Sun Pharmaceutical Industries Ltd. Vs. Satej M. Katekar
Court: High Court of Judicature at Bombay (Commercial Division)
Case No.: Commercial IP Suit No. 111 of 2013
Coram: Justice Manish Pitale
Date of Judgment: April 22, 2026
1. Introduction and Facts
The Plaintiff, Sun Pharmaceutical Industries Ltd., a leading manufacturer of medicinal and pharmaceutical preparations, filed a suit for permanent injunction and damages against the Defendant, Satej M. Katekar (Proprietor of Absun Pharma). The Plaintiff alleged that the Defendant’s use of the marks 'ABSUN' and 'ABSUN PHARMA' infringed upon its registered house marks 'SUN' and 'SUN PHARMA'. Additionally, the Plaintiff sought to restrain the Defendant from using the mark 'E-MIST', alleging it was deceptively similar to its registered trademark 'EYEMIST'.
The Plaintiff has held registrations for the device mark 'SUN' since 1983 (with user claim since 1978) and word marks 'SUN PHARMA' since 2007 (with user claim since 1993). The Defendant contended that 'ABSUN' was honestly adopted by combining alphabets from the names of his son (Abheejit) and wife (Sunita).
2. Key Issues
- Whether the Defendant’s use of 'ABSUN'/'ABSUN PHARMA' infringed the Plaintiff’s registered marks under the Trade Marks Act, 1999.
- Whether such use constituted passing off.
- Whether the trademark 'SUN' is common to the pharmaceutical trade.
- Whether the Plaintiff had acquiesced to the Defendant’s use of the marks.
3. Arguments and Observations
- Infringement: The Plaintiff argued that prefixing 'AB' to 'SUN' did not eliminate deceptive similarity, as the marks must be compared as a whole. The Defendant argued that Section 29(5) only applies if the exact registered mark is used as a trade name. The Court rejected this, clarifying that Section 29(5) also covers use of the mark as "part of" a trade name.
- Export Deemed as Domestic Use: The Defendant argued they only exported products to Africa and did not sell in India. The Court applied Section 56 of the Trade Marks Act, ruling that applying a trademark to goods for export constitutes "use" of the trademark in India.
- Proof of Goodwill: The Court upheld the validity of Chartered Accountant certificates for sales and promotional expenses as evidence of goodwill, noting that in a Commercial Suit, the Defendant’s failure to specifically deny these documents resulted in their admission under Order VIII Rules 3 and 5 of the CPC.
4. Final Judgment
The High Court decreed the suit in favor of the Plaintiff. Key findings included:
- Permanent Injunction: The Defendant was restrained from using the marks 'ABSUN', 'ABSUN PHARMA', and 'E-MIST'.
- Infringement & Passing Off: The Court found the Defendant to be a "first-time knowing infringer" as they were aware of the Plaintiff's marks since 1995 but failed to conduct a registry search before adoption.
- Costs: In addition to the injunction, the Court awarded partial costs of Rs. 10 lakhs to the Plaintiff, citing similar precedents in commercial litigation.
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