In a significant ruling on July 1, 2025, the Delhi High Court clarified that although the Trade Marks Act, 1999 does not expressly recognise the concept of a "family of marks", the doctrine can still be judicially invoked to seek injunctive relief against infringing marks. The decision came in the appeal Modi Mundipharma Pvt. Ltd. v. Speciality Meditech Pvt. Ltd. & Anr. [RFA(OS)(COMM) 8/2023], where the appellant had sought to restrain the respondent’s use of the mark "FEMICONTIN".

The division bench comprising Justices C. Hari Shankar and Ajay Digpaul observed:

"When an entity is the proprietor of a number of registered trademarks containing a common prefix or suffix… any other mark by a third party which would contain the same… if used for similar goods… could result in likelihood of confusion. It is this concept which is elliptically described as the 'family of marks'… merely a recognition of the principles that underlie the statute."

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The Court made it clear that invoking the family of marks doctrine does not guarantee an automatic injunction; each case must be assessed on specific facts.

The appellant, Modi Mundipharma, owns a series of registered trademarks in Class 5 featuring the suffix “CONTIN”, including FECONTIN-F and CONTIN itself. The company claimed that the respondent’s use of the mark FEMICONTIN for a pharmaceutical product infringed on its family of trademarks, particularly FECONTIN-F.

The single judge had earlier rejected the suit, opining that the family of marks doctrine was applicable only in passing-off cases, not infringement. Disagreeing, the division bench referred to Amar Singh Chawal Wala’s case where a similar claim based on "Qilla" was upheld under infringement as well.

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“The finding of the learned Single Judge that the family of marks concept would apply only to passing off, is not correct,” the High Court held.

However, the Court refused to grant blanket protection or injunction merely based on the presence of the “CONTIN” element.

“The Court cannot… presume that every mark containing ‘CONTIN’… is necessarily infringing. One may envisage a mark such as ‘CONTINGENT’ used for pharma goods that may not infringe,” it explained.

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Interestingly, the Court acknowledged prior judgments like Bennett Coleman v. VNOW Technologies and Fashion One Television, where trademarks such as TIMES NOW and ET NOW were protected under the "NOW" family of marks. However, even there, the Court did not approve an absolute injunction against all similar-sounding marks.

In the present case, Modi Mundipharma had registered FECONTIN-F since 1993 and claimed that FEMICONTIN’s use was dishonest, confusing, and amounted to brand dilution. The respondents, on the other hand, argued that “FEMICONTIN” was coined independently using:

• “FE” for ferrous (iron),
• “FEMI” for female (as the drug is targeted at pregnant women),
• “CONTIN” derived from “continuous”, describing sustained drug release.

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The Court also delved into Section 47 of the Trade Marks Act, discussing non-use of the registered mark CONTIN in standalone form. The judges held that since the mark was not independently used on any product, its registration alone could not support an infringement claim without evidence of active use.

“Use of a similar mark or a mark of which the registered mark is a part, cannot be the use of the registered mark itself,” the Court noted.

Ultimately, while the bench acknowledged the legitimacy of the family of marks concept, it ruled that the appellant could not establish either deceptive similarity or infringement merely based on the suffix “CONTIN”.

Quote:

“Though the principle of a family of marks is well recognised, the Court cannot… presume that every mark… which contains ‘CONTIN’ is necessarily infringing in nature.” — Delhi High Court

Case title: Modi Mundipharma Pvt. Ltd v. Speciality Meditech Pvt. Ltd. & Anr.

Case no.: RFA(OS)(COMM) 8/2023

Appearance: Mr. Pravin Anand and Ms. Prachi Agarwal, Advs for Appellant; Mr. Gagan Gupta, Sr. Adv. with Mr. Saurabh Gupta, Adv. for R-1