Use of ‘Medilice Lice Killer’ for Anti-Lice Oil Violates MEDILICE Trademark: Delhi High Court

Use of ‘Medilice Lice Killer’ for Anti-Lice Oil Violates MEDILICE Trademark: Delhi High Court

Introduction

The Delhi High Court has upheld a permanent injunction restraining the use of the mark “Medilice Lice Killer” for anti-lice hair oil, holding that it infringes and amounts to passing off of the registered trademark “MEDILICE” owned by Wings Pharmaceuticals Private Limited. While affirming the injunction, the Court reduced the damages awarded by the Commercial Court from ₹10 lakh to ₹3 lakh.

Factual Background

Wings Pharmaceuticals Private Limited is the registered proprietor of the trademark “MEDILICE”, used for anti-lice shampoo. The company claimed continuous use of the mark since 2004 and placed reliance on invoices, sales figures, and trademark registrations to establish goodwill and consumer recognition.

Rapple Healthcare, owned by Kirit Bhadiadra, marketed an anti-lice hair oil under the mark “Medilice Lice Killer.” Bhadiadra claimed that he had been using the mark since 2000 and relied on trademark applications and manufacturing licences to assert prior use. He also argued that his product was distinct from Wings Pharmaceuticals’ product, as one was a hair oil and the other a shampoo.

Procedural Background

Wings Pharmaceuticals instituted a trademark infringement and passing off suit before the Commercial Court, which permanently restrained Rapple Healthcare from using the mark “Medilice Lice Killer” and awarded ₹10 lakh as damages.

Aggrieved, Rapple Healthcare preferred an appeal before the Delhi High Court challenging both the finding of infringement and the quantum of damages.

Issues

1. Whether the use of the mark “Medilice Lice Killer” infringed and amounted to passing off of the registered mark “MEDILICE.”

2. Whether the difference in product form (hair oil versus shampoo) negated the likelihood of consumer confusion.

3. Whether the award of ₹10 lakh as damages by the Commercial Court was justified.

Contentions of the Parties

The appellant contended that it had prior use of the mark “Medilice Lice Killer” since 2000 and that the products were different in nature, composition, and form. It argued that no confusion was likely as consumers could distinguish between an anti-lice oil and an anti-lice shampoo.

The respondent countered that it was the registered proprietor of “MEDILICE” and that the dominant and essential feature of both marks was the identical word “MEDILICE.” It submitted that both products addressed the same consumer need and were sold through identical trade channels, making confusion inevitable.

Reasoning and Analysis

The Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla held that the registration and prior use of the mark “MEDILICE” by Wings Pharmaceuticals was clearly established. The Court found that the dominant feature of both marks was the word “MEDILICE,” and that its incorporation in the appellant’s mark was sufficient to cause confusion.

Rejecting the argument based on product differentiation, the Court observed that both products were intended to address the same problem lice infestation and targeted the same consumer base. The mere difference in form or composition did not dilute the likelihood of confusion.

The Court also upheld the finding of passing off, noting that Wings Pharmaceuticals had demonstrated goodwill and reputation through consistent and substantial sales since 2004. It held that the appellant’s adoption of “Medilice Lice Killer” enabled it to unfairly benefit from the respondent’s goodwill and diluted the registered mark.

On damages, however, the Court relied on the Supreme Court’s decision in Hindustan Unilever Limited v. Reckitt Benckiser India Limited to hold that punitive damages can be awarded only in limited circumstances. Since Wings Pharmaceuticals had not specifically claimed damages, the award of ₹10 lakh was held to be excessive and was reduced to ₹3 lakh.

Decision

The Delhi High Court dismissed the appeal and upheld the permanent injunction restraining Rapple Healthcare from using the mark “Medilice Lice Killer.” The Court, however, reduced the damages awarded from ₹10 lakh to ₹3 lakh. The decree of injunction continues to operate against the appellant.

In this case the appellant was represented by Mr. J. Sai Deepak, Sr. Adv. with Ms. Kangan Roda, Mr. Sarthak Sharma, Ms. Apoorva Sharma Mr. Avinash and Ms. Purnima Vashishtha, Advocates. Meanwhile the respondent was represented by Mr. Sachin Gupta, Ms. Mahima Chanchalani, Ms. Prashansa Singh, Mr. Rohit Pradhan, Ms. Sunita, Mr. Anmol Bharti and Ms. Charu Raghav, Advocates.