Use of registered trade mark as part of trade name/house mark constitutes infringement under Sec 29(5) TM Act; deceptive similarity strictly assessed in pharmaceuticals; export application deemed domestic use per Sec 56.

JUDGMENT :

MANISH PITALE, J.

1. The plaintiff-Sun Pharmaceutical Industries Ltd. has filed this suit, seeking a decree of permanent injunction to restrain the defendant from using the impugned trade mark/trade name ‘ABSUN’/ ‘ABSUN PHARMA’ on the ground that it infringes upon the registered trade mark/house mark of the plaintiff ‘SUN’/ ‘SUN PHARMA’. The plaintiff has also sought a decree of permanent injunction restraining the defendant from using the impugned mark ‘ABSUN’/ ‘ABSUN PHARMA’, so as to pass off its goods as those of the plaintiff. The plaintiff has further sought similar decree of permanent injunction regarding infringement and passing off concerning the use of trade mark ‘E-MIST’ used by the defendant in the context of the registered trade mark ‘EYEMIST’. The plaintiff has further claimed damages.

2. The controversy in the present suit is now limited to the marks ‘SUN’/ ‘SUN PHARMA’ versus ‘ABSUN’/ ‘ABSUN PHARMA’, for the reason that when Notice of Motion (Lodging) No.681 of 2013 was pressed on behalf of the plaintiff, a statement was made on behalf of the defendant that it had never used the trade mark ‘E-MIST’ and that it did not intend to do so until disposal of the suit. In view of the statement made on behalf of the defendant, on the said date, this Court further restrained the defendant from using the mark ‘E- MIST’ or any other deceptively similar mark until disposal of the suit. Even at the stage of final hearing, the said stand of the defendant was reiterated and therefore, the suit deserves to be decreed in terms of prayer clauses (d) and (e), pertaining to reliefs in the context of the registered trade mark of the plaintiff ‘EYEMIST’, particularly in view of the fact that the defendant gave up any contest with regard to the same. But, during the final hearing of the suit, the rival parties made submissions in the context of their respective stands pertaining to the said trade marks ‘SUN’/ ‘SUN PHARMA’ and ‘ABSUN’/ ‘ABSUN PHARMA’.

3. The plaintiff is a company carrying on business of manufacture and sale of medicinal and pharmaceutical preparations. Its predecessor was a proprietary concern, which subsequently was converted into a partnership firm and eventually, registered as the plaintiff company. Since the year 1978, the predecessor of the plaintiff and thereupon, the plaintiff openly, regularly and extensively used the trade mark ‘SUN’ and since 1993, it started using the trade mark ‘SUN PHARMA’ in respect of its medicinal and pharmaceutical preparations. These were used as house marks on labels, cartons and other packaging material, as also publicity and promotional material in connection with the medicinal and pharmaceutical preparations for the plaintiff.

4. The plaintiff has registration for its trade mark (device mark) ‘SUN’ since 4^th August 1983 in class 5 for medicinal and pharmaceutical preparations with user claim since 1978. The plaintiff also has registration for the trade marks (word marks) ‘SUN PHARMA’ and ‘SUNPHARMA’ since 1^st June 2007 and 28^th June 2007 respectively, with user claim from 1993, again in the same class and for the same goods. The plaintiff also has registration for a number of trade marks that prefix or suffix ‘SUN’ in respect of its various medicinal and pharmaceutical preparations. These registrations date back to the year 1983 onwards. On the basis of such registration of trade marks, the plaintiff claims exclusive right to the same. It is emphatically claimed that such registered trade marks have been used openly and extensively by the plaintiff over the aforesaid long period of time.

5. The plaintiff further claims that it has garnered substantial goodwill in the context of the said trade marks ‘SUN’/ ‘SUN PHARMA’