Apex Laboratories Pvt. Ltd vs Knoll Healthcare Pvt Ltd

Recently, Apex Laboratories Pvt. Ltd. (“Plaintiff”), the manufacturer of a pharmaceutical product under the mark ZINCOVIT (registered since 1988), filed a suit for trademark and copyright infringement and passing off against Knoll Healthcare Pvt. Ltd. (“Defendant”), alleging that its ZINOLVITA mark and packaging, also for a pharmaceutical product, imitated the Plaintiff’s distinct device of fruit and vegetables. Both parties filed petitions for rectification; the Plaintiff sought the removal of the Defendant’s registration for the mark ZINOLVITA, while the Defendant sought to impose a limitation on the Plaintiff’s exclusive right over the word ‘ZINC’.

The Plaintiff argued that it was the prior user and registered proprietor of the ZINCOVIT mark, that had acquired immense goodwill and distinctiveness through three decades of continuous use, and that Defendant’s adoption of the deceptively similar mark and identical packaging was dishonest. The Defendant argued that ZINCOVIT is a weak and descriptive mark, being a portmanteau of the words ‘zinc’ and ‘vitamin’, and the Plaintiff could not claim a monopoly over these common terms. Further, it argued that the word ZINC is common to trade.

The court ruled in favour of the Plaintiff, and held that although the mark ZINCOVIT might not be inherently distinctive, it had acquired distinctiveness through extensive and prolonged use since 1990 (the earliest evidence of use, furnished by the Plaintiff). The court found the Defendant’s mark ZINOLVITA to be deceptively similar to ZINCOVIT, noting that the Defendant’s initial adoption of a nearly identical packaging demonstrated a dishonest intent. Moreover, the court found that without proof of actual market presence, mere production of the search report of third-party ZINC-formative marks is insufficient to support the defence that ZINCOVIT has become common to trade. Consequently, the suit was decreed, and a permanent injunction was granted restraining the Defendant from using the ZINOLVITA mark. The court allowed the Plaintiff’s rectification petition, directing the removal of the ZINOLVITA mark from the register. The Defendant’s petition to impose a limitation on the Plaintiff’s registration was disposed of as unnecessary, with the court clarifying that trademark rights apply to the mark as a whole, as per the provisions of the Trade Marks Act. Lastly, the Defendant was directed to pay costs of INR 4,00,000 to the Plaintiff. Apex Laboratories Pvt. Ltd vs Knoll Healthcare Pvt Ltd C.S.(Comm. Div.) No.355 of 2020, judgement dated 19.06.2025 Read the judgement copy here