Court holds "ACNE SCAR" mark deceptively similar to registered "ACNESTAR" trademark; rejects defendants' descriptive use defense and orders recall of existing stock within two months
In a significant trademark infringement dispute, the Delhi High Court has granted an interim injunction restraining Alaina Healthcare Private Limited and its marketer A. Menarini India Pvt. Ltd. from using the mark "ACNE SCAR," "ACNE + SCAR," or "ACNESCAR" for their acne-scar serum, holding these marks deceptively similar to the plaintiff's registered trademark "ACNESTAR."
The suit was filed by Mankind Consumer Products Private Limited, the registered proprietor of the mark ACNESTAR since 2005, which is used for pharmaceutical and medicinal preparations including a clindamycin and nicotinamide gel for acne treatment. The defendants manufacture and market a serum for acne scars under the brand name HEXILAK ACNE + SCAR, a product licensed as a cosmetic and sold through similar trade channels as the plaintiff's product, including chemists and major e-commerce platforms such as Amazon and Flipkart.
Justice Purushaindra Kumar Kaurav, after a detailed examination of the marks, products, and use, observed that the impugned marks differ from ACNESTAR by only one letter, with a near-identical phonetic pronunciation ("AK-NEE-STAR" vs. "AK-NEE-SKAR"). The Court relied on a prior Division Bench judgment in Mankind Pharma Ltd. v. Brinton Pharmaceuticals Ltd., which held that "ACNESCAR" was deceptively similar to "ACNESTAR," and that use of house marks or sub-branding (like HEXILAK and MENARINI) does not negate infringement if the essential features of the registered mark are adopted.
The defendants' claim that "ACNE + SCAR" was a bona fide descriptive use indicating the product's purpose was rejected at the interim stage. The Court found that "ACNE + SCAR" was used as a product name or sub-brand rather than a mere description, noting that the packaging separately described the product as "Serum for Acne Scars." The Court clarified, however, that the defendants remain free to describe their product in ordinary descriptive terms.
Addressing the defendants' allegations of delay and suppression of material facts by the plaintiff, the Court held that any discrepancies regarding the date of knowledge or marketing commencement were inadvertent and not material enough to deny relief. The continuous use of the infringing mark was held to give rise to a continuous cause of action.
On the issue of product differences, the Court noted that while the plaintiff's ACNESTAR gel is a Schedule H medicinal drug sold on prescription and the defendant's serum is a cosmetic licensed product, both target related skin conditions and are sold through the same channels to the same class of consumers. Infringement involving medicinal products requires a stricter standard, and the possibility of confusion or error among consumers or chemists could not be ruled out.
Considering the balance of convenience and irreparable harm, the Court held that the plaintiff, with longstanding registration and substantial sales exceeding ₹540 crores since inception, was entitled to protection. The defendants had no registration for the impugned mark. The injunction would not prevent the use of the house marks HEXILAK or MENARINI or the sale of the serum itself under a different name.
Consequently, the Court restrained the defendants from manufacturing, selling, advertising, or dealing in any products under the impugned marks or deceptively similar marks until final adjudication. The defendants were granted two months to recall existing stock and withdraw online listings bearing the infringing marks but were prohibited from manufacturing or marketing under those marks in the interim.
This judgment reinforces the protection of registered trademarks against deceptively similar marks, even where minor differences exist, and clarifies the limited scope of descriptive use defenses under the Trade Marks Act, 1999, especially where the allegedly descriptive terms function as product names or sub-brands.
Bottom Line:
Trade Marks Act, 1999 - Interim injunction in trademark infringement - Registered mark ACNESTAR held prima facie infringed by defendants' use of ACNE SCAR / ACNE + SCAR / ACNESCAR for acne-scar serum - Mere addition of house marks HEXILAK and MENARINI no defence - Descriptive use defence under Sections 30(2)(a) and 35 not available where expression is used as product name/sub-brand and not merely descriptively - Delay by itself not a ground to refuse injunction in infringement action.
Statutory provision(s):
Trade Marks Act, 1999 Sections 28, 29(2)(b), 30(2)(a), 31(1), 35; Code of Civil Procedure, 1908 Order XXXIX Rules 1 and 2
