The Bombay High Court has clarified that prefixing a minor element to a well-established pharmaceutical house mark does not evade infringement liability under the Trade Marks Act, 1999. In a significant ruling, the Court held that using 'ABSUN PHARMA' in relation to pharmaceutical goods infringes the registered mark 'SUN PHARMA', even when the goods are exclusively exported, and regardless of the defendant's claimed honest adoption.
Background & Facts
The Dispute
The plaintiff, Sun Pharmaceutical Industries Ltd., a leading Indian pharmaceutical company, filed a commercial suit seeking permanent injunction against the defendant, Satej M. Katekar, proprietor of Absun Pharma, for using the trade name 'ABSUN' and 'ABSUN PHARMA' on pharmaceutical products. The plaintiff alleged that the defendant's mark was deceptively similar to its registered house marks 'SUN' and 'SUN PHARMA', and that the defendant was passing off its goods as those of the plaintiff.
Key Facts
- The plaintiff began using the mark 'SUN' in 1978 and 'SUN PHARMA' from 1993 for medicinal and pharmaceutical preparations.
- The plaintiff holds registered trademarks:
- Device mark 'SUN' (Registration No. 408870) since 4th August 1983
- Word mark 'SUN PHARMA' (Registration No. 1573582) since 1st June 2007
- Word mark 'SUNPHARMA' (Registration No. 1564369) since 28th June 2007
- The defendant adopted the mark 'ABSUN PHARMA' in 2007.
- The defendant claimed the mark was coined from 'AB' (for his son Abheejit) and 'SUN' (for his wife Sunita).
- The defendant asserted that all its products were exported to African countries and none were sold in India.
- The plaintiff issued a cease and desist notice on 28th December 2012.
- The defendant replied on 5th January 2013, refusing to discontinue use.
- The suit was filed on 2013.
- The plaintiff submitted certified financial statements from Chartered Accountants showing substantial revenue and promotional expenditure linked to 'SUN' and 'SUN PHARMA'.
- The defendant did not deny the authenticity or contents of these documents in its written statement or during cross-examination.
- The defendant attempted to file an affidavit on 2nd January 2026, claiming it had changed its trade name to 'ABSUN REMEDIES' in October 2025 - this was rejected by the Court.
Procedural History
- 2013: Commercial IP Suit No. 111 of 2013 filed before the Bombay High Court (Commercial Division).
- 2013: Notice of Motion No. 27 of 2013 filed seeking interim injunction; Court restrained use of 'E-MIST' after defendant disclaimed intent to use it.
- 1st July 2019: Seven issues framed by the Court.
- 2025: Final arguments concluded.
- 3rd February 2026: Judgment reserved.
- 22nd April 2026: Judgment pronounced.
The Parties' Positions
Plaintiff (Sun Pharmaceutical Industries Ltd.):
- Argued that 'ABSUN' and 'ABSUN PHARMA' are visually, phonetically, and structurally deceptively similar to 'SUN' and 'SUN PHARMA'.
- Contended that Section 29(5) of the Trade Marks Act applies because the defendant used the plaintiff’s registered mark as part of its trade name.
- Relied on Section 56 to assert that export of goods from India constitutes use in India.
- Submitted that goodwill was established through decades of use, financial records, and advertising.
- Asserted that the defendant’s failure to search the trademark register and its awareness of the plaintiff since 1995 demonstrated dishonest adoption.
- Claimed damages of Rs. 10 lakhs and costs.
Defendant (Satej M. Katekar):
- Claimed 'ABSUN PHARMA' was a coined term, honestly adopted from family names.
- Argued that Section 29(1)-(4) do not apply because 'ABSUN PHARMA' is a trade name, not a trademark.
- Contended that Section 29(5) requires exact use of the registered mark, not a variation.
- Asserted that no goods were sold in India, so no passing off could occur.
- Challenged the plaintiff’s financial certificates as unproved, since Chartered Accountants were not examined.
- Claimed acquiescence by the plaintiff due to long delay in filing suit.
- Sought to rely on the change of trade name to 'ABSUN REMEDIES' as a defense.
Relief Sought
The plaintiff sought:
- Permanent injunction against use of 'ABSUN' and 'ABSUN PHARMA'.
- Permanent injunction against use of 'E-MIST' (already conceded by defendant).
- Damages of Rs. 10 lakhs.
- Rendition of accounts.
- Costs under Section 35 of the CPC.
The Legal Issue
The central question was whether the use of 'ABSUN' and 'ABSUN PHARMA' constitutes infringement of the plaintiff’s registered trade marks 'SUN' and 'SUN PHARMA' under Section 29(5) of the Trade Marks Act, 1999, and whether export of goods outside India negates liability under Section 56.
Arguments Presented
For the Appellant/Petitioner
The plaintiff argued that Section 29(5) applies when a registered mark is used as part of a trade name, even if prefixed or suffixed. It cited Aglowmed Limited v. Aglow Pharmaceuticals and Indchemie Health v. Naxpar Labs to show that minor alterations do not avoid infringement. It emphasized that the defendant’s use of 'SUN' within 'ABSUN PHARMA' was sufficient to trigger infringement. The plaintiff relied on Cadila Pharmaceuticals v. Sami Khatib to establish that export from India constitutes use under Section 56. It submitted that its goodwill was proven through decades of use, financial affidavits, and advertising, and that the defendant’s failure to deny these documents under Order VIII Rules 3 and 5 of the CPC rendered them admitted. It further argued that the defendant’s awareness of the plaintiff since 1995 and failure to conduct a trademark search demonstrated bad faith.
For the Respondent/State
The defendant contended that Section 29(5) requires exact use of the registered mark, not a modified version. It relied on Raymond Ltd. v. Raymond Pharma and CIPLA Ltd. v. CIPLA Industries to argue that trade names are distinct from trademarks. It claimed that since no goods were sold in India, there could be no confusion or passing off. It challenged the plaintiff’s financial certificates as unproved, citing Om Prakash Berlia v. UTI and Pukh Raj Bumb v. Jagannath Naik. It asserted that the plaintiff had acquiesced due to the 12-year delay in filing suit and that the change to 'ABSUN REMEDIES' rendered the suit infructuous.
The Court's Analysis
The Court rejected the defendant’s narrow interpretation of Section 29(5). It held that the phrase "uses such registered trade mark, as his trade name or part of his trade name" clearly encompasses cases where the registered mark is embedded within a longer name. The Court observed:
"The defendant is indeed using the registered trade marks of the plaintiff 'SUN'/ 'SUN PHARMA', as part of its trade name and hence, the defendant cannot escape liability, in the event it is established that a case of 'infringement' is made out by the plaintiff."
The Court distinguished Meher Distilleries and Astra Pharmaceuticals, noting they dealt with excise law and product vs. house mark distinctions, not infringement under the Trade Marks Act. It held that Section 56 explicitly deems use of a mark on goods exported from India as use in India for all purposes under the Act, including infringement and passing off. The Court affirmed:
"The plain language of section 56... constitutes the application in India of trade marks even to goods to be exported from India as use of the trade mark in relation to those goods for any purpose for which such use is material under the Act."
On goodwill, the Court emphasized that under the Commercial Courts Act, 2015, failure to deny documents under Order VIII Rules 3 and 5 results in automatic admission. The defendant’s silence on the Chartered Accountant certificates, coupled with no cross-examination on them, rendered them conclusive evidence of goodwill. The Court noted:
"The defendant failed to deny the existence and contents of the certificates... Hence, all such documents exhibited on record stood admitted as regards their existence as well as their contents."
The Court dismissed the defense of honest adoption, citing Charak Pharma v. Glenmark:
"The honesty of adoption is wholly irrelevant, as held by this Court... the moment it is found that the impugned marks are infringing the registered marks of the plaintiff, the consequences must follow."
The Court also rejected the defendant’s late change of trade name to 'ABSUN REMEDIES', holding it was a tactic to evade the injunction, citing R.R. Oomerbhoy v. Court Receiver. It found the defendant to be a "first-time knowing infringer" due to its awareness of the plaintiff since 1995 and failure to search the register.
The Verdict
The plaintiff succeeded on all counts. The Court decreed the suit and granted a permanent injunction restraining the defendant from using 'ABSUN' or 'ABSUN PHARMA' in any form. The Court awarded costs of Rs. 10 lakhs to the plaintiff under Section 35 of the CPC. The Court rejected the prayer for rendition of accounts due to lack of a framed issue and no admission of turnover figures by the defendant. The defendant was directed to comply with the injunction within four weeks of the judgment date.
What This Means For Similar Cases
Use of Registered Mark as Part of Trade Name Is Infringement
- Practitioners must now treat any incorporation of a registered mark - even as a prefix or suffix - as prima facie infringement under Section 29(5).
- Minor alterations like adding 'AB', 'EX', or 'PLUS' to a well-known mark will not avoid liability.
- The focus is on the overall impression and likelihood of confusion, not technical distinctions.
Export Does Not Shield from Infringement Liability
- Section 56 now clearly establishes that applying a mark to goods in India for export constitutes use in India.
- Pharmaceutical companies exporting to Africa, Southeast Asia, or Latin America cannot claim immunity from infringement suits in India.
- Plaintiffs may now rely on export activity to establish goodwill and infringement.
Procedural Compliance in Commercial Suits Is Critical
- Failure to deny documents under Order VIII Rules 3 and 5 of the CPC results in automatic admission of their contents.
- In commercial suits, silence on financial documents = acceptance of their evidentiary value.
- Practitioners must file formal admissions/denials within the stipulated time - no room for late objections.
Honest Adoption Is Not a Defense
- Courts will not entertain claims of honest intent if the mark is substantially similar to a registered mark.
- The burden shifts to the defendant to conduct a trademark search before adoption.
- Awareness of the plaintiff’s mark prior to adoption will be treated as bad faith.
Acquiescence Requires Positive Evidence
- Acquiescence cannot be presumed from delay alone.
- The defendant must prove the plaintiff had actual knowledge and took no action - mere silence is insufficient.
- Cross-examination revealing ignorance of the term 'acquiescence' will destroy this defense.
Costs Are Awarded for Knowing Infringement
- First-time knowing infringers may face partial costs (Rs. 10 lakhs in this case).
- Courts are increasingly using costs as a deterrent against deliberate infringement.
- Conduct during litigation, including last-minute name changes, will be viewed as aggravating factors.
