trademark rights over pharmaceutical preparations following the submission of a lawful Memorandum of Compromise. Presiding over the Commercial Division, Justice P.B. Balaji affirmed the judicial endorsement of out-of-court settlements under Order XXIII Rule 3 of the Code of Civil Procedure, 1908, concluding an active intellectual property conflict between Chennai-based Apex Laboratories and Haryana-based Medifame Biotech over deceptively similar pharmaceutical branding.

Anatomy of the Pharmaceutical Conflict: Structural and Visual Convergence of AR-KD and ARK PAIN RELIEF SPRAY

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The suit C.S(COMM DIV).237/2026 was instituted by Apex Laboratories Pvt Ltd, an established pharmaceutical manufacturer operating from Guindy, Chennai, seeking protection for its registered trademark ARK PAIN RELIEF SPRAY, registered under Registration No. 2654084 in Class 5 of the Trade Marks Rules, 2017. Apex Laboratories alleged that Medifame Biotech, located in Panchkula, Haryana, adopted the mark AR-KD for an identical category of pain-alleviating topical formulations. The plaintiff asserted that the defendant’s mark was not merely phonetically and structurally similar to its registered mark, but also involved a deliberate appropriation of the original artistic work, color scheme, layout, and overall visual get-up of the packaging container.

Represented by counsel Mr. Nida S., the plaintiff sought comprehensive injunctive relief across multiple causes of action: statutory trademark infringement under Section 29 of the Trade Marks Act, 1999; common law passing off; and copyright infringement under Section 51 of the Copyright Act, 1957. Accompanying the suit were Original Applications O.A. Nos. 820, 821, and 822 of 2026 seeking ad-interim temporary injunctions, along with Application No. 3448 of 2026. The defendant, represented by counsel Mr. A.K. Rajaraman, initially faced significant exposure to ex-parte interlocutory orders that threatened to halt commercial production and market distribution. Confronted with immediate commercial disruption and long-term litigation exposure, the parties engaged in out-of-court negotiations, culminating in an executed Joint Memorandum of Compromise dated September 26, 2026.

Doctrinal Foundations: Unpacking Section 28 Statutory Monopoly, Section 34 Common Law Priority, and the High-Stakes Cadila Test

Though resolved by mutual consent, the dispute exposes foundational tensions within Indian intellectual property jurisprudence, specifically the statutory equilibrium between registered exclusivity under Section 28 and common law user priority under Section 34 of the Trade Marks Act, 1999. Section 28(1) confers upon the registered proprietor the exclusive right to use the mark in relation to the designated goods and obtain relief against infringement. However, this statutory right is explicitly subordinated by Section 34, which operates as a non-obstante clause preserving the rights of continuous prior users who adopted and used an identical or deceptively similar mark prior to the plaintiff’s registration or user date.

Indian trademark law adheres strictly to the first-to-use doctrine rather than a rigid first-to-file system. As articulated by the Supreme Court of India in S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, rights accrued through long-standing continuous prior use and marketplace reputation override statutory registrations granted under the Act. This principle was reinforced in Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016) 2 SCC 672, where the Supreme Court observed that an injunction cannot automatically issue against a prior user even if the plaintiff holds an earlier statutory registration certificate. When assessing interlocutory injunctions under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, courts are bound by the tripartite framework enunciated in Wander Ltd. v. Antox India P. Ltd. (1990) Supp SCC 727, requiring a rigorous evaluation of prima facie case, balance of convenience, and irreparable injury.

In the pharmaceutical realm, judicial scrutiny is heightened exponentially due to public interest considerations. The landmark ruling of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 established that confusion in medicinal formulations carries grave consequences, as visual or phonetic similarity between drug names can lead to improper administration and health hazards. Consequently, courts apply a zero-tolerance standard when assessing deceptive similarity between pharmaceutical trademarks, placing an onerous burden of proof on defendants who adopt marks bearing phonetic proximity to established formulations.

Judicial Verification under Order XXIII Rule 3 and Evidentiary Forensics of Commercial Prior Use

When commercial litigants present a settlement before the High Court under Order XXIII Rule 3 of the CPC, the judicial duty requires ensuring that the compromise is lawful, executed voluntarily, and duly authorized by competent corporate representatives. Justice P.B. Balaji conducted a scrutiny of the Memorandum of Compromise presented by the parties, ensuring that all procedural and substantive safeguards were satisfied before converting the private contractual agreement into a binding decree of the Court.

Highlighting the initial submission and presentation of the settlement agreement, the High Court formally recorded:

Learned counsel for the plaintiff and the learned counsel for the defendant have brought to my notice that the parties have already entered into a Memorandum of Compromise and the same is duly reduced into writing in and by Memorandum of Compromise dated 26.09.2026. The original of the said Memorandum of Compromise is presented before this Court for approval.

Hon’ble Mr. Justice P.B. Balaji, Madras High Court

Upon examining the executed document, the Bench verified the signatures of the authorized signatory of Apex Laboratories and the sole proprietor of Medifame Biotech, alongside their respective legal counsel. The Court emphasized the validity and joint execution of the settlement:

I find that the Memorandum of Compromise dated 26.09.2026 is duly signed by the plaintiff’s authorised signatory and the proprietor of the defendant concern. The respective counsel have also joined the execution on the said Memorandum of Compromise. Learned Counsel on either side pray for a decree to be passed in terms of the joint memorandum of compromise dated 26.09.2026.

Hon’ble Mr. Justice P.B. Balaji, Madras High Court

From an evidentiary standpoint, entering into a recorded compromise decree under Order XXIII Rule 3 bypasses the evidentiary trial stage. Had the suit proceeded to trial, establishing common law rights or prior user defenses would have required heavy documentary proof under Section 65B of the Indian Evidence Act, 1872. Litigants must produce cryptographically verifiable GST invoices, e-way bills, state drug licensing approvals, batch manufacturing records, and audited sales ledger accounts to demonstrate continuous commercial presence. By securing a consent decree that incorporates the compromise terms directly into the order, the plaintiff acquires an enforceable decree capable of execution under Order XXI of the CPC without facing trial risks.

Interlocutory Pressures: Order XXXIX Dynamics and Section 57 Rectification as Strategic Leverage

The structural progression of C.S(COMM DIV).237/2026 illustrates how interlocutory practice under Order XXXIX of the CPC serves as a primary driver for out-of-court settlements in commercial IP disputes. An ex-parte ad-interim injunction order in a pharmaceutical action can cripple a defendant’s supply chain, trigger product recalls, and jeopardize distributor agreements across multiple state jurisdictions. The immediate threat of commercial paralysis frequently compels defendants to negotiate settlement terms early in the proceedings.

Conversely, sophisticated defense strategies routinely leverage dual-track litigation tactics to rebalance settlement dynamics. Defendants facing trademark suits often institute cancellation or rectification proceedings under Section 57 of the Trade Marks Act, 1999 before the Intellectual Property Division (IPD) of the High Court, challenging the validity of the plaintiff’s mark on grounds of non-use, genericness, or descriptive character. The institution of a Section 57 petition creates exposure for the plaintiff’s asset portfolio, encouraging both parties to reach a structured compromise involving transition periods, packaging modifications, and registered mark co-existence boundaries.

Also Read: Delhi HC Restrains ‘VEEPRO’ Mark for Infringing ‘WIPRO’ Trademark

In-House Counsel Advisory: Strategic Due Diligence, Brand Clearance, and Settlement Structuring

The resolution of Apex Laboratories v. Medifame Biotech provides actionable lessons for corporate IP practitioners and general counsel managing brand portfolios in regulated sectors:

• Multi-Layered Trademark Clearance: In-house teams must execute comprehensive search protocols that extend beyond identical trademark registry checks. Clearance searches must analyze phonetic variations in Class 5, search the Ministry of Corporate Affairs database, audit state drug controller licenses, and perform digital scraping across major e-commerce platforms.
• Evidentiary Recordkeeping: Companies must maintain centralized, audit-ready repositories of commercial adoption. Digitally signed GST returns, manufacturing batch registers, dated promotional campaigns, and clearance certificates are vital to withstand statutory challenges under Section 34.
• Precision in Settlement Structuring: Litigators drafting compromise agreements must include unambiguous clauses governing remaining inventory sell-off periods, strict transition deadlines for packaging modification, domain name transfers, and specified liquidated damage penalties for post-settlement breaches.
• Pre-Litigation Risk Audit: Prior to instituting infringement claims, brand owners must conduct thorough market intelligence to evaluate the defendant’s market presence, preventing unexpected counter-claims or invalidation proceedings under Section 57.