Sun Pharma Laboratories Limited Vs. United Biotech Private Limited. : 04.05.2026: Commercial IP Suit (L) No. 19268 of 2025:2026:BHC-OS:11436 :BombHC: Hon'ble Justice Sharmila U. Deshmukh
Sun Pharma claimed exclusive rights in the trademark "OCTRIDE" (used for Octreotide Acetate injections since 1998) and sought injunction against United Biotech’s use of the similar mark "OTIDE" for the identical drug. Sun Pharma alleged infringement and passing off, asserting long use, substantial sales, and goodwill. United Biotech defended its adoption of "OTIDE" since 1999, claiming honest adoption derived from the International Non-Proprietary Name (INN) of the molecule Octreotide, continuous use, registration of its mark, and co-existence in the market without confusion. The company argued delay, acquiescence, and lack of prima facie case by Sun Pharma.
Decision: The Court dismissed Sun Pharma’s application for ad-interim injunction and vacated the earlier ex-parte ad-interim order. The suit will proceed to trial.
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Introduction
In this ruling on trademark protection in the pharmaceutical sector, the Bombay High Court has granted to grant an interim injunction to Sun Pharma against United Biotech’s use of a similar mark for the same medicine. The decision highlights the delicate balance courts must strike between protecting established brand goodwill and respecting long market use, especially when marks are derived from generic drug names. It also underscores the high threshold required to challenge a registered trademark at the interim stage.
Factual and Procedural Background
Sun Pharma Laboratories Limited, a major pharmaceutical company, claimed rights over the trademark “OCTRIDE” used for injections containing Octreotide Acetate, a drug prescribed for serious conditions like acromegaly and certain tumors. The company traced its rights back to the late 1990s through predecessors and asserted substantial sales and reputation across India and globally.
United Biotech Private Limited, another pharmaceutical manufacturer with exports to several countries, had been selling the same drug under the mark “OTIDE” for many years. Both marks are derived from the International Non-Proprietary Name (INN) of the active ingredient “Octreotide.” Sun Pharma filed a commercial intellectual property suit seeking injunction against United Biotech for trademark infringement and passing off. An ex-parte ad-interim injunction was initially granted in July 2025, which United Biotech later challenged by filing an application to vacate it.
Dispute
The core dispute centered on whether Sun Pharma could stop United Biotech from using “OTIDE.” Sun Pharma argued phonetic and visual similarity between “OCTRIDE” and “OTIDE” would cause confusion among doctors, pharmacists, and patients. It claimed prior adoption, registration, and extensive goodwill. United Biotech countered that it had honestly adopted and used its mark since 1999, obtained registration, and both marks had co-existed in the market for years without actual confusion. The defendant also raised issues of delay by Sun Pharma.
Reasoning and Analysis of the Judge
The court carefully examined the rival marks, their registrations, market use, and applicable legal principles. The judge noted that both parties hold trademark registrations, creating a situation where neither can easily claim exclusive rights against the other without strong grounds.
On infringement, the court held that Sun Pharma failed to demonstrate that United Biotech’s registration was ex-facie illegal or fraudulent. The judge referred to the high threshold laid down by the Full Bench of the Bombay High Court in Lupin Limited vs. Johnson and Johnson MANU/MH/3536/2015. Since both marks derive from the same generic molecule name, the registration could not be treated as shocking the conscience of the court.
For passing off, the court applied the classic trinity test of goodwill, misrepresentation, and damage. While acknowledging Sun Pharma’s sales and reputation, the judge found that United Biotech had been using its mark subsequent to Plaintiff. The court emphasized that in pharmaceutical cases, the threshold for confusion is lower due to public health concerns.
The judge discussed several important precedents, including Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. on heightened scrutiny in pharma trademarks, Wander Ltd. vs. Antox India Pvt. Ltd 1990 Supp SCC 727]. on balance of convenience, and S. Syed Mohideen vs. P. Sulochana Bai ((2016) 2 SCC 683) on the irrelevance of fraudulent intent in passing off.
Final Decision of the Court
The Bombay High Court confirmed the interim injunction granted earlier order dated 29.07.2025.
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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