The Division Bench of the Delhi High Court in Rajasthan Aushdhalaya Pvt. Ltd. vs. Himalaya Global Holdings Ltd & Anr [RFA(OS)(COMM) 18/2025] granted permanent injunction in favour of Himalaya Global Holdings Ltd. & Himalaya Wellness Company against Rajasthan Aushdhalaya Private Limited, restraining it from using the mark “Liv-333” due to its deceptive similarity to Himalaya’s renowned “Liv.52” trademark. While the appeal was partially admitted to examine the quantum of costs and damages, the core finding of infringement stood firm.

Background

1. The Respondent/ Plaintiff, Himalaya Global Holdings Ltd. Himalaya Wellness Company stated that their liver-care product, “Liv.52,” has been used since 1955 and registered since 1957.
2. The Respondent filed a suit against Rajasthan Aushdhalaya Pvt. Ltd. Appellant/ Defendant for manufacturing, marketing medicines for liver treatment under the mark “LIV 333”.
3. An interim injunction was granted on 24th May 2024, the Delhi High Court issued an ex-parte order restraining the Appellant/ Defendant from using the mark LIV 333 and/or any other mark which is identical and/or deceptively similar to Respondent/ Plaintiff’s registered mark Liv.52.
4. The Appellant/ Defendant crucially, failed to file its written statement within the stipulated time, leading to the closure of its right to defence.
5. The Single Judge vide order dated 25th February 2025 proceeded under Order VIII Rule 10 of the Code of Civil Procedure decreeing the suit in favour of Respondent/Plaintiff, granting permanent injunction against Appellant/ Defendant for infringing the “Liv.52” trademark with its products under the mark “Liv-333”. The Court found the mark “Liv-333” deceptively similar, particularly due to the prominent “LIV” element, and imposed substantial costs and damages on the Appellant/ Defendant for continued infringement despite an ad-interim injunction, hence the present appeal.

Division Bench Observations: A Deep Dive into Infringement

The Division Bench, while partially admitting the appeal on the issue of costs and damages, upheld the Single Judge’s permanent restraining order of infringement against Appellant/ Defendant. The findings and observations provide key insights into trademark infringement provisions and their application.

1. ‘Liv.52’ determined to be distinctive: The Court highlighted that the adoption of the mark ‘Liv.52’, combining ‘Liv’ (signifying ‘liver’) with ‘52’ (denoting the year it was created), is unique to the Respondent/Plaintiff. The Court relied on the judgement in The Himalaya Drug Company vs M/S. S.B.L. Limited wherein the term “LIV” was held to be a distinctive and essential feature of the mark ‘Liv.52’. Accordingly, the Appellant/Defendant’s assertion that “Liv.52” is a generic term was not accepted.
2. Dominant feature test: Central to the ruling was the confirmation that the term “LIV” forms the essential and dominant feature of Respondent/Plaintiff’s mark. The mere addition of the numeral “333” was deemed insufficient to distinguish the Appellant/Defendant’s mark from the Respondent/Plaintiff’s mark, as the primary and most recognizable component remained identical.
3. Anti-dissection rule doesn’t apply in isolation: The Court observed that while Section 17 of the Trade Marks Act emphasises on the anti-dissection rule that the marks must be compared as a whole, it must be applied considering the dominant element test. Given that the Courts have already recognized “Liv” as the dominant and distinguishing element of the ‘Liv.52’ trademark, the Appellant/ Defendant cannot rely on the anti-dissection ruling as passed in South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr.
4. Initial interest confusion: The Court while citing Under Armour Inc. v Aditya Birla Fashion & Retail Ltd. underscored the relevance of the “initial interest confusion” test, which asserts that infringement can occur if an average person of imperfect recollection is likely to assume an association between a new product and an existing one even at first glance. The Court noted that if someone mentions being prescribed ‘Liv-333’ for a liver condition, the immediate impression it creates, especially for someone familiar with the pre-existing ‘Liv.52’ product, is that ‘Liv-333’ is likely connected to or associated with ‘Liv.52’.
5. Public health paramount: The judgment highlighted the crucial aspect of public health while drawing on precedents of Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited. It noted that in the context of medicinal products, even a minimal degree of confusion can have serious consequences on public health.
6. Lack of justification by Appellant/Defendant: The Court heavily weighed on the Appellant/Defendant’s failure file its written statement and to justify its adoption of the mark “Liv-333”. It asserted on the intentional copying of the “Liv.52” mark stating that the portmanteau nature of ‘LIV + numeral’ was deliberate to ride on the goodwill of the mark LIV.52, underscoring the dishonest adoption by the Appellant/Defendant.

Our comment

The judgment reinforces robust protection under Section 29 of the Trade Marks Act, especially for well-known marks in the pharmaceutical sector.

1. It fortifies the dominant feature test of a registered trademark.
2. The judgment assesses the phonetic and visual similarity between the marks.
3. It reflects on Section 29(2)(b) of the Trade Marks Act, covering similar marks for overlapping/identical goods and inferring that the Appellant/Defendant created a likelihood of confusion and association with the Respondent/Plaintiff’s “Liv.52” by adopting and using the mark “Liv-333”.
4. The importance of doctrine of “initial interest confusion” in pharmaceutical trade, affirming that even a fleeting moment of confusion at the initial stage is sufficient for infringement.
5. The judgment highlights that infringement centres essentially on a mark-to-mark comparison. External factors, such as visual distinctions on product packaging, how the marks appear on the goods, or price discrepancies between the plaintiff’s and defendant’s products, are relevant considerations in claims of passing off but not when examining a claim of infringement.