Bombay High Court Rejects Trademark Infringement Claim: Phonetic Dissimilarity in ‘RACIRAFT’ vs. ‘EsiRaft’ - 2025-12-23

Beyond the Foam: Bombay High Court Resolves 'RACIRAFT' vs 'EsiRaft' Trademark Standoff

In a significant ruling for the pharmaceutical industry, the Bombay High Court has dismissed an interim application filed by Sun Pharmaceutical Industries Limited, clarifying the boundaries of trademark protection for medicinal products. Justice Sharmila U. Deshmukh held that the mark "EsiRaft" does not constitute an infringement of the registered trademark "RACIRAFT."

A Clash of Formulations

The dispute centered on two competing oral suspensions used to treat heartburn and indigestion. Sun Pharma, the owner of "RACIRAFT" (a mark registered in 2022), accused Meghmani Lifesciences of infringing its mark and engaging in passing off. Sun Pharma argued that the use of the suffix "RAFT"—combined with a specific two-color scheme—aimed to copy their brand identity.

Meghmani Lifesciences contested the allegations, asserting that "RAFT" is a generic term descriptive of the foam-forming property of sodium alginate, a common ingredient in these formulations. They further argued that their brand name "EsiRaft" is phonetically and visually distinct.

The Court’s Holistic Comparison

The central legal question before the Court was whether the rival marks, when viewed as a whole, created a likelihood of confusion among consumers. Applying the "anti-dissection rule," Justice Deshmukh evaluated the brands beyond their shared components.

The Court observed that while both products use the suffix "RAFT," the prefixes "RACI" and "Esi" are aurally and structurally distinct. The judgment emphasized that the opening syllables of a trademark are critical, noting that the phonetic difference between the consonant-heavy "Raci" and the vowel-led "Esi" is unlikely to deceive a reasonable consumer, even one with an imperfect recollection or in a hurried pharmacy setting.

Key Observations

The judgment provides a clear roadmap for how courts should approach trademark similarity in the pharmaceutical sector:

• On Holistic Comparison: "The anti-dissection rule requires the marks to be compared as a whole. The assessment is in respect of the impression that the rival marks create upon overall comparison."
• On Phonetic Distinctiveness: "Even making allowance for mispronunciation by the less informed or by reason of hurried utterances, it is difficult to accept that the first syllable 'Ee' when normally spoken, will be pronounced as alphabet 'A' followed by 'si' spoken as alphabet 'C' to make it sound similar to Raci."
• On Generic Suffixes: "It is settled that in disputes involving composite marks, mere presence of a shared or generic word cannot by itself justify a finding of deceptive similarity."
• On Consumer Confusion: "Applying the well-settled principles... in my view, the competing marks are prima facie visually and phonetically dissimilar and will not create any confusion in the minds of the consumers."

Precedents and Principles

Drawing on Supreme Court jurisprudence, including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. , the Court reiterated the importance of phonetic similarity but underscored that each case must be decided on its specific facts. The Court noted that earlier rulings cited by the parties—such as F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. —support the contention that where a suffix is a common trade descriptor or abbreviation, the focus must shift to the unique elements of the mark.

The Final Word

Concluding that Sun Pharma failed to establish a prima facie case of infringement, Justice Deshmukh vacated the earlier ex-parte ad-interim relief granted in April 2025.

The decision serves as a reminder to pharmaceutical companies that while they may hold valid trademarks for novel pairings, they cannot claim a monopoly over descriptive or generic components of a drug's composition. For practitioners, the ruling reaffirms that when it comes to medicinal branding, the "first syllable" remains a powerful threshold for maintaining market distinction.