Allowing the petition filed by Dr. Reddy’s Laboratories, the Delhi High Court has cancelled the registration of the trademark “DAPLOGIN” (Registration No.5208898 in Class 05) held by M/s Razenta Pharmaceuticals, holding it to be deceptively similar to Dr. Reddy’s prior registered and coined trademark “DAPLO”. The Court held that rival trademarks must be compared as a whole under the anti-dissection rule, focusing on overall structural and phonetic similarity from the perspective of a man of average intelligence and imperfect recollection.
The Court further held that the dominant feature of a composite mark can be identified for comparison without violating the anti-dissection rule. In pharmaceutical trademark disputes, an exacting and stringent judicial scrutiny is warranted, and a lesser quantum of proof is required to establish confusing similarity. The Court also explained that a coined mark, even if it incorporates letters or syllables from the generic name of an API, is entitled to protection and cannot be claimed to be publici juris unless the entire mark is shown to be generic.
To invoke the “common to trade” defence, the party asserting it must establish substantial, frequent, customary and habitual use of the mark by third parties in the actual trade, and mere registration of similar marks is insufficient, added the Court while directing the Registrar of Trade Marks to rectify the Register within six weeks to maintain its purity.
A Single Judge Bench of Justice Jyoti Singh observed that the rival marks DAPLO and DAPLOGIN, when compared as a whole applying the anti-dissection rule and the test of a man of average intelligence and imperfect recollection, are deceptively similar. The Court noted that the mark DAPLOGIN subsumes all the five letters of the mark DAPLO in their entirety, and the addition of the suffix “GIN” is wholly insufficient to distinguish the two marks. Phonetically, DAPLO is pronounced as a two-syllable word “DAP-LO” while DAPLOGIN is pronounced as a three-syllable word “DAP-LO-GIN”, meaning that while pronouncing DAPLOGIN, the word DAPLO is prominently articulated.
The Court further observed that even under the dominant mark test, the dominant feature of DAPLOGIN is “DAPLO”, which is identical to the Petitioner’s mark. The Court held that the initial interest confusion doctrine is squarely attracted, and an unwary purchaser of average intelligence and imperfect recollection, upon encountering DAPLOGIN after having seen DAPLO, would mistakenly perceive it as belonging to or being associated with the Petitioner, particularly since both drugs share the same API and are used for the same disease.
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The Court rejected the Respondent’s defence that DAPLO is derived from the API Dapagliflozin and is therefore publici juris or generic. The Court held that DAPLO is a coined and distinctive mark conceived by combining “DAP” and “LO”, and is neither the prefix, suffix, abbreviation nor short name of the API Dapagliflozin. The Court further rejected the “common to trade” defence raised by the Respondent, holding that merely citing four registered marks with the prefix “DAPLO” without any evidence of actual use in the market is insufficient to establish that the mark has become common to the trade.
The Court emphasized that “common to register” is qualitatively different from “common to the trade”, and a proprietor of a trademark is not expected to sue every small infringer. The Court also rejected the argument that since both drugs are prescription medicines, there is no likelihood of confusion, reiterating the settled position of law that physicians and pharmacists are not infallible and that strict measures must be adopted to prevent confusion in pharmaceutical trademarks.
Briefly, Dr. Reddy’s Laboratories Limited, one of India’s largest pharmaceutical companies established in 1984 with a global presence spanning 76 countries and revenues of USD 3.35 billion in FY 2023-2024, filed a petition under Section 57 of the Trade Marks Act, 1999 before the Delhi High Court seeking cancellation of the trademark registration of “DAPLOGIN” (Registration No.5208898 dated 14.11.2021) held by M/s Razenta Pharmaceuticals Private Limited in Class 05.
Dr. Reddy’s claimed to have coined and adopted the trademark “DAPLO” in the year 2020, which has no dictionary meaning, for its medicinal product containing the salt Dapagliflozin used for treating Type-2 Diabetes Mellitus.
Dr. Reddy’s holds registrations for DAPLO in India as well as in Singapore, Vietnam, Malaysia and the Philippines. Razenta Pharmaceuticals filed its application for DAPLOGIN on Nov 14, 2021 on a “proposed to be used” basis, which was published in the Trade Marks Journal on June 17, 2024 and subsequently registered on Nov 01, 2024. Dr. Reddy’s discovered the impugned mark in the first week of March 2025 when it appeared on the Tata 1MG website. Both drugs contain the same active pharmaceutical ingredient Dapagliflozin and are used for treating the same disease, Type-2 Diabetes Mellitus.
