Deceptive Similarity Beyond Words: Lessons from the Protifix Trademark Cancellation

In a decision reported on 24 October 2025, the Calcutta High Court held that the mark “PROTIFIX”, used in respect of a protein supplement, is deceptively like the longstanding mark “PROTINEX” and accordingly ordered that the registration for PROTIFIX be rectified, cancelled, removed and expunged from the register of trademarks.  

The court emphasised that an ordinary purchaser is not “Sherlock Holmes” with heightened powers of discernment; rather, the relevant consumer must be taken to be one of moderate attention and appreciation. The court found that the logo, style, colour combination and overall trade dress of PROTIFIX were such that confusion or deception of the relevant public was likely.  

The opponent mark, PROTINEX, is part of the Danone Group and has been used in India since 1957.  

This Article is a Part of our The Ultimate Guide to Intellectual Property Law Blogpost.

Key Legal Findings 

1. 1. Deceptive similarity beyond word mark
      Though the word “PROTIFIX” is different from “PROTINEX”, the court noted that similarity of colour combination, style, trade dress and overall impression are also critical. The court held:

“The logo, the style, the category of goods and the colour combination, all indicate that the relevant section of the public dealing in this category of goods is likely to be deceived.”  

This reaffirms the principle that trade dress (i.e., look and feel, layout, colour scheme) must be considered “in its entirety and not in isolation” when assessing deceptive similarity.  

1. 2. Standard of the “ordinary buyer”
      The judgment reiterates that the relevant test is what a typical consumer in the relevant market would perceive, not an expert with special observational acumen. The court’s phrase “ordinary purchaser was not gifted with the observation of Sherlock Holmes” captures this. 
   3. Bad faith and reputation of the prior mark
      The court found that the applicant for PROTIFIX had adopted the impugned mark in bad faith and malafide, with a view to usurp the reputation of the globally established PROTINEX mark. 
   4. Goods in same category and business context
      Since both marks apply to protein supplements (i.e., essentially overlapping category of goods) the possibility of confusion is heightened. The decision emphasises that when goods are in the same or closely adjacent category, the standard of protection is correspondingly higher.

Implications for Clients 

• This decision serves as a reminder that protection of a well-known or established mark in India not only extends to the word mark, but also to colour combinations, layout, trade dress and overall presentation of packaging and branding. 

• If a new entrant is considering a mark with a similar prefix (“PROTI-”, “PROTI NEX”, “PROTIFIX”, etc) in the same category (protein supplements, nutraceuticals), there is clear risk of challenge under section 29 of the Trade Marks Act, 1999 (or its predecessor) for deceptive similarity. 

• Clients should audit their packaging, colour schemes, and overall get-up if adopting similar marks, and consider whether they could be asked to redesign to avoid confusion. 

• On the registration side, brand owners with established marks should monitor filings by competitors of similar marks (especially in same category) and consider early opposition or cancellation actions to protect their rights. 

• The decision underscores the importance of building a strong reputation in India: the more established the prior mark, the stronger the case for opposing later marks that exploit similar get-up or trade dress. 

Insights from a Trademark Enforcement Perspective 

• In drafting oppositions or cancellation actions, emphasise not only the word-mark similarity but also colour scheme, packaging get-up and trade dress. This decision can be used as precedent when arguing that similarity in overall impression suffices even when the word element differs. 

• When advising clients on trademark clearance, we should flag not only phonetic or visual resemblance of word marks but also sign-off on the packaging colour scheme and trade dress. Our clearance reports should include analysis of get-up similarity. 

• For clients seeking to enforce rights, this decision demonstrates that the court will recognise bad faith and reputation; we should include evidence of reputation, longstanding use, and consumer confusion or potential confusion. That strengthens the enforcement strategy. 

• For new clients entering the nutraceutical / supplement market, especially those adopting “PROTI-” prefixes or similar variants, we should advise caution and recommend distinctive branding (word-mark, colour, packaging) to avoid risk of litigation. 

• When drafting opposition-strategy templates, ensure to include a section on “packaging get-up/trade dress” and reference this decision to reinforce that similarity extends beyond mere words. 

Practical Take-aways and Recommendations 

• Branding strategy: If you are launching a product in the same category as an established brand, ensure your mark is visually, phonetically and conceptually distinct. Avoid “me-too” branding in word, colour or layout. 

• Trademark clearance: Conduct not just word-mark searches but also visual-similarity reviews (colour, packaging design, get-up). Flag risk of confusing get-up even where word elements differ. 

• Monitoring and enforcement: If you hold an established mark, monitor filings for not only word-marks but also variations in packaging and trade dress by others. Prompt opposition or cancellation proceedings may avoid dilution of your brand. 

• Use of evidence: In enforcement proceedings, gather evidence of your mark’s reputation (e.g., advertising spend, market share, consumer recognition) and present side-by-side comparisons of the packaging of the impugned mark; emphasize how ordinary consumers might be misled. 

• Risk mitigation for enterers: If a client intends to adopt a prefix that is common in an industry (e.g., “PROTI-” for protein supplements), ensure accompanying branding elements are distinctive and ideally get clearance and perhaps design around colours and packaging to avoid confusion. 

Broader Significance for Brand Protection in India 

The Calcutta High Court’s decision in the PROTIFIX vs PROTINEX matter reinforces several vital principles in Indian trademark law: the importance of trade dress, colour combination and overall get-up in assessing deceptive similarity; the standard of the ordinary consumer; and the risk posed by adopting branding that may ride on the reputation of an established mark. 

For brand owners, manufacturers, importers and retailers in India, especially in the FMCG and nutraceutical space, this case offers timely guidance on what to avoid and what to protect.