Bombay High Court
Sun Pharmaceutical Industries Ltd vs Satej M Katekar Prop Of Absun Pharma on 22 April, 2026
Author: Manish Pitale
Bench: Manish Pitale
2026:BHC-OS:10275
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL IP SUIT NO. 111 OF 2013
WITH
NOTICE OF MOTION NO. 27 OF 2013
IN
COMMERCIAL IP SUIT NO. 111 OF 2013
Sun Pharmaceutical Industries Ltd. ... Plaintiff
Versus
Satej M. Katekar, Proprietor of Absun Pharma ... Defendant
******
Mr. Hiren Kamod a/w Mr. Nishad Nadkarni, Mr. Aasif Navodia, Ms.
Khushboo Jhunjhunwala, Ms. Jaanvi Chopra and Ms. Rakshita Singh
i/by Khaitan and Co. for the Plaintiff/Applicant.
Mr. Rashmin Khandekar a/w Mr. Anand Mohan and Mr. Lalit Nair for
Defendant.
******
CORAM : MANISH PITALE, J.
RESERVED ON : 3rd FEBRUARY 2026
PRONOUNCED ON : 22nd APRIL 2026
JUDGMENT :
. The plaintiff-Sun Pharmaceutical Industries Ltd. has filed this
suit, seeking a decree of permanent injunction to restrain the
defendant from using the impugned trade mark/trade name ‘ABSUN’/
‘ABSUN PHARMA’ on the ground that it infringes upon the
registered trade mark/house mark of the plaintiff ‘SUN’/ ‘SUN
PHARMA’. The plaintiff has also sought a decree of permanent
injunction restraining the defendant from using the impugned mark
‘ABSUN’/ ‘ABSUN PHARMA’, so as to pass off its goods as those of
the plaintiff. The plaintiff has further sought similar decree of
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permanent injunction regarding infringement and passing off
concerning the use of trade mark ‘E-MIST’ used by the defendant in
the context of the registered trade mark ‘EYEMIST’. The plaintiff
has further claimed damages.
2. The controversy in the present suit is now limited to the marks
‘SUN’/ ‘SUN PHARMA’ versus ‘ABSUN’/ ‘ABSUN PHARMA‘, for the
reason that when Notice of Motion (Lodging) No.681 of 2013 was
pressed on behalf of the plaintiff, a statement was made on behalf of
the defendant that it had never used the trade mark ‘E-MIST’ and
that it did not intend to do so until disposal of the suit. In view of
the statement made on behalf of the defendant, on the said date, this
Court further restrained the defendant from using the mark ‘E-
MIST’ or any other deceptively similar mark until disposal of the
suit. Even at the stage of final hearing, the said stand of the
defendant was reiterated and therefore, the suit deserves to be
decreed in terms of prayer clauses (d) and (e), pertaining to reliefs in
the context of the registered trade mark of the plaintiff ‘EYEMIST’,
particularly in view of the fact that the defendant gave up any
contest with regard to the same. But, during the final hearing of the
suit, the rival parties made submissions in the context of their
respective stands pertaining to the said trade marks ‘SUN’/ ‘SUN
PHARMA’ and ‘ABSUN’/ ‘ABSUN PHARMA’.
3. The plaintiff is a company carrying on business of manufacture
and sale of medicinal and pharmaceutical preparations. Its
predecessor was a proprietary concern, which subsequently was
converted into a partnership firm and eventually, registered as the
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plaintiff company. Since the year 1978, the predecessor of the
plaintiff and thereupon, the plaintiff openly, regularly and
extensively used the trade mark ‘SUN’ and since 1993, it started
using the trade mark ‘SUN PHARMA’ in respect of its medicinal and
pharmaceutical preparations. These were used as house marks on
labels, cartons and other packaging material, as also publicity and
promotional material in connection with the medicinal and
pharmaceutical preparations for the plaintiff.
4. The plaintiff has registration for its trade mark (device mark)
‘SUN’ since 4th August 1983 in class 5 for medicinal and
pharmaceutical preparations with user claim since 1978. The
plaintiff also has registration for the trade marks (word marks) ‘SUN
PHARMA’ and ‘SUNPHARMA’ since 1st June 2007 and 28th June
2007 respectively, with user claim from 1993, again in the same class
and for the same goods. The plaintiff also has registration for a
number of trade marks that prefix or suffix ‘SUN’ in respect of its
various medicinal and pharmaceutical preparations. These
registrations date back to the year 1983 onwards. On the basis of
such registration of trade marks, the plaintiff claims exclusive right to
the same. It is emphatically claimed that such registered trade marks
have been used openly and extensively by the plaintiff over the
aforesaid long period of time.
5. The plaintiff further claims that it has garnered substantial
goodwill in the context of the said trade marks ‘SUN’/ ‘SUN
PHARMA’ over long period of time and in support thereof, it has
relied upon certificates issued by Chartered Accountants to show the
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extent of revenue generated from medicinal and pharmaceutical
products bearing the said trade marks. It is the case of the plaintiff
that the sales revenue and the promotional expenses, also certified by
Chartered Accountants, clearly demonstrate the extensive use of the
said trade marks/house marks in respect of the medicinal and
pharmaceutical preparations of the plaintiff.
6. It is the case of the plaintiff that some time in the third week of
December 2012, it came across medicinal and pharmaceutical
preparations of the defendant bearing the house marks ‘ABSUN’ and
‘ABSUN PHARMA’. As the plaintiff realized that the impugned house
mark/trade name of the defendant was infringing upon the registered
trade marks of the plaintiff and that the defendant was attempting to
pass off its medicinal and pharmaceutical preparations as those of the
plaintiff, on 28th December 2012, the plaintiff issued a cease and
desist notice to the defendant. On 5 th January 2013, the defendant
sent a reply to the same and claimed that it was using the words
ABSUN PHARMA as its brand name and trading style. It was
claimed that the name ABSUN PHARMA was not deceptively similar
to the registered trade marks of the plaintiff and thereupon, the
defendant refused to comply with the demand made by the plaintiff
in its cease and desist notice.
7. It is in this backdrop that the plaintiff filed the present suit for
seeking the aforementioned reliefs. The defendant filed its written
statement denying the claims of the plaintiff and submitted that the
trade mark/house mark ‘ABSUN’/ ‘ABSUN PHARMA’ was adopted
and coined from the alphabets ‘AB’ from the name of the son of the
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proprietor of the defendant i.e. Abheejit and the alphabets ‘SUN’
from the name of his wife i.e. ‘Sunita’. It was further claimed that the
said trade mark/house mark ‘ABSUN’/ ‘ABSUN PHARMA’ did not
infringe upon the registered trade marks of the plaintiff i.e. ‘SUN’/
‘SUN PHARMA’. It was submitted that there was no question of
dishonest adoption of the trade mark/house mark of the defendant.
