Delhi High Court Restrains Menarini And Alaina From Using ACNE SCAR Mark In Mankind's ACNESTAR Dispute

The Delhi High Court on 16 October restrained A. Menarini India Pvt. Ltd. and Alaina Healthcare Pvt. Ltd. from using ACNE SCAR, ACNE+SCAR and ACNESCAR for a scar serum, finding a prima facie case of trademark infringement.

Justice Purushaindra Kumar Kaurav passed the interim injunction in a suit filed by Mankind Consumer Products Pvt. Ltd., observing that ACNESTAR and ACNE SCAR were “nearly indistinguishable” phonetically.

Mankind holds the ACNESTAR word mark in Class 5, registered since 2005, for an acne gel containing clindamycin and nicotinamide, as well as soaps and face washes. Alaina manufactures a serum marketed by Menarini as HEXILAK ACNE + SCAR.

In March 2026, Mankind filed the suit and initially secured an ex parte injunction. The injunction was later kept in abeyance before the Division Bench during Menarini's appeal, following which the application was heard afresh.

Menarini argued that ACNE SCAR was descriptive and that ACNE was common to the trade.

The Court rejected the argument that the common word ACNE should be discounted, noting that the marks shared “the entire structure ACNE-S-_-A-R, save one letter.” It also held that the “+” device on the packaging made no difference, “since a purchaser asking for the product does not pronounce it.”

Moreover, it noted that the prominent use of ACNE + SCAR beneath HEXILAK amounted to sub-branding and did not provide a defence to infringement.

Further, the Bench found that Menarini used the expression to identify the product rather than describe it. The descriptive-use defences under Sections 30(2)(a) and 35 of the Trade Marks Act, therefore, did not apply. It also observed that the expression would hardly describe the product accurately, given Menarini's own position that the serum did not treat acne.

Applying a stricter standard to medicinal products, the Court said the possibility of “a consumer, or a chemist, applying one product for the other” could not be ruled out.

It gave little weight to Menarini's sales since 2022 and its prior registration of HEXILAK. It observed that “innocence is no defence” and noted that ACNESTAR had been registered about 17 years before Menarini's claimed adoption of the disputed mark.

However, the Bench clarified that the injunction did not prevent the defendants from using HEXILAK or MENARINI, or selling the product under a different name. It held that rising sales did not negate irreparable harm arising from the erosion of the exclusivity conferred by the Trade Marks Act.

Accordingly, the High Court restrained the defendants from dealing in pharmaceutical, medicinal or skincare preparations, or allied goods, under ACNE SCAR, ACNE + SCAR, ACNESCAR or any deceptively similar mark until final adjudication.

The injunction operates immediately, but Menarini has two months to recall stock from the trade and withdraw online listings. The defendants cannot manufacture, advertise or supply products under the disputed marks in the meantime.

The suit is next listed on 2 March 2027.