By Farhat Nasim
New Delhi: Noting that a pharma company cannot claim monopoly over descriptive elements like “FE” and “CONTIN” used generically in the industry, the Delhi High Court has partly allowed Modi-Mundipharma Pvt. Ltd.’s appeal in a long-running trademark dispute against the use of the word “FEMICONTIN.” While the Court rejected the company’s claim to exclusivity over the “CONTIN” suffix, it ruled that the rival mark FEMICONTIN infringed the registered trademark FECONTIN-F and amounted to passing off.The respondents have now been permanently restrained from using the mark FEMICONTIN or any deceptively similar mark for pharmaceutical products.The decision came on July 1, 2025, in RFA(OS)(COMM) 8/2023, pronounced by a Division Bench comprising Justice C. Hari Shankar and Justice Ajay Digpaul. The appeal was filed by Modi-Mundipharma challenging a March 23, 2023 judgment of a Single Judge, which had dismissed its commercial intellectual property suit CS (Comm) 353/2018. The Division Bench not only set aside part of the earlier ruling but also delivered a detailed analysis of the principles of trademark law as applied to pharmaceuticals.The case has its origins in a suit filed by Modi-Mundipharma Pvt. Ltd. against Speciality Meditech Pvt. Ltd. and Preet International Pvt. Ltd. The appellant alleged that the defendants鈥 use of the mark 鈥淔EMICONTIN鈥 infringed its registered trademarks 鈥淔ECONTIN-F鈥 and 鈥淐ONTIN,鈥 both falling under Class 5 of the Trade Marks Act, which deals with pharmaceutical products. Modi-Mundipharma asserted that it had coined the 鈥淐ONTIN鈥 family of marks, comprising dozens of registered variants such as 鈥淎LPROCONTIN,鈥 鈥淏UCOCONTIN,鈥 and 鈥淔ECONTIN-F,鈥 and that the term 鈥淐ONTIN鈥 had become a source identifier for its pharmaceutical range.In its pleadings, Modi-Mundipharma argued that the product 鈥淔EMICONTIN鈥 was deceptively similar to 鈥淔ECONTIN-F鈥 both visually and phonetically, and further alleged that the product compositions were nearly identical. It claimed that the use of 鈥淔EMICONTIN鈥 by the defendants not only amounted to trademark infringement but also constituted passing off, causing dilution of its brand and loss of consumer goodwill. The company sought a permanent injunction, delivery-up of infringing products, damages, and cancellation of the drug license of the manufacturer. It stated in its plaint: 鈥淭he use of the mark FEMICONTIN also resulted in brand dilution as well as erosion of the goodwill that had been earned by the appellant鈥檚 CONTIN series of marks, including FECONTIN-F.鈥漇peciality Meditech Pvt. Ltd. and Preet International Pvt. Ltd., however, rejected these allegations, arguing that 鈥淔EMICONTIN鈥 was coined independently and descriptively. The defendants explained that 鈥淔E鈥 referred to ferrous (iron), 鈥淔EMI鈥 signified the target demographic (female patients, particularly pregnant women), and 鈥淐ONTIN鈥 was shorthand for 鈥渃ontinuous release,鈥 a feature of the drug delivery system. They contended that such descriptive and industry-wide terms could not be monopolized. Supporting their argument, the defendants stated: 鈥淭he Trademark ‘FEMICONTIN’ means and indicates a drug which releases iron continuously in a sustained release manner into the body of a pregnant woman鈥︹漈he Single Judge, in the earlier March 2023 ruling, had found that although Modi-Mundipharma was the registered proprietor of 鈥淔ECONTIN-F鈥 and 鈥淐ONTIN,鈥 it had failed to demonstrate any standalone use of the mark 鈥淐ONTIN.鈥 This was corroborated during cross-examination, where the company鈥檚 witness admitted: 鈥淲e do not manufacture any product under the brand name CONTIN however most of our products bear the CONTIN as a suffix in all trademarks.鈥 The Judge concluded that there was no infringement of the 鈥淐ONTIN鈥 mark, since it was never used independently and was descriptive of a continuous drug release system. Furthermore, the court found the mark 鈥淔ECONTIN-F鈥 itself to be descriptive, consisting of 鈥淔E鈥 for iron and 鈥淐ONTIN鈥 for sustained release, and thus not entitled to strong trademark protection.The Division Bench affirmed part of the Single Judge鈥檚 reasoning but reversed the ultimate finding. It noted that use of a registered mark in combination with other elements does not amount to standalone use of the mark itself under the Trade Marks Act. The Court observed: 鈥淯se of a similar mark or a mark of which the registered mark is a part, cannot be the use of the registered mark itself.鈥 On the issue of descriptiveness, the Court cited the appellant鈥檚 own testimony acknowledging that 鈥淔ECONTIN-F鈥 was an iron supplement and held that the mark was not inherently distinctive. The Bench wrote: 鈥淭he word FECONTIN-F is clearly descriptive of the pharmaceutical product itself. It is suggestive of iron released for a continuous period in the body.鈥滺owever, unlike the Single Judge, the Division Bench concluded that the rival mark 鈥淔EMICONTIN鈥 did infringe upon 鈥淔ECONTIN-F鈥 and that the similarity was sufficient to mislead…