The Delhi High Court has held that where the proprietor of a trademark proves, by cogent documentary material, extensive and continuous use of the mark over a long period, substantial sales and promotional expenditure, wide geographical presence, valid and subsisting registrations, broad public recognition in the relevant trade and consumer segment, and a consistent record of successful enforcement, the mark satisfies the criteria under Sections 11(6) and 11(7) of the Trade Marks Act, 1999 and may be declared a well-known trademark within the meaning of Section 2(1)(zg) of the Act.
Accordingly, the Court declared “CALPOL” to be a well-known trademark for medicinal and pharmaceutical products under Section 2(1)(zg) of the Trade Marks Act, 1999.
A Single Judge Bench of Justice Jyoti Singh noted that the plaintiff had placed material showing continuous, uninterrupted and extensive use of the CALPOL mark since 1991 in relation to tablets, syrups and oral drops containing paracetamol and related ingredients, supported by invoices and documentary evidence of use. The Bench also took note of the plaintiff’s evidence that CALPOL products had been continuously and extensively marketed through advertisements, promotional campaigns, print and online coverage, and that search engine results generated numerous hits only for the plaintiff’s mark.
The Bench observed that the plaintiff had demonstrated the duration, extent and geographical area of use of the mark in India, including sales through distributors, stockists and online pharmacies across the country, with invoices spanning the period from 1991 to April 2024. The Bench also considered the plaintiff’s evidence of extensive promotion of the mark throughout India and found that the materials on record reflected increasing popularity and growth of the CALPOL brand.
The Bench further observed that the plaintiff had valid and subsisting trademark registrations in Class 05, with the oldest registration dating back to July 13, 1965, and that these registrations reflected the use and recognition of the mark. It also took into account the plaintiff’s record of successful enforcement, including multiple ex parte injunctions and consent decrees against infringing parties in prior proceedings.
Upon examining the material on record, the Bench formed the view that the trademark CALPOL had acquired extensive recognition and association within the relevant section of the public in the pharmaceutical and medicinal products industry over a long journey of more than 35 years commencing from 1991. It specifically noted the exponential increase in sales, with sales exceeding Rs. 300 crores in 2024 alone and pack units sold exceeding 20 crores, along with substantial investment in marketing and advertising, extensive coverage in popular publications, and visibility of the mark across pharmacies throughout India and on e-commerce platforms.
The Bench finally observed that the plaintiff’s long-standing reputation and extensive, continuous and uninterrupted use of the mark CALPOL across India reflected its significant commercial presence and recognition and was testament to its distinctiveness in the field of medicinal and pharmaceutical products for adults and children. On that basis, the Court held that CALPOL satisfied the criteria and parameters under Sections 11(6) and 11(7) of the Trade Marks Act, 1999 for declaration as a well-known trademark.
Briefly, the plaintiff, GlaxoSmithKline Pharmaceuticals Limited, instituted the suit seeking a decree of permanent injunction restraining the defendants from manufacturing, offering for sale, selling, displaying, advertising or marketing tablets or other medicinal/pharmaceutical products under the mark “WALPOL” or any other mark deceptively similar to the plaintiff’s “CALPOL” and “CALPOL FAST” marks. The plaintiff pleaded that it is a member of the GSK group, that GSK has a long global presence, and that the plaintiff has an established presence in India with substantial turnover and reputation in the pharmaceutical sector.
The plaintiff stated that it adopted and started using the mark “CALPOL” in 1991 for pharmaceutical preparations including tablets, syrups and oral drops, and that by reason of long, continuous and extensive use, consumers in India associate the CALPOL marks exclusively with the plaintiff. It was further pleaded that the plaintiff is the proprietor of valid and subsisting registrations for the marks “CALPOL” and “CALPOL FAST” in India, including registration no. 230069 for CALPOL dating back to July 13, 1965 and registration no. 5249980 for CALPOL FAST dated December 16, 2021.
According to the plaint, in September 2024 the plaintiff discovered trademark application no. 5753703 filed by defendant no. 2 for the mark “WALPOL”, and found that defendant no. 2 was also a director of defendant no. 1 company, which was using the impugned mark on its websites for pharmaceutical preparations. The plaintiff alleged that “WALPOL” was nearly identical/deceptively similar to “CALPOL”, with only the first letter changed, while both marks consisted of six letters, shared five common letters, ended with “POL”, related to identical products, and moved through common trade channels to common consumers, making confusion inevitable.
Summons were issued on May 02, 2025, and on the same date the Court granted an ex parte ad interim injunction restraining the defendants from using the mark “WALPOL” or any other mark identical or deceptively similar to the plaintiff’s CALPOL trademarks. During pendency of the suit, the parties amicably settled their disputes, and as recorded in the order dated April 30, 2026, the defendants agreed to give up use of the impugned mark or any deceptively similar mark, suffer injunction, pay Rs. 2 lakhs as damages within three months, and withdraw trademark application no. 5753703 if not already withdrawn.
The only surviving issue before the Court was prayer 54(g), namely, whether the plaintiff’s mark “CALPOL” should be declared a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
Appearances:
Urfee Roomi, Janaki Arun, Ayush Dixit and Angela Arora, Advocates, for the Plaintiffs
None, for the Defendants
