Delhi High Court restrains Menarini scar serum sold as ACNE SCAR, one letter away from Mankind mark ACNESTAR

Justice Purushaindra Kumar Kaurav found that ACNE + SCAR on the HEXILAK pack was used as a product name rather than a description, that a house mark is no answer to infringement, and that the two marks are near identical in sound. The defendants have two months to recall stock but may keep selling the serum under another name.

A single letter separates ACNESTAR, the acne gel that Mankind has sold since 2005, from ACNE SCAR, the name under which A. Menarini India has marketed a scar serum since 2022. Spoken aloud, the Delhi High Court found, the difference is between AK-NEE-STAR and AK-NEE-SKAR, and a chemist or customer asking for one could easily be handed the other. On 16 October 2026 Justice Purushaindra Kumar Kaurav granted Mankind Consumer Products an interim injunction restraining the manufacturer, Alaina Healthcare, and the marketer, A. Menarini India, from selling any pharmaceutical, medicinal or skin care product under ACNE SCAR, ACNE + SCAR or ACNESCAR until the suit is decided, with two months to pull existing stock from the trade.

Two marks, two products, one shelf

ACNESTAR is registered under No. 1352577 in Class 5 with effect from 25 April 2005 for pharmaceutical and medicinal preparations. It was first registered by Lifestar Pharma, which later amalgamated with Mankind Pharma; Mankind Pharma assigned it to the plaintiff, Mankind Consumer Products, by a deed of 19 February 2025 effective from 3 September 2024, and the plaintiff filed Form TM-P to record the assignment on 22 August 2025. The mark has been used since 2005 for a clindamycin and nicotinamide gel, and also for soaps and face washes. The auditor’s certificate puts sales since inception at about ₹540 crore, with ₹76.39 crore in financial year 2024-25.

The defendants’ product is HEXILAK ACNE + SCAR, a serum for acne scars manufactured at Baddi in Himachal Pradesh under a cosmetics licence. HEXILAK is itself registered in Class 5 under No. 1270019, on an application of 3 March 2004, in the name of A. Menarini Asia-Pacific Holdings, of which Menarini India is a part. Mankind says it learnt of the product on 17 February 2026 and, on enquiry, that marketing had begun in May 2025; it sued on 11 March 2026. On 20 March 2026 the Court granted an ex parte ad interim injunction and appointed local commissioners. Menarini appealed, and on 24 April 2026 a Division Bench recorded the plaintiff’s statement that it had no objection to that order being kept in abeyance until the single judge decided the application afresh on the defendants’ reply. That rehearing produced the present judgment, reserved on 29 September and pronounced on 16 October.

Mankind: the Division Bench has already decided ACNESCAR

Akhil Sibal, senior advocate for Mankind, built his case on a Division Bench decision of 22 September 2025 in Mankind Pharma Ltd. v. Brinton Pharmaceuticals Ltd., which had injuncted a third party from using ACNESCAR for a scar cream. That bench had held ACNESCAR phonetically near identical to ACNESTAR, rejected the argument that a portmanteau of ACNE and SCAR could escape injunction, and held that ACNESTAR was not descriptive. ACNESTAR, he said, was a coined word to be compared as a whole, and twenty years of use had tied it to the plaintiff.

The defendants used ACNE SCAR prominently as a trade mark, and the house mark HEXILAK was no defence: under V-Guard Industries v. Crompton Greaves, a house mark alongside a prominently displayed mark is sub-branding, and under Kaviraj Pandit Durga Dutt Sharma, added matter is immaterial once the essential features of a registered mark are taken. The only change was the substitution of C for T. Both products were dermatological preparations for acne or its after-effects, sold at the same counters and on Flipkart, Amazon and 1mg to the same consumers; the medicinal-versus-cosmetic distinction did not matter for allied and cognate goods, and under Cadila Health Care, even a slight probability of confusion in pharmaceutical products justified restraint. The descriptive-use defence under Sections 30(2)(a) and 35 of the Trade Marks Act, 1999 applied only to descriptive use, and the typography and placement on the pack, the product permission and the e-commerce listings all showed ACNE SCAR being used as the product’s name. A suit filed within a month of knowledge was not delayed, and delay was no defence to infringement in any case. On suppression, he said the HEXILAK registration was pleaded in the plaint, a May 2024 review of the defendants’ product was among the plaintiff’s own documents and the date had been inadvertently missed, and a company could not be expected to scan the whole internet.

Menarini: a concealed cause of action and two dictionary words

Sandeep Sethi, senior advocate for Menarini India, began with suppression. Paragraph 25 of the plaint pleaded knowledge on 17 February 2026 to manufacture urgency, while paragraph 11 pleaded marketing since May 2025, and the plaint did not disclose that Menarini had been using ACNE SCAR with HEXILAK since at least 2022. A chartered accountant’s certificate put sales at ₹72.86 lakh between August and December 2022, ₹283.43 lakh in 2023, ₹313 lakh in 2024 and ₹312.81 lakh in 2025; there were invoices from 2022, an Instagram review of June 2023, a research paper of 2023 and a 2019 announcement on the Menarini group website. It was inconceivable, he said, that a group claiming to be India’s fourth largest pharmaceutical company had not noticed a product sold openly for four years. A party that suppresses material facts forfeits equitable relief, and he cited S.P. Chengalvaraya Naidu and Kent RO Systems v. Gattubhai, among others.

