Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2026 Supreme(Bom) 812

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
SHARMILA U. DESHMUKH, J.
Sun Pharma Laboratories Limited - Appellant
Vs.
United Biotech Private Limited - Respondent
Interim Application (L) No. 19536 of 2025 In Commercial IP Suit (L) No. 19268 of 2025 With Interim Application No.5318 of 2025 In Interim Application (L) No. 19536 of 2025 In Commercial IP Suit (L) No. 19268 of 2025
Decided On : 04-05-2026

Advocates:
Advocate Appeared:
For the Appellant : Mr. Alankar Kirpekar a/w Mr. Ayush Tiwari, Ms. Archita Gharat, Ms. Niyati Davawala, Mr. Anil Shete, Ms. Nidhi Rao and Ms. Chandrika Devda i/b Davawala & Co.
For the Respondent: Mr. Rashmin Khandekar a/w Mr. Bahraiz Irani, Mr. Anand Mohan, Mr. Anosh Irani, Mr. Amit Padwal, Ms Afreen Bano and Mr. Abhishek

Phonetic similarity between API-derived pharma marks suffices for passing-off injunction despite defendant's registration, if plaintiff proves prior goodwill via sales evidence; infringement barred without ex facie invalidity; delay not acquiescence absent positive act.

Headnote:(A) Trade Marks Act, 1999 - Sections 28(3), 30(2)(e), 31, 55 - Infringement by registered proprietor - Where defendant holds valid registration prima facie evidenced under Section 31, no infringement unless ex facie illegal, fraudulent or shocks conscience - Mere citation of plaintiff's lapsed mark in examination, lack of user documents since claimed date, and derivation from API insufficient to assail validity at interim stage - No rectification filed; parties estopped from non-registrability plea post their own registrations. (Paras 24-30)

(B) Trade Marks Act, 1999 - Section 27(2) - Passing off - Independent common law remedy unaffected by registration - Phonetic similarity between marks derived from same API (plaintiff appropriating first four and last three letters; defendant last five) creates bare possibility of confusion, especially in pharmaceuticals demanding exacting scrutiny due to hurried pronunciation, rural sales, prescription errors - Lower threshold than ordinary goods per Cadila principle; packaging differences irrelevant. (Paras 32, 40-42)

(C) Passing off - Goodwill/reputation - Assessed as of defendant's user commencement (evidence from 2006, not claimed 1999) - Plaintiff's CA-certified sales from 1999 (Rs.7 crores by 2006), drug launch permission 1998 establish prima facie prior goodwill; defendant's lower sales (Rs.27 lakhs 2006) contrast. (Paras 33-35)

(D) Passing off - Acquiescence/delay - Mere delay, medical journal listings as substitutes, common channels not acquiescence without positive act encouraging defendant; equates to inaction, not estoppel - No damage when defendant's price listed as NA implying unavailability. (Paras 37-38)

Facts of the case:
Pharma companies market identical molecule products for serious ailments (acromegaly, tumors etc.). Plaintiff claims adoption/use of mark since 1998/99, registration 2003; defendant claims 1999 adoption, registration 2003 (user evidence 2006). Ad-interim ex-parte injunction granted July 2025; defendant seeks vacation under Order XXXIX Rule 4 CPC.

Findings of Court:
No prima facie infringement due to defendant's registration; passing off established - injunction against use of defendant's marks identical/deceptively similar to plaintiff's, enabling passing off.

Issues: Whether defendant's registration ex facie invalid for infringement; passing off trinity (goodwill pre-2006, misrepresentation via phonetic similarity, damage likelihood) made out; acquiescence barring relief.

Ratio Decidendi: Defendant's registration bars infringement absent shocking illegality; passing off succeeds on phonetic similarity in pharma context, prior substantial sales proving goodwill, no acquiescence from delay alone - balance of convenience favours plaintiff to protect reputation.

Result: Interim application for injunction allowed in terms of prayer (b); vacation application dismissed.

