Bombay HC Grants Injunction Against Absun Pharma, Imposes ₹10 Lakh Costs For Sun Pharma Mark Infringement

The Bombay High Court has granted a permanent injunction against Absun Pharma in an over-decade-long trademark dispute with Sun Pharmaceutical Industries Ltd., holding that the use of the marks “ABSUN” and “ABSUN PHARMA” infringes its registered marks “SUN” and “SUN PHARMA”.

The court also imposed costs of Rs 10 lakh on Absun Pharma payable to Sun Pharma.

A Single Judge Bench of Justice Manish Pitale held that merely prefixing letters to a registered mark does not create a distinction where its essential feature is retained.

Sun Pharmaceutical Industries Ltd., engaged in the manufacture and sale of medicinal and pharmaceutical preparations, asserted long-standing use of the marks “SUN” since 1978 and “SUN PHARMA” since 1993, supported by registrations.

The dispute dates back to December 2012, when the company came across pharmaceutical products bearing the marks “ABSUN” and “ABSUN PHARMA”. It issued a cease-and-desist notice, but the defendant refused to comply, claiming its marks were distinct and independently coined.

The defendant, a sole proprietor operating as Absun Pharma, contended that “ABSUN” was derived from the names of his family members and was used as a brand name or trading style and not as a trademark. It was also argued that the products were exported to African countries and that the word “Sun”, being a common reference to a heavenly body, could not be monopolised.

Sun Pharma, however, argued that the rival marks were visually, structurally, and phonetically similar, and that the defendant had merely prefixed “AB” to its registered mark without altering its essential feature. It emphasised that minor additions do not eliminate deceptive similarity, particularly in pharmaceutical products where confusion can have serious consequences.

Rejecting the contention that a house mark is distinct from a trademark, the Court held that the Trade Marks Act does not draw such a distinction where the mark is used to identify goods in the course of trade.

The bench held that Section 29(5) of the Trade Marks Act squarely applies, observing that in “ABSUN” and “ABSUN PHARMA”, the plaintiff's marks “SUN” and “SUN PHARMA” are subsumed, and the prefix “AB” is insufficient to distinguish them.

The court observed: "In other words, the defendant is indeed using the registered trade marks of the plaintiff 'SUN'/ 'SUN PHARMA', as part of its trade name and hence, the defendant cannot escape liability, in the event it is established that a case of 'infringement' is made out by the plaintiff. In this context, it becomes clear that the defendant is also not justified in contending that 'deceptively similar' is foreign to Section 29(5) of the Trade Marks Act."

The court also rejected the plea of honest adoption, holding that once infringement based on similarity is established, the intention behind adoption becomes irrelevant.

Dismissing the defence that the products were meant only for export, the court noted that under Section 56 of the Act, applying a mark in India to goods meant for export constitutes use in India.

Emphasising a stricter standard for pharmaceutical products, the Court noted that even minor confusion could have serious consequences for consumers.

On passing off, the Court held that Sun Pharma had established goodwill through its long-standing use, sales and promotional material, and found that the defendant's use of a similar mark amounted to misrepresentation.

“Since the defendant also manufactures medicinal and pharmaceutical products, which are indeed the products of the plaintiff, in the light of the similarity between the marks and the nature of products sold by both parties, a case of misrepresentation on the part of the defendant is made out..”

Holding that the essential elements of passing off were satisfied, the court concluded that the defendant's mark was deceptively similar and amounted to riding on the plaintiff's reputation.

Accordingly, the suit was decreed in favour of Sun Pharma, and the defendant was restrained from using the marks in challenge.

For Plaintiff/Applicant: Advocates Hiren Kamod along with Advocates Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, Jaanvi Chopra, and Rakshita Singh instructed by Khaitan and Co.

For Defendant: Advocates Rashmin Khandekar along with Anand Mohan and Lalit Nair for Defendant.