Bombay High Court Restrains United Biotech From Using 'OTIDE' Mark In Dispute With Sun Pharma

The Bombay High Court on 4 May granted an interim injunction in favour of Sun Pharma Laboratories Limited and restrained United Biotech Private Limited from using the mark OTIDE.

Justice Sharmila U. Deshmukh, held that phonetic similarity between pharmaceutical marks OCTRIDE and OTIDE is sufficient to establish a prima facie case of passing off. However, she declined relief on the infringement claim. She observed:

“The incorrect pronunciation of trade marks used for marketing medicines is not uncommon.”

Sun Pharma's predecessor adopted the mark OCTRIDE in 1998 for a drug used to treat acromegaly, carcinoid tumours and bleeding oesophageal varices. United Biotech, incorporated in 1997, claimed continuous use of OTIDE since January 1999.

Sun Pharma stated it became aware of the OTIDE mark only in June 2025. United Biotech disputed this and relied on 2010 medical journals showing both products listed side-by-side as substitutes derived from Octreotide Acetate.

The Court noted that both marks originate from the same active pharmaceutical ingredient and held that no party can claim monopoly over a generic molecule.

On infringement, the Court rejected Sun Pharma's reliance on its OCTIDE registration since it had lapsed in 2008 and was never commercially used.

On delay and acquiescence, United Biotech argued that Sun Pharma's long inaction amounted to implied consent. Applying Wockhardt v. Torrent Pharmaceuticals, the Court held that delay alone does not establish acquiescence unless supported by conduct inducing a belief that use remained unchallenged.

Medical journal references indicating the drug price as “NA” suggested limited commercial availability, weakening Sun Pharma's claim of earlier actionable knowledge.

On goodwill, the Court found that Sun Pharma recorded turnover of about Rs. 7 crores in 2006, while United Biotech recorded Rs. 27 lakhs, establishing a stronger reputation when the defendant entered the market.

On confusion, the Court applied the phonetic similarity test and held that pharmaceutical disputes must be assessed on the standard of bare possibility of confusion due to public health concerns and rural access to medicines.

Accordingly, the Court rejected United Biotech's application to vacate the ex parte ad-interim order.