Introduction:

In the case of Modi Mundipharma Pvt. Ltd. v. Speciality Meditech Pvt. Ltd. & Anr. [RFA(OS)(COMM) 8/2023], the Delhi High Court’s division bench of Justices C. Hari Shankar and Ajay Digpaul delivered an important judgment clarifying the judicially evolved concept of a “family of marks” under Indian trademark law. The appeal arose from a suit filed by Modi Mundipharma, the registered proprietor of several trademarks incorporating the element “CONTIN” (such as MORCONTIN, PENTACONTIN, and others) used primarily in pharmaceutical products. Modi Mundipharma alleged that Speciality Meditech’s use of the mark “FEMICONTIN” for its pharmaceutical products infringed its proprietary rights over the CONTIN family of marks and was likely to cause confusion among consumers. The single judge had dismissed the suit, holding inter alia that the family of marks concept was applicable only in passing off actions, not in infringement cases under the Trade Marks Act, 1999. Aggrieved, Modi Mundipharma appealed to the division bench, arguing that the single judge’s interpretation unduly narrowed the doctrine of family of marks and failed to appreciate its settled applicability in both infringement and passing off contexts.

Arguments of the Appellant and Respondent:

Arguing for the appellant, senior counsel Mr. Pravin Anand, assisted by Ms. Prachi Agarwal, asserted that the family of marks concept is firmly established under Indian trademark jurisprudence and can be invoked by a registered trademark owner to restrain any third party from using a mark that includes the common element of the proprietor’s established family. Counsel emphasized that Modi Mundipharma has been using a series of registered CONTIN marks since the 1980s in Class 5 (pharmaceutical products) and has built substantial reputation and goodwill, making CONTIN synonymous with its products among medical professionals and consumers alike. It was contended that Speciality Meditech’s adoption of FEMICONTIN for similar goods was a deliberate attempt to ride upon the reputation of the CONTIN family of marks, causing likelihood of confusion in the market. The appellant argued that the single judge’s conclusion that family of marks applies solely to passing off actions was legally incorrect and inconsistent with precedents like Amar Singh Chawal Wala v. Shree Vardhman Rice, where the use of “Qilla” by the defendant was restrained in an infringement action, affirming the applicability of the family of marks doctrine to statutory infringement claims. Relying on Bennett Coleman & Co. Ltd. v. Vnow Technologies Pvt. Ltd. and Bennett Coleman & Co. Ltd. v. Fashion One Television LLC, counsel stressed that courts have recognized families of marks such as the “NOW” family (TIMES NOW, ET NOW) and granted injunctions where third-party marks created confusion with the established family. It was further argued that the single judge erred in refusing an injunction solely because the CONTIN element appeared within other unrelated words like “CONTINUOUS” or “CONTINGENT,” which were hypothetical examples irrelevant to the specific impugned mark “FEMICONTIN.” Instead, it was submitted that a case-specific inquiry should have been conducted focusing on actual use and potential confusion caused by FEMICONTIN in the pharmaceutical sector.

In response, senior advocate Mr. Gagan Gupta, appearing for the respondent along with Mr. Saurabh Gupta, argued that Modi Mundipharma could not claim a monopoly over every occurrence of the word CONTIN, especially as it was a generic term derived from “continuous release” formulations—a common expression in pharmaceutical sciences. Counsel submitted that mere registration of multiple CONTIN marks did not automatically entitle the appellant to blanket protection against every third party incorporating CONTIN within its mark, particularly when the respondent’s FEMICONTIN was visually and phonetically distinct as a whole. The respondent contended that the doctrine of family of marks could not extend to grant absolute exclusivity over a generic or descriptive component like CONTIN, and that extending such protection would effectively prevent fair competition and stifle the use of legitimate descriptive terms in the pharmaceutical industry. Counsel further argued that the single judge rightly considered the possibility of legitimate marks like CONTINUOUS or CONTINGENT in the pharmaceutical context, illustrating why an absolute injunction across all uses of CONTIN would be untenable and inconsistent with statutory principles of trademark law which balance exclusivity with public interest. The respondent also challenged the appellant’s reliance on the Bennett Coleman cases, asserting that the facts were distinguishable because the “NOW” family of marks in those matters was inherently distinctive and not a descriptive element like CONTIN.

Court’s Judgment:

Delivering the judgment, Justice Hari Shankar, speaking for the bench, clarified that while the Trade Marks Act, 1999 does not expressly codify the concept of a “family of marks,” Indian courts have judicially recognized it as a valid tool for assessing likelihood of confusion under Section 29 of the Act. The bench explained that when a trademark owner registers and uses a series of marks containing a common distinctive element—such as a shared prefix, suffix, or word—this can create a “family of marks” entitled to protection from third-party marks that incorporate the same common element for similar goods or services, if such use is likely to cause confusion among consumers. The Court held that the single judge’s finding that the family of marks doctrine applies solely to passing off was incorrect in law, citing precedents like Amar Singh Chawal Wala, which demonstrated that the concept can ground infringement claims as well. The bench further clarified that courts must conduct a case-specific inquiry to assess whether the impugned mark actually causes likelihood of confusion with the established family of marks; a blanket injunction restraining all marks containing the common element, without examining actual use or context, is impermissible. Addressing the appellant’s plea for a sweeping injunction restraining use of CONTIN in any pharmaceutical mark, the Court emphasized that while the CONTIN family enjoys protection, not every mark containing CONTIN necessarily infringes the appellant’s rights. The bench illustrated with hypothetical examples like CONTINUOUS or CONTINGENT, which, despite containing CONTIN, may not cause confusion and thus cannot be presumed infringing without evidence of actual confusion or dishonest adoption. Applying these principles, the Court found that although FEMICONTIN shared the CONTIN component with the appellant’s marks, there was insufficient evidence to show that the impugned mark was adopted to misappropriate the appellant’s reputation or that it caused real likelihood of confusion in the minds of consumers familiar with the CONTIN family. The Court observed that “FEMICONTIN” combined “FEMI” (relating to female health) with CONTIN, creating a mark sufficiently distinct in overall impression, especially given that CONTIN has descriptive undertones referring to continuous release formulations. As a result, the Court refused to grant an injunction against FEMICONTIN but reaffirmed the doctrinal validity of the family of marks in both infringement and passing off actions, overruling the single judge’s contrary view. Ultimately, the appeal was dismissed with a direction that future claims invoking the CONTIN family of marks must be decided case-by-case, based on actual facts and proof of confusion, rather than an absolute presumption of infringement.