The Bombay High Court has allowed an appeal filed by Sun Pharmaceutical Industries Ltd., setting aside a Single Judge’s order that had refused interim relief in a trademark dispute involving the marks “RACIRAFT” and “ESIRAFT.”
The appellant, a leading pharmaceutical company, claimed infringement and passing off of its registered trademark “RACIRAFT,” used for a drug treating heartburn and indigestion. It alleged that the respondent’s mark “ESIRAFT,” used for identical pharmaceutical products, was deceptively similar and likely to cause confusion.
While an ad-interim injunction was initially granted, the Single Judge later vacated it, holding that no prima facie deceptive similarity existed. This finding was challenged before the Division Bench.
Reversing the Single Judge, the Division Bench held that the correct test for deceptive similarity in pharmaceutical products particularly the stricter standard laid down in Cadila Health Care had not been properly applied.
The Court emphasised that trademarks must be compared as a whole, and not dissected syllable-by-syllable. It found that the Single Judge erred in isolating parts of the marks and discounting the common element “RAFT,” instead of assessing the overall phonetic impression.
Applying the test of an average consumer with imperfect recollection, the Court held that “RACIRAFT” and “ESIRAFT” are phonetically similar and capable of causing confusion, particularly in India’s multilingual context where pronunciation variations are common.
The Bench further highlighted that in pharmaceutical products, even a slight possibility of confusion is sufficient, as it may have serious public health consequences. It noted that mispronunciation or hurried speech could easily lead to one drug being mistaken for the other.
Rejecting arguments that “RAFT” is generic and should be excluded, the Court held that the marks must still be considered in their entirety, and when so viewed, the similarity is “striking” and likely to deceive.
Concluding that the Single Judge had misapplied settled principles, the Division Bench held that failure to apply the correct test amounted to legal error. It accordingly set aside the impugned order and granted interim protection, restraining use of the impugned mark.
Appearances:
Mr. Hiren Kamod a/w Mr.Prem Khullar, Mr.Rahul Dhote, Mr. Shwetank Tripathi, Ms.Radhika Mehta and Vidit Desai i/b ANM Global, for the Appellant.
Mr. Rashmin Khandekar a/w Mr.Anand Mohan, Mr. Ashutosh Kane, Ms.Vedangi Soman and Ms. Avani Panchabhai i/b W.S. Kane & Co. for Respondent No.2.
Mr. Nitin Pawar, Court Receiver
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