Recently, the Hon’ble Delhi High Court refused to cancel the registered trademark, REKIN-SP, of Rekin Pharma Private Limited (“Respondent”) in a cancellation petition filed by Rexcin Pharmaceuticals Private Limited (“Petitioner”).
The Petitioner had filed the petition under Section 57 of the Trade Marks Act, 1999 (the “Act”), seeking removal of the Respondent’s registration for the mark, REKIN-SP in Class 5, on the grounds of prior rights and deceptive similarity of the rival marks. It was the Petitioner’s case that it had adopted the mark REXCIN in December 2003 in relation to pharmaceutical goods and has used the mark in relation to such goods since then. The Respondent, on the other hand, was the registered proprietor of the word mark REKIN-SP in Class 5, since May 2017.
The Petitioner contended that the mark REKIN-SP was deceptively similar to REXCIN and its registration would cause confusion and dilute the Petitioner’s goodwill. On the other hand, the Respondent argued that the mark REKIN is dissimilar to the Petitioner’s mark and also contended that the Petitioner has no use of its mark in relation to Class 5 goods.
From the evidence submitted, the court noted that the Petitioner is only using its trade name, Rexcin Pharmaceuticals Private Limited, on product packaging and the invoices fail to show use of the word REXCIN as a trademark by the Petitioner for pharmaceutical products. It was the court’s opinion that the nature of business carried out by the Petitioner was of trading in the pharmaceutical products, which fall in Class 35. As per the court, such use of the trade name would not constitute use as a trademark for sale of goods under the Act. Here, the court clarified that, as per Section 29(5) of the Act, it entails infringement by use of a registered trademark as a trade name and does not convert use of a trade name into trademark by the proprietor itself.
In view of the above, the court held that the question of similarity or deceptive similarity of the marks does not arise for consideration. Accordingly, the court dismissed the petition and upheld the validity of the Respondent’s registered trademark REKIN-SP. On the same grounds, the court also refused to grant interim injunction to the Petitioner.
Rexcin Pharmaceuticals P Ltd v. Rekin Pharma P Ltd & Anr. [C.O. (COMM.IPD-TM)-111/2023], pronounced on January 27, 2026.