8. Apart from this, it was submitted that the word ‘SUN’ pertains
to the heavenly body, which gives energy and therefore, as per
Section 9 of the Trade Marks Act, 1999, it could not have been
registered and it cannot be the exclusive intellectual property of any
person or party. It was further stated that all the medicinal and
pharmaceutical preparations of the defendant were exported to
African countries and not a single such preparation was sold in India,
thereby claiming that the defendant could not be accused of passing
off its products as those of the plaintiff. On the basis of such
pleadings in the written statement, the defendant resisted the reliefs
claimed by the plaintiff.
9. In the light of the rival pleadings, by order dated 1 st July 2019,
the following issues were framed:-
(1) Whether defendant has infringed plaintiffs registered
house mark SUN/SUN PHARMA bearing registration
nos.408870, 1573582 and 1564369, all in class 05 by the
use of the trade mark ABSUN/ABSUN PHARMA in respect
of medicinal and pharmaceutical preparations?
(2) Whether defendant is passing off its medicinal and
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comip-111.13.docmanufacturing and/or selling and/or exporting and/or
marketing of medicinal and pharmaceutical preparations as
and for plaintiff ‘s medicinal and pharmaceutical
preparations and/or plaintiff ‘s business of manufacturing
and/or selling and/or exporting and/or marketing of
medicinal and pharmaceutical preparations by the use of
the impugned trading name and mark ABSUN/ ABSUN
PHARMA?
(3) Whether defendant has infringed plaintiff ‘s registered
trade mark “EYEMIST” bearing registration no.1248761 in
class 05 by the use of the trade mark “E-MIST” in respect
of medicinal and pharmaceutical preparations?
(4) Whether defendant is passing off its medicinal and
pharmaceutical preparations and/or its business of
manufacturing and/or selling and/or exporting and/or
marketing of medicinal and pharmaceutical preparations as
and for plaintiff ‘s medicinal and pharmaceutical
preparations and/or plaintiff ‘s business of manufacturing
and/or selling and/or exporting and/or marketing of
medicinal and pharmaceutical preparations by the use of
the impugned trade mark “E-MIST”?
(5) Whether defendant proves that plaintiff ‘s said trade
mark “SUN” is common to the trade?
(6) Whether defendant proves that plaintiff has
acquiesced in the use of the impugned trading name/mark
ABSUN/ABSUN PHARMA by defendant?
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plaintiff, the defendant was not entitled to claim that the
similarity or deceptive similarity had been eliminated. It was
emphasized that the rival marks in such cases are required to
be compared as a whole, with attention being given to the
common features rather than the differences, further
emphasizing that trivial and non-distinctive differences would
not sufficiently distinguish the impugned marks.
(c) It was further submitted that since the products of the plaintiff
and defendant concern medicinal and pharmaceutical
preparations, a stricter approach is required to be adopted
while applying the test to consider the possibility of confusion
and the test obviously is keeping in mind an ordinary person
of average intelligence and imperfect recollection. It was
submitted that the minute difference of only the alphabets ‘AB’
being prefixed to the registered trade marks of the plaintiff
would certainly create confusion as otherwise the impugned
trade marks/house marks of the defendant are visually,
phonetically and structurally very close and deceptively similar
to the registered trade marks of the plaintiff. In this regard,
reliance was placed on judgments of this Court in the cases of
Indchemie Health Specialities Pvt. Ltd. vs. Naxpar Labs Pvt.
Ltd. & Anr., 2001 SCC OnLine Bom 868 and Aglowmed
Limited vs. Aglow Pharmaceuticals Private Limited, 2019 SCC
OnLine Bom 1425.
(d) It was submitted that the defendant’s claim that it had honestly
and bonafide adopted its marks/trade name ABSUN/ABSUN
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PHARMA, could be of no consequence as it could not be a
defence in an action for infringement and/or passing off. It was
submitted that honest adoption is wholly irrelevant as a
defence in such cases. In this context, reliance was placed on
the judgments of this Court in the cases of Cadila
Pharmaceuticals Limited vs. Sami Khatib of Mumbai, 2011
SCC OnLine Bom 484, Charak Pharma Pvt. Ltd. vs. Glenmark
Pharmaceuticals Ltd., 2014 SCC OnLine Bom 98 and
Aglowmed Limited vs. Aglow Pharmaceuticals Private Limited
(supra).
(e) It was emphasized that the defendant was duty bound to have
first examined the register of trade marks to see if any marks
similar to its proposed mark were found in the register. By
inviting attention of this Court to the responses given by the
sole witness for the defendant to question Nos.8 and 9 in
cross-examination, it was submitted that the defendant had
conceded that no such enquiry was made in the register. In this
context, reliance was placed on judgment of this Court in the
case of Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd.,
2001 SCC OnLine Bom 1176. It was submitted that the
defendant could not escape liability by claiming that its marks
ABSUN/ABSUN PHARMA were only being used as house
marks and trade names. It was emphasized that under the
Trade Marks Act, there is no such distinction made between a
trade mark and house mark and a mark is recognized as a
trade mark the moment it is capable of distinguishing the
goods of one person from those of the others. It was also
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of this Court in the case of Pizza Hut International LLC &
Ors. vs. Pizza Hut India Pvt. Ltd., 2002 SCC OnLine Bom
688. It was submitted that the aforesaid contention pertaining
to Section 29(5) of the Trade Marks Act, is in addition to the
stated case of the plaintiff that in the facts and circumstances
of the present case, the defendant had clearly infringed upon
the registered trade marks of the plaintiff under Section 29(1)
and (2) of the Trade Marks Act. In addition, it was submitted
that Section 29(6) and (7) of the Trade Marks Act are also
attracted, in the facts and circumstances of the present case,
for the reason that the defendant was affixing its trade
name/house mark ABSUN/ABSUN PHARMA on its goods and
packaging, as also exporting goods under the said marks and
using them on its business papers and advertising material.
(g) On the stand taken by the defendant that it cannot be held
liable for infringement, as it exports all its goods to countries
in Africa with not a single product is sold in India, the learned
counsel for the plaintiff submitted that Section 56 of the Trade
Marks Act, clearly demonstrates that use of a trade mark on
goods exported outside India, in relation to goods traded in
India, shall be deemed to constitute use of the trade mark in
India. In this regard, reliance was placed on judgment of this
Court in the case of Cadila Pharmaceuticals Limited vs. Sami
Khatib of Mumbai (supra).
