NISE and nice sound alike, but Madras HC lets neonatal equipment mark stand against Dr Reddys
Justice A.D. Maria Clete found the two four-letter marks phonetically similar yet held that pain-relief tablets bought at pharmacies and incubators bought by hospital procurement teams are too far apart for confusion, and dismissed the pharma company appeal against the Registrar.
Dr. Reddy's Laboratories has lost its thirteen-year fight to keep a Chennai maker of neonatal intensive-care equipment from registering the device mark nice. The Madras High Court agreed with the pharmaceutical company that nice and its own painkiller brand NISE sound the same, but held that the sound of a mark is only one of the factors the Trade Marks Act requires a court to weigh. Applying the Supreme Court's Cadila test, Justice A.D. Maria Clete found that incubators and ventilators bought by hospital procurement teams and nimesulide tablets bought by patients at a pharmacy travel through different trade channels to different buyers exercising different degrees of care, and that no likelihood of confusion or association had been shown. The appeal against the Assistant Registrar's order of 22 August 2025 was dismissed.
A 1995 painkiller brand and a 2001 incubator company
Dr. Reddy's, incorporated in 1984, adopted NISE in 1995. The name, it told the court, comes from the active ingredient nimesulide and the phrase Novel Inducer of Soothing Effect. The mark is used on tablets and sprays for inflammatory conditions, rheumatoid arthritis, post-operative pain, fever and menstrual pain. The company holds Class 5 registrations for NISE and its formative marks, including Registration Nos. 803632 and 803620 dating from 26 May 1998, and later registrations for NISE KID TABLETS, NISE MR TABLETS, NISE TABLETS, NISE DROPS, NISE SUSPENSION and NISE FLASH. It says the family of marks is well known.
Nice Neotech Medical Systems Private Limited was incorporated on 10 July 2001 and makes equipment for neonatal intensive care. On 11 September 2008 it applied, in Application No. 1730955, to register the device mark nice in Class 10 for medical equipment and apparatus, claiming use from the date of its incorporation. The application was examined on 17 August 2009, went through a show-cause hearing on 11 September 2012, and was advertised in Trade Marks Journal No. 1558 on 15 October 2012, subject to a condition restricting the area to South India.
Dr. Reddy's filed Opposition No. 797238 on 3 January 2013. It said the mark was visually and phonetically deceptively similar to NISE, that registration would confuse and deceive the purchasing public, that NISE was a well-known mark, and that the adoption was dishonest. It invoked Sections 9(1)(a), 9(2)(a), 11(2), 11(3), 11(6), 11(7), 11(10), 12 and 18(1) of the Trade Marks Act, 1999 and asked the Registrar to refuse the application under Section 18(4). Nice Neotech's counterstatement of 8 May 2013 objected that the notice of opposition had been verified by an agent without a power of attorney, claimed use from 10 July 2001, said it did not dispute Dr. Reddy's goodwill in medicines, described NICE as a dictionary word and NISE as a coined one, pointed to differences in price, packaging and use, and undertook never to use NICE on pharmaceutical preparations.
Dr. Reddy's evidence came through an affidavit of its Associate Director (Legal), P. Jayavardhan, filed on 19 November 2013, setting out NISE sales from 1999-2000 to 2012-13 and stating that “both the rival marks have same sound”. Whether Nice Neotech ever filed its own evidence under Rule 51 of the Trade Marks Rules, 2002 became a side dispute: the company said it filed on 19 February 2014, that physical records at the Registry were damaged in the December 2015 floods and never fully digitised, and that it had office copies and the material it produced in a parallel opposition by Nice Pharmaceuticals. The opposition was heard on several dates between May 2024 and March 2025, written submissions went in on 19 February and 20 March 2025, and on 22 August 2025 the Assistant Registrar of Trade Marks and Geographical Indications and Copyrights, Chennai, disallowed the opposition. He held that the nature, character and performance of the goods, their trade channels and their purchasers were different and that no confusion would arise between marks in Classes 5 and 10. The mark went on the register under Certificate No. 3914323 on 10 October 2025.
