Glaxo “person aggrieved” under Section 57 Trade Marks Act & Deceptive Similarity.

Judgment dated 28.10.2026 of the High Court of Bombay in Commercial Misc. Petition No.12 of 2026 of Glaxo Group Limited   Vs.  Shreya Life and another

Glaxo Group Limited (“Glaxo”), the Petitioner, seeks cancellation of Trade Mark Registration No. 5001470 (“Impugned Registration”) for the mark ‘LEFOXIN BIOX’ in Class 5 (“Impugned Mark”). Shreya Life Sciences Pvt. Ltd. (“Shreya”), the Respondent No. 1, is the registered proprietor of the Impugned Mark. The captioned Rectification Petition is filed under Section 57 of the TM Act, 1999 (“TM Act”).

2. Glaxo is a company incorporated in England and Wales. It is part of the GSK group. It owns Trade Mark Registration No. 177607 for ‘LANOXIN’, also in Class 5 (“Glaxo Mark”), which has been in place since December 17, 1956, and has been kept renewed from time to time and is valid until December 17, 2035. LANOXIN is used by Glaxo for tablets containing digoxin, which are prescribed for cardiac failure and supraventricular arrhythmias. Glaxo relies on use of LANOXIN in India in this manner since the 1950s. It has sought to document sales in India since 1958 and seeks to place its sales figures on record in a sealed cover.
3. Shreya is an Indian pharmaceutical company in the specialty injectables business. Its facilities are at Aurangabad and Roorkee. Shreya applied for the Impugned Mark on June 11, 2021, on a proposed-to-be-used basis, for medicinal and pharmaceutical preparations. The application was advertised in Trade Marks Journal No. 2009 dated July 19, 2021. Registration was granted on December 9, 2021. Glaxo did not file any Notice of Opposition at that stage.

To summarise my conclusions: A] Glaxo is a person aggrieved. It is the proprietor of the earlier registration for LANOXIN that has been in place since 1956, and the Impugned Registration stands in the way of the rights it claims. The Page 42 of 46 October 28, 2026 Chaitanya Uploaded on – 28/10/2026 Downloaded on – 02/11/2026 08:22:23 Judgement-COMMP-12-2026-F-1.docx grievance is real and not speculative. This is so under Section 57(2) read with Hardie, Kabushiki and Infosys; B] The Impugned Mark, LEFOXIN BIOX is similar to LANOXIN. The test is the likelihood of confusion at the time of registration in 2021, from the standpoint of a person of average intelligence and imperfect recollection, and with the stricter approach that applies to medicinal products under Cadila-2001 and Macleods. In particular: I] The marks are compared as wholes. LEFOXIN is the dominant element of the Impugned Mark. BIOX is descriptive and diffuses the difference only marginally. Visually and phonetically, the Impugned Mark reads as a variant of LANOXIN; II] The record does not persuade me that OXIN is common to the trade. Only one of the sixteen Levofloxacin brands placed on record (ULOXIN) carries it. In any case, to treat OXIN as common to the trade and to discern the rest would militate against the anti-dissection rule without taking the marks as a whole; III] Different APIs, indications, prescribers and the prescription-only status of both products do not dispel the likelihood of confusion. Both marks are registered for medicinal and pharmaceutical preparations at large, and Cadila-2001 and Macleods call for greater caution where medicines are concerned; IV] Use of the Impugned Mark only for export makes no difference. Under Section 56(1), applying the mark in India to goods meant for export is use in India; C] A case of evidently dishonest adoption is not made out. The record points more towards lack of diligence on the part of Shreya, and not to a positive intent to imitate. Honest adoption is no answer to a plea for rectification of a confusing mark. The Impugned Mark is therefore rectified on the basis of Section 11(1)(b), and no separate finding under Sections 11(3), 11(10) and 18(1) is considered necessary; D] The alleged delay does not defeat relief on the ground of equities. The Petition was filed within four years of registration and well within the five-year period stipulated in Section 33 of the TM Act. Nothing shows that Glaxo knew of the Impugned Registration before June 2024. The absence of proof of actual confusion is not fatal, since the test in rectification notwithstanding prior use. Hardship to Shreya is mitigated by deferring the removal date as set out below; E] The offer by Shreya to restrict actual usage to exports too does not assist since in the legal sense of “use”, whether one produces for exports or for the domestic market is not relevant. Moreover, with the changing nature of commerce with e-commerce platforms breaking territorial boundaries, the conventional manner of trade in denomination of territory would not be much relevant. 72. In the result, the Registrar is directed to remove the Impugned Mark from the Register for the reason that when it was registered in 2021 on a proposed-to-be-used basis, it carried with it a reasonable likelihood of confusion with the Glaxo Mark. Considering that the competing marks have coexisted, and considering that time for rebranding would be necessary, the direction to remove the Impugned Mark shall be implemented with effect from December 31, 2026. The time until then shall be used by Shreya to implement a communications, marketing and public relations campaign to widely disseminate that the Impugned Mark, LEFOXIN BIOX, would change to such new mark as may be adopted by Shreya with effect from January 1, 2027. This time period shall also be utilised to apply for and process changes in any regulatory approvals that may be necessary, and all authorities shall act on the basis of this judgement when processing such applications.