Psychotropic India Limited vs The Registrar Of Trade Marks on 29 January, 2026

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Delhi High Court

Psychotropic India Limited vs The Registrar Of Trade Marks on 29 January, 2026

1. This appeal is filed on behalf of the Appellant under Section 91 of The Trade Marks Act, 1999 ('1999 Act') read with Rule 156 of The Trade Marks Rules, 2017 ('2017 Rules') laying a challenge to order dated 27.01.2025, whereby the Registrar of Trade Marks has refused to register the trademark DISOPIL on the ground that the applied trademark is similar to registered trademark DESOPILL, bearing Application No. 4040407 in Class 05 for similar/identical goods being 'Pharmaceutical, medicinal, allopathic, ayurvedic and veterinary preparations'.

2. Desirous of getting the trademark DISOPIL registered in Class 05 for its goods being medicinal preparations etc., Appellant filed TM-A bearing No. 5971233 on 08.06.2023. The application was examined and Examination Report was issued on 08.11.2023 raising an objection under Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 1 of 7 Signing Date:05.02.2026 16:21:03 Section 11(1) of 1999 Act citing the trademark DESOPILL. Detailed reply was filed by the Appellant to the Examination Report on 23.11.2023. Hearing notice was issued on 27.11.2024 scheduling the hearing for 28.01.2025, which was attended by the attorneys of the Appellant and detailed submissions were made. The attorneys also filed two TM-M requests, one for deletion of '&amp' from the description of goods and services and other seeking extension of time. By impugned order dated 27.01.2025, the Registrar of Trade Marks has refused to register the trademark DISOPIL and has rejected the application.

3. Learned counsel for the Appellant submits that the impugned order is illegal and reflects non-application of mind. Firstly, the Registrar has wrongly recorded that Appellant has not complied with the direction to delete the term '&amp' from goods description by filing TM-M with requisite fees, overlooking the fact that the Registrar was apprised that the Form shall be filed during the course of the day and in fact was filed on the same day. The second TM-M Form was also filed seeking extension of time to submit the proof of user by the Appellant and the Registrar ought to have granted time to bring the same on record and not doing so violates principles of natural justice.

4. It is further submitted that in the Examination Report, an objection was raised under Section 11(1) of 1999 Act on the ground that the applied mark was identical with or similar to a prior existing mark 'DESOPILL' for similar/identical goods. In the reply to the Examination Report, Appellant had brought forth two crucial facts: (a) the cited mark was registered in the name of M/s HAX PHARMACEUTICALS and was not used by the said entity at any point in time; (b) the acronym 'PIL' comes from Appellant's Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 2 of 7 Signing Date:05.02.2026 16:21:03 name 'PHYCHOTROPICS INDIA LIMITED', which is a renowned domestic pharmaceutical company and 'PIL' has been registered in favour of the Appellant since 1986. Several variations of 'PIL' using suffixes or prefixes such as K-PIL, CALPIL, PIL POSE etc., have also been registered, details of which furnished in the detailed reply and therefore, the mark 'PIL' acts as a distinctive source identifier of the Appellant. This crucial fact has been totally ignored by the Registrar as reflected from the impugned order.

5. It is urged that in the pharmaceutical industry, it is a common practice that the medicines are named either on the basis of the salt or the ailments they treat or on the name of the company concerned. The applied mark DISOPIL was honestly adopted by the Appellant with prior existing registered mark 'PIL'. It is further argued that the Registrar has also overlooked the fact that the Appellant has prior registration for the word mark 'BISOPIL' in Class 05. Reliance is placed on the judgment of this Court in Mankind Pharma Limited v. The Registrar of Trade Marks, 2025 SCC OnLine Del 5602, where the Court held that likelihood of confusion is not to be easily presumed. The Appellant therein had established that it was using various marks with suffix 'KIND' since 1986 and the use of the mark was affiliated to the Appellant, especially with regard to goods falling under Class 05. Appellant had over 210 registered trademarks in Class 05 alone with suffix 'KIND' and had amassed significant goodwill. The cited mark in the Examination Report would thus not lead to rejection of the subject trademark considering the overwhelming use and registrations of marks with suffix 'KIND' by the Appellant.

6. Ms. Nidhi Raman, learned CGSC appearing on behalf of the Registrar defends the impugned order and submits that Appellant's applied mark Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 3 of 7 Signing Date:05.02.2026 16:21:03 DISOPIL (word) is visually, phonetically and structurally similar/identical to cited trademark DESOPILL (word) with the only difference being in letters 'E' and 'I', which is insufficient to distinguish the two marks. In fact, the overall sound of the two marks is identical and creates a similar auditory impression and hence, confusion amongst the relevant consumers is inevitable, more so, because the competing goods are also similar. She submits that Appellant ought to have carried out a trademark search before adopting the trademark DISOPIL, as a preliminary search would have revealed that the cited trademark DESOPILL was registered.

