Emphasising that ‘ACNE + SCAR’ cannot escape an infringement injunction merely by appearing alongside HEXILAK and MENARINI, the Delhi High Court has restrained its use after finding prima facie infringement of Mankind’s registered ACNESTAR trademark. The Court found ACNESTAR and ACNESCAR nearly indistinguishable phonetically, as inserting “+” between ACNE and SCAR did not change the assessment because a purchaser would not pronounce the device.
The High Court found that ACNE + SCAR prima facie identified the product, while “SERUM FOR ACNE SCARS” separately described it. The defence under Sections 30(2)(a) and 35 therefore failed at the interim stage, although ordinary descriptive use remained permissible. The Court found that ACNE + SCAR appeared more prominently than HEXILAK and distinguished the particular product within that range. Once the registered mark’s essential features were adopted, added HEXILAK and MENARINI branding did not answer the infringement claim.
The medicinal–cosmetic distinction did not rule out confusion. The products addressed associated skin ailments and shared consumers and trade channels. Applying the stricter standard for medicinal trademarks, the Court held that prescription-only sale did not itself prevent confusion and found prima facie infringement under Section 29(2)(b), added the Court.
Briefly, Mankind Consumer Products Private Limited sought an interim injunction against Alaina Healthcare Private Limited, the manufacturer, and A. Menarini India Private Limited, the marketer, of a serum sold as HEXILAK ACNE + SCAR. Mankind claimed that ACNE SCAR / ACNE + SCAR / ACNESCAR was deceptively similar to its registered trademark ACNESTAR, registered in Class 5 from 25 April 2005.
Mankind acquired the mark through an assignment and claimed continuous use since 2005 for an acne-treatment gel, soaps and face washes. The defendants’ product was a serum for acne scars manufactured under a cosmetics licence. An earlier ex parte injunction was kept in abeyance, and the Court heard the injunction application afresh after considering the defendants’ reply.
A Single Judge Bench of Justice Purushaindra Kumar Kaurav found that the rival marks differed by only one letter and were nearly indistinguishable phonetically. The “+” sign did not remove the similarity because a purchaser asking for the product would not pronounce it. The Court also found that ACNE + SCAR was the most prominent text on the defendants’ packaging and identified a particular product within the HEXILAK range. Its use was therefore prima facie in the nature of sub-branding, rather than merely describing the product. The presence of HEXILAK and MENARINI did not answer the infringement claim once the essential features of ACNESTAR had been adopted.
The Court rejected the argument that the medicinal nature of Mankind’s gel and the cosmetic nature of the defendants’ serum ruled out confusion. The products addressed associated skin conditions, catered to the same consumer segment and were sold through overlapping channels. It applied the stricter standard governing medicinal trademarks and held that prescription-only sale did not, by itself, prevent confusion. The Court also found no material establishing earlier knowledge and acquiescence by Mankind, and said that increased sales did not negate irreparable injury caused by erosion of trademark exclusivity.
