The Bombay High Court has ordered rectification of the trademark LEFOXIN BIOX registered by Shreya Life Sciences, holding it deceptively similar to Glaxo Group's long-standing mark LANOXIN. The Court applied the stricter standard for pharmaceutical marks from Cadila Healthcare v. Cadila Pharmaceuticals and the binding Division Bench precedent in Macleods Pharmaceuticals, ruling that likelihood of confusion at the time of registration - not actual confusion - governs rectification proceedings. Critically, the Court held that use of a mark in India for export constitutes use in India under Section 56(1) of the Trade Marks Act, 1999, rejecting the argument that export-only use negates confusion in the domestic market. The removal direction is deferred to December 31, 2026 to allow rebranding.
Background & Facts
The Dispute
Glaxo Group Limited ("Glaxo"), a UK-incorporated company part of the GSK group, sought cancellation of Trade Mark Registration No. 5001470 for the mark LEFOXIN BIOX in Class 5, registered in the name of Shreya Life Sciences Pvt. Ltd. ("Shreya"). Glaxo owns Registration No. 177607 for LANOXIN in Class 5, registered on December 17, 1956 and valid until December 17, 2035. LANOXIN has been used since the 1950s for digoxin tablets prescribed for cardiac failure and supraventricular arrhythmias. Shreya, an Indian specialty injectables manufacturer with facilities at Aurangabad and Roorkee, applied for LEFOXIN BIOX on a proposed-to-be-used basis for levofloxacin tablets (antibiotics), which it manufactures solely for export to Russia, Ukraine, Uzbekistan, Belarus, Kazakhstan and other countries.
Key Facts
- December 17, 1956: LANOXIN registered in Class 5 for "medicinal, pharmaceutical and veterinary preparations"; continuously renewed and in use since the 1950s
- June 11, 2021: Shreya files application for LEFOXIN BIOX in Class 5 for "medicinal and pharmaceutical preparations" on proposed-to-be-used basis
- July 19, 2021: Application advertised in Trade Marks Journal No. 2009
- December 9, 2021: Registration granted for LEFOXIN BIOX (Reg. No. 5001470)
- June 2024: Glaxo discovers the Impugned Registration through investigation
- July 2024: Investigation confirms levofloxacin tablets under LEFOXIN BIOX exported from Aurangabad
- August 16, 2024: Glaxo sends cease-and-desist notice; parties exchange correspondence, Shreya declines to cancel registration
- April 5, 2025: Rectification petition affirmed by Glaxo
- April 24, 2026: Another Bench of the Bombay High Court allows Glaxo's petition for removal of Shreya's PAXIL registration under Section 47 (non-use ground)
- January 14, 2022: Shreya files application for LEFOXIN (App. No. 5285447) in Class 5
- March 4, 2024: LEFOXIN application advertised in Journal No. 2146-0
- July 4, 2024: Glaxo files opposition (Opposition No. 1331233) within four-month period
Procedural History
- April 5, 2025: Commercial Miscellaneous Petition No. 12 of 2026 filed under Section 57 of the Trade Marks Act, 1999
- August 5, 2026: Matter reserved for judgment
- October 28, 2026: Judgment pronounced
Relief Sought
Glaxo sought rectification of the Register by removal of the Impugned Registration on grounds of deceptive similarity under Section 11(1)(b), bad faith under Sections 11(3), 11(10) and 18(1), and public interest/public health concerns arising from potential confusion between cardiac and antibiotic medications.
The Legal Issue
The central questions were: (1) Whether Glaxo qualifies as a "person aggrieved" under Section 57(2) despite not opposing the mark at advertisement stage and despite Shreya's export-only use; (2) Whether LEFOXIN BIOX is deceptively similar to LANOXIN under Section 11(1)(b) such that there exists a likelihood of confusion; (3) Whether the stricter test for pharmaceutical marks from Cadila-2001 and Macleods applies in rectification proceedings; (4) Whether export-only use under Section 56(1) constitutes use in India for confusion analysis; (5) Whether delay, absence of actual confusion, or Shreya's undertaking to restrict use to exports defeats relief.
Arguments Presented
For the Petitioner (Glaxo)
Glaxo contended that LANOXIN is an earlier mark with six decades of continuous use and registration. LEFOXIN BIOX is visually and phonetically nearly identical - replacing only "AN" with "EF" - and LEFOXIN is the dominant element while BIOX is descriptive (abbreviation for "bacterial oxidation"). A person of average intelligence and imperfect recollection would not differentiate between the marks. Glaxo relied on Cadila-2001 and Macleods for the proposition that pharmaceutical marks require a stricter, more conservative approach: "Drugs are poisons, not sweets" and confusion can have disastrous health consequences. The different APIs (digoxin vs levofloxacin) and indications do not dispel confusion because both marks are registered for the broad specification "medicinal and pharmaceutical preparations" and nothing prevents extension to other formulations. Export use constitutes use in India under Section 56(1) per Cadila-Sami. Glaxo learned of the registration only in June 2024 and filed within four years, well within the five-year acquiescence period under Section 33.
For the Respondent (Shreya)
Shreya argued Glaxo is not a "person aggrieved" under Infosys and Hardie as there is no real injury - the marks are composite and must be compared as wholes; BIOX provides distinctiveness ("biological oxidation"); OXIN is common to the trade (fluoroquinolone family); different APIs, indications, prescribers and prescription-only status eliminate confusion risk; Glaxo's four-year delay and failure to oppose at advertisement stage constitute acquiescence; Shreya offered an undertaking to never use the mark in India. Shreya relied on Intas Pharmaceuticals v. Sun Pharma where the Delhi High Court Division Bench required evidence of actual confusion and found no likelihood where drugs were administered in controlled oncology settings under specialist supervision.
