Delhi HC Rejects Modi-Mundipharma's Monopoly Claim Over 'CONTIN', Allows Limited Relief

The case has its origins in a suit filed by Modi-Mundipharma Pvt. Ltd. against Speciality Meditech Pvt. Ltd. and Preet International Pvt. Ltd. The appellant alleged that the defendants’ use of the mark “FEMICONTIN” infringed its registered trademarks “FECONTIN-F” and “CONTIN,” both falling under Class 5 of the Trade Marks Act, which deals with pharmaceutical products. Modi-Mundipharma asserted that it had coined the “CONTIN” family of marks, comprising dozens of registered variants such as “ALPROCONTIN,” “BUCOCONTIN,” and “FECONTIN-F,” and that the term “CONTIN” had become a source identifier for its pharmaceutical range.

In its pleadings, Modi-Mundipharma argued that the product “FEMICONTIN” was deceptively similar to “FECONTIN-F” both visually and phonetically, and further alleged that the product compositions were nearly identical. It claimed that the use of “FEMICONTIN” by the defendants not only amounted to trademark infringement but also constituted passing off, causing dilution of its brand and loss of consumer goodwill. The company sought a permanent injunction, delivery-up of infringing products, damages, and cancellation of the drug license of the manufacturer. It stated in its plaint: “The use of the mark FEMICONTIN also resulted in brand dilution as well as erosion of the goodwill that had been earned by the appellant’s CONTIN series of marks, including FECONTIN-F.”

Speciality Meditech Pvt. Ltd. and Preet International Pvt. Ltd., however, rejected these allegations, arguing that “FEMICONTIN” was coined independently and descriptively. The defendants explained that “FE” referred to ferrous (iron), “FEMI” signified the target demographic (female patients, particularly pregnant women), and “CONTIN” was shorthand for “continuous release,” a feature of the drug delivery system. They contended that such descriptive and industry-wide terms could not be monopolized. Supporting their argument, the defendants stated: “The Trademark 'FEMICONTIN' means and indicates a drug which releases iron continuously in a sustained release manner into the body of a pregnant woman…”

The Single Judge, in the earlier March 2023 ruling, had found that although Modi-Mundipharma was the registered proprietor of “FECONTIN-F” and “CONTIN,” it had failed to demonstrate any standalone use of the mark “CONTIN.” This was corroborated during cross-examination, where the company’s witness admitted: “We do not manufacture any product under the brand name CONTIN however most of our products bear the CONTIN as a suffix in all trademarks.” The Judge concluded that there was no infringement of the “CONTIN” mark, since it was never used independently and was descriptive of a continuous drug release system. Furthermore, the court found the mark “FECONTIN-F” itself to be descriptive, consisting of “FE” for iron and “CONTIN” for sustained release, and thus not entitled to strong trademark protection.

The Division Bench affirmed part of the Single Judge’s reasoning but reversed the ultimate finding. It noted that use of a registered mark in combination with other elements does not amount to standalone use of the mark itself under the Trade Marks Act. The Court observed: “Use of a similar mark or a mark of which the registered mark is a part, cannot be the use of the registered mark itself.” On the issue of descriptiveness, the Court cited the appellant’s own testimony acknowledging that “FECONTIN-F” was an iron supplement and held that the mark was not inherently distinctive. The Bench wrote: “The word FECONTIN-F is clearly descriptive of the pharmaceutical product itself. It is suggestive of iron released for a continuous period in the body.”

However, unlike the Single Judge, the Division Bench concluded that the rival mark “FEMICONTIN” did infringe upon “FECONTIN-F” and that the similarity was sufficient to mislead consumers and amount to passing off. The Court also rejected the appellant’s claim that “FEMICONTIN” was deceptively similar to “CONTIN” per se, but it did not agree with the conclusion that no infringement had occurred at all.

Finally, the Court addressed the doctrine of passing off and brand dilution, and found that even though both drugs are Schedule H medicines requiring a doctor's prescription, confusion was still possible due to the phonetic and functional overlap. The Court also acknowledged the delay in filing the suit but aligned with the earlier Single Judge’s finding that this alone was not sufficient to defeat the claim: “Though there is a delay in filing of the suit, the suit is not liable to be dismissed on this account.”

Subsequently, the Division Bench issued the following directions;

“The FEMICONTIN mark of the respondents is held to infringe the FECONTIN-F mark of the appellant and also amount to passing off, by the respondents, of their product as the product of the appellant. As such, the respondents, as well as all others acting on their behalf would stand permanently injuncted from using the mark FEMICONTIN, or any other mark which is confusingly or deceptively similar to any of the appellant's registered trade marks, in respect of pharmaceutical product in class 5 or for any other similar, allied or cognate products. Though we are not calling upon the respondents to withdraw, from the market, any batches of the products which may have already been cleared by the respondents, the respondents are injuncted from clearing into the market any further stock of FEMICONTIN, which may be available with them. Any such stock if available, shall be destroyed by the respondents, and details in that regard shall be furnished on affidavit with the Registrar of this Court.”

“The prayer of the appellant for a restraint against the use of CONTIN as a suffix, a prefix or any part of the mark by any third party for pharmaceutical products of any other preparations, is rejected. However, there shall be a restraint against any third party using CONTIN per se as a mark for pharmaceutical product or for any other allied, cognate or similar products.”

“This shall not, however, preclude the appellant from instituting infringement, or passing off, proceedings, against any individual mark or marks, alleging infringement on the ground that the mark or marks are deceptively similar to the plaintiff's registered trade mark, inter alia because of use of CONTIN as a part thereof.”

“No separate submissions were advanced before us on the aspect of damages. As such, we refrain from passing any order in that regard.”

“The cross-objection filed by Respondent 1, against the decision of the learned Single Judge with respect to Issue 2, is rejected.”

“The impugned judgment of the learned Single Judge stands set aside in part, and the present appeal stands allowed in part to the aforesaid extent, with no order as to costs.”

To view the original order, click on the link below: