16/05/2026
๐พ๐๐จ๐ ๐๐๐ฉ๐ก๐: ๐๐ช๐ฃ ๐๐๐๐ง๐ข๐ ๐๐๐๐ค๐ง๐๐ฉ๐ค๐ง๐๐๐จ ๐๐๐ข๐๐ฉ๐๐ ๐ซ. ๐๐ฃ๐๐ฉ๐๐ ๐ฝ๐๐ค๐ฉ๐๐๐ ๐๐ง๐๐ซ๐๐ฉ๐ ๐๐๐ข๐๐ฉ๐๐.
๐พ๐๐จ๐ ๐๐ช๐ข๐๐๐ง๐จ: ๐ ๐ผ (๐) ๐๐ค. 19536 ๐ค๐ 2025 ๐๐ฃ
๐พ๐ค๐ข๐ข๐๐ง๐๐๐๐ก ๐๐ ๐๐ช๐๐ฉ (๐) ๐๐ค. 19268 ๐ค๐ 2025
๐พ๐ค๐ช๐ง๐ฉ: ๐๐๐๐ ๐พ๐ค๐ช๐ง๐ฉ ๐ค๐ ๐ฝ๐ค๐ข๐๐๐ฎ.
๐๐ญ๐๐๐ช๐ฉ๐๐ซ๐ ๐๐ช๐ข๐ข๐๐ง๐ฎ :
The Bombay High Court has reaffirmed that while statutory actions for trademark infringement are generally mutually barred between two registered proprietors under Sections 28(3) and 30(2)(e) of the Trade Marks Act, 1999, the common law remedy of passing off remains entirely unaffected by virtue of Section 27(2). Crucially, the Court emphasized that in matters involving pharmaceutical trademarks, the conventional standard of "likelihood of confusion" is elevated to a stricter thresholdโwhere even a "bare possibility" of deception concerning medicinal preparations warrants the grant of injunctive relief to safeguard public health.
๐๐๐๐ฉ๐ช๐๐ก ๐๐๐ฉ๐ง๐๐ญ :
The interim application arose out of a commercial IP suite filed by the Plaintiff (Sun Pharma Laboratories Ltd.) against the Defendant ( United Biotech Pvt. Ltd.) concerning structural and phonetic similarities between their respective marks:
Plaintiff's Mark: "OCTRIDE" (Asserted user and adoption since 1998; backed by regulatory approvals and substantial sales revenue).
Defendant's Mark: "OTIDE" (Asserted user since 1999, though evidentiary documentation corroborated commercial use only from 2006 onwards).
Both entities utilize these marks for medicinal formulations derived from the active pharmaceutical ingredient (API) Octreotide Acetate
Key Contentions:
The Plaintiff alleged that the Defendantโs mark was phonetically and structurally deceptive, constituting both statutory infringement and common law passing off. They produced verified financial certifications and market data to establish overriding prior goodwill.
The Defendant resisted the injunction on the grounds that:
1. Both parties held valid registrations, barring an infringement action.
2. The marks were honestly adopted, being generic derivatives of the International Non-Proprietary Name (INN) "Octreotide," over which no monopoly could be claimed.
3. The Plaintiffโs claim was defeated by laches, delay, and acquiescence, as they were allegedly aware of the Defendant's market presence for years.
๐๐๐๐๐ก ๐๐จ๐จ๐ช๐๐จ & ๐ผ๐๐๐ช๐๐๐๐๐ฉ๐๐ค๐ฃ :
1. Maintainability of Infringement Action Between Registered Proprietors. The Court upheld the statutory bar embedded in the Act, noting that when contesting parties both hold valid registrations, one cannot sustain an infringement action against the other. Citing the controlling precedent in Lupin Limited v. Johnson & Johnson, the Bench observed that judicial intervention against a co-registered proprietor at the interlocutory stage is permissible only if the underlying registration is shown to be ex-facie fraudulent, illegal, or shock the conscience of the Court. Since the marks were derived from a common API and no prima facie fraud was established in the registration process, interim relief for infringement was declined.
2. Independence of Passing Off Remedies under Section 27(2) Conversely, the Court clarified that statutory registration does not immunize a defendant against an action for passing off. Under Section 27(2), common law remedies remain fully operational. Evaluating the classic trinity of passing offโgoodwill, misrepresentation, and damageโthe Court observed, Phonetic Deception A holistic comparison revealed that "OTIDE" was phonetically nearly identical to "OCTRIDE." The mere deletion of the consonants 'C' and 'R' did not generate sufficient structural or acoustic distinctiveness.
๐๐ง๐๐ค๐ง ๐๐จ๐๐ง & ๐๐ค๐ค๐๐ฌ๐๐ก๐ก:
While the Defendant asserted a 1999 user date, material evidence only substantiated sales from 2006. Conversely, the Plaintiff conclusively demonstrated robust commercial exploitation and market reputation since 1999. A comparison of the 2006โ2007 fiscal year highlighted a stark disparity in market footprint (Plaintiffโs turnover stood at ~โน7 Crores against the Defendantโs ~โน27 Lakhs), establishing the Plaintiff's superior prior goodwill.
3. The Enhanced Threshold for Pharmaceutical Disputes Invoking the landmark supreme court ruling in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the High Court emphasized that medicinal trademark disputes require a hyper-vigilant standard of review. Given that medicines are frequently procured under hurried conditions by individuals spanning diverse linguistic, economic, and educational demographics, the standard is lowered from a "probability of confusion" to a "bare possibility of confusion."
4. Rejection of the Defence of Acquiescence
The Bench brushed aside the Defendantโs arguments regarding delay. Relying on Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd., the Court ruled that passive inaction or mere awareness of an infringing mark does not amount to legal acquiescence. For an acquiescence defence to succeed, there must be a distinct, positive, and affirmative act of encouragement or implied consent by the proprietor, which was entirely absent in this case.
๐พ๐ค๐ฃ๐๐ก๐ช๐จ๐๐ค๐ฃ & ๐๐ง๐๐๐ง :
Finding that the Plaintiff had successfully demonstrated a prima facie case of passing off, that the balance of convenience heavily favored the protection of public health, and that irreparable injury would result from consumer confusion, the Bombay High Court granted interim injunctive protection to the Plaintiff, restraining the Defendant from utilizing the mark "OTIDE."