7. After canvassing arguments on merits, at this stage, learned counsel for the Appellant on instructions, submits that Appellant will be satisfied if at this stage, the matter is remanded to the Registrar for reconsideration since the points raised by the Appellant in the reply to Examination Report have not been considered and the impugned order is a non-speaking order. Learned counsel relies on the judgment of the Bombay High Court in I Am The Ocean, LLC v. Registrar of Trade Marks, MANU/MH/2701/2023, where the Court remanded the matter back to the Registrar of Trade Marks on the ground that the impugned order was passed without considering the submissions and/or authorities relied upon by the Petitioner and there was no application of mind as also that the impugned order lacked cogent reasons.

8. Heard learned counsels for the parties.

9. There is merit in the contention of the Appellant that the impugned order has been passed without taking into consideration the detailed and comprehensive reply dated 22.11.2023 filed by the Appellant to the Examination Report dated 08.11.2023. After the Appellant applied for the registration of the trademark DISOPIL bearing Application No. 5971233 in Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 4 of 7 Signing Date:05.02.2026 16:21:03 Class 05, Examination Report was issued raising objection under Section 11(1) of 1999 Act on the ground that the applied trademark was identical with or similar to the cited registered trademark DESOPILL. In the reply to the Examination Report, Appellant brought forth that the word 'PIL' was honestly and bona fidely adopted and used by the Appellant since 1986 and was registered in its favour and that 'PIL' was an acronym of company's name 'PHYCHOTROPICS INDIA LIMITED'. It was also submitted that the subject trademark was a coined word and a unique trademark and was clearly distinguishable from the cited trademark DESOPILL, when compared as a whole.

10. As the reply indicates, Appellant also referred to several registrations in its favour in respect of trademarks with prefixes or suffixes to 'PIL' in Class 05, including registration of the word mark 'PIL'. Details of the registrations were given in the tabular form in the reply. Appellant had brought forth that it has garnered enormous goodwill and reputation in the market over the years by use of the 'PIL' trademarks, continuously, extensively and openly, without any objection.

11. However, as rightly flagged by the Appellant, the impugned order does not deal with any of these submissions and merely proceeds on the ground that the applied trademark is similar to the cited trademark DESOPILL and the goods in question are also similar. Time and again, this Court has emphasised that even a quasi-judicial authority must apply its mind to the submissions made before it and take into consideration all material brought before it, prior to taking a decision. The importance of passing a reasoned and speaking order indicating cogent reasons, which weighed with the authority to come to the decision, needs no reiteration. The Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 5 of 7 Signing Date:05.02.2026 16:21:03 Bombay High Court in I Am The Ocean (supra) has observed that albeit detailed submissions were placed on record by the Petitioner in support of its plea to register the applied mark but the impugned order makes no reference to them while holding that the cited marks were identical/similar. The impugned order also lacked cogent reasons. Significantly, the Court also noted that in several matters in the past, submissions and documents, which form part of the replies before the Registrar of Trade Marks, were not considered. The least expected of an adjudicating officer is to peruse the reply and extend the bare courtesy of application of mind and not doing so is complete abdication of quasi-judicial functions vested in the Registrar under 1999 Act and 2017 Rules.

12. The impugned order in the present case also suffers from non- application of mind and there is no consideration of the detailed submissions made by the Appellant on several registrations in its favour in the word mark 'PIL' and other marks using prefixes or suffixes with the mark 'PIL'. Registration of the trademark 'BISOPIL' in favour of the Appellant was also brought to the notice of the Registrar, but overlooked. Importantly, Appellant had highlighted that 'PIL' is an acronym of the company's name, which is a renowned pharmaceutical company in the domestic market and therefore, the applied mark was bona fidely and legitimately adopted by the Appellant. Ignoring all this, the Registrar has simply gone on the alleged similarity with the cited trademark. As held by the Bombay High Court, the least that was expected of the Registrar was to have considered these submissions, applied his mind and decided the points raised, which may have led to a different conclusion. Therefore, in my view, this is a fit case for remand to the Registrar for re-consideration of Appellant's application.

Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 6 of 7 Signing Date:05.02.2026 16:21:03

13. Accordingly, without entering into the merits of the case, this appeal is allowed to the extent of remanding the matter back to the Registrar for re-consideration of the application bearing TM-A No. 5971233 for registration of the trademark DISOPIL in Class 05. Needless to state that the decision will be taken after considering the submissions made by the Appellant in the reply to the Examination Report and dealing with them. Opportunity of hearing will also be granted to the Appellant. The decision will be taken within eight weeks from today and in accordance with law. It is clarified that the decision will be taken on the basis of existing material on record and no new material will be produced by the Appellant.

14. Appeal stands disposed of in the aforesaid terms.

JYOTI SINGH, J JANUARY 29, 2026 S.Sharma Signature Not Verified Digitally Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 14/2025 Page 7 of 7 Signing Date:05.02.2026 16:21:03

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Delhi High Court