Pharmaceutical trademarks with shared descriptive suffix deceptively similar if phonetically alike when viewed as wholes; injunction on prima facie possibility of confusion mandatory, applying stricter test for health risks without dissecting marks.

JUDGMENT :

BHARATI DANGRE, J.

1 Sun Pharmaceutical Industries Limited, Appellant/Plaintiff , a Public Limited Company incorporated under the Companies Act, 1956, is engaged in the business of manufacturing, trading, marketing, selling and/or distributing medicinal and pharmaceutical preparations. It claims to be number one pharma company in India with 8.3% market share and ranked no.1 by prescription with 12 different classes of doctors. The Plaintiff’s products claim to have the hallmark of technology-based differentiation covering full range of dosage forms including tablets, capsules, injectables, inhalers, ointments, creams and liquids as it offer comprehensive product portfolio across various therapeutic segments.

According to Sun Pharmaceutical Industries Ltd, it owns large Intellectual Property portfolio containing various well- known, distinctive and coined trademarks in relation to its medicinal and pharmaceutical preparations and one such mark which it claim has honestly, independently and bonafidely coined, conceived and adopted is the trademark ‘RACIRAFT’ in January, 2022. It is the claim of the Appellant that the said trademark was coined by combining the words ‘RACI’ (misspelling of the word RACY which suggest “full of zest and vigour’ and the word ‘RAFT’ (meaning foam like formation caused by Sodium Alginate).

Claiming that the trademark is a coined word and is inherently distinctive and has been in use since June 2022 in relation to a pharmaceutical product containing the molecules viz. Sodium Alginate, Sodium Bicarbonate and Calcium Carbonate, and Calcium Carbonate, sold in form of oral suspension/syrup being used in the treatment of heartburn and indigestion, it has the quality of neutralizing the acid present in the stomach and aiding proper digestion. The Appellant sought registration of the said trademark in Class 05 on ‘proposed to be used basis’.

The particulars of the registration of the trademark of the Appellant are set out in the proceedings before us as below :-

2 Claiming that in or about 3^rd week of February, 2025, the team of the Appellant came across the Defendant’s pharmaceutical product bearing the impugned mark ‘ESIRAFT’ , and they suspected that the Defendants are using the impugned mark in relation to the identical goods containing identical molecule for identical ailment, as that of the Plaintiff and as the mark as virtually visual, structurally and phonetically has deceptive similarity and substantially similar to the Appellant’s prior adopted used and registered trademark. It was therefore constrained to institute a Commercial Suit on the Commercial Division of the High Court, seeking leave under Clause XIV of the letters patent to combine the cause of action of infringement of trademark and passing off and it sought a perpetual order and injunction from infringing its registered trademark ‘RACIRAFT’ in Class 5 by the use of the impugned mark ‘ESIRAFT’ and/or any other trademark with the said word and/or any other mark identical with or deceptively similar to the Plaintiffs’ trademark , in respect of the goods covered by its registration.

In the Suit, it also sought an injunction restraining the Defendants from dealing with the impugned goods or any other medicinal or pharmaceutical preparations identical with and/or deceptively similar to the Plaintiff’s well-known trademark, so as to pass off the Defendants impugned goods as and for the Plaintiffs’ well-known goods, or in any other way.

3 In the aforesaid suit filed for infringement of trademark and passing off, on 07/04/2025, ad-interim relief was granted in its favour in terms of prayer clause (a) and (b) with the following primary reasons being assigned while granting such relief.

“15. Having compared the two products and trade marks found on the said products, it is found that a strong prima facie case is made out in favour of the applicant. The defendants have