This case pertains to a trademark infringement and passing-off dispute between Apex Laboratories Pvt. Ltd. (plaintiff) and Macleods Pharmaceuticals Ltd. (defendant). The dispute arises over the alleged deceptive similarity between the plaintiff’s registered trademark "BILTEN" and the defendant’s mark "BELATIN", both used for antihistamine pharmaceutical preparations containing Bilastine as the main ingredient. The plaintiff sought a permanent injunction restraining the defendant from using the mark "BELATIN" and demanded the surrender of infringing materials, account of profits, and damages.The defendant, however, contended that it was the prior adopter of the mark "BELATIN", having conceived it before the plaintiff’s trademark registration. The court was required to determine whether the defendant’s use of "BELATIN" constituted trademark infringement or passing off and whether prior adoption of a mark could be a defense against infringement.

Factual Background & Procedural History

Plaintiff’s Case (Apex Laboratories Pvt. Ltd.)

• Laboratories adopted the trademark "BILTEN" in June 2019 and applied for registration on July 25, 2019, in Class 5 for pharmaceutical products.
• The trademark was officially registered under No. 4246358 in 2019.
• The product launch occurred in November 2019, following the grant of a drug license on October 15, 2019.
• The plaintiff noticed the defendant using the mark "BELATIN" for a Bilastine-based antihistamine in August 2020.
• Apex claimed this constituted infringement and passing off due to phonetic and visual similarity.

Defendant’s Case (Macleods Pharmaceuticals Ltd.)

• Conceived and adopted the mark "BELATIN" in May 2019 and applied for trademark registration on June 22, 2019 (Application No. 4214272).
• Obtained a drug license on October 15, 2019, and launched the product in November 2019.
• Argued that pharmaceutical trademarks often derive from the API, and Bilastine-based trademarks are common.
• Claimed to be an honest and concurrent user, asserting that Macleods was the first actual user.

Court Proceedings

• Filed under Sections 27, 28, 29, 134, 135 of the Trademarks Act, 1999, and Sections 51, 55, 62 of the Copyright Act, 1957.
• The Madras High Court granted an interim injunction restraining Macleods from using "BELATIN".
• Both parties submitted documentary evidence, including trademark applications, invoices, drug licenses, and promotional expenses.

Issues Examined by the Court

• Whether "BILTEN" was a registered trademark?
• Who was the prior user – Apex or Macleods?
• Whether the trademarks "BILTEN" and "BELATIN" are deceptively similar?
• Whether Macleods could claim "honest concurrent use"?

Court’s Final Conclusion

• Apex Laboratories was the prior user, giving it stronger trademark rights.
• "BILTEN" and "BELATIN" were deceptively similar, justifying an injunction.
• API-based trademarks can still be protected if confusion exists.
• Macleods could not claim honest concurrent use since its mark was unregistered.
• Delay did not amount to acquiescence, as Apex opposed Macleods' trademark application.

Final Decision

• Injunction Granted: The court permanently restrained Macleods from using the mark "BELATIN".
• Liquidation Period: Macleods was given four months to sell existing inventory of "BELATIN".
• Damages Rejected: Apex had not proven financial loss, so no damages were awarded.
• Counterclaim Dismissed: Macleods' claim for ₹50,00,000 in damages was dismissed.

Concluding Note

• Trademark registration provides stronger protection, but prior use can override it.
• Pharmaceutical trademarks require a higher standard to prevent consumer confusion.
• Honest concurrent use is not a valid defense in an infringement suit unless the mark is registered.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539