Delhi High Court Restrains Use Of PHENSERYL Mark In Opella Healthcare's Trademark Suit

The Delhi High Court has restrained a pharmaceutical company from selling a syrup under the mark PHENSERYL, holding that its name and packaging were deceptively similar to another company's long-registered PHENSEDYL trademark and were likely to confuse consumers.

Justice Jyoti Singh observed that the rival marks and packaging were deceptively similar, noting: "The rival marks are visually and phonetically similar; dark blue colour in the trade dress/packaging and white font to depict the names are prominent and dominant parts of both the marks in the artistic works; Defendant has attempted to bring its packaging as close as possible to that of the Plaintiff."

The court passed a summary judgment in favour of Opella Healthcare Group, a France-based Sanofi group company, after finding that Pureca Laboratories Pvt. Ltd.'s only defence, namely its trademark and copyright registrations for PHENSERYL and its label, had already been cancelled in an earlier High Court judgment, which had attained finality as it was not challenged.

Opella submitted that it adopted the PHENSEDYL mark in 1954 for a pharmaceutical syrup used to treat allergic symptoms. The trademark has been registered for pharmaceutical products since 1954 and remains valid until 2030. It also owns registrations for the Hindi transliteration of the mark, its packaging design and the copyright in the artistic work of its distinctive blue-and-pink label.

The company said it discovered in March 2024 that Pureca Laboratories had secured registration for PHENSERYL in Class 05, even though the PHENSEDYL marks had been cited as conflicting marks during examination.

Justice Singh noted that the earlier judgment dated November 12, 2024 had attained finality. It had found that Opella Healthcare had been using the mark in India since 1995 through its licensees, while Pureca Laboratories claimed use from 2016, a claim that was unsupported by evidence. The earlier ruling had also held that the rival marks and trade dress were visually and phonetically similar.

Relying on its earlier decision in Su-Kam Power Systems Ltd. v. Kunwer Sachdev, the court reiterated that summary judgment is appropriate where there is no "real prospect of successfully defending the claim."

Holding that Opella Healthcare had established trademark infringement and passing off, the court said requiring the company to lead ex parte evidence would be "an exercise in futility" because Pureca Laboratories had no real prospect of defending the suit.

The suit was decreed in terms of the reliefs sought in the plaint, except for certain reliefs that Opella Healthcare gave up. The registry was directed to draw up the decree sheet.