Danone Asia Pacific Holdings Pte. Ltd. Vs. Syed Jawed Mohsin & Another
Facts
Danone Asia Pacific Holdings Pte. Ltd., part of the globally known Danone Group, has a long history in the nutrition sector dating back to 1896. One of its most recognized products in India is Protinex, a nutritional protein supplement brand introduced in 1957. Over time, the ownership of this brand changed hands. It was first registered by Dumex Pvt. Ltd., later acquired by Pfizer Group in 1972, then taken over by Wockhardt Group in 2006, and finally assigned to the Danone Group through a deed of assignment. Along with the trademark, Danone also acquired the goodwill, associated intellectual property, and trade dress rights.
In September 2024, Danone discovered a product named Protifix being marketed online through Alvo Life Science’s website and various e-commerce platforms. Subsequent investigation revealed that the product was being manufactured at the premises of Zyrath Health Care Pvt. Ltd. under the trademark “Protifix.” The mark “Protifix” was registered in Class 5 under Trademark No. 3592264.
Danone contended that “Protifix” was deceptively similar to its well-known registered trademark “Protinex” and that the packaging and trade dress were also strikingly alike, creating confusion in the minds of consumers. The petition for rectification of the impugned mark was filed on the grounds of non-use and deceptive similarity.
The respondents argued that the petitioner could not claim exclusivity over the prefix “Proti” as it was common to the trade, and several companies in the nutrition market used it. They also claimed differences in the color scheme and layout of the packaging, asserting that no confusion would arise.
Procedural Background
Danone filed this rectification application before the Calcutta High Court under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the respondent’s mark.
Earlier, in December 2024, Danone had filed a separate infringement suit in the Delhi High Court against the respondents and other parties. The Delhi court granted an interim injunction against some defendants, and the suit was amicably resolved with defendants 1 to 7. However, with respect to defendants 8 to 10, which included the present respondent, the suit was still pending and contested.
In the present rectification proceedings, the court examined whether the registration of “Protifix” was liable to be removed from the Trade Marks Register.
The Core Dispute
The dispute revolved around two connected questions. First, whether the mark “Protifix” had been genuinely used by the respondent, since non-use for a continuous period of five years and three months makes a registered mark vulnerable to cancellation under Section 47(1)(b) of the Trade Marks Act, 1999. Second, whether the mark was deceptively similar to Danone’s “Protinex” in a way that was likely to cause confusion among consumers, thereby violating Sections 29 and 57 of the Act.
Detailed Judicial Reasoning
On the issue of non-use, the court found that the respondents failed to produce credible proof showing actual and genuine use of the mark “Protifix.” The invoices and licenses relied upon did not clearly establish that the respondent was trading under the impugned mark. Rather, the documents suggested that a third party, Jay Bharat Pharmaceuticals, was involved in the sale of the product. The court referred to Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, where it was held that unless non-use is justified by special circumstances, the mark is liable to be removed.
On the issue of inconsistent statements, the court highlighted contradictions in the respondent’s affidavit filed before the Calcutta High Court and the written statement filed before the Delhi High Court. While in one proceeding the respondent claimed personal use through Jay Bharat Pharmaceuticals, in the other proceeding they argued that different defendants independently adopted the mark in good faith. This inconsistency undermined their credibility and showed lack of bona fides.
On the issue of deceptive similarity, the court noted that when the two products—Protinex and Protifix—were compared side by side, the similarities were obvious. The essential portion of the petitioner’s mark “Proti” had been carried over, and the slight variation in the suffix “Nex” and “Fix” was not enough to prevent confusion.
The court relied on several landmark cases. In Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618, the Supreme Court had observed that the test of deceptive similarity must be applied from the perspective of an ordinary purchaser, who does not have the sharp observation of Sherlock Holmes. In Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the court emphasized that resemblance must be judged on overall similarity in sight, sound, and impression, keeping in mind the nature of the goods and the consumers.
The court also referred to Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, where it was held that the presence of similar prefixes or suffixes in the market does not automatically negate confusion unless extensive evidence of common use is shown. In the present case, the respondents failed to produce evidence of widespread use of the prefix “Proti” by other traders.
Similarly, in Fedders Lloyd Corporation Ltd. v. Fedders Corporation, ILR (2005) 1 Delhi 478, the Delhi High Court reiterated that marks must be compared as a whole, not dissected into parts. Applying this principle, Justice Kapur held that the overall impression of “Protifix” was confusingly similar to “Protinex.”
The court further noted that the trade dress, including color combination and packaging style, was also deceptively similar, increasing the likelihood of consumer confusion. Since both products were in the same category of goods—nutritional protein supplements—the likelihood of deception was very high.
Final Decision
The Calcutta High Court concluded that the registration of “Protifix” was wrongful. It held that the mark was not genuinely used by the respondent, and even otherwise, it was deceptively similar to Danone’s well-known mark “Protinex.” The adoption of the mark was found to be dishonest and in bad faith. The court directed that the registration of “Protifix” under Trademark No. 3592264 in Class 5 be cancelled and removed from the Register of Trade Marks. The rectification petition was thus allowed in favour of Danone Asia Pacific Holdings Pte. Ltd.
Case Details
Case Title: Danone Asia Pacific Holdings Pte. Ltd. Vs. Syed Jawed Mohsin & Another
Case Number: IPDATM/5/2024
Date of Order: 24 September 2025
Court: High Court at Calcutta
Hon’ble Judge: Justice Ravi Krishan Kapur
