The Bombay High Court has held that where a registered trade mark is subsumed in the defendant’s trade name or house mark, with only a minor prefix added, and the defendant uses that mark in relation to the same class of goods, infringement under Section 29 of the Trade Marks Act is made out, including under Section 29(5), because use of a registered trade mark as part of a trade name is sufficient to attract infringement. The Trade Marks Act does not create a separate immunity for “house marks”, and the defendant cannot avoid liability by characterizing the impugned mark as merely a trading style.
The Court clarified that in pharmaceutical matters, the test of deceptive similarity must be applied strictly, and the addition or deletion of a few letters does not avoid infringement where the essential registered mark remains embedded in the impugned mark and is likely to confuse a person of average intelligence and imperfect recollection.
The High Court further held that export of goods bearing the impugned mark does not defeat an infringement or passing off action, since by virtue of Section 56, application of the mark in India to goods for export constitutes use in India. It also held that in a commercial suit, documents not specifically denied in the manner required under the CPC as applicable to commercial courts stand admitted as to existence and contents, and can validly support proof of goodwill in a passing off action.
The suit was accordingly decreed in favour of Sun Pharma (the plaintiff) in terms of injunctions, and the Court held the defendant to be a first-time knowing infringer, awarding partial costs of Rs.10 lakhs to the plaintiff, while declining rendition of accounts and unquantified damages for lack of specific proof.
A Single Judge Bench of Justice Manish Pitale observed that once the plaintiff’s registrations were undisputed, the plaintiff was entitled to the statutory rights under Section 28 of the Trade Marks Act, 1999, including exclusive use in relation to the registered goods. The Bench further observed that the Trade Marks Act does not define “house mark” separately and makes no distinction between a trade mark and a house mark where the mark is capable of distinguishing goods or services of one person from another.
The Bench rejected the defendant’s contention that Sections 29(1) to 29(4) were inapplicable because “ABSUN” / “ABSUN PHARMA” were only house marks or trade names. It noted that the defendant itself used the marks in a stylized manner on packaging, claimed them as a logo, and asserted monopoly over “ABSUN PHARMA”; therefore, the defendant could not deny that the impugned marks functioned as trademarks.
On Section 29(5), the Bench held that the provision directly applied because the defendant had used the registered marks of the plaintiff as part of its trade name. In “ABSUN” / “ABSUN PHARMA”, the words “SUN” / “SUN PHARMA” were subsumed and only the letters “AB” were prefixed. The Court therefore rejected the argument that Section 29(5) would apply only if the registered mark was used in its exact standalone form and observed that once a registered trade mark is used as part of a trade name, the aspect of deceptive similarity necessarily arises.
The Bench also held that Sections 29(6) and 29(7) were attracted because the defendant affixed the impugned marks to goods and packaging, exported goods under those marks, and used them on business papers and advertising material. This factual position was not denied by the defendant.
In applying the infringement test, the Bench observed that the defendant’s marks were very close to the plaintiff’s registered marks because only the letters “AB” had been added. The Bench held that merely prefixing “AB” did not make the defendant’s marks distinct and that a person of average intelligence and imperfect recollection was likely to be confused, especially since both parties dealt in medicinal and pharmaceutical products, where a stricter approach is required.
The Bench treated the defendant’s plea of honest adoption as irrelevant once infringement was established. It further noted that the defendant had not searched the trademarks register before adoption and that the defendant’s witness admitted knowledge of the plaintiff since around 1995, despite adopting the impugned marks in 2007. On that basis, the Bench observed that there was even a measure of dishonesty in the adoption.
The defence that the defendant sold products only in African markets was rejected in view of Section 56 of the Trade Marks Act. The Bench held that application of the mark in India to goods meant for export amounted to use in India for the purposes of infringement, and therefore export-only use could not rescue the defendant.
On passing off, the Bench held that the plaintiff had sufficiently proved goodwill through labels, packaging material, and Chartered Accountant certificates as to sales and promotional expenditure. The Bench emphasized that this was a commercial suit, that the defendant had failed to specifically deny the documents and their contents as required under the CPC regime applicable to commercial courts, and that the documents therefore stood admitted.
The Bench further rejected the defendant’s pleas that “SUN” was common to trade and that the plaintiff had acquiesced. It held that the burden to prove common-to-trade use was heavy and required substantial evidence of extensive third-party use, including sales data, which was absent.
Briefly, plaintiff, Sun Pharmaceutical Industries Ltd., filed the suit seeking permanent injunction against the defendant’s use of the marks “ABSUN” / “ABSUN PHARMA” on the ground that they infringed the plaintiff’s registered marks “SUN” / “SUN PHARMA” and also amounted to passing off. The suit had initially also included dispute regarding “E-MIST” vis-à-vis “EYEMIST”, but the controversy at final hearing remained confined to “SUN” / “SUN PHARMA” versus “ABSUN” / “ABSUN PHARMA”, since the defendant stated that it had not used and would not use “E-MIST”.
The plaintiff was engaged in manufacture and sale of medicinal and pharmaceutical preparations and claimed continuous use of the mark “SUN” since 1978 and “SUN PHARMA” since 1993 as house marks on labels, cartons, packaging material, and promotional material. The plaintiff held registration for the device mark “SUN” since August 4, 1983 in Class 5, and for the word marks “SUN PHARMA” and “SUNPHARMA” since June 1, 2007 and June 28, 2007 respectively, with user claim from 1993.
According to the plaintiff, it discovered in December 2012 that the defendant was using the marks “ABSUN” and “ABSUN PHARMA” for medicinal and pharmaceutical products. A cease-and-desist notice was issued on December 28, 2012, to which the defendant replied on January 5, 2013 stating that “ABSUN PHARMA” was its brand name and trading style and was not deceptively similar to the plaintiff’s marks.
The defendant’s case was that “ABSUN” was coined from the names of the proprietor’s son, Abheejit (“AB”), and wife, Sunita (“SUN”); that the adoption was honest; that “SUN” referred to the heavenly body and could not be exclusively appropriated; and that its products were exported only to African countries and not sold in India. The defendant also contended that “ABSUN” / “ABSUN PHARMA” were only house marks or trading style and not trade marks for the purposes of infringement analysis.
Appearances:
Advocates Hiren Kamod, Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, Jaanvi Chopra and Rakshita Singh, for the Plaintiff/ Applicant
Advocates Rashmin Khandekar, Anand Mohan and Lalit Nair, for the Defendant