Table of Content
1. ad-interim relief granted; plaintiff prior octride adoption since 1998. (Para 1 , 2 , 3 , 4)
2. defendant honest otide adoption from inn since 1999. (Para 5 , 6 , 7)
3. passing off maintainable; octide aids octride claim; prior reputation. (Para 8 , 9 , 10 , 11)
4. no similarity; acquiescence via delay; defendant prior extensive use. (Para 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20)
5. defendant's registration valid; no ex facie illegality or infringement. (Para 21 , 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30)
6. phonetic similarity in pharma marks causes confusion; plaintiff prior goodwill. (Para 31 , 32 , 33 , 34 , 35)
7. delay not acquiescence absent positive act. (Para 36 , 37 , 38 , 39)
8. exacting pharma scrutiny; precedents favor plaintiff prior user. (Para 40 , 41 , 42 , 43 , 44 , 45 , 46 , 47 , 48 , 49 , 50 , 51 , 52 , 53 , 54 , 55)
9. prima facie passing off; interim injunction against otide granted. (Para 56 , 57 , 58 , 59)

ORDER :

SHARMILA U. DESHMUKH, J.

1. Vide order dated 29^th July 2025, this Court had granted ad- interim relief in terms of prayer clauses (b) and (c) as regards passing off and appointment of a Court Receiver. Subsequently, Interim Application No. 5318 of 2025 was filed under Order XXXIX Rule 4 of the Code of Civil Procedure (`CPC’), seeking to vacate the ex-parte ad-interim order dated 29^th July 2025 passed by this Court. Both applications were taken up for hearing. The decision on merits of interim application for injunction decides the fate of the application under Order XXXIX Rule 4 of CPC.

2. The Plaintiff and Defendant are engaged in the business of manufacturing and marketing medicinal and pharmaceutical preparations. The plaint traces the adoption, use and proprietary right to the trade mark “OCTRIDE” to the year 1998 through the Plaintiff’s pre-decessors in title. It is stated that in the year 1998, the Plaintiff had adopted the mark “OCTIDE” which was registered and was thereafter not pursued nor the registration renewed by the Plaintiff’s pre-decessor in view of the adoption of “OCTRIDE”.

3. Insofar as the mark OCTRIDE is concerned, the application for registration of the said mark was filed on 8th September 2003, with user claim of 30^th September 1998. The molecule composition of the Plaintiff’s product marketed under OCTRIDE is Octreotide Acetate. The drug is prescribed to treat acromegaly, carcinoid tumors, and bleeding esophageal varices and to prevent complications following surgery of the pancreas. It is stated that the Plaintiff’s products under the trademark OCTRIDE have pan India as well global sales. The annual sales figures in respect of the products bearing the said trade mark for the period 1999 to March 2024, duly certified by the Chartered Accountant, are placed on record. The Plaintiff has also placed promotional material on record to demonstrate goodwill and reputation.

4. It is stated that in the month of June 2025, the Plainti representative came across the Defendant's product bearing the impugned mark OTIDE in the markets of Chennai, Tamil Nadu, and by way of further investigation and through the Plaintiff's Myanmar team, found the product OTIDE being manufactured by Defendants in India and exported to Myanmar. The Plaintiff conducted further search, which revealed the registrations in the name of Defendant for the mark OCTIDE and the impugned mark OTIDE. The impugned mark OTIDE was applied for registration on 29^th December, 2003 with user claim since 1^st January, 1999. In the examination report in respect of the Defendant's mark OCTIDE, the Plaintiff's predecessor’s mark OCTIDE was cited as a conflicting mark. It is contended that the registration obtained by the Defendant is wrongful, ex-facie illegal and invalid, and is liable to be rectified and removed from the register.

5. In the affidavit-in-reply, the Defendant has contended that the Defendant was incorporated in the year 1997, and apart from the domestic market, the Defendant is exporting to various countrie

Click Here to Read the rest of this document

2026 Supreme(Bom) 812

Phonetic similarity between API-derived pharma marks suffices for passing-off injunction despite defendant's registration, if plaintiff proves prior goodwill via sales evidence; infringement barred without ex facie invalidity; delay not acquiescence absent positive act.

Cases Referred (3)