Facts of the Case
The Plaintiff, GlaxoSmithKline Pharmaceuticals Limited, filed the suit seeking a decree of permanent injunction against the Defendants from manufacturing, selling, advertising, marketing, or dealing in medicinal/pharmaceutical products under the mark “WALPOL” or any other mark deceptively similar to the Plaintiff’s marks “CALPOL” and “CALPOL FAST.”
The Plaintiff stated that it is part of the GSK group, a global healthcare company with a long-standing reputation in pharmaceuticals and vaccines. The Plaintiff further stated that it has been one of the market leaders in many therapeutic areas and preventive healthcare in India, and that its sales turnover had increased to Rs. 3,57,629/- in lakhs in 2024.
The Plaintiff claimed that it first adopted and used the trademark “CALPOL” in 1991 and has continuously used the mark for pharmaceutical preparations, including tablets, syrups, and oral drops. Due to long and continuous use, consumers in India associate the CALPOL marks only with the Plaintiff. The Plaintiff also submitted that the mark CALPOL is inherently distinctive and entitled to a high degree of protection under the Trade Marks Act, 1999.
The Plaintiff is the registered proprietor of the marks CALPOL and CALPOL FAST in India for pharmaceutical and medicinal preparations. The judgment records that the Plaintiff’s products under the CALPOL marks have received extensive coverage in publications, pharmacy guides, medical journals, and online platforms.
In September 2024, the Plaintiff came across the Defendant’s trademark application for “WALPOL”. According to the Plaintiff, the Defendants were using the mark WALPOL for pharmaceutical preparations through their websites. The Plaintiff argued that WALPOL was nearly identical/deceptively similar to CALPOL, as only the first letter “C” was replaced with “W”. Both marks had six letters, five of which were the same, and both ended with “POL.” Since the products were identical and sold through common trade channels to common consumers, the Plaintiff submitted that confusion was inevitable.
Arguments by the Plaintiff
The Plaintiff argued that the Defendants’ mark WALPOL was deceptively similar to the Plaintiff’s marks CALPOL and CALPOL FAST, especially because both marks were used for identical medicinal/pharmaceutical products. The Plaintiff submitted that the similarity between the marks, common trade channels, and common consumers created a strong likelihood of confusion among the public.
The Plaintiff further submitted that CALPOL should be declared a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999. The Plaintiff relied on the factors under Sections 11(6) and 11(7) of the Act and placed relevant data and supporting documents on record to show that the mark fulfilled the required parameters for recognition as a well-known trademark.
Position of the Defendants
The judgment does not record detailed arguments by the Defendants on merits. During the pendency of the suit, the parties amicably settled their disputes. The Defendants agreed to give up the use of the impugned mark WALPOL and any mark deceptively similar to the Plaintiff’s marks. They also agreed to suffer injunction and pay Rs. 2,00,000/- as damages within three months. The Court also recorded that there was no existing stock in the market or elsewhere with the Defendants, and that the Defendants would withdraw trademark application no. 5753703 for the mark WALPOL, if not already withdrawn.
Judgment / Court’s Findings
The Court noted that the suit had already been decreed in favour of the Plaintiff and against the Defendants in view of the settlement between the parties. Therefore, the only issue left for consideration was whether the mark CALPOL should be declared as a well-known trademark.
After considering the submissions and material placed on record, the Court held that the trademark CALPOL had acquired extensive recognition and association of the public in the concerned industry with respect to pharmaceutical and medicinal products. The Court observed that the mark had a long journey of over 35 years, commencing from 1991. The Court also considered the Plaintiff’s sales figures, awards and accolades, marketing/advertising expenditure, promotional material, media coverage, and availability of CALPOL products across pharmacies and online platforms.
The Court held that the Plaintiff’s long-standing reputation and extensive, continuous, and uninterrupted use of the mark CALPOL across India reflected its significant commercial presence and recognition. The Court further held that the mark had acquired distinctiveness in the field of medicine and pharmaceutical products, both for adults and children. Accordingly, the Court declared CALPOL as a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
Key Takeaways
This judgment shows that a trademark can be declared well-known when the proprietor proves long, continuous, and extensive use, strong sales, wide market recognition, substantial promotional efforts, media coverage, valid registrations, and successful enforcement history.
The case also highlights that in pharmaceutical trademarks, even small differences may not be sufficient if the overall mark is deceptively similar, especially where the products are identical and sold through common trade channels to common consumers.
Get In Touch
