Bombay HC Finds ACIPROX Deceptively Similar to Alkem's ALCIPRO, Grants Injunction

Mumbai: The Bombay High Court has granted interim relief to pharmaceutical major Alkem Laboratories in its trademark infringement and passing-off suit against Numen Pharma Private Limited, restraining the latter from manufacturing, marketing, selling, advertising or otherwise using the mark 'ACIPROX', holding that it is deceptively and phonetically similar to Alkem's long-standing registered trademark 'ALCIPRO'.

Justice Sharmila U. Deshmukh, while allowing Alkem’s interim application, observed that in the case of medicinal products, even a bare possibility of confusion between two competing marks is sufficient to warrant judicial intervention because confusion could potentially have serious consequences for patients.

The dispute arose from Alkem Laboratories’ claim that it has been using the trademark “ALCIPRO” since 1990 for pharmaceutical products containing the antibiotic molecule Ciprofloxacin. The company secured registration of the mark in Class 5 on April 4, 1990, and subsequently registered the variant “ALCIPRO-TN” in 1998. Over the years, Alkem launched several products under the ALCIPRO range, including different dosage strengths and formulations used for treating bacterial infections, urinary tract infections, throat infections, skin infections and respiratory infections. The company placed on record sales figures, promotional materials and invoices to demonstrate continuous and extensive use of the mark for more than three decades.

According to Alkem, it discovered in December 2023 that Numen Pharma had applied for registration of the mark “ACIPROX” on a proposed-to-be-used basis. Alkem subsequently filed an opposition before the Trademark Registry. During those proceedings, Numen claimed use of the impugned mark from 2023 onwards.

Alkem then approached the High Court alleging trademark infringement and passing off, contending that the competing marks were deceptively similar and capable of causing confusion in the pharmaceutical market.

Alkem argued that “ALCIPRO” is a distinctive and invented trademark that has been continuously used since 1990 and enjoys significant goodwill and reputation in the market. The company submitted that it is the prior adopter, prior user and registered proprietor of the mark. It maintained that while the trademark may have been inspired by a portion of the molecule name Ciprofloxacin, it does not claim any monopoly over the molecule itself. Rather, its rights arise from the distinctive coined mark created by combining part of the molecule name with the prefix “AL,” which imparts uniqueness and source identification.

The company contended that Numen’s explanation for adopting the mark “ACIPROX” was implausible and that the defendant had failed to produce evidence showing it had genuinely conducted a trademark search before adoption. Alkem further argued that the defendant could not avoid liability by relying on additional suffixes or packaging differences because pharmaceutical products are primarily identified through their brand names. The company stressed that in medicinal products, even a slight possibility of confusion can lead to grave consequences, particularly when the competing products contain different active ingredients and are prescribed for entirely different ailments. It also relied on the Supreme Court’s landmark decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. to contend that prescription-only status is not a sufficient safeguard against confusion.

Alkem additionally argued that the existence of other trademarks containing the word “CIPRO” on the register was irrelevant because mere registration of similar marks does not establish widespread market use. According to the company, Numen could not rely on third-party registrations without proving extensive and continuous use of those marks in commerce.

Numen Pharma opposed the application and argued that Alkem was effectively attempting to monopolise the descriptive term “CIPRO,” which is derived from the international non-proprietary name (INN) Ciprofloxacin. The company contended that such monopoly is impermissible under trademark law and that the word “CIPRO” is widely used across the pharmaceutical industry. It pointed out that hundreds of registered trademarks contain the element “CIPRO,” demonstrating that the expression is common to trade.

The defendant maintained that “ACIPROX” is neither identical nor deceptively similar to “ALCIPRO.” It argued that when the marks are viewed as a whole, there is no likelihood of confusion. Numen claimed it had honestly and bona fide adopted the mark after conducting searches in the Trademark Registry and finding no deceptively similar registration.

Numen further submitted that it never used “ACIPROX” as a standalone mark and always coupled it with distinguishing suffixes identifying formulations, strengths and dosage forms. The company stressed that its product contains Aceclofenac and is intended for pain, inflammation and fever relief, whereas Alkem’s ALCIPRO products contain Ciprofloxacin and are used to treat infections. Therefore, consumers and medical professionals would not confuse the two products.

The company also highlighted differences in packaging, colour schemes, branding and the prominent display of its corporate logo. It argued that the presence of the “NUMEN” house mark and the use of Devanagari script alongside English significantly reduced any possibility of confusion. Numen additionally emphasized that the products are Schedule H prescription medicines sold only through qualified doctors and pharmacists, making accidental substitution unlikely.