The Court's Analysis
The Court first addressed locus standi under Section 57(2). Citing Hardie Trading v. Addisons Paint, Kabushiki Kaisha Toshiba v. Tosiba Appliances and Infosys Technologies v. Jupiter Infosys, the Court held that "person aggrieved" must be liberally construed in rectification proceedings (as opposed to non-use removal under Section 46). Glaxo, as proprietor of an earlier registration for a phonetically and visually similar mark in the same class and field, has a real grievance - the Impugned Registration limits its legal rights. The public interest in purity of the Register further supports locus.
"Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do. It appears to me he has a locus standi to be heard as a person aggrieved."
On deceptive similarity, the Court applied the Cadila-2001 factors and the Macleods Division Bench summary. The marks are word marks registered for broad pharmaceutical specifications. LEFOXIN is the dominant element of the Impugned Mark; BIOX is descriptive (both parties attribute it to oxidation - bacterial/biological) and functions virtually as a suffix, diffusing differentiation. Visually and phonetically, LANOXIN and LEFOXIN share identical first and last syllables; only the middle syllable differs (AN vs EF). The Court rejected the argument that OXIN is common to the trade - only 1 of 16 levofloxacin brands (ULOXIN) carries it - and held that dissecting OXIN violates the anti-dissection rule.
"To my mind, when Shreya applied for registration, the Registrar ought to have flagged the existence of the Glaxo Mark, in view of the phonetic and visual resemblance of the Impugned Mark with the Glaxo Mark. To my mind, the addition of BIOX appears to indicate that the Impugned Mark is a variant of the Glaxo Mark."
The Court distinguished Intas on multiple grounds: it was a final decree appeal after trial where evidence showed no confusion; the competing drugs (BEVATAS/BEVETEX) were administered only in closed oncology clinics under oncologist supervision; BEV/BEVA was publici juris for bevacizumab; and the plaintiff had abandoned its claim. Here, the products are not administered in such controlled settings - the risk of doctors, chemists and pharmacists dispensing an antibiotic to a heart patient or vice versa is precisely the risk Cadila-2001 and Macleods highlight. In rectification, the test is likelihood of confusion at the time of registration (2021), not actual confusion proven later.
On Section 56(1), the Court held that applying a mark in India to goods for export is deemed use in India "for any purpose for which such use is material under this Act." Cadila-Sami established this for infringement/passing off; the principle extends to rectification because registration seeks to establish goodwill from such export use.
On bad faith (Sections 11(3), 11(10), 18(1)), the Court found no positive dishonest intent. Shreya's mark LEFOXIN relates to levofloxacin; had there been dishonest intent, Shreya would have targeted cardiac products. The record suggests negligence/lack of diligence rather than conscious imitation. Honest adoption is no defence to rectification of a confusing mark.
On delay and equities, the petition was filed within four years of registration (2021), within the five-year Section 33 period. No evidence showed Glaxo knew of the registration before June 2024. Shreya's undertaking to restrict use to exports is irrelevant because export use is legally use in India, and e-commerce erodes territorial boundaries.
The Verdict
Glaxo succeeded. The Court directed the Registrar to remove LEFOXIN BIOX (Reg. No. 5001470) from the Register on the ground that its registration in 2021 carried a reasonable likelihood of confusion with LANOXIN. The removal takes effect from December 31, 2026. Until then, Shreya must implement a communications, marketing and public relations campaign to disseminate the change to a new mark effective January 1, 2027, and process necessary regulatory approval changes. All authorities shall act on the basis of this judgment for such applications. No costs awarded.
What This Means For Similar Cases
Export Use Is Use in India for All Purposes Under the Act
The Court's application of Section 56(1) to rectification proceedings is significant. Practitioners advising export-oriented pharmaceutical companies must recognize that:
- Registration in India for export-only goods creates statutory rights and liabilities identical to domestic use
- The "no domestic sales" defence does not negate likelihood of confusion in rectification or infringement actions
- Cadila-Sami is now extended beyond infringement/passing off to rectification jurisdiction
Pharmaceutical Marks Demand a Stricter, Conservative Test
Cadila-2001 and Macleods establish that for medicinal products:
- A lesser quantum of proof of confusing similarity suffices compared to non-medicinal goods
- The test is from the perspective of an ordinary person of average intelligence, not a specialist
- Different APIs, indications, and prescription-only status do not automatically dispel confusion
- The primary duty is to the public and purity of the Register, not party convenience
- Practitioners should lead with Macleods (binding Division Bench on rectification) when opposing Intas-style arguments
Rectification Focuses on Registration-Time Likelihood, Not Subsequent Evidence
- The critical assessment point is the date of registration (here, 2021), not the date of hearing
- Absence of actual confusion over years of coexistence is not fatal to rectification
- The broad specification in the registration ("medicinal and pharmaceutical preparations") governs, not the current specific formulation
- Delay must be measured from knowledge of registration, not merely from registration date; Section 33's five-year period is the outer limit
Bad Faith Not Required for Rectification on Confusion Grounds
- Section 11(1)(b) rectification stands independently of Sections 11(3), 11(10), 18(1)
- Negligence in trademark clearance searches is sufficient; positive dishonest intent need not be proven
- The Registrar's failure to cite an earlier mark confers no rights on the later applicant
