The Delhi High Court granted an interim injunction restraining defendants from using the mark ACNE SCAR / ACNE+SCAR / ACNESCAR, finding it deceptively similar to plaintiff's registered trade mark ACNESTAR under Section 29(2)(b) of the Trade Marks Act, 1999. The court rejected defendants' suppression and descriptive use defences, emphasizing that essential features of the registered mark must be compared as a whole.
Background & Facts
The Dispute
The plaintiff, Mankin D Consumer Products Private Limited, proprietor of the registered trade mark ACNESTAR (No. 1352577 in Class 5 since 25.04.2005), alleged infringement by defendants' mark ACNE SCAR / ACNE+SCAR / ACNESCAR used for a serum treating acne scars. The mark ACNESTAR is a coined word for clindamycin and nicotinamide gel, soaps, and face washes, while defendants' product HEXILAK ACNE + SCAR is a cosmetic serum for post-inflammatory repair.
Key Facts
- Plaintiff acquired ACNESTAR via Deed of Assignment dated 19.02.2025 from Mankind Pharma Ltd., deemed effective from 03.09.2024
- Form TM-P for assignment recording filed on 22.08.2025
- ACNESTAR has been in continuous use since 2005; sales since inception ≈ ₹540 crores; FY 2024-25 sales = ₹76.39 crores
- Defendant No. 1 (Alaina Healthcare Pvt. Ltd.) manufactures the product at Baddi, Himachal Pradesh under cosmetics licence
- Defendant No. 2 (A. Menarini India Pvt. Ltd.) markets the product; part of A. Menarini group owning HEXILAK mark (No. 1270019 in Class 5)
- Plaintiff came to know of impugned product on 17.02.2026; suit instituted on 11.03.2026
- Defendants' product sold as "Hexilak Acne Scar Serum" or "Hexilak Acne Plus Scar Serum" on e-commerce platforms (Flipkart, Amazon, 1mg, Clinikally)
- Sales of impugned product: ₹72.86 lakhs (Aug-Dec 2022), ₹283.43 lakhs (2023), ₹313 lakhs (2024), ₹312.81 lakhs (2025)
Procedural History
- 11.03.2026: Suit instituted (CS(COMM) 280/2026)
- 20.03.2026: Ex parte ad interim injunction granted in plaintiff's favour; Local Commissioners appointed
- 24.04.2026: Division Bench recorded plaintiff's statement that injunction could be kept in abeyance till fresh hearing
- 16.10.2026: Judgment pronounced on fresh hearing after considering defendants' reply
Relief Sought
Plaintiff sought interim injunction restraining defendants from manufacturing, selling, advertising, or dealing in goods under impugned mark or any deceptively similar mark.
The Legal Issue
The central question was whether the impugned mark ACNE SCAR / ACNE+SCAR / ACNESCAR is deceptively similar to plaintiff's registered trade mark ACNESTAR within the meaning of Section 29(2)(b) of the Trade Marks Act, 1999, considering the defences of suppression, descriptive use under Sections 30(2)(a) and 35, and delay.
Arguments Presented
For the Plaintiff
Plaintiff relied on Mankind Pharma Ltd. v. Brinton Pharmaceuticals Ltd. (1 FAO (COMM) 166/2024) to argue that ACNESCAR is phonetically nearly identical to ACNESTAR, and the single-letter substitution (T→C) cannot avoid infringement. It contended that ACNESTAR is a distinctive coined mark, not descriptive, and defendants' use of ACNE+SCAR as primary product identifier (not descriptive phrase) negated Sections 30(2)(a) and 35 defence. Plaintiff asserted that delay is no defence to infringement, citing Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, and that the impugned mark's adoption was dishonest, tilting balance of convenience in plaintiff's favour given its 17-year registration versus defendants' unregistered mark.
For the Defendant
Defendant No. 2 argued plaintiffs suppressed material facts by pleading knowledge only from 17.02.2026 despite defendants marketing the product since May 2025, citing Manjula v. D.A. Srinivas to claim disentitlement to equitable relief. It contended ACNESTAR is descriptive (ACNE being publici juris), and ACNE+SCAR is a bona fide description of the product's purpose, protected by Sections 30(2)(a) and 35. Defendant further argued no likelihood of confusion due to prominent HEXILAK/MENARINI house marks, sequential/complementary nature of products (acne treatment vs scar serum), and absence of sales diversion, citing increased plaintiff sales post-2022 to negate irreparable injury.
The Court's Analysis
The court first addressed the suppression defence, finding the discrepancy in pleaded knowledge date (17.02.2026) versus defendants' alleged May 2025 marketing was an "inadvertent error" as plaintiff had placed on record a Flipkart listing captured on 10.03.2026 showing a May 2024 product review. It held: "The discrepancy in para 11 is no more than an inadvertent error, and a party which itself files the document said to contradict its pleading cannot be said to have suppressed it." Regarding descriptiveness, the court noted that while ACNE is publici juris, the plaintiff's claim is to ACNESTAR as a whole. Applying Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, it observed that infringement occurs when essential features of the registered mark are adopted, rendering get-up differences immaterial. The court found: "What is common to the rival marks is not merely the word ACNE, but the entire structure ACNE -S-_-A-R, save one letter." Phonetic near-identity (AK-NEE-STAR vs AK-NEE-SKAR) was deemed sufficient for confusion among average consumers. The descriptive defence failed as ACNE+SCAR was used as the product name (evident from typography, colour scheme, and e-commerce listings), not merely as a descriptive phrase; the accompanying "SERUM FOR ACNE SCARS" in smaller letters confirmed this. The court rejected the argument that HEXILAK/MENARINI house marks negated confusion, citing V-Guard Industries Ltd. v. Crompton Greaves Consumer Electricals Ltd. to hold that sub-branding using a house mark with a prominently displayed mark is not a defence to infringement. Finally, on balance of convenience, the court emphasized plaintiff's status as registered proprietor since 2005 with substantial sales, versus defendants' unregistered mark and recent adoption, concluding: "The injunction would not affect the use of HEXILAK or MENARINI, or the sale of the product itself, and would only require defendant no. 2 to adopt a different name for the product."
The Verdict
The plaintiff succeeded in obtaining an interim injunction. The court held that the plaintiff made out a prima facie case of infringement of ACNESTAR under Section 29(2)(b) of the Trade Marks Act, 1999. Accordingly, defendants, their directors, officers, servants, agents, distributors, dealers, and all others acting for them are restrained from manufacturing, selling, offering for sale, advertising, or dealing in pharmaceutical/medicinal preparations, skin care preparations, or allied/cognate goods under the mark ACNE SCAR, ACNE+SCAR, ACNESCAR, or any other deceptively similar mark. The injunction operates forthwith, but considering defendants have sold the impugned product since 2022 with stock already in trade, defendant no. 2 is granted a period of two months from the judgment date (16.10.2026) to recall such stock from distributors, stockists, retailers, and e-commerce sellers, and to withdraw product listings under the impugned mark. This recall period is strictly for stock withdrawal and does not permit manufacture, advertisement, offer for sale, or supply of any product under the impugned mark during the interim.
What This Means For Similar Cases
Essential Features Test Trumps Get-Up Variations
Courts will focus on the core structure of competing marks rather than superficial differences in spelling, punctuation, or accompanying descriptive phrases. As held here, a single-letter substitution in a nearly identical phonetic structure (ACNE-S-_-A-R) suffices for deceptive similarity when the mark is used as a trademark. Practitioners must argue that get-up differences (colour, packaging, house marks) are immaterial once essential features are adopted, per Kaviraj Pandit Durga Dutt Sharma.
Descriptive Use Requires Bona Fide Contextual Application
The defence under Sections 30(2)(a) and 35 of the Trade Marks Act, 1999 fails where an expression is used as a primary product identifier rather than in a descriptive sentence. Here, ACNE+SCAR's prominent placement on packaging, use as the product name in invoices and e-commerce listings, and accompanying smaller-text description ("SERUM FOR ACNE SCARS") demonstrated trademark use. Lawyers should examine actual usage context - not just linguistic meaning - to assess if the descriptive defence applies.
Balance of Convenience Favors Senior Registered Proprietor
In interim injunction proceedings, a long-standing registered proprietor (here, since 2005 with ₹540 crores sales) holds a strong balance of convenience advantage over a recent adopter of an unregistered mark. The court emphasized that injunction would only require defendants to rename the product, not disrupt their core business (HEXILAK/MENARINI use). Practitioners should highlight the plaintiff's registration vintage, sales volume, and defendants' lack of registration/application when arguing balance of convenience.
