Court affirms IPAB’s cancellation of Reddy Pharmaceuticals' trademark registration; rules that use of common surname “REDDY” by defendant amounts to passing off and copyright infringement, awarding permanent injunction and rendition of accounts.
In a significant ruling dated May 18, 2026, the Delhi High Court (Division Bench) dismissed the appeal of Reddy Pharmaceuticals Ltd. (RPL) against a permanent injunction granted to Dr. Reddy's Laboratories Ltd. (DRL), restraining RPL from using the mark "REDDY" in relation to pharmaceutical products. The Court also upheld the Intellectual Property Appellate Board's (IPAB) order directing the removal of RPL’s registered trademark "REDDY" from the Register of Trade Marks.
The dispute arose from DRL’s assertion that it had acquired substantial goodwill and reputation in the mark "Dr. Reddy's" through continuous use since 1984. RPL, whose managing director's surname is "Reddy," adopted the mark "REDDY" for use on pharmaceutical formulations post-2003. DRL contended this created confusion and amounted to passing off, unfairly capitalizing on its established goodwill.
The Court, after a detailed examination of evidence and legal principles, affirmed that while "REDDY" is a common Indian surname, DRL’s extensive use had endowed the mark with distinctiveness and secondary meaning in the pharmaceutical industry. The defendant’s use of "REDDY" on pharmaceutical products, coupled with the misleading use of DRL’s Hyderabad address (Ameerpet) on packaging despite no operational facility there, and similar packaging designs, was held to be mala fide and likely to deceive consumers.
Rejecting RPL's defence under Section 35 of the Trade Marks Act, 1999, which protects bona fide use of a personal name, the Court found no honest adoption of the mark, especially since RPL sought exclusive trademark rights and used the mark in direct competition. The IPAB had earlier ruled that RPL’s trademark registration was obtained without sufficient cause and was wrongly remaining on the register, a decision upheld by the High Court.
On copyright claims, the Court held that DRL’s "OMEZ" strip packaging constituted protectable artistic work. RPL’s use of the deceptively similar "OMRE" packaging amounted to copyright infringement. The Court accordingly granted relief for infringement of copyright in packaging.
Further, the Court recognized that domain names function as trademarks in digital commerce. It found RPL’s use of the domain name www.reddylimited.com likely to cause confusion and passed off. Consequently, RPL was permanently restrained from using this domain.
Regarding acquiescence and delay, the Court observed that DRL had no conflict with RPL’s use of "REDDY" when RPL was only a supplier of APIs. The cause of action arose only when RPL began marketing finished pharmaceutical formulations under "REDDY," after which DRL promptly acted.
Although DRL could not prove quantifiable pecuniary loss, the Court granted rendition of accounts and delivery up of infringing products, stating that proof of actual loss is not a prerequisite for such equitable relief in passing off and copyright infringement.
The judgment reiterates the importance of protecting established goodwill and reputation in trademarks, especially in the pharmaceutical sector where consumer confusion could affect public health and safety. It underscores that common surnames, when used deceptively to ride on another’s goodwill, do not enjoy protection under trademark law.
Bottom line:-
Trademark law - Use of a common surname as a trademark may be restricted if it has acquired distinctiveness and goodwill associated with a prior user, especially in the pharmaceutical industry where likelihood of confusion can affect public health and safety.
Statutory provision(s):
Trade Marks Act, 1999 Sections 9, 11, 35, 57; Copyright Act, 1957; Companies Act, 1956 (Section 158 amendment referred)
Reddy Pharmaceuticals v. Dr. Reddy's Laboratories, (Delhi)(DB) : Law Finder Doc id # 2901009
