Kolkata: Ordering the removal of the trademark ‘PROTIFIX’ for being deceptively similar to the long-established nutrition brand ‘PROTINEX’, owned by Danone Asia Pacific Holdings Pte. Ltd, the Calcutta High Court has ruled that a common prefix in brand names cannot justify imitation.
The bench of Justice Ravi Krishan Kapur observed that the test of deceptive similarity must depend on the overall impression of a mark—visual, structural and phonetic—rather than dissecting individual components. The court held that the mere presence of a prefix such as “Proti” does not legitimise adoption of a confusingly similar name.
Danone told the court that PROTINEX has been sold in India since 1957, having passed through ownership under Dumex, Pfizer and Wockhardt, before being acquired by the Danone Group along with the related intellectual property. The company said it discovered PROTIFIX-branded products listed on e-commerce platforms in late 2024 and traced their manufacture to a third-party unit, prompting the legal action.
The respondents argued that “Proti” was a generic term widely used in protein products and that their packaging and colour scheme were different. However, the court found their evidence of use “unsatisfactory and inconsistent,” observing that the invoices and licences produced did not credibly prove genuine commercial use of the PROTIFIX mark.
Justice Kapur held that non-use of a registered mark without sufficient cause and bad faith in its adoption justified cancellation under the Trade Marks Act to preserve “the integrity of the register and public confidence in branded goods.” The court accordingly directed that the PROTIFIX mark be expunged from the Register of Trade Marks.
The judgment also recorded contradictions in the respondents’ statements across proceedings in Delhi and Calcutta, terming their conduct as lacking bona fides. While related litigation continues elsewhere, the High Court’s decision reinforces judicial protection for well-established consumer brands and clarifies that common prefixes cannot be used as a shield for imitation, said a legal advisor privy to
trademark cases.