Bombay HC Grants Injunction to SUN Pharma in Trademark Infringement Case

The Bombay High Court has granted a permanent injunction in favour of Sun Pharmaceutical Industries, bringing to a close a protracted trademark dispute against ABSUN Pharma. The High Court further observed that the Trade Marks Act neither defines the term "house mark" nor draws any distinction between a trade mark and a house mark. It also held that once a registered trade mark is incorporated into a trade name, the question of deceptive similarity inevitably arises.

A bench of Justice Manish Pitale heard Commercial IP Suit No. 111 of 2013 concerning whether the defendant’s use of the trade names/house marks ABSUN / ABSUN PHARMA infringed the registered house marks SUN / SUN PHARMA and whether such use amounted to passing off and entitled the plaintiff to injunctions and monetary reliefs.

The Single Judge held that the plaintiff established infringement under Section 29 of the Trade Marks Act, 1999 and also made out the tort of passing off, and accordingly decreed the suit in terms of the plaintiff’s prayer clauses (a) to (e), granted an injunction and awarded costs of Rs.10 lakhs, but declined the prayer for rendition of accounts. The Court emphasised the statutory scope of protection for registered marks and the relevance of use as part of a trade name:

The Court, in its reasoning, observed: "A perusal of the above-quoted definitions of ‘mark’ and ‘trade mark’ show that the moment a mark is capable of distinguishing the goods or services of one person from the other, it qualifies as a trade mark. It is crucial to note that the Trade Marks Act does not specifically define house mark and it makes no distinction between a trade mark and a house mark. The fact that the defendant is using its marks ‘ABSUN’ / ‘ABSUN PHARMA’ for distinguishing its goods, is evident from the manner in which the marks have been used and the vehemence with which the stand taken by the plaintiff has been opposed on behalf of the defendant. As a matter of fact, the defendant itself has heavily relied upon the peculiar manner in which the word ABSUN is used and printed on the packaging of its medicinal products. It is claimed that the word ABSUN is written in a stylized manner. In response to question No.16 put to the sole witness of the defendant in cross-examination, it was asserted that the words ABSUN PHARMA, with the word ABSUN being written in stylized manner, constituted a logo. In response to question No.25, the aforesaid witness in cross-examination, specifically stated that the defendant was indeed claiming monopoly over the name/mark ‘ABSUN PHARMA’. In the face of such material, the defendant cannot claim that its marks do not qualify to be trade marks and that Sections 29(1), (2), (3) and (4) of the Trade Marks Act would not be applicable."

Background: The plaintiff manufacturer stated long and extensive use of the house marks SUN / SUN PHARMA (with registrations dated from 1983 and 2007) and asserted substantial goodwill; the defendant, a proprietor exporting pharmaceutical preparations, adopted ABSUN / ABSUN PHARMA (explaining the composition of the name from family initials) and denied infringement and passing off. The plaintiff issued a cease and desist notice and filed the suit; the contest as to a separate mark E-MIST was abandoned by the defendant on record and the controversy proceeded only on SUN v. ABSUN.

The Court applied the statutory tests under Section 28 and Section 29 of the Trade Marks Act, 1999, and treated house marks as protectable trade marks when they are used to distinguish goods. The judge observed that a registered mark used as part of a trade name engages Section 29(5) and that Section 29(6) and (7) were attracted where marks were affixed to packaging, used on business papers and for export. The Court also relied on the statutory deeming provision in Section 56 of the Trade Marks Act, 1999 to reject the defence that export-only use avoided liability.

The decision explained how earlier authorities were applied: the plaintiff relied on Indchemie Health Specialities Pvt. Ltd. vs. Naxpar Labs Pvt. Ltd. & Anr. and Aglowmed Limited vs. Aglow Pharmaceuticals Private Limited to show that addition or deletion of alphabets did not avoid deceptive similarity; Cadila Pharmaceuticals Limited vs. Sami Khatib of Mumbai and Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd. were cited to underscore the duty of a new user to search the register before adoption and the import of Section 56 for exported goods; Charak Pharma Pvt. Ltd. vs. Glenmark Pharmaceuticals Ltd. supported the Court’s conclusion that honest adoption was not a defense to infringement; Pizza Hut International LLC & Ors. vs. Pizza Hut India Pvt. Ltd. and Hem Corporation Pvt. Ltd. and others vs. ITC Limited were considered on principles concerning house names and use indicating a connection in trade; R. R. Oomerbhoy Pvt. Ltd. vs. Court Receiver, High Court, Bombay & Ors. was taken into account in rejecting a last-minute attempt by the defendant to change its trading name; Koninlijke Philips N. V. & Anr. vs. Amazestore & Ors. was noted on limitations of monetary relief; and S. Syed Mohideen Vs. P. Sulochana Bai, Reckitt & Colman Products Limited Vs. Borden and Ageon Life Insurance Company Limited Vs. Aviva Life Insurance Company India Limited informed the passing off analysis on goodwill, misrepresentation and damages. The Court also referred to commercial-suit procedural rules in assessing documentary proof and admissions and observed that admitted Chartered Accountant certificates, not being denied under the commercial rules, supported the plaintiff’s goodwill case. The judgement further noted that "In a catena of judgments the Supreme Court and various High Courts, including this Court, have held that when the Court is considering the aspect of infringement in the context of medicinal and pharmaceutical preparations, it has to be all the more strict." The Court found the plaintiff had proved goodwill and misrepresentation but had not established a precise quantum of damages, and therefore declined rendition of accounts while granting injunction and partial costs as assessed.

Case Details:
Case No.: COMMERCIAL IP SUIT NO. 111 OF 2013
Case Title: Sun Pharmaceutical Industries Ltd. v. Satej M. Katekar, Proprietor of Absun Pharma
Appearances: 
For the Petitioner(s): Mr. Hiren Kamod a/w Mr. Nishad Nadkarni, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Ms. Jaanvi Chopra and Ms. Rakshita Singh i/by Khaitan and Co.
For the Respondent(s): Mr. Rashmin Khandekar a/w Mr. Anand Mohan and Mr. Lalit Nair

Source: 2026 CaseBase(BOM) 185