Classification is not the test, the appellant said
Mr G. Ramesh, for Dr. Reddy's, attacked the order as one that treated the difference between Class 5 and Class 10 as decisive. Section 7 of the Act, he argued, classifies goods for registration purposes; the enquiry under Section 11 is about similarity of goods and likelihood of confusion, and Sections 29(2), 29(3) and 29(4) show that the Act protects a mark even against dissimilar goods on stated conditions. Pharmaceuticals and medical equipment are allied and cognate goods within one healthcare sector, serving overlapping consumers and trade channels, and he took the court to the Nice Classification itself to show the relationship between the two classes. He relied on Corn Products Refining Co. v. Shangrila Food Products, the Delhi High Court's FDC Ltd v. Docsuggest Healthcare Services and Wipro Enterprises v. Himalaya Wellness Company.
The order, he said, contained no finding that the marks were dissimilar; the Assistant Registrar had simply assumed similar marks could coexist because the goods differed, reciting the Cadila principles without applying them. He cited K.R. Chinna Krishna Chettiar v. Sri Ambal and Co. on the weight of phonetic resemblance judged from the standpoint of an average purchaser with imperfect recollection. He invoked the doctrine of natural expansion into allied fields, citing Laxmikant V. Patel v. Chetanbhai Shah, Shree Rajmoti Industries and Burger King Company v. Virendra Kumar Gupta. He questioned the claim of use from 2001 when the invoices produced began only in 2005 and the Rule 51 affidavit was missing from the digitised records, citing Suresh Kumar Jain v. Union of India and Shiva Tobacco Company v. Md. Zaheeruddin on unsupported claims of prior user. And he pointed out that Nice Neotech had described NICE as a dictionary word before the Registrar and later as an abbreviation of Neonatal Intensive Care Equipment, a shift he said bore on its bona fides, as did the unexplained South India restriction.
Ms V. Aswini Anjana, for Nice Neotech, said NICE was a legitimate abbreviation drawn from the company's own name and business, permissible under Sections 2(1)(m) and 2(1)(o), and relied on Laxmikant V. Patel, Evergreen Sweet House v. Ever Green and T.V. Venugopal v. Ushodaya Enterprises on honest adoption. Marks must be compared as a whole and in the context of their goods, not by isolating letters or sounds: Cadila, the Delhi Division Bench in South India Beverages v. General Mills Marketing, and the Supreme Court's 2025 decision in Pernod Ricard India v. Karanveer Singh Chhabra. Confusion principles developed for medicines could not be transplanted to specialised equipment bought through institutional procurement, for which she cited Heifer Project International v. Heifer Project India Trust and the Gujarat High Court's Corona Remedies v. USV Limited. Natural expansion, she argued, needs evidence of an actual plan to enter the field, and Dr. Reddy's had produced no research proposal, manufacturing plan or regulatory application for neonatal equipment under the NISE name, which was a product brand rather than the corporate mark; she relied on RSPL Health v. Sun Pharma Laboratories and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation. On the Rule 51 point, the loss of Registry records could not be visited on the applicant, and the Registrar had never treated the application as abandoned. A brief quasi-judicial order is not a bad one if the material issues were considered, she added, citing K. Kalpana Saraswathi v. P.S.S. Somasundaram Chettiar.
Mr Gangadaran, Central Government Standing Counsel, took notice for the Registrar, which filed no counter.
Same sound, different shelf
The court framed four points: whether nice is phonetically, visually and deceptively similar to NISE; whether, given the goods, purchasers, trade channels and modes of purchase, registration is likely to cause confusion or association under Section 11(1); whether Dr. Reddy's had made out well-known status, dishonest adoption and its other grounds under Sections 11(2) and 11(3); and whether the Assistant Registrar's order warranted interference.
