16/05/2026
𝘾𝙖𝙨𝙚 𝙏𝙞𝙩𝙡𝙚: 𝙎𝙪𝙣 𝙋𝙝𝙖𝙧𝙢𝙖 𝙇𝙖𝙗𝙤𝙧𝙖𝙩𝙤𝙧𝙞𝙚𝙨 𝙇𝙞𝙢𝙞𝙩𝙚𝙙 𝙫. 𝙐𝙣𝙞𝙩𝙚𝙙 𝘽𝙞𝙤𝙩𝙚𝙘𝙝 𝙋𝙧𝙞𝙫𝙖𝙩𝙚 𝙇𝙞𝙢𝙞𝙩𝙚𝙙.
𝘾𝙖𝙨𝙚 𝙉𝙪𝙢𝙗𝙚𝙧𝙨: 𝙄 𝘼 (𝙇) 𝙉𝙤. 19536 𝙤𝙛 2025 𝙄𝙣
𝘾𝙤𝙢𝙢𝙚𝙧𝙘𝙞𝙖𝙡 𝙄𝙋 𝙎𝙪𝙞𝙩 (𝙇) 𝙉𝙤. 19268 𝙤𝙛 2025
𝘾𝙤𝙪𝙧𝙩: 𝙃𝙞𝙜𝙝 𝘾𝙤𝙪𝙧𝙩 𝙤𝙛 𝘽𝙤𝙢𝙗𝙖𝙮.
𝙀𝙭𝙚𝙘𝙪𝙩𝙞𝙫𝙚 𝙎𝙪𝙢𝙢𝙖𝙧𝙮 :
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 threshold—where even a "bare possibility" of deception concerning medicinal preparations warrants the grant of injunctive relief to safeguard public health.
𝙁𝙖𝙘𝙩𝙪𝙖𝙡 𝙈𝙖𝙩𝙧𝙞𝙭 :
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 Defendant’s 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 Plaintiff’s claim was defeated by laches, delay, and acquiescence, as they were allegedly aware of the Defendant's market presence for years.
𝙇𝙚𝙜𝙖𝙡 𝙄𝙨𝙨𝙪𝙚𝙨 & 𝘼𝙙𝙟𝙪𝙙𝙞𝙘𝙖𝙩𝙞𝙤𝙣 :
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 off—goodwill, misrepresentation, and damage—the 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.
𝙋𝙧𝙞𝙤𝙧 𝙐𝙨𝙚𝙧 & 𝙂𝙤𝙤𝙙𝙬𝙞𝙡𝙡:
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 2006–2007 fiscal year highlighted a stark disparity in market footprint (Plaintiff’s turnover stood at ~₹7 Crores against the Defendant’s ~₹27 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 Defendant’s 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.
𝘾𝙤𝙣𝙘𝙡𝙪𝙨𝙞𝙤𝙣 & 𝙊𝙧𝙙𝙚𝙧 :
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."