(h) On the defendant’s claim that the mark SUN was common to
trade in respect of medicinal and pharmaceutical preparations
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fall under class 5, it was submitted that the burden was clearly
on the defendant to prove the said claim. It was submitted that
in order to prove such a claim, the defendant was required to
lead positive evidence to show that such a mark was being
extensively used by other parties and in that context, data
pertaining to such use was required to be produced, including
the revenue earned by such parties while using the mark,
alleged to be common to trade. It was submitted that mere
reference to the trade marks register would not suffice and if
there was indeed any public search report, the same ought to
have been placed on record, during the course of evidence. In
the absence of any such steps being taken by the defendant, it
was submitted that the said claim of the mark SUN being
common to trade was clearly not proved by the defendant. In
that regard also reliance was placed on the judgment of this
Court in the case of Cadila Pharmaceuticals Limited vs. Sami
Khatib of Mumbai (supra).
(i) In respect of the contention of the defendant that the plaintiff
had acquiesced to the use of the impugned trade mark/ house
mark ABSUN/ABSUN PHARMA, it was submitted that in
respect of such claim also the defendant was unable to place
any material on record. Acquiescence required a positive act
knowingly done by the plaintiff to allow the defendant to
continue to use the impugned trade mark/house mark. In this
regard, there was no evidence brought on record by the
defendant. As a matter of fact, responses given by the
defendant to specific question put during cross-examination,
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show that the witness of the defendant did not even know the
meaning of the term acquiescence. On this basis, it was
submitted that the aforesaid issue clearly deserved to be
decided in favour of the plaintiff.
(j) The learned counsel for the plaintiff submitted that in the
present case, the plaintiff was able to prove the three
ingredients of passing off i.e. goodwill, misrepresentation and
resultant damages. It was submitted that the plaintiff placed on
record sufficient oral and documentary evidence to show as
the manner in which the trade mark SUN/SUN PHARMA was
continuously used since 1978 by the plaintiff on the packaging
of its goods, the cartons in which the medicinal and
pharmaceutical preparations were being transported, articles in
newspapers, orders passed by the Registrar of Companies and
other such material. It was further submitted that certificates
of Chartered Accounts, certifying the annual sale and
promotional expenses were also placed on record to
demonstrate the goodwill earned by the plaintiff in the context
of the said registered trade marks/house marks. The lone
witness of the plaintiff had entered the witness box and also
deposed about the manner in which the contents of the
certificates issued by the Chartered Accountants were based on
data provided by the plaintiff. It was submitted that the
defendant was not justified in claiming that the certificates of
the Chartered Accountants could not be relied upon as the
author of such statements was not examined as witnesses. It
was submitted that since the defendant had not denied the
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claims of the plaintiff based on such certificates of Chartered
Accountants, there was no occasion for the plaintiff to have
examined the author of such certificates.
(k) Much emphasis was placed on the fact that the present suit is a
commercial suit and as per the provisions of the Civil
Procedure Code, 1908 (CPC) applicable to the proceedings
before the Commercial Courts, the procedure for admission
and denial of documents is also different from ordinary suits.
Under Order VIII Rules 3 and 5 of the CPC as applicable to
Commercial Courts, the defendant was specifically required to
deny the contents of the documents. In the present case,
despite the notice to admit documents issued under Order XII
Rule 3 of the CPC to the defendants, there was no response
and as a matter of fact, all the documents were admitted. In
such a situation, at the time of the final hearing, the defendant
cannot be permitted to claim that the certificates issued by the
Chartered Accounts cannot be relied upon by the plaintiff.
Thus, the aforementioned documentary and oral evidence, as
regards goodwill of the plaintiff in the context of its trade
marks SUN/SUN PHARMA cannot be disputed.
(l) On the basis of the contentions raised hereinabove, the learned
counsel for the plaintiff submitted that this was a clear case of
misrepresentation by the defendant, by simply prefixing
alphabets AB to the trade mark SUN/SUN PHARMA of the
plaintiff, thereby riding upon the goodwill of the plaintiff. It
was emphasized that since the goods of the defendant
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pertained to the same field of medicinal and pharmaceutical
products, this was obviously a case of misrepresentation on the
part of the defendant. In this context, attention of this Court
was invited to the prayer for damages of Rs.10 lakhs made on
behalf of the plaintiff and it was submitted that accordingly,
the plaintiff had made out a case of passing off against the
defendant.
(m) It was further submitted that even if it was to be assumed that
the plaintiff had fallen short of placing necessary material to
demonstrate the exact amount of damages, it would still be
entitled towards compensatory and punitive damages in the
light of the conduct of the defendant in blatantly seeking to
pass off its goods as those of the plaintiff. In this regard,
reliance was placed on judgment of this Court in the case of
Sanjay Soya Private Limited vs. Narayani Trading Company,
2021 SCC OnLine Bom 407. If nothing else, it was submitted
that the plaintiff is entitled to a decree for rendition of
accounts and compensatory damages, for which purpose
reliance was placed on judgment of Madras High Court in the
case of Dart Industries Inc & Ors. vs. Techno Plastic Industries
(judgment and order dated 23rd November 2022 passed in
Civil Suit No.828 of 2015).
(n) It was further submitted that the plaintiff is also entitled to
costs under Section 35 of the CPC as applicable to
Commercial Suits under the Commercial Courts Act, 2015.
Apart from placing reliance on the said provision of law, the
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learned counsel placed reliance on judgment and order dated
8th December 2025 passed by this Court in Commercial Suit
No. 110 of 2012 (Anheuser Busch Inbev India Ltd. vs. Jagpin
Brewerise Limited).
(o) The learned counsel for the plaintiff further raised strong
objection to the attempt on the part of the defendant to claim
before this Court at the stage of final hearing by seeking to
tender an affidavit dated 13th November 2025 to claim that
the defendant had now changed its trading name from ABSUN
PHARMA to ABSUN REMEDIES. It was submitted that this
Court had refused to take the said affidavit on record and
therefore, the defendant ought not to be permitted to take
recourse to such a submission. It was submitted that if such
tactics are permitted, then parties like the defendant herein
would evade injunction orders, by simply changing their
trading marks/house marks/trading names at the stage of final
hearing for the purpose of defeating the trial. Thereafter, the
learned counsel for the plaintiff made submissions on the
alleged dishonest and malafide conduct of the defendant. The
learned counsel for the plaintiff further sought to distinguish
the judgments upon which the defendant placed reliance.
(p) On the basis of the aforesaid submissions, it was asserted that
the instant suit deserved to be decreed.
12. In response, Mr. Khandekar, the learned counsel appearing on
behalf of the defendant, made the following submissions :
(a) It was submitted that the plaintiff has not been able to make
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comip-111.13.docout its case of infringement against the defendant at all. It was
asserted that since the defendant was not using its mark
ABSUN/ABSUN PHARMA as a trade mark and it was being
used only as a trading name/business style, Section 29(1), (2)
and (4) of the Trade Marks Act are wholly inapplicable, for the
reason that the said provisions would apply only in a case of
trade mark versus mark situation and not the situation that
arises in the present case. At the most, the only provision that
the plaintiff could take recourse to is Section 29(5) of the
Trade Marks Act. In this context, reliance was placed on
judgments of this Court in the case of Raymond Ltd. vs.
Raymond Pharma Ltd., 2020 (7) Mh.L.J. 646 and CIPLA Ltd.
vs. CIPLA Industries Pvt. Ltd., 2017 (2) Mh.L.J. 877 (full
Bench).
(b) It was emphasized that sub-section (5) of Section 29 of the
Trade Marks Act does not use the words ‘deceptively similar’
although such words are found in the other sub-sections. On
this basis, much emphasis was placed on the words ‘such
registered trade mark’ used in Section 29(5) of the Trade
Marks Act, to claim that the defendant would have infringed
on the registered trade mark of the plaintiff only if the said
registered trade mark had been used as the trading name or
business style of the defendant.
(c) In this context, it was submitted that since the plaintiff itself is
relying on registration of only word marks SUN PHARMA/
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comip-111.13.docword SUN, there was no question of any infringement on the
part of the defendant, even if Section 29(5) of the Trade Marks
Act was taken into consideration. It was submitted that if the
scrutiny of deceptive similarity was artificially added in Section
29(5) of the Trade Marks Act, it would lead to absurd results
and in that context, certain illustrations were relied upon. In
this context, reliance was placed on the judgment of the
Supreme Court in the case of H.S. Vankani & Ors. vs. State of
Gujarat & Ors., 2010 4 SCC 301. It was further submitted
that the ingredients of passing off were not at all satisfied by
the plaintiff in the present case. Mere reference to use of the
plaintiff ‘s trade mark on certain packaging and cartons could
not be of any use and it was emphasized that the Chartered
Accountant certificates regarding sales and expenditure were
not proved in accordance with law. The plaintiff failed to
examine the authors of the said certificates and the sole
witness of the plaintiff could not have proved the said
documents, only on the basis that he knew the concerned
Chartered Accountants. Reliance was placed on judgments of
this Court in the cases of Om Prakash Berlia & Anr. vs. Unit
Trust of India & Ors., 1982 SCC OnLine Bom 148, Pukh Raj
Bumb vs. Jagannath Atchut Naik & Ors., (2014) 4 Mh.L.J.
447 and CFMA Asset Reconstruction Pvt. Ltd. vs. M/s. SAR
Parivahan Pvt. Ltd. & Ors. (judgment and order dated 13th
June 2024 passed in IA (L) No.6246 of 2024 in CARBP (L)
No. 5565 of 2024. On this basis, it was submitted that
goodwill was not proved.
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misrepresentation on the part of the defendant. It was further
emphasized that the plaintiff miserably failed to place on
record any material to support the claim of damages, thereby
showing that the plaintiff had failed to prove even a single
aspect of the tort of passing off. On this basis, it was submitted
that the issues pertaining to infringement as well as passing off
in the context of the aforesaid registered trade marks of the
plaintiff, need to be answered against the plaintiff and in
favour of the defendant.
(f) It was submitted that the documents filed on behalf of the
plaintiff in its compilation were of no consequence because the
orders of various Courts, as also the newspaper articles, all
pertained to the period after filing of the suit. As a matter of
fact, the plaintiff was required to place on record relevant and
cogent material to put-forth its case of goodwill by placing on
record documents prior to the year 2007, as the defendant had
adopted its house mark ABSUN/ABSUN PHARMA in the year
2007. It was emphasized that the relevant date in the facts and
circumstances of the present case was of the year 2007.
(g) It was submitted that the defendant had placed on record
sufficient material to show honest and bonafide adoption of its
house marks ABSUN/ABSUN PHARMA. The word ABSUN
was derived from the alphabets from the names of wife and
son of the proprietor of the defendant and hence, there was no
question of any malafide on the part of the defendant. It was
submitted in any case, the products of the defendant were all
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exported to countries in Africa and the products were not sold
in the domestic market.
(h) On the aspect of monetary reliefs and rendition of accounts, it
was submitted that the plaintiff had miserably failed to place
on record any material to justify such a direction against the
defendant. It was further submitted that in the worst case
scenario, if this Court were to find that the defendant had
infringed upon the registered trade marks of the plaintiff, only
an order of injunction could be passed and there was no
question of any monetary reliefs. In this regard, reliance was
placed on judgment of Delhi High Court in the case of
Koninlijke Philips N. V. & Anr. vs. Amazestore & Ors., 2019
SCC OnLine Del 8198. It was also submitted that even if in
the worst case scenario, Section 29(5) of the Trade Marks Act
was to be held against the defendant, the same was in the
nature of no fault liability and there was no question of any
monetary relief to the plaintiff.
(i) It was further submitted that in terms of an affidavit dated 2 nd
January 2026 tendered in the Court, the defendant had now
changed its trading name from ABSUN PHARMA to ABSUN
REMEDIES. This change was incorporated some time in
October 2025 and that such changed trade name was being
used on the packaging of the products of the defendant as well
as its letterheads and business papers, etc. On this basis, it was
submitted that the plaintiff can no longer have any grievance
against the defendant.
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(j) It was also emphasized that during the pendency of the suit for
12 years, the petitioner never even applied for temporary
injunction and this aspect also needs to be taken into
consideration, while deciding the aspect of monetary reliefs
claimed by the plaintiff. It was submitted that in the facts and
circumstances of the present case, there was no question of
any costs being saddled upon the defendant. There was no
question of defences adopted by the defendant being false and
vexatious and hence, no case for cost was made out. The
learned counsel for the defendant proceeded to make an
attempt to distinguish the judgments relied upon by the
learned counsel appearing for the plaintiff. On the basis of
such submissions, it was prayed that the suit may be dismissed.
13. The issues framed in this suit, referred to hereinabove, are to
be decided in the light of the oral and documentary evidence on
record and also in the light of the aforementioned contentions raised
on behalf of the rival parties. The record shows that the plaintiff has
placed a number of documents on record, including certificates of
registration of device mark dating back to 4 th August 1983; word
mark ‘SUN PHARMA’ dating back to 1st June 2007 and word mark
‘SUNPHARMA’ dating back to 28th June 2007. The defendant has
not disputed the fact that the plaintiff has registration for the said
trade marks. As regards the other documents, this Court will refer to
them while discussing and rendering findings on the aforementioned
issues.
14. As to Issue No.1 : This issue pertains to the question as to
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whether the defendant has infringed upon the aforementioned house
marks ‘SUN’/’SUN PHARMA’ by using the impugned marks ‘ABSUN’
/ ‘ABSUN PHARMA’. The plaintiff has registration of the
aforementioned marks in class 5 for medicinal and pharmaceutical
preparations. It is not disputed that the defendant is also in the
business of manufacturing and selling medical and pharmaceutical
preparations.
15. Since the registration of the trade marks/house marks of the
plaintiff is not disputed, the plaintiff is entitled to assert its rights
conferred by such registration under Section 28 of the Trade Marks
Act. This necessarily includes the right of the plaintiff, as proprietor
of the said trade marks/house marks, to exclusively use the same in
relation to the goods in respect of which such trade marks/house
marks are registered. If the plaintiff is able to demonstrate that the
defendant has infringed upon its registered trade marks/house marks
under Section 29 of the Trade Marks Act, the aforesaid issue No.1
will have to be decided in favour of the plaintiff. It is evident that the
burden is upon the plaintiff to prove that such an infringement has
indeed taken place.
16. The defendant has taken a specific stand that since its marks
‘ABSUN’ / ‘ABSUN PHARMA’ are house marks, they ought not to be
treated as trade marks and therefore, Sections 29(1), (2), (3) and (4)
of the Trade Marks Act do not apply in the present case. In order to
test the said contention, a reference will have to be made to the
definitions of ‘mark’ under Section 2(m) and ‘trade mark’ under
Section 2(zb) of the Trade Marks Act. The aforesaid provisions read
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as follows:
“2. Definitions and interpretation.– (1) In this Act,
unless the context otherwise requires, –
(m) “mark” includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any
combination thereof;
(zb) “trade mark” means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person
from those of others and may include shape of goods,
their packaging and combination of colours; and–
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in relation to
goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the
goods or services, as the case may be, and some person
having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark
used or proposed to be used in relation to goods or
services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or
services, as the case may be, and some person having the
right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of
the identity of that person, and includes a certification
trade mark or collective mark;”
17. A perusal of the above-quoted definitions of ‘mark’ and ‘trade
mark’ show that the moment a mark is capable of distinguishing the
goods or services of one person from the other, it qualifies as a trade
mark. It is crucial to note that the Trade Marks Act does not
specifically define house mark and it makes no distinction between a
trade mark and a house mark. The fact that the defendant is using its
marks ‘ABSUN’ / ‘ABSUN PHARMA’ for distinguishing its goods, is
evident from the manner in which the marks have been used and the
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vehemence with which the stand taken by the plaintiff has been
opposed on behalf of the defendant. As a matter of fact, the
defendant itself has heavily relied upon the peculiar manner in which
the word ABSUN is used and printed on the packaging of its
medicinal products. It is claimed that the word ABSUN is written in
a stylized manner. In response to question No.16 put to the sole
witness of the defendant in cross-examination, it was asserted that
the words ABSUN PHARMA, with the word ABSUN being written
in stylized manner, constituted a logo. In response to question
No.25, the aforesaid witness in cross-examination, specifically stated
that the defendant was indeed claiming monopoly over the
name/mark ‘ABSUN PHARMA’. In the face of such material, the
defendant cannot claim that its marks do not qualify to be trade
marks and that Sections 29(1), (2), (3) and (4) of the Trade Marks
Act would not be applicable.
18. Apart from this, while testing the claim of infringement made
on behalf of the plaintiff, Section 29(5) of the Trade Marks Act also
assumes significance. It provides that the registered trade mark is
infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his business
concern or part of the name of his business concern dealing in goods
or services in which the trade mark is registered. This Court finds
that the said provision directly applies to the factual position arising
in the present case. As a matter of fact, in order to appreciate the
rival submissions, it would be appropriate to refer to Section 29 of
the Trade Marks Act, which reads as follows:
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comip-111.13.doc“29. Infringement of registered trademarks.–
(1) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade markis
registered and in such manner as to render the use of the mark
likely to be takenas being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which because
of–
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the
identity or similarity of the goods or services covered by
such registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such registered
trade mark, is likely to cause confusion on the part of the
public, or which is likely to have an association with the
registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the
court shall presume that it is likely to cause confusion on the part
of the public.
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which–
(a) is identical with or similar to the registered trade
mark; and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.
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(5) A registered trade mark is infringed by a person if he uses
such registered trade mark, as his trade name or part of his trade
name, or name of his business concern or part of the name,of his
business concern dealing in goods or services in respect of which
the trade mark is registered.
(6) For the purposes of this section, a person uses a registered
mark, if, in particular, he–
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services under
the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or
in advertising.
(7) A registered trade mark is infringed by a person who
applies such registered trade mark to a material intended to be
used for labeling or packaging goods, as a business paper, or for
advertising goods or services, provided such person, when he
applied the mark, knew or had reason to believe that the
application of the mark was not duly authorised by the
proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that
trade mark if such advertising–
(a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark
consist of or include words, the trade mark may be infringed by
the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark
shall be construed accordingly.”
19. Much emphasis was placed on behalf of the defendant on the
words ‘uses such registered trade mark’, to claim that the defendant
was not using the registered trade marks ‘SUN’/ ‘SUN PHARMA’ in
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its house marks and that the requirement of Section 29(5) of the
Trade Marks Act is that the very registered trade mark should be
used by a person to constitute infringement. The said contention
deserves to be rejected, for the reason that Section 29(5) of the Trade
Marks Act has to be read as a whole and it uses the words ‘A
registered trade mark is infringed by a person if he uses such
registered trade mark, as his trade name or part of his trade name’.
20. In the present case, in the house marks of the defendant
‘ABSUN’ / ‘ABSUN PHARMA’, the words SUN/SUN PHARMA are
subsumed and only the alphabets ‘AB’ are prefixed to the same. In
other words, 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.
In this context, it becomes clear that the defendant is also not
justified in contending that ‘deceptively similar’ is foreign to Section
29(5) of the Trade Marks Act. The moment a registered trade mark is
used as part of trade name, the aspect of deceptive similarity
obviously comes to the fore.
21. This Court also finds that Sections 29(6) and (7) of the Trade
Marks Act would apply in the present case, as the plaintiff has
specifically asserted that the defendant is affixing the impugned
marks on the goods and packaging and also exporting goods under
the said marks, further using the same on business papers,
advertising, etc. This is not denied on behalf of the defendant.
22. In the case of Pizza Hut International LLC & others vs. Pizza
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Hut India Pvt. Ltd. (supra), this Court finds that the essential
features of the corporate name of the plaintiffs therein were ‘Pizza
Hut’ and if the defendant mentioned the aforesaid name on its
premises or on containers of its products, even if it sold its products
under different names in its restaurant or establishment, there was
likelihood of deception and confusion. The defendant is not justified
in contending that the said findings or observations of this Court
would not be relevant because the aforementioned case was decided
under the Trade and Merchandise Marks Act, 1958, for the reason
that the said observations bring out the principle to be applied in
such cases, where the allegation of infringement is made, in the
context of house marks/corporate names/trade names.
23. In the case of Hem Corporation Pvt. Ltd. and others vs. ITC
Limited (supra), this Court found that use of a registered trade mark
would constitute infringement, if it indicates a connection in the
course of trade between the person and goods and services,
irrespective of the intention. The defendant is not justified in
contending that since such an observation was made while deciding
an application for temporary injunction, the same cannot be taken
into consideration, for the simple reason that the said observation
was made in the context of relevant provisions of the Trade Marks
Act, including Section 2(zb), defining trade mark and Section 29(1)
concerning infringement of a registered trade mark.
24. In the case of Aglowmed Limited vs. Aglow Pharmaceuticals
Private Limited (supra), this Court found that the adoption of the
word ‘Aglow’ in its corporate name by the defendant amounted to
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infringement, as it was sufficiently close to the plaintiff ‘s corporate
name ‘Aglowmed’, which was likely to mislead the consumers of such
pharmaceutical products into believing that the business of the
defendant was that of the plaintiff. It is significant to note that in the
aforesaid case also, the defendant had simply deleted the alphabets
‘med’ from the plaintiff ‘s corporate name ‘Aglowmed’, thereby
indicating that even if such change is made, the defendant could not
escape the liability of having infringed upon the registered trade
mark/house mark of the plaintiff.
25. Similarly, in the case of Indchemie Health Specialities Pvt. Ltd.,
Mumbai vs. Naxpar Labs Pvt. Ltd. and another (supra), this Court
found that the mark ‘Cherish’ used by the defendants was
deceptively similar to the mark ‘Cheri’ used by the plaintiff as there
was structural and phonetic similarity between the two.
26. As opposed to this, the defendant has relied upon judgement
of this Court in the case of Meher Distilleries Private Limited vs. SG
Worldwide Inc. and another (supra), to contend that there is a clear
distinction between a house mark and a product mark. It is
contended that when a consumer buys medicinal products, he/she
asks for the medicine by its product name and not by the house mark
or a trade name of the company manufacturing it. In the said
judgement in the case of Meher Distilleries Private Limited vs. SG
Worldwide Inc. and another (supra), this Court has referred to the
distinct and independent uses of house marks and product marks. It
is observed that the house mark represents the image of the
enterprise from which the goods emanate and the product marks are
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the means by which goods are identified and purchased in the market
place (quoted from the book ‘Law of Trade Marks’ by K. C. Kailasam
and Ramu Vedaraman).
27. Even if the said observations are taken into consideration, it
cannot be concluded that the use of a house mark/trade name would
never amount to infringement, so long as the names of the products
of the two rival entities are different. Since the house mark/trade
name signifies the enterprise from which the goods emanate, once
such an enterprise has registered its house mark/trade name and it
has garnered goodwill over a period of time, it is clearly entitled to
proceed against an entity, which uses the house mark/trade name,
which is identical/deceptively similar to the house mark/trade name
registered by the previous owner. The aforesaid judgement does not
assist the case of the defendant.
28. The defendant also relied upon the judgements of the Supreme
Court in the cases of Astra Pharmaceuticals (P) Ltd. vs. Collector of
Central Excise, Chandigarh (supra) and Commissioner of Central
Excise, Mumbai vs. Kalvert Foods India Private Limited and others
(supra). This Court is of the opinion that reliance placed by the
defendant on the observations made in the said judgements about
house marks/product marks/brand names, is out of context. It is to be
noted that in the said cases, the Supreme Court was concerned with
the evasion of excise duty in the context of Central Excises and Salt
Act, 1944 as also Central Excise Tariff Act, 1985. It was in the
context of the aforementioned statutes that the Supreme Court made
observations about the difference between a house mark and product
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mark or a brand name. In any case, the observations made in the said
judgements do not support the contention of the defendant in the
present case that the registered house marks/trade names of the
plaintiff SUN/SUN PHARMA do not deserve protection under
Sections 28 and 29 of the Trade Marks Act. Nothing in the said
observations indicate that Sections 29(1), (2), (3) and (4) of the Trade
Marks Act are not applicable to the present factual position. In any
case, Section 29(5) of the Trade Marks Act squarely applies in the
facts and circumstances of the present case.
29. In this context, this Court does not find any substance in
reliance placed on behalf of defendant on the judgement of the
Supreme Court in the case of H. S. Vankani and others vs. State of
Gujarat and others (supra). The defendant relied upon the said
judgement to contend that if plaintiff ‘s interpretation of Section
29(5) of the Trade Marks Act was to be accepted, it would result in
absurdity and palpable injustice. Having perused the relevant portion
of the said judgement, this Court finds that there cannot be any
quarrel with the said proposition. But, in the context of Section
29(5) of the Trade Marks Act, if the interpretation sought to be
placed on behalf of the defendant is accepted, it may lead to
absurdity, futility and palpable injustice. The defendant claims that
the words ‘uses such registered trade mark’ necessarily mean that
only if the registered trade mark is used as a trade name,
infringement would occur. The defendant completely ignores the fact
that the very same provision specifically states that infringement
would occur, if the registered trade mark is used as part of the trade
name.
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30. Thus, this Court finds that the contention raised on behalf of
the defendant that on the allegations made by the plaintiff,
infringement is not made out under Section 29 of the Trade Marks
Act, cannot be accepted. Nonetheless, for the plaintiff to succeed on
the aforesaid issue No.1, by applying the well-established tests, it will
have to be examined as to whether the defendant can be said to have
infringed upon the registered trade marks/house marks of the
plaintiff ‘SUN’/ ‘SUN PHARMA’ by using the impugned house
marks/trade names ‘ABSUN’ / ‘ABSUN PHARMA’. The well-known
test will have to be applied on the basis as to whether a person of
average intelligence and imperfect recollection would be confused
and thereby believe the goods and products of the defendant bearing
the aforesaid impugned house marks/trade names, as being the goods
and products of the plaintiff.
31. A comparison of the two marks shows that the defendant is
using the house marks/trade names ‘ABSUN’ / ‘ABSUN PHARMA’,
wherein the registered house marks/trade names of the plaintiff
‘SUN’ / ‘SUN PHARMA’ are subsumed. Only the alphabets AB have
been prefixed to the registered trade marks of the plaintiff. This
Court is of the opinion that by merely prefixing the alphabets AB, it
cannot be said that the marks of the defendant are distinct. As a
matter of fact, this Court finds that the impugned marks being used
by the defendant are very close to the registered trade marks/house
marks of the plaintiff.
32. The defendant made an attempt to claim that the word
ABSUN is a coined term, having no dictionary meaning and the
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alphabets AB and SUN have been derived from the names of wife
and son of the proprietor of the defendant, thereby claiming that
such adoption is honest. This Court finds that the honesty of
adoption is wholly irrelevant, as held by this Court in the case of
Charak Pharma Pvt. Ltd. vs. Glenmark Pharmaceuticals Ltd. (supra),
for the reason that the moment it is found that the impugned marks
are infringing the registered marks of the plaintiff, the consequences
must follow, without any reference to the alleged honest adoption of
the same.