On merits, HEXILAK was registered before ACNESTAR was applied for and appeared on the pack in distinctive script with the MENARINI house mark; ACNE + SCAR was a subordinate descriptor, two dictionary words with a green plus sign between them, followed by the words SERUM FOR ACNE SCARS. The expression described the product’s purpose and was protected by Sections 30(2)(a) and 35. Since it had never been used in a trade mark sense, the comparison had to be between ACNESTAR and HEXILAK, which shared nothing; under Pernod Ricard v. Karanveer Singh Chhabra, the Court had to compare the marks as a whole after discounting descriptive elements. ACNE was publici juris in dermatology, used in ACNESOL, ACNETHRO, ACNEREX and other marks, and the plaintiff’s predecessor had itself told the Trade Marks Registry in a counter statement of 8 December 2017 that no one could claim exclusivity over ACNE. The products differed: ACNESTAR was a Schedule H prescription drug for active acne, the serum was for scars and pigmentation after acne had gone, and a dermatologist would not confuse an antibiotic with a collagen-stimulating serum. Online, the serum surfaced only on a search for HEXILAK ACNESCAR. And Mankind’s sales had risen since 2022, which negated irreparable injury, while an injunction would wreck Menarini’s inventory and distribution.

Suppression: an inadvertent error, and the plaintiff filed the document itself

Justice Kaurav took the suppression objection first, because the defendants said it should shut out the merits. He accepted the principle from ANZ Grindlays Bank v. Commissioner, MCD that a plaintiff seeking urgent ex parte relief must make a clean breast of material facts, but applied the qualification from Arunima Baruah v. Union of India that only suppression of a fact material to the lis disentitles a party. There was no inconsistency between paragraphs 11 and 25 of the plaint, since paragraph 11 recorded what the plaintiff learnt on enquiry after it came to know of the product. The pleaded start of marketing did not match the defendants’ evidence of sales from August 2022, but the plaintiff had itself filed a Flipkart listing captured on 10 March 2026 carrying a May 2024 review, with no compulsion to do so. A party that files the document said to contradict its pleading cannot be said to have suppressed it; the discrepancy was an inadvertent error, and it went to delay and balance of convenience, not to infringement. The ex parte order had in any case been in abeyance since April on the plaintiff’s own statement, with the application now heard afresh on the full record, unlike Kent RO, where plaintiffs had concealed correspondence establishing acquiescence since 2012. The objection failed.

On title, the judge followed Sun Pharmaceutical Industries v. Cipla, which reads “registered proprietor” in Section 28 to include an assignee whose assignment is yet to be recorded. Mankind Consumer Products could prima facie maintain the action.

Brinton still binds, and ACNE-S-?-A-R is more than a shared prefix

The same mark, ACNESTAR, and a rival mark ACNESCAR for a scar cream had been before the Division Bench in Brinton. Menarini pointed out that on 17 February 2026, in a review petition, the Division Bench had corrected three paragraphs of that judgment so that its observations would not bind the commercial court at the final trial of that suit. Justice Kaurav held that the correction concerned only the effect of the interim findings at that trial; the principles laid down on comparing these very marks and on the similarity of the goods continued to bind him.

The argument that ACNESTAR was descriptive does not inspire the confidence of this Court. Brinton had already held, prima facie, that it was not, and under Section 31(1) a subsisting registration is prima facie evidence of validity. The plaintiff did not claim ACNE alone. The name of an ailment cannot be appropriated by one trader in the drugs trade, as the Division Bench held in Astrazeneca v. Orchid Chemicals. But where rival marks share more than the generic element, the marks cannot be dissected by isolating it; in United Biotech v. Orchid Chemicals, FORZID was held deceptively similar to ORZID because the common matter was ORZID, not merely the suffix ZID. Here the common matter was the entire structure of the word save one letter. The predecessor’s 2017 counter statement had been made in Class 3 proceedings against a third party’s mark ACNESTAL; applying Raman Kwatra v. KEI Industries, prosecution history is relevant only where it concerns the rival marks themselves, and the opposition papers were in any event part of the plaint.

The judge then set the marks side by side in a table: A-C-N-E-S-T-A-R against A-C-N-E-S-C-A-R; AK-NEE-STAR against AK-NEE-SKAR; registration since 2005 against no registration or application for the impugned mark; user since 2005 against user since August 2022; a clindamycin gel, soaps and face washes against a serum for acne scars under a cosmetics licence; and in both cases chemists, Amazon, Flipkart and 1mg, with Clinikally added for the defendants. The marks differed by one letter at the sixth position and were phonetically nearly indistinguishable. The plus sign between ACNE and SCAR made no difference because a purchaser asking for the product does not pronounce it, and under Amritdhara Pharmacy v. Satya Deo Gupta, a purchaser of average intelligence and imperfect recollection goes by overall structural and phonetic similarity rather than splitting a name into parts. Pernod Ricard did not help the defendants: there the only common element between BLENDERS PRIDE and LONDON PRIDE was a laudatory word, whereas the Supreme Court had itself said that imitation of a component lacking inherent distinctiveness can still infringe if it is an essential feature of the composite mark.

