Introduction: Trademark Dispute
The dispute arose from overlapping names beginning with “Rexcin” and “Rekin,” but extended to allegations of trademark infringement and passing off for pharmaceutical products. The court’s analysis underscores the importance of evidentiary proof in establishing actual commercial use, rejecting vague claims of similarity without demonstrable confusion or overlap in trade channels.
This decision reinforces the principle that trademark rights are grounded in bona fide adoption and continuous use, not merely in registration or nominal presence, and serves as a cautionary tale for entities relying on trade names without active trademark deployment in the marketplace.
Factual Background
Rexcin Pharmaceuticals Pvt. Ltd.
Rexcin Pharmaceuticals Pvt. Ltd., incorporated in 2003, claimed to have coined and used the mark “Rexcin” since December 16, 2003, primarily as its trading style and house mark in the pharmaceutical sector. It asserted extensive use across India, displayed on product packaging, with significant promotional expenditure leading to substantial goodwill among the trade, medical professionals, and consumers.
Rexcin’s Commercial Claims
Rexcin’s sales figures for the financial year 2021–2022 were reported at Rs. 830.09 lakhs, purportedly demonstrating sustained commercial activity.
Rexcin’s Trademark Filings
- Trademark applications filed in 2022 for “Rexcin” in:
- Class 16
- Class 44
- Class 45
- All claiming user since 2003 and registered in December 2022.
- Applications in:
- Class 5 (pharmaceuticals)
- Class 35 (trading services)
- Class 35 accepted and advertised.
- Class 5 faced objections due to third-party marks.
Rexcin’s Business Model
Notably, Rexcin admitted it was not using “Rexcin” as a product mark but as part of its corporate identity, functioning as a white-label manufacturer supplying gels and creams to major companies like Sun Pharmaceutical Industries Ltd. and previously Ranbaxy Laboratories Ltd.
Products were sold under distinct third-party trademarks such as:
- Gentalene Plus
- Silverex Ionic
- Moisturex
Rexcin’s Evidence of Use
Invoices from 2004, 2005, 2006, and 2022 showed sales to these entities, but “Rexcin” appeared only inconspicuously as the marketer or licensor, not as a source identifier for the goods themselves.
Rekin Pharma Pvt. Ltd.
On the other side, Rekin Pharma Pvt. Ltd., incorporated on March 6, 2017, positioned itself as a new-age pharmaceutical company offering affordable medicines across:
- Gynaecology
- Dermatology
- Cardiology
- General Medicine
Rekin’s Product Launch
It launched over 60 products in 2017 under the “Rekin” brand with formatives such as:
- Rekin-SP
- Rekin-NP
- Rekin-CT
- Rekin-P
All were Schedule H drugs sold directly to end consumers through B2C channels.
Rekin’s Online and Market Presence
Rekin claimed bona fide adoption of “Rekin” as a coined word, with extensive online presence via its website, social media, and third-party platforms, generating visibility and revenue.
Rekin’s Trademark Registrations
| Mark | Class | Registration Date | User Claim |
|---|---|---|---|
| Rekin Pharma Pvt. Ltd. (Device) | 35 | February 23, 2021 | Since January 1, 2017 |
| Rekin-SP (Word) | 5 | September 1, 2020 | Proposed to be used |
Legal Conflict Between the Parties
Rexcin learned of Rekin’s existence in May 2022 upon advertisement of the Class 35 mark, opposed it, leading to suspension, and filed the rectification petition against “Rekin-SP.”
Rexcin alleged:
- Deceptive similarity by replacing “XC” with “K”
- Addition of generic suffix “SP”
- Violations under the Trade Marks Act, 1999 including:
- Fraud
- Lack of distinctiveness
- Confusion
- Unfair advantage
- Passing off
- Bad faith
Rekin’s Defence
Rekin countered that:
- Its marks were distinctive.
- There was no overlap in goods or consumers.
- No evidence of confusion despite six years of coexistence.
- Rexcin had no Class 5 registration.
- Rexcin had no actual trademark use.
Rekin further argued that Rexcin operated only in B2B as a supplier without consumer-facing products under “Rexcin.”
Inspection of Products
The parties’ products, when inspected, confirmed Rekin’s prominent use of “Rekin” formatives as trademarks, while Rexcin’s appeared only as trade names on third-party branded items.
Procedural Background
The dispute commenced with Rexcin filing CS(COMM) 142/2023 in March 2023, seeking permanent injunction against Rekin for trademark infringement, passing off, and related reliefs concerning the marks “Rexcin” and “Rekin”, along with I.A. 4878/2023 under Order XXXIX Rules 1 and 2 CPC for interim restraint.
Concurrently, Rexcin filed the rectification petition C.O.(COMM.IPD-TM) 111/2023 under Section 57 of the Trade Marks Act, 1999, challenging Rekin’s “Rekin-Sp” registration (No. 3541661) on grounds of absolute and relative prohibitions, including:
- Lack of distinctiveness
- Deceptive similarity
- Confusion
- Unfair advantage
- Passing off
- Bad faith
- Arbitrary grant
Listing And Notices
The petition was listed before the court on March 14, 2023, with notice issued to Rekin on September 20, 2023.
Settlement Discussions
On March 4, 2024, a coordinate bench queried both parties on settling by restricting “Rekin” to corporate name use only, suggesting mediation if amenable, and listed the matter for May 13, 2024.
No settlement occurred, and the matters were argued together, with the court deciding to first resolve the rectification petition on rights in the marks before addressing the interim application.
Pleadings And Arguments
Rekin filed its reply, contending:
- Bona fide prior adoption
- Distinct spheres (B2C vs. B2B)
- No confusion evidence
- Rexcin’s lack of Class 5 use or registration
Rexcin’s rejoinder emphasized its tradename goodwill and deceptive similarity.
The court heard arguments and perused records, including:
| Evidence Considered | Observation |
|---|---|
| Invoices | Examined for commercial use |
| Chartered Accountant Certificates | Deemed incomplete |
| Physical Product Samples | Placed on record |