33. As noted hereinabove, in the cases of Aglowmed Limited vs.
Aglow Pharmaceuticals Private Limited (supra) and Indchemie
Health Specialities Pvt. Ltd., Mumbai vs. Naxpar Labs Pvt. Ltd. and
another (supra), this Court held that a case of infringement was
made out even in cases where certain alphabets were either added to
or deleted from the registered trade mark in question. In such cases,
where the Statute provides for infringement and a case of similarity
or deceptive similarity is made out, the intention of the concerned
party against whom the allegation of infringement is made, becomes
irrelevant.
34. In any case, as per the law laid down by this Court in the cases
of Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd. (supra), and
Cadila Pharmaceuticals Limited vs. Sami Khatib of Mumbai (supra),
it was the duty of the defendant to have examined the register to
ascertain as to whether the mark, that it proposed to use, was close
to any of the trade marks already registered with the Registry. The
fact that the proprietor of the defendant did not care to undertake
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any such exercise of search in the register of trade marks is evident
from the answers given by the lone witness i.e. the proprietor of the
defendant to question Nos.8 and 9 in cross-examination. He
conceded that he neither conducted any search in the market prior to
the year 2007 nor did he conduct any search in the register of trade
marks before adopting the impugned marks ‘ABSUN’ / ‘ABSUN
PHARMA’. In response to question Nos.10 and 11 in cross-
examination, the said witness of the defendant conceded that he was
aware of the plaintiff company prior to the year 2007. As a matter of
fact, it was stated that he became aware of the plaintiff company
around the year 1995. This clearly demonstrates that the defendant
was aware about the trade marks / house marks of the plaintiff
‘SUN’/ ‘SUN PHARMA’ and despite being aware of the same,
sometime in the year 2007, the defendant proceeded to adopt the
impugned marks ‘ABSUN’ / ‘ABSUN PHARMA’. In such a situation,
it can be even construed that there was a measure of dishonesty on
the part of the defendant in adopting the aforesaid impugned marks.
35. In a catena of judgments the Supreme Court and various High
Courts, including this Court, have held that when the Court is
considering the aspect of infringement in the context of medicinal
and pharmaceutical preparations, it has to be all the more strict. This
is for the reason that minor changes in the formulations of medicines
and pharmaceutical preparations can have adverse effect on
consumers / patients. If such a consumer ends up buying a product
believing it to be that of the plaintiff while such a product is actually
of the defendant, it may have a deleterious effect on such consumer.
This Court is of the opinion that applying the tests in the context of
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Section 29 of the Trade Marks Act to the facts of the present case,
the plaintiff has indeed made out a case of infringement of its
registered trade marks / house marks by the defendant, by using the
impugned marks.
36. The defendant sought to wriggle out of the situation by
claiming that its products were all exported to African countries and
not a single product was sold in the domestic market. The said
defence cannot come to the rescue of the defendant in the light of
Section 56 of the Trade Marks Act. A plain reading of the said
provision shows that application of a trade mark to goods in India,
which are to be exported, amounts to use of such trade mark under
the provisions of the said Act. In the case of Cadila Pharmaceuticals
Limited vs. Sami Khatib of Mumbai (supra), this Court in the context
of Section 56 of the Trade Marks Act held as follows:-
“65. It is admitted that the appellant applies the impugned
mark to the goods in India which are thereafter exported.
The impugned mark has thus been applied to the
appellant’s goods within the meaning of section 56. Had
the mark been applied in relation to goods to be sold
within India, it would undoubtedly have constituted use of
the trade mark in India. By virtue of section 56, the
application in India of the trade mark, although to goods to
be exported from India, is deemed to constitute use of the
trade mark in relation to the said goods “for any purpose
for which such use is material under the Trade Marks Act,
1999, or any other law”. The plain language of section 56,
therefore, 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 or any other
law.
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comip-111.13.docand reputation in a mark in an action for passing off. It is
also relevant, even if it is not necessary, to establish the act
of infringement or passing off.
67. There is little doubt that the use of a trade mark
within section 56 can be relied upon to maintain an action
for infringement.
Section 28 of the Act gives to the registered
proprietor of the trade mark, the exclusive right to “use”
the trade mark in relation to the goods or service in respect
of which the trade mark is registered and to obtain relief in
respect of infringement thereof in the manner provided by
the Act.
Section 29 enumerates various circumstances that
would constitute infringement of registered trade marks by
the use thereof by a person who is not entitled to use the
same. For instance, Section 29 of the Act provides that a
registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of a
permitted use, “uses” in the course of trade, a mark which
is identical with or deceptively similar to the registered
trade mark. Section 29(2) provides that a registered trade
mark is infringed by a person who not being a registered
proprietor or a person using by way of a permitted use,
uses in the course of trade, a mark which because of the
factors enumerated therein is likely to cause confusion on
the part of the public or which is likely to have an
association with the registered trade mark. Section 29(6)(c)
expressly provides that for the purpose of section 29, a
person uses a registered mark if he, inter-alia, imports or
exports goods under the mark.
68. Thus section 56 would clearly apply to an action for
infringement if the trade mark is applied in India to goods
to be exported from India as the same is deemed to
constitute use of a trade mark in relation to those goods for
any purpose for which such use is material under the Act.”
37. It is relevant to note that in the said judgement, this Court held
that the position would not be any different in the case of passing off
also, in the light of the concluding words in Section 56 ‘or any other
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law’. Thus, the aforementioned defence taken by the defendant
cannot be accepted and even if its products are exported, it cannot
escape the liability of having infringed upon the registered trade
marks / house marks of the plaintiff ‘SUN’/ ‘SUN PHARMA’.
38. The plea taken on behalf of the defendant at the fag end of the
proceeding by seeking to tender aforesaid affidavit dated 2 nd January
2026 about change of trading name of the defendant from ABSUN
PHARMA to ABSUN REMEDIES, cannot be accepted. As a matter
of fact, the said affidavit along with documents annexed therewith,
was not taken on record. It is to be noted that these are original
proceedings and after the entire process of pleadings, recording of
evidence and arguments is over, the defendant cannot be permitted
to file an affidavit to claim that the trading name is now changed
from October 2025. This Court finds substance in reliance placed on
behalf of the plaintiff on the judgment of this Court in the case of R.
