Danone Asia Pacific Holdings Pte. Ltd. v. Syed Jawed Mohsin & Another

In the crowded world of healthcare and nutritional products, a brand name is more than a label; it is a promise of trust, quality, and consistency. When a new mark enters the market looking and sounding almost identical to an established player, the damage is not just reputational; it can mislead patients, doctors, and consumers who rely on these products for their well-being. The dispute between Danone Asia Pacific Holdings and Syed Jawed Mohsin is a textbook reminder that trademark registers are not safe houses for marks that copy global brands and then gather dust. For founders and IP professionals, this case is a clear signal: registering a mark is only half the battle; using it honestly and ensuring it does not piggyback on someone else's goodwill is the other half.

Danone Asia Pacific Holdings Pte. Ltd., a well-known player in the nutrition and healthcare space, owned and operated the trademark PROTINEX, a brand associated with its healthcare and nutritional goods. The respondent, Syed Jawed Mohsin, had secured registration of the mark PROTIFIX in a related product category. Danone, believing that PROTIFIX was too close to its own PROTINEX mark, moved the Calcutta High Court seeking cancellation and rectification of the PROTIFIX registration. The core grievances were twofold: first, that the two marks were deceptively similar in both look and sound; and second, that the respondent had not genuinely used the PROTIFIX mark in the market, leaving it as a dormant entry on the register that threatened Danone's established rights.

Danone argued that PROTINEX was its established trademark with significant goodwill in the healthcare goods market, and that PROTIFIX was visually and phonetically so close to PROTINEX that ordinary consumers were highly likely to be confused or deceived into believing the two products shared a common origin. The petitioner stressed that such confusion was particularly dangerous in the healthcare segment, where consumers often make quick purchasing decisions based on familiar names. On the other side, the respondent was expected to defend the validity of the PROTIFIX registration and demonstrate that it had put the mark to genuine, credible use in commerce. However, the respondent failed to back up its claim with credible evidence of actual use, leaving the mark's commercial existence unsubstantiated. This opened the door for Danone to invoke the statutory ground of non-use under Section 47 of the Act, arguing that a registered mark which is not used should not be allowed to block the legitimate commercial space of an established brand.

The Calcutta High Court ruled in favour of Danone Asia Pacific Holdings, allowing the application for cancellation and rectification of the PROTIFIX mark. The court found that PROTIFIX was deceptively similar to PROTINEX, both visually and phonetically, and that this similarity created a high likelihood of confusion among consumers in the healthcare goods market. Equally important, the court noted that the respondent had failed to provide credible evidence of genuine use of the impugned mark, which satisfied the grounds for cancellation under Section 47 of the Act. With both pillars of Danone's case, deceptive similarity and non-use, established to the court's satisfaction, the PROTIFIX registration was ordered to be removed from the register.

For founders, startup leaders, and IP professionals, this case delivers two sharp lessons. First, when seeking cancellation of a rival mark on the ground of deceptive similarity, the petitioner must come prepared with strong evidence of prior rights and a clear demonstration that the competing mark is likely to confuse the relevant