No Monopoly Over Drug Names Derived from INNs: Bombay HC Rejects Aristo's Injunction Bid Over Aceclo Trademark

The case was heard by Justice Sharmila U. Deshmukh of the Bombay High Court’s Commercial Division, who reserved the matter on 14 November 2025 and pronounced the order on 25 November 2025.

The dispute centered around alleged trademark infringement and passing-off concerning the widely used pain and anti-inflammatory drug Aceclofenac. Aristo, the plaintiff, claimed Healing Pharma had adopted deceptively similar marks that subsumed its registered trademark "ACECLO."

Aristo Pharmaceuticals asserted that it originally conceived the mark “ACECLO” in 2003, derived from the drug molecule Aceclofenac. Although originally registered as “ARISTO ACECLO,” Aristo began using “ACECLO” prominently from 2003 onward and later secured registration for “ACECLO” (2011) and variants such as “ACECLO-MR.”

In 2024, Aristo discovered that Healing Pharma was manufacturing and marketing products such as “ACECLOHEAL-MR,” “ACECLOHEAL SP,” and “ACECLOHEAL PLUS.” After issuing a cease-and-desist notice (October 2024) and receiving a denial, Aristo filed suit seeking injunction against Healing Pharma.

Aristo contended that its registered trademark “ACECLO” enjoyed goodwill and exclusivity under Section 28 of the Trade Marks Act, 1999. The company argued that the defendant had copied the entire mark “ACECLO” and merely added the suffix “HEAL,” making the rival marks deceptively similar.

Aristo emphasized its sales figures (₹42 crore in 2020–21) to show reputation and argued that the suffixes MR/SR/SPAS were common industry abbreviations, leaving “ACECLO” as the core distinctive element.

Its counsel contended:

• The International Non-Proprietary Name (INN) list contains “Aceclofenac,” not “Aceclo,” and therefore Aristo’s mark was distinctive.
  
• The defendant’s use was not descriptive but as a trademark.
• Mere presence of other third-party products was insufficient to prove generic use.

On the other hand, Healing Pharma argued that “Aceclo” is derived entirely from the INN “Aceclofenac,” a generic pharmaceutical name that is publici juris—i.e., no one can monopolize it.

They asserted:

• Section 13 of the Trade Marks Act prohibits registration of INNs or deceptively similar names.
• “Acecloheal” was an honest adoption, created by combining a clipped form of “Aceclofenac” with “Heal,” the defendant’s brand identity.
• The packaging, pricing, and visual style eliminated any likelihood of confusion.
• Many manufacturers used clipped INN names, reinforcing that the term was descriptive and non-exclusive.

Justice Deshmukh made detailed observations, emphasizing the special legal framework governing marks derived from chemical names or INNs.

The court noted that Aristo used the mark in a form different from its original 2003 registration (“ARISTO ACECLO”), undermining the claim of distinctiveness since inception:

“The Plaintiff's conduct of using the mark at variance from the registered trade mark disentitles the Plaintiff to seek any support from the user since the year 2003 to claim distinctiveness.”

On the key issue of INN-related names, the court held that because “Aceclofenac” is an INN, any clipped version—such as “Aceclo”—falls within the prohibition of Section 13:

"The Plaintiff's trade mark is a clipped version of the INN and is largely derived from the generic source and hence can only be termed as descriptive. It is no answer to say that the Plaintiff's mark is Aceclo whereas the INN is Acecelofenac. The use of the words "deceptively similar to such name" takes within its fold even the clipped version."

“No entity can claim exclusive rights over generic or descriptive words that are prima facie publici juris.”

The judge also observed that the defendant’s addition of “HEAL” and differences in packaging/font diminished any possibility of confusion:

"Prima facie the rival marks are depicted in different style and there is no possibility of causing confusion as the marks are dissimilar. In my view, where the rival marks are derived from an INN and incorporates letters of the INN, the usual test of deceptive similarity by reason of the entire mark being subsumed in the impugned mark cannot constitute the sole criteria. It is also stated by Defendant No. 1 that there is vast difference in pricing of the two products, which has not been denied by the Plaintiff in its Rejoinder Affidavit. The possibility of confusion prima facie appears to be bleak."

On passing-off, the court found no evidence of deception. It noted;

"Insofar as the relief of passing off is concerned, the same is a tortious action in deceit. The case put up in the Plaint is that by reason of unauthorised adoption of deceptively similar trade mark, amounts to infringement of the Plaintiff's trade mark resulting in passing off for unlawful gains. The considerations in respect of infringement and passing off may overlap. Alongwith reputation, goodwill and likelihood of damages, prima facie it must be demonstrated an attempt to misrepresent the Defendant's goods as that of the Plaintiffs. I do not find any material to prima facie hold that the Defendants have designed their goods in a manner as to pass off its goods as that of the Plaintiffs. The packaging and the depiction of the respective trade marks on the products distinguishes the goods of the Plaintiff from that of the Defendants. The difference is pricing is also significant aspect. More so when the Defendant No 1 has produced photographs to show use of the clipped version of INN i.e. Acecelofenac by many other companies. Mr. Singh is also right in pointing out to the case for passing off as set out in the Rejoinder Affidavit, that the chemist is likely to offer the drug bearing the impugned mark, persuade and Sairaj 15 of 16 IA(L)-26226-2025.doc (f).doc convince the buyer that the Acecloheal is same as Aceclo. There is no prima facie case of misrepresentation by the Defendants made out. In none of the decisions cited by Mr. Kamod, the registered trademark was derived from an INN and the decisions dealing with the issue of deceptive similarity was de-hors the consideration of Section 13 of Trade Marks Act, 1999. There is no quarrel with the propositions laid down in the said decisions, however the same are inapplicable to the present case."

Concluding that Aristo failed to establish a prima facie case for either trademark infringement or passing-off, Justice Deshmukh dismissed the interim application:

“The Plaintiff having failed to make out a prima facie case for infringement of trademark and passing off, the Interim Application stands dismissed.”

To view original order, click on the link below:

https://indiankanoon.org/doc/54084651/