After examining the rival marks and legal precedents, the High Court rejected Numen Pharma’s defence and held that the marks “ALCIPRO” and “ACIPROX” are phonetically similar when considered as a whole. The court observed that trademark comparison cannot be carried out by dissecting words syllable by syllable and that the anti-dissection rule requires assessment of the overall commercial impression created by the marks.

The court noted that Numen had merely removed the letter “L” from Alkem’s mark and added the letter “X” at the end. It found that the two marks, when spoken hurriedly or mispronounced, could sound alike and that the terminal “X” was insufficient to eliminate the risk of confusion. The court observed that even educated consumers frequently mispronounce pharmaceutical brand names and that a higher degree of caution is necessary where medicinal products are involved.

The court further emphasized that in pharmaceutical trademark disputes, the applicable standard is not proof of actual confusion but the possibility of confusion. Given India’s multilingual environment, varying literacy levels, handwritten prescriptions and the realities of pharmaceutical dispensing, even a remote possibility of one drug being mistaken for another must be prevented. The court held that the fact that both medicines are prescription drugs does not eliminate the risk of error by doctors, pharmacists or patients.

Justice Deshmukh also rejected Numen’s argument that Alkem was attempting to monopolise the INN Ciprofloxacin. The court held that Alkem’s rights arose from its registered trademark “ALCIPRO”, which had been registered decades earlier and enjoyed statutory protection. The court noted that the defendant had not challenged the validity of that registration and that registration itself constitutes prima facie evidence of validity and distinctiveness.

On the issue of third-party marks containing “CIPRO,” the court held that mere existence of similar registrations is insufficient. To establish that a mark has become common to trade, a defendant must demonstrate extensive and widespread use, which Numen failed to do.

The court also found Numen’s explanation that “ACIPROX” was derived from the words "Aceclofenac" and "Pyrexia" to be unconvincing. It observed that no reasonable combination of those words naturally produces the mark ACIPROX. Since Numen had claimed to have conducted a trademark search before adoption, the court held that such a search would have revealed Alkem’s existing registration, thereby undermining the defendant’s claim of bona fide adoption.

Finally, the court held that Alkem had successfully established all three requirements for interim relief—a prima facie case, balance of convenience and likelihood of irreparable injury. It found that Alkem’s long-standing use since 1990 and substantial sales figures demonstrated goodwill and reputation, whereas Numen was a relatively recent entrant incorporated only in 2023.

Allowing the interim application, the High Court made the injunction absolute and restrained Numen Pharma from using the disputed mark. The operative part of the order states:

“(a) that pending the hearing and final disposal of Suit, the Defendant by itself, its Directors, employees, servants, dealers, franchisees, distributors, stockiest, licensees, agents, sister concerns, wholesalers, retailers, representatives, affiliates, associates and/or assigns and all persons acting for and on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from in any manner manufacturing, selling, offering for sale, stocking, soliciting, exporting, displaying, advertising, marketing, promoting and/or in any manner whatsoever using directly or indirectly in relation to any pharmaceutical and/or medicinal preparation and/or such allied and cognate goods the trade mark 'ACIPROX' and using the mark 'ACIPROX' and/or using any other mark or word being identical with and/or deceptively similar to the Applicant's registered trade mark 'ALCIPRO' and its variant and/or using any other trade mark so as to infringe the Applicant's registered trademark 'ALCIPRO' and its variant bearing Nos. 527403 and 821181 in any other manner whatsoever:”

“(b) that pending the hearing and final disposal of Suit, the Defendant by itself, its Directors, employees, servants, dealers, franchisees, distributors, stockiest, licensees, agents, sister concerns, wholesalers, retailers, representatives, affiliates, associates and/or assigns and all persons acting for and on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from in any manner manufacturing, selling, offering for sale, stocking, soliciting, exporting, displaying, advertising, marketing, promoting and/or in any manner whatsoever using directly or indirectly in relation to any pharmaceutical and/or medicinal preparation and/or such allied and cognate goods from using the trade mark 'ACIPROX' and using the mark 'ACIPROX and/or using any other mark or word being identical with and/or deceptively similar to the Applicant's registered trade mark 'ALCIPRO' and its variant and/or using any other trade mark so as to pass off the Defendant's goods / products as those of the Applicant's and/or to indicate any connection with the Applicant;”

To view the official order, click the link below: