In a recent ruling that reinforces the strength of prior use in trademark law, the Delhi High Court granted interim relief to FDC Limited in a passing off action against Palsons Derma Private Limited. The dispute centers on the alleged deceptive similarity between the plaintiff’s mark “KROMALITE” and the defendant’s mark “CHROMALITE”, both used for cosmetic and dermatological products aimed at skin lightening and depigmentation.

Factual Background

FDC Limited, a pharmaceutical company incorporated in 1940, has expanded from its early focus on vitamins and prescription drugs into therapeutic segments including dermatology. The company claims to sell over 300 products in India and export to more than 50 countries.

The plaintiff adopted the mark “KROMALITE” in December 2014 and commercially launched it in April 2016 for skin whitening creams. It is registered in Class 5 (pharmaceuticals), and an application for registration in Class 3 (cosmetics) was filed in March 2023, claiming use since 2016. The product is widely available through leading online pharmacies like PharmEasy, 1mg, Apollo Pharmacy, and NetMeds.

The defendant, Palsons Derma Private Limited, was incorporated in 2008. It had earlier marketed a skincare line under the mark “FAIRLITE”, adopted in 2010 and launched in 2014. In September 2022, the defendant transitioned to “CHROMALITE”, a mark they claim was independently coined in 2016 by combining the Greek word “Chroma” (colour) and “Lite” (lighten). The mark had been registered on a “proposed to be used” basis in Classes 3 and 5 since December 2016.

Plaintiff’s Contentions

The plaintiff alleged that:

1. “KROMALITE” is a coined term with no dictionary meaning and has acquired substantial goodwill and reputation since 2016.
2. The defendant’s mark “CHROMALITE” is phonetically, visually, and structurally similar, with both marks targeting the same product category and consumer base.
3. The defendant’s commercial use began only in September 2022, making the plaintiff the prior user.
4. The defendant acted in bad faith, attempting to ride on the plaintiff’s reputation.
5. Despite sending a cease-and-desist letter, the defendant continued using the impugned mark.
6. The plaintiff has filed rectification petitions against the defendant’s trademark registrations, to which no timely counter-statements were filed.

Defendant’s Contentions

In its written statement, the defendant submitted that:

1. The mark “CHROMALITE” was honestly adopted in 2016 without knowledge of the plaintiff’s mark.
2. The products under CHROMALITE replaced FAIRLITE and were publicly launched in 2022.
3. They hold valid registrations for the mark in both Classes 3 and 5.
4. The plaintiff lacks a registration in Class 3, which includes cosmetic products; thus, infringement claims are not maintainable.
5. Their products are sold via prescriptions and medical stores, reducing the likelihood of consumer confusion.
6. The plaintiff had limited sales and recognition when the defendant adopted its mark.
7. Several CHROMA-formative marks exist on the register, diluting the distinctiveness of the plaintiff’s mark.
8. The suit is barred by delay, laches, and acquiescence.

Court’s Findings

The Court made the following observations:

1. While infringement cannot be claimed against a registered proprietor, a suit for passing off is maintainable under Section 27(2) of the Trademarks Act, 1999.
2. The plaintiff is the prior user, having used the mark KROMALITE since April 2016, whereas the defendant began commercial use only in September 2022.
3. Goodwill and reputation of the mark were sufficiently demonstrated through nationwide sales and prominent e-commerce listings.
4. The marks KROMALITE and CHROMALITE were held to be deceptively similar, differing only by the initial letters’ “K” and “CH”.
5. The addition of suffixes like “day cream,” “NITE cream,” or “face wash” was deemed insufficient to differentiate the marks, especially since those terms are descriptive.
6. Both parties operate in the same product category, targeting skin brightening and depigmentation, and share common trade channels.
7. The defendant’s claim of good faith was not accepted due to a lack of due diligence—a simple trademark search or market check would have revealed the plaintiff’s prior mark.
8. References to other CHROMA-formative trademarks were considered irrelevant as the defendant failed to demonstrate actual commercial use or proximity in similarity.

Interim Relief

Finding that the plaintiff had made out a prima facie case of passing off, and that the balance of convenience lay in its favour, the Court restrained the defendant from directly or indirectly manufacturing, offering for sale, marketing, or dealing in goods bearing the mark ‘CHROMALITE’ or any mark deceptively similar to the plaintiff’s ‘KROMALITE’ till the disposal of the suit.”

Conclusion

This order emphasizes the strength of prior use and goodwill in passing off actions, even against registered proprietors, and reinforces the need for businesses to conduct thorough clearance searches before adopting new marks.