Delhi High Court Injuncts Zee Laboratories in ‘PHEXIN’-‘FEXIT’ Dispute, Calls It Case of “Triple Identity”

Delhi High Court Injuncts Zee Laboratories in ‘PHEXIN’-‘FEXIT’ Dispute, Calls It Case of “Triple Identity”

Introduction

The Delhi High Court granted an interim injunction in favour of GlaxoSmithKline Pharmaceuticals Ltd, restraining Zee Laboratories from using the marks “FEXIT”, “FEXIT-B” and “FEXIT-M”. Justice Tejas Karia held that the impugned marks were deceptively similar to the plaintiff’s registered trademark “PHEXIN” and described the case as one of “triple identity”.

Factual Background

GlaxoSmithKline (GSK) claimed longstanding use of the trademark “PHEXIN” since 1985 for antibiotic pharmaceutical products and asserted substantial goodwill and reputation in the mark. The dispute arose when Zee Laboratories began using the marks “FEXIT”, “FEXIT-B” and “FEXIT-M” for pharmaceutical ointments and creams.

The plaintiff alleged that the impugned marks were phonetically and visually similar to “PHEXIN” and that the defendant had also adopted a deceptively similar green-and-white trade dress, thereby increasing the likelihood of confusion among consumers.

Procedural Background

GSK filed a suit seeking relief for trademark infringement, passing off, dilution, and unfair competition. The present order was passed on an interim application seeking restraint against the defendant’s continued use of the impugned marks pending final adjudication.

Issues

1. Whether the marks “FEXIT”, “FEXIT-B” and “FEXIT-M” are deceptively similar to “PHEXIN”.

2. Whether the defendant’s use constitutes trademark infringement and passing off.

Whether likelihood of confusion exists in pharmaceutical products despite differences in form (ointment vs capsule).

Contentions of the Parties

The plaintiff contended that the impugned marks were phonetically and structurally similar to its well-established mark “PHEXIN” and were used for similar pharmaceutical products, thereby creating a likelihood of confusion. It further argued that the defendant had imitated its trade dress and was attempting to ride upon its goodwill.

The defendant argued that the marks were distinct and that the products differed in nature, with its offerings being dermatological creams and ointments as opposed to the plaintiff’s oral antibiotic capsules. It also contended that both products were Schedule H drugs, dispensed only on prescription, thereby reducing the likelihood of confusion.

Reasoning and Analysis

The Court held that a prima facie comparison of the rival marks revealed clear phonetic similarity. It rejected the defendant’s argument regarding differences in product form, noting that both parties operated within the pharmaceutical domain and catered to a similar consumer base.

The Court emphasised that in trademark law, proof of actual confusion is not required and that a likelihood of confusion is sufficient to establish infringement. It further observed that a stricter standard must be applied in cases involving medicines, as confusion between pharmaceutical products can have serious public health consequences, relying on the principles laid down in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.

Justice Karia also found that the plaintiff had established significant goodwill and distinctiveness in the mark “PHEXIN” through prolonged use. The adoption of similar trade dress by the defendant further strengthened the inference of deceptive similarity and dishonest adoption.

Characterising the matter as a case of “triple identity,” the Court noted that the marks, product category, and trade channels were all substantially identical, making the likelihood of confusion particularly high.

Decision

The Delhi High Court restrained Zee Laboratories and its associates from manufacturing, selling, advertising, or dealing in pharmaceutical products under the marks “FEXIT”, “FEXIT-B” and “FEXIT-M”, or any other deceptively similar mark or trade dress, pending final disposal of the suit.

In this case the plaintiff was represented by Advocates Tanya Varma, Vardaan Anand, Ruchika Yadav and Hansika Bajaj. Meanwhile the respondent was represented by Advocates Rohit Bohra and Siddharth Bambha.