By Vohra & Vohra

Trademark disputes involving medicinal products occupy a unique position within intellectual property jurisprudence. Unlike ordinary consumer goods, confusion between pharmaceutical or therapeutic products may have consequences extending beyond commercial loss to public health and consumer safety. It is for this reason that Indian courts have consistently adopted a more rigorous standard while assessing deceptive similarity involving medicinal marks.

The Delhi High Court’s judgment in Shri Kirit Bhadiadra v. Wings Pharmaceuticals Private Limited (22 December 2025) is an important reaffirmation of this principle. While the dispute centred around the competing use of the mark “MEDILICE” for anti-lice products, the Court’s observations extend far beyond a conventional infringement action. The judgment clarifies the evidentiary threshold required to establish prior user rights, reiterates the heightened protection afforded to medicinal trademarks, and narrows the scope of the defence of acquiescence in trademark litigation.

Although the Supreme Court has subsequently stayed the operation of the judgment pending further consideration, the reasoning adopted by the Delhi High Court remains a significant contribution to Indian trademark jurisprudence.

Background of the Dispute

The dispute arose between Wings Pharmaceuticals Private Limited, proprietor of the registered trademark “MEDILICE” used for anti-lice shampoo, and Shri Kirit Bhadiadra, who marketed an ayurvedic anti-lice and anti-dandruff hair oil under the mark “MEDILICE LICE KILLER.”

Wings Pharmaceuticals claimed continuous commercial use of “MEDILICE” since 1998 and registration under Class 3. Bhadiadra resisted the suit by asserting that he was the prior user of the mark from March 2000. To support this defence, he relied principally upon his trademark applications, user affidavits filed before the Trade Marks Registry, and manufacturing licences obtained under applicable regulatory laws.

The principal question before the Court was whether these documents were sufficient to establish prior user rights capable of defeating the plaintiff’s registered trademark and passing off action.

Prior User Rights Require Evidence of Actual Commercial Use

Perhaps the most significant aspect of the judgment lies in its interpretation of Section 34 of the Trade Marks Act, 1999.

Indian trademark law recognises that prior user may prevail even against a registered proprietor. However, the Court emphasised that prior user is fundamentally a question of actual commercial use, not merely of documentary assertions made before statutory authorities.

The defendant relied heavily upon the fact that his trademark applications claimed user from March 2000 and that he possessed manufacturing permissions relating to the products. The Court rejected this approach.

It held that neither a manufacturing licence nor a trademark application establishes that goods bearing the impugned mark were actually available in the marketplace. A claimed user date in statutory filings remains only an assertion until substantiated by evidence demonstrating genuine commercial exploitation of the mark.

Upon examining invoices, sales records, promotional material and other documentary evidence, the Court concluded that Wings Pharmaceuticals had established continuous commercial use significantly earlier than the defendant. Consequently, the defence of prior user failed. This finding reinforces an important principle: Section 34 protects proven market reputation—not merely historical claims of adoption.

Higher Standard for Medicinal Trademarks

The judgment also reaffirms the special approach adopted by Indian courts in relation to medicinal products.

Unlike ordinary consumer goods, therapeutic products require a stricter assessment because even minor confusion may adversely affect public health. Although the competing products were an anti-lice shampoo and an ayurvedic anti-lice hair oil, both served substantially the same therapeutic purpose and targeted the same class of consumers.

The Court observed that anti-lice products are ordinarily purchased over the counter, often without medical supervision. Consumers typically seek immediate relief and do not undertake detailed examination of competing products before purchase. Consequently, the level of care expected from purchasers is comparatively lower, increasing the likelihood of confusion.

The addition of the words “LICE KILLER” was held insufficient to distinguish the defendant’s product. The dominant feature of both marks remained “MEDILICE,” and consumers encountering the competing products in identical trade channels could reasonably assume that they originated from the same commercial source.

The judgment therefore reinforces the settled principle that medicinal trademarks receive broader protection because public interest demands greater caution in preventing consumer confusion.

Passing Off Extends Beyond Registered Rights

Apart from infringement, the Court also upheld the plaintiff’s claim for passing off.

Applying the classical trinity of goodwill, misrepresentation and damage, the Court found that Wings Pharmaceuticals had established substantial goodwill in the mark through continuous commercial use.

The defendant’s adoption of an almost identical mark for allied products marketed through identical distribution channels constituted a clear misrepresentation likely to deceive consumers.

Significantly, the Court reiterated that actual proof of financial loss is unnecessary in a passing off action. Once goodwill and likelihood of deception are established, damage naturally follows because consumer confusion inevitably erodes the distinctiveness and commercial reputation of the original mark.

This observation reflects the broader philosophy underlying passing off—that the law protects commercial goodwill before irreparable harm actually materialises.

Mere Delay Does Not Amount to Acquiescence

Another important contribution of the judgment concerns the doctrine of acquiescence.

The defendant argued that Wings Pharmaceuticals had knowledge of his trademark applications since 2001 and again in 2016 because those applications were cited during trademark prosecution. According to the defendant, the plaintiff’s delay in instituting proceedings until 2020 amounted to acquiescence.

The Court rejected this submission after examining Section 33 of the Trade Marks Act and the Supreme Court’s decisions in Power Control Appliances and Midas Hygiene.

The Court observed that acquiescence requires far more than passive inaction. It requires positive conduct amounting to encouragement or consent, leading the defendant reasonably to believe that the plaintiff has abandoned its exclusive rights. Mere knowledge of trademark applications or examination reports cannot satisfy this stringent requirement.

Importantly, the Court distinguished awareness of a trademark application from awareness of actual commercial use. The plaintiff asserted that it became aware of the defendant’s market activities only in 2020, whereupon it promptly instituted legal proceedings. In these circumstances, neither delay nor estoppel could defeat the plaintiff’s claim.

Damages and Procedural Fairness

While affirming the findings of infringement and passing off, the Court modified the relief granted by the trial court.

The punitive damages of ₹10 lakh were reduced to ₹3 lakh after observing that the plaint did not contain a specific prayer for damages of that magnitude. This aspect of the judgment demonstrates the Court’s continued insistence that intellectual property litigation must adhere to procedural fairness even where infringement is established.

Broader Commercial Implications

The judgment carries important lessons for businesses.

First, businesses claiming prior user rights must preserve invoices, advertisements, sales records and other evidence demonstrating continuous commercial use. Regulatory approvals and trademark filings alone will rarely suffice.

Secondly, pharmaceutical and healthcare companies should appreciate that courts will continue to adopt an exceptionally cautious approach while evaluating deceptively similar medicinal trademarks.

Finally, trademark proprietors should recognise that delay alone seldom destroys infringement claims. Unless their conduct amounts to positive encouragement of the defendant’s activities, the defence of acquiescence is unlikely to succeed.

Conclusion

The Delhi High Court’s decision in Kirit Bhadiadra v. Wings Pharmaceuticals Private Limited strengthens three pillars of Indian trademark law: prior user rights require proof rather than assertion, medicinal trademarks deserve heightened judicial protection, and acquiescence demands positive consent rather than mere delay.

Although the Supreme Court has stayed the operation of the judgment pending further consideration, the legal principles articulated by the Delhi High Court provide valuable guidance for future disputes involving pharmaceutical branding, prior user rights, and passing off.

For businesses, the decision serves as an important reminder that trademark rights are ultimately built not through applications or regulatory approvals, but through consistent commercial use, consumer recognition, and the goodwill painstakingly cultivated in the marketplace.