Delhi High Court Lifts Injunction On BONERICH In Dispute With Pharma Mark BONRICH

In a judgment dated January 13, 2026, a Division Bench of Justice C Hari Shankar and Justice Om Prakash Shukla allowed the appeals filed by Mishra against the order of the Commercial Court at Saket, ruling that a claim of passing off cannot be sustained merely on the basis of prior use of the “BONRICH” mark unless goodwill and reputation in the mark are clearly established.

Holding that a case for interference with the Commercial Court's order was made out as no finding on goodwill had been recorded, the Court observed that, “even if the respondent's (Invision Medi Sciences') sales figures and documents are taken at face value, in the absence of a specific finding by the learned Commercial Court that such material demonstrated goodwill and reputation in the mark “BONRICH” in favour of the respondent before 29.08.2011, the foundational requirement for sustaining a claim of passing off remains unfulfilled.”

The dispute concerns pharmaceutical products marketed under the marks “BONERICH” and “BONRICH.” Mishra, who secured registration of the trademark “BONERICH” in Class 5 relating to pharmaceutical products in 2021 with a claimed user date of 2011, had approached the Commercial Court alleging infringement.

Invision Medi Sciences challenged the claim, asserting that it had been using the “BONRICH” mark since 2007 through its predecessor and therefore enjoyed superior rights. On this basis, the company sought protection against the continued use of the “BONERICH” mark.

Accepting Invision Medi Sciences' claim of prior use, the Commercial Court granted interim relief in its favour, observing that the similarity between the marks could lead to confusion among consumers of medicinal products. The Commercial Court restrained Mishra from using “BONERICH” and dismissed his request for interim relief. Aggrieved, Mishra appealed before the High Court.

Before the High Court, Mishra argued that even assuming Invision Medi Sciences to be the earlier user, an injunction for passing off could not be granted unless it was shown that the company had acquired goodwill in the market prior to his adoption of the “BONERICH” mark.

After examining the material on record, the Court noted that since Mishra was the registered proprietor of the “BONERICH” trademark, no claim of infringement could lie and the dispute could only be assessed on the basis of passing off.

On the issue of passing off, the Court observed that such a claim is not founded solely on priority of adoption. It emphasized that the existence of protectable goodwill at the time when the rival enters the market is a foundational requirement.

“Prior use, by itself, may operate as a defence under Section 34 of the Trade Marks Act, in an action for infringement. However, the right to maintain an action for passing off arises only upon proof of goodwill and reputation attached to the mark,” the Bench said.

The Court found that while the Commercial Court had listed documents and sales figures produced by Invision Medi Sciences, it had failed to determine whether those materials translated into goodwill in the “BONRICH” mark prior to 2011.

Holding that the injunction could not be sustained in the absence of a finding on goodwill, the Bench observed, “we deem it appropriate to interfere in the present case because we feel that the impugned order erred on the established principle of law, while granting an injunction in favour of the respondent.”

Consequently, the Court set aside the interim injunction granted in favour of Invision Medi Sciences, clarifying that its observations were confined to the interim stage.

For Appellant: Advocates Vikas Khera, Sneha Sethia, Rohit Yadav and Jatin Gautam.

For Respondent: Advocates Shantanu Sood and Shekhar Sri Prakash.