Delhi High Court Upholds Injunction Against Use Of 'Medilice Lice Killer' For Anti-Lice Hair Oil

The Delhi High Court has recently upheld an injunction restraining Rapple Healthcare from using the mark “Medilice Lice Killer” for its anti-lice hair oil, holding that it infringed and amounted to passing off of the registered trademark “MEDILICE” owned by Wings Pharmaceuticals Private Limited.

The court, however, reduced the damages awarded to Wings Pharmaceuticals from Rs 10 lakh to Rs 3 lakh.

A division bench of Justice C Hari Shankar and Justice Om Prakash Shukla dismissed an appeal filed by Kirit Bhadiadra, proprietor of Rapple Healthcare, against a decree passed by the Commercial Court.

The commercial Court had earlier found that both companies sold anti-lice products through the same trade channels. It had concluded that the similarity in their marks was likely to confuse consumers. It permanently restrained Rapple Healthcare from using the disputed mark and awarded Rs 10 lakh as damages.

In appeal before the High Court, Bhadiadra argued that he had been using the mark “Medilice Lice Killer” since 2000 and relied on trademark applications and manufacturing licenses to support his claim of prior use. He also contended that the two products were different, as Wings Pharmaceuticals used the mark “MEDILICE” for an anti-lice shampoo, while his product was an anti-lice hair oil.

Wings Pharmaceuticals countered that it is the registered proprietor of the trademark “MEDILICE” for anti-lice shampoo and has been using the mark continuously since 2004. It relied on invoices and sales figures to show that the mark had acquired goodwill and consumer recognition. The company argued that the use of the identical word “MEDILICE” in Rapple Healthcare's product name was likely to mislead buyers.

After examining the record, the High Court held that Wings Pharmaceuticals' trademark registration was clearly established and that the dominant and essential feature of both marks was the word “MEDILICE.” The court noted that despite the difference in form, both products were meant to address the same problem.

“There exists an overlap between the competing products of both parties, i.e., “MEDILICE” (an anti-lice shampoo) and “MEDILICE LICE KILLER” (an anti-lice ayurvedic oil) for the reason that both products are intended to address the same consumer need. The mere difference in form or composition of the products does not detract from the similarity of their purpose, use, and target consumer base.”, it said.

The court also agreed that Wings Pharmaceuticals had made out a clear case of passing off. It held that the company had established prior use, goodwill and reputation through documentary evidence showing continuous sales since 2004.

“The defendant's adoption of the mark "MEDILICE LICE KILLER," for allied products has the effect of diluting the plaintiff's mark, causing confusion in the marketplace, and enabling the defendant to benefit from the plaintiff's goodwill and reputation built over the years by huge investment without having to put in the same amount of work,” the court said.

On the issue of damages, however, the High Court disagreed with the Commercial Court's award of Rs 10 lakh as punitive damages. Referring to the Supreme Court's ruling in Hindustan Unilever Limited v. Reckitt Benckiser India Limited, it noted that punitive damages can be awarded only in limited circumstances. Since Wings Pharmaceuticals had not specifically claimed damages, the court reduced the amount to Rs 3 lakh.

The appeal was accordingly dismissed, and the permanent injunction against the use of the mark “Medilice Lice Killer” was upheld.

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