The Delhi High Court has restrained A. Menarini India and Alaina Healthcare from manufacturing, selling, advertising or dealing in skin care preparations and other allied goods under the marks ‘ACNE SCAR’, ‘ACNE + SCAR’ and ‘ACNESCAR’, holding prima facie that they infringe Mankind Consumer Products’ registered trademark ‘ACNESTAR’.
Justice Purushaindra Kumar Kaurav, in an order dated October 16, granted an interim injunction in favour of Mankind Consumer Products Private Limited in its trademark infringement suit against the two companies.
The court directed that the injunction would operate forthwith. However, considering that Menarini had been selling the product since 2022 and stock had already been supplied to the trade, it granted the company two months to recall the existing stock from distributors, stockists, retailers and e-commerce sellers, and withdraw the product listings bearing the impugned marks.
The court clarified that the period granted for recall would not permit the defendants to manufacture, advertise, offer for sale or supply any product under the disputed marks during that period.
Mankind had approached the court alleging that the defendants’ use of ‘ACNE + SCAR’ for a serum for acne scars was deceptively similar to its registered trademark ‘ACNESTAR’, which has been in use since 2005.
The court noted that Mankind’s mark is registered in Class 5 for pharmaceutical and medicinal preparations, while the defendants’ product, marketed under the HEXILAK brand, is a serum for acne scars manufactured under a cosmetics licence.
The court observed that the rival marks differed by a single letter at the sixth position and were phonetically nearly indistinguishable. It also noted that the ‘ACNE + SCAR’ expression appeared prominently on the defendants’ packaging, immediately below the HEXILAK mark, and in larger lettering than HEXILAK itself.
Rejecting the defendants’ argument that ‘ACNE + SCAR’ was merely descriptive of the product’s intended purpose, the court observed that the packaging separately described the product as a “serum for acne scars”. It held that the material on record prima facie indicated that ‘ACNE + SCAR’ was being used to name the product rather than merely describe it.
The court further observed that the defendants’ product permission and e-commerce listings identified the product as “Hexilak Acne Scar Serum” or “Hexilak Acne Plus Scar Serum”. It also noted that the defendants’ position was that the product addressed scars left behind after acne had subsided, rather than treating active acne.
The court held that the defendants could continue using HEXILAK and MENARINI, and could sell the product under a different name. The injunction would not prevent them from describing the product in ordinary descriptive terms as a serum for acne scars.
Menarini had argued that the disputed expression consisted of the dictionary words ‘ACNE’ and ‘SCAR’, which described the product’s purpose, and that the comparison should be between ACNESTAR and HEXILAK. It also contended that its use of the HEXILAK and MENARINI house marks, along with differences in packaging, colour scheme and typography, ruled out any likelihood of confusion.
The court also relied on an earlier Division Bench ruling in Mankind Pharma Ltd. v. Brinton Pharmaceuticals Ltd., which had found ACNESCAR phonetically nearly identical to ACNESTAR in a dispute involving a product for acne scars. It held that the principles laid down in that decision on the comparison of the marks and the similarity of the goods continued to bind it.
On the question of the products being different, the court observed that both products were sold through chemists and online platforms and catered to consumers seeking products for acne-related skin conditions. It noted that the stricter standard applied to competing medicinal products required the possibility of confusion to be carefully assessed.
The court concluded that the possibility of a consumer or chemist applying one product in place of the other could not be ruled out because of the near phonetic identity of the marks. It therefore found a prima facie case of trademark infringement under Section 29(2)(b) of the Trade Marks Act, 1999.
The court also held that the balance of convenience favoured Mankind, noting that ACNESTAR had been registered since 2005, while the defendants had neither a registration nor an application for the impugned mark.
The matter has been listed for further proceedings on March 2, 2027. The court clarified that its observations were prima facie findings for deciding the interim injunction application and would not constitute a final determination of the merits of the suit.
Mankind Consumer Products Private Limited was represented by Senior Advocate Akhil Sibal, along with the team from Aerion Legal comprising Ankur Sangal, Ankit Arvind, Saumya Bajpai, Swastik Sant and Sugandha.
Menarini was represented by Senior Advocates Sandeep Sethi and Manish K. Jha, along with the team from JSA comprising Ananya Kumar, Utkarsh Khandelwal, Ishan Gaur, Vaibhav Khanna, Shreya Sethi, Krishna Gambhir and Ritwik Sharma.