HEXILAK on the pack, and the words underneath it

HEXILAK and MENARINI on the pack did not change the analysis. Under Kaviraj Pandit Durga Dutt Sharma, added matter is immaterial in infringement once the essential features are adopted. On the pack, ACNE + SCAR sat immediately below HEXILAK in larger letters than HEXILAK itself and was the most prominent text. Menarini used HEXILAK for a range of scar products, including HEXILAK ULTRA, and ACNE + SCAR identified this particular product within the range. That was sub-branding, which V-Guard and its affirmance in Crompton Greaves refuse to recognise as a defence. The decisions Menarini cited on house marks, Intex Technologies, Star Bazaar and Meso, concerned passing off or discerning buyers of premium goods, where added matter counts.

The descriptive-use defence turned on how the expression was actually used. The judge found, prima facie, that ACNE + SCAR named the product rather than describing it. Immediately below it, in smaller letters, the pack carried SERUM FOR ACNE SCARS, which was the description. The product permission issued to Alaina referred to the product as Hexilak Acne Scar Serum; the e-commerce listings called it Hexilak Acne Scar Serum or Hexilak Acne Plus Scar Serum; the defendants’ own invoices described it as Hexilak Acne 15gm. And it was Menarini’s own case that the serum does not treat acne, so ACNE + SCAR, read as it appears, would hardly be an accurate description of such a product. Marico v. Agro Tech Foods was distinguished because the registered marks LOSORB and LO-SORB were themselves prima facie invalid variants of “low absorb” and the defendant had used the words only within the sentence WITH LOW ABSORB TECHNOLOGY beneath its own mark SUNDROP. Living Media and Office Cleaning Services concerned plaintiffs whose own marks were ordinary descriptive words, TODAY and OFFICE CLEANING; ACNESTAR combined the name of an ailment with STAR, drawn from the name of its original manufacturer, and the impugned mark replicated it save for one letter. The defendants remained free, the judge made clear, to describe their product in the ordinary descriptive sense as a serum for acne scars.

Allied goods, a Schedule H drug, and the stricter standard

On the difference between the products, Brinton had held that an acne preparation and a cream for acne scars treat associated skin ailments and cater to the same consumer segment, and that the medicinal character of one and the non-medicinal character of the other makes no difference. Himalaya Wellness, affirmed in Wipro Enterprises, had treated a medicinal preparation and a cosmetic sold through the same channels to the same consumers as allied and cognate. Here both products were sold through chemists and the same online platforms, and Mankind itself sold soaps and face washes under ACNESTAR. Because ACNESTAR gel is a Schedule H drug, the stricter standard for medicinal products applied: Cadila Health Care calls for a lesser degree of proof of confusing similarity where medicines are concerned and treats prescription-only sale as insufficient protection, and the Division Bench in Glenmark v. Sun Pharma had said the possibility of error must be completely obviated. The possibility of a consumer or a chemist applying one product for the other could not be ruled out. The Court found prima facie infringement under Section 29(2)(b).

Delay was not by itself a ground to refuse an injunction against infringement, under Midas Hygiene. There was no evidence that Mankind knew of the product earlier and acquiesced; under Ansul Industries, acquiescence requires a positive act, not silence. Menarini’s long use of HEXILAK and its funded clinical study did not help, because innocence is no defence to infringement and ACNESTAR had been registered for about seventeen years before the impugned mark was adopted. On balance of convenience, the judge weighed Menarini’s sales since 2022 against a registration dating from 2005, sales of about ₹540 crore, and the fact that Menarini had neither a registration nor an application for the impugned mark; the injunction would not touch HEXILAK or MENARINI or the sale of the serum itself, only its name. Rising sales did not negate irreparable injury, because the injury from infringement is the erosion of the exclusivity conferred by Section 28(1), which money cannot adequately compensate, and where one product is a medicine the public interest in avoiding confusion is an added consideration.

Order

The application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure was allowed. Until the final adjudication of the suit, the defendants, their directors, officers, servants, agents, distributors, dealers and all others acting for them are restrained from manufacturing, selling, offering for sale, advertising or otherwise dealing in pharmaceutical or medicinal preparations, skin care preparations or any allied or cognate goods under the marks ACNE SCAR, ACNE + SCAR or ACNESCAR, or any other mark deceptively similar to ACNESTAR. The injunction operates forthwith. Because stock bearing the mark was already in the trade, Menarini India was given two months to recall it from distributors, stockists, retailers and e-commerce sellers and to have the listings withdrawn; that period is for recall only and does not permit any manufacture, advertising, offer for sale or supply under the impugned mark in the meantime. The findings are prima facie and do not express a view on the merits of the suit. The suit and the remaining applications are listed on 2 March 2027.

Akhil Sibal, senior advocate, appeared for the plaintiff. Sandeep Sethi and Manish K. Jha, senior advocates, appeared for A. Menarini India with Ananya Kumar and others.