On the first, the judge sided with Dr. Reddy's. NISE and nice are phonetically similar: each has four letters, the only difference is the substitution of S with C, and the device presentation of the respondent's mark does not change how it is pronounced. But phonetic similarity alone is not conclusive. Section 11(1) requires the court to go on to the nature of the goods, their purchasers, trade channels and the likelihood of confusion or association with the earlier mark. The judgment restates the seven Cadila factors, the nature of the marks, their degree of resemblance, the nature of the goods, similarity in character and performance, the class of purchasers and their education, intelligence and degree of care, the mode of purchase, and other surrounding circumstances, together with the Supreme Court's instruction that the weight given to each depends on the facts and need not be equal.
Applying them, the court found the goods materially different in nature, function, purpose and manner of use. NISE goes on medicines for pain and inflammation. Nice Neotech's catalogue shows incubators, radiant warmers, phototherapy units, ventilators and respiratory-care apparatus for hospitals and neonatal ICUs. A shared connection with healthcare does not by itself create a commercial relationship close enough to confuse. The buyers differ too. Medicines are bought by patients and the public at pharmacies, often on prescription. Neonatal equipment is bought by hospitals through doctors, biomedical engineers and procurement staff after examining technical specifications, safety, suitability, performance and price, so the purchasers exercise a higher degree of care. These are the fifth and sixth Cadila factors, and they weighed against confusion.
Section 11(1) also asks about association, which the court described as the question whether purchasers are likely to believe the goods come from the same or commercially connected undertakings, not merely whether one product would be mistaken for another. The specialised nature of the equipment, the knowledge of its purchasers and the manner of procurement all cut against that inference, and Dr. Reddy's had not shown circumstances suggesting that buyers of neonatal equipment would link it to a pharmaceutical business. The judge drew on Nandhini Deluxe, where the Supreme Court accepted that NANDHINI and NANDINI sounded alike yet held that the overall appearance of the marks, the products and the manner of trading were different enough that an ordinary purchaser of average intelligence would not associate one with the other.
No dishonesty, no well-known status, no passing off
Dr. Reddy's prior registrations and use of NISE for medicines were established. But Nice Neotech's incorporation documents, product catalogue and business records supported its account that the mark was adopted for its neonatal equipment business, and the word forms part of its corporate name registered on 10 July 2001. Incorporation does not by itself prove trademark use from that date, the court said, but these circumstances supported independent adoption. “Dishonest adoption cannot be inferred solely from phonetic similarity” without sufficient evidence of deliberate imitation, and there was none.
The well-known-mark ground under Section 11(2) failed because the provision requires proof not only that the earlier mark is well known in India but that use of the later mark without due cause would take unfair advantage of, or be detrimental to, its distinctive character or repute; the materials showed reputation in pharmaceuticals and nothing more. The passing-off objection under Section 11(3)(a) failed for want of any likelihood of misrepresentation as to commercial origin. The Rule 51 dispute about whether Nice Neotech's evidence was ever on file did not change the result: even without placing decisive reliance on the disputed evidence, Dr. Reddy's earlier rights had been considered and the substantive requirements for refusal under Section 11 had not been met.
On an overall consideration of the Cadila factors the court held that the marks are phonetically similar, but that the differences in the nature, character and purpose of the goods, the class of purchasers, their degree of care and the modes of purchase substantially outweigh that similarity. The Assistant Registrar had considered the differences between the goods, their purchasers and their trade channels, and on the court's own independent review of the evidence his conclusion did not warrant interference.
Order
CMA(TM) No. 31 of 2025 was dismissed and the Assistant Registrar's order of 22 August 2025 disallowing Opposition No. 797238 in respect of Trade Mark Application No. 1730955 was confirmed. The first point was answered in Dr. Reddy's favour, the marks being held phonetically similar; the remaining points on likelihood of confusion or association, well-known status, dishonest adoption, passing off and interference were answered against it. There was no order as to costs. CMP No. 32017 of 2025, which sought a stay of the Registrar's order, was closed. The judgment was reserved on 15 September 2026 and pronounced on 26 October 2026.