Drug Names Based On International Non-Proprietary Names Cannot Be Monopolised: Bombay High Court Reaffirms

The Bombay High Court has refused to grant an interim injunction to Aristo Pharmaceutical Pvt. Ltd. in its trademark infringement and passing-off suit against Healing Pharma India Pvt. Ltd., ruling that pharmaceutical companies cannot claim exclusivity over trademarks derived from International Non-Proprietary Names (INNs). Justice Sharmila U Deshmukh held that Aristo's registered mark “ACECLO,” taken from the INN 'Aceclofenac', is descriptive and belongs to the public domain, and therefore cannot attract statutory monopoly under the Trade Marks Act, 1999.Aristo argued that the mark has been used since 2003, has acquired distinctiveness, and generated sales of about Rs 42 crore in 2020-21, the period when Healing Pharma allegedly began using “ACECLOHEAL-MR,” “ACECLOHEAL-SP” and “ACECLOHEAL-PLUS.” It accused the Healing Phrama of dishonest adoption.Healing Pharma maintained that 'ACECLO' is simply a clipped form of the INN Aceclofenac, which cannot be monopolised under Section 13. It said its own use was bona fide, adding only its suffix “HEAL.” The court observed that both ACECLO and ACECLOHEAL are derived from INN Aceclofenac. It held that “Section 13 of the Trade Marks Act, 1999 prohibits the registration of an INN or a name which is deceptively similar to such a name. It further provides that any such registration shall be deemed for purpose of Section 57 to be any entry made without sufficient cause or an entry wrongly remaining on the register. The INN's are inherently non registrable being publici juris. INN's are unique, globally recognized generic names for a pharmaceutical substance or active ingredient, which facilitate the identification of active pharmaceutical ingredient and are in public domain.”The court explained that this prohibition applies regardless of whether the defendant challenges the validity of the plaintiff's registration, and that a manufacturer cannot claim exclusivity over a name derived from an INN. On packaging, the court observed that Aristo prominently displays ACECLO with its logo, while Healing Pharma uses ACECLOHEAL in a different style, and that price disparity reduces the likelihood of substitution. Since both marks originate from the same INN, the court said the standard test for deceptive similarity cannot be applied mechanically. Rejecting Aristo's contention that chemists might induce substitution, the court found no prima facie evidence of misrepresentation and said speculative concerns about chemists' conduct cannot justify an injunction. The application was dismissed, with the court reiterating that trademarks derived from INNs cannot be monopolised. Case Title: Aristo Pharmaceutical Private Limited Versus Healing Pharma India Private Limited & Others Case Number: INTERIM APPLICATION (L) NO. 26226 OF 2025 IN COMMERCIAL IP SUIT (L) NO. 25932 OF 2025 For Applicant: Advocates Hiren Kamod, B N Poojari, Prem Khullar, Nidhi Bangera instructed by Asian Patent Law For Defendant: Advocates Atul Singh, Arzoo Gupta and Nikita Agrawal instructed by AVS Legal Click Here To Read/Download Order

Drug Names Based On International Non-Proprietary Names Cannot Be Monopolised: Bombay High Court Reaffirms

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Drug Names Based On International Non-Proprietary Names Cannot Be Monopolised: Bombay High Court Reaffirms

Mohd Malik Chauhan

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