R. Oomerbhoy Pvt. Ltd. vs. Court Receiver, High Court, Bombay &
Ors., 2023 SCC OnLine Bom 718, to oppose the said tactic adopted
by the defendant. As a matter of fact, the aforesaid attempt on the
part of the defendant fortifies the case of the plaintiff that the
defendant made a dishonest attempt to come as close as possible to
the registered trade marks/house marks of the plaintiff. In the said
judgment, this Court remarked that honest men do not attempt to
sail near the wind. In this regard, reliance placed on order of this
Court in the case of Pidilite Industries Limited vs. Raghunath
Chemicals and Anr., (Contempt Petition (L) No.30589 of 2021 in
Suit No. 729 of 2015), is also found to be justified. Therefore, the
said plea taken at the very end of the trial on behalf of the defendant
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cannot be accepted. Hence, issue No.1 is answered in favour of the
plaintiff and against the defendant.
39. As to issue No.2 : This issue pertains to the question as to
whether the defendant indulged in passing off its medicinal and
pharmaceutical preparations as those of the plaintiff by using the
impugned marks ‘ABSUN’ / ‘ABSUN PHARMA’. As noted
hereinabove, the three ingredients of passing off are goodwill,
misrepresentation and resultant damages. The plaintiff has heavily
relied upon documents exhibited during the course of trial including
labels, packaging material and certificates issued by the Chartered
Accountants regarding sales figures and expenses, to claim that it had
garnered sufficient goodwill by the time the defendant started using
the impugned marks. The documents relied upon by the plaintiff
were attacked by the defendant, particularly the certificates issued by
the Chartered Accountants, on the ground that the authors of the
documents were not examined. According to the defendant, the
examination of the lone witness of the plaintiff, who initially claimed
to be its employee and subsequently its attorney, was not sufficient to
prove such documents.
40. In this regard, one of the crucial aspects is that the present suit
is a commercial suit and it was tried as such under the provisions
applicable to commercial courts. The provisions of the CPC, as
applicable to the commercial courts, specify procedure different from
suits that come up for trial before ordinary courts. The record shows
that after the plaintiff placed on record documents in support of its
case, including the certificates issued by the Chartered Accountants, a
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specific notice to admit documents was issued to the defendant
through its advocate under Order XII, Rule 3 of the CPC. There was
no response or reply to the same and in this backdrop, the
documents stood admitted and they were also exhibited. The
defendant also did not deny the certificates of the Chartered
Accountants in the written statement. Order VIII, Rules 3 and 5 of
the CPC, as applicable to commercial courts, mandate that there
ought to be a specific admission and denial of pleadings and Order
XI, Rule 4 of CPC, as applicable to commercial courts, specifies the
manner in which documents are to be admitted or denied. The said
provision requires parties to admit or deny, not merely the existence
of the documents, but also correctness of contents of such
documents. Despite an order dated 1st July 2019 passed by this
Court, granting an opportunity to the defendant to file its statement
of admission and denial along with the affidavit in support thereof,
the same was never filed. Hence, all such documents exhibited on
record stood admitted as regards their existence as well as their
contents.
41. Apart from this, during cross-examination of the witness of the
plaintiff, not a single question was put in respect of the certificates of
the Chartered Accountants and even other documents relied upon by
the plaintiff to prove its goodwill and reputation. This factual
position is crucial while examining the contentions raised on behalf
of the defendant by relying upon aforementioned judgements in the
cases of Om Prakash Berlia & Anr. vs. Unit Trust of India & Ors.
(supra), Pukh Raj Bumb vs. Jagannath Atchut Naik & Ors. (supra),
CFMA Asset Reconstruction Pvt. Ltd. vs. M/s. SAR Parivahan Pvt.
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Ltd. & Ors. (supra), Brihan Karan Sugar Syndicate (P) Ltd. Vs.
Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2
SCC 577. The judgements in the cases of Om Prakash Berlia & Anr.
vs. Unit Trust of India & Ors. (supra), Pukh Raj Bumb vs. Jagannath
Atchut Naik & Ors. (supra) and CFMA Asset Reconstruction Pvt.
Ltd. vs. M/s. SAR Parivahan Pvt. Ltd. & Ors. (supra), all pertained to
ordinary suits and not commercial suits placed for trial before
commercial courts as per the provisions of the Commercial Courts
Act, 2015 and the provisions of the CPC applicable to commercial
courts. The principles applicable to commercial suits were not subject
matter of consideration and hence, the said judgements can be of no
assistance to the defendant. As regards judgement in the case of
Brihan Karan Sugar Syndicate (P) Ltd. Vs. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana (supra), it was correctly brought
to our notice on behalf of the plaintiff by producing the judgement
of the District Court in the said case that the defendant had
specifically denied the certificates issued by the Chartered
Accountant and it had cross-examined the plaintiff on the said aspect
of the matter. The observations made by the Supreme Court in
paragraphs 14 to 16 of the said judgement, upon which much
reliance is placed by the defendant, have to be read in the context of
the stand taken by the defendant therein. As noted hereinabove, in
the present case, the defendant failed to deny the existence and
contents of the certificates issued by the Chartered Accountants.
They were not even denied in express terms in the written statement
as required in a commercial suit and there was no attempt made on
the part of the defendant during cross-examination of the plaintiff ‘s
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witness to raise any cloud of doubt about the said documents as also
other documents relied upon by the plaintiff for proving its goodwill.
42. Therefore, this Court finds that the plaintiff has sufficiently
proved existence of its goodwill at the time when the defendant
chose to use the impugned marks as its house marks / trade names.
43. As regards misrepresentation, the findings rendered
hereinabove, with regard to the attempt of the defendant to come
close to the house marks of the plaintiff, hold good for rendering
finding against the defendant. The judgements upon which the
defendant has placed reliance on the aspect of passing off, including
the judgements in the cases of S. Syed Mohideen Vs. P. Sulochana
Bai, (2016) 2 SCC 683 and Reckitt & Colman Products Limited Vs.
Borden, [1990] 1 WLR 491 and Ageon Life Insurance Company
Limited Vs. Aviva Life Insurance Company India Limited , 2019 SCC
OnLine Bom.1612, when applied to the present case, demonstrate
that the plaintiff has indeed made out a case of deception and
confusion caused amongst the public by the use of the impugned
marks by the defendant. Since the defendant also manufactures
medicinal and pharmaceutical products, which are indeed the
products of the plaintiff, in the light of the similarity between the
marks and the nature of products sold by both parties, a case of
misrepresentation on the part of the defendant is made out.
44. As regards damages, the evidence led by the plaintiff does not
show specific figures of damages that the plaintiff suffered as a
consequence of the actions of the defendant. Although, the plaintiff
claimed damages of Rs.10 lakhs, in the cross-examination of the
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plaintiff ‘s sole witness, in response to specific question with regard
to the said figure of damages, the witness merely stated that it was on
approximate estimation. The witness further stated that a written
statement of account or financial report could be submitted at
appropriate time, as and when required. On a specific question as to
why no documents had been produced regarding the same, the
witness responded by stating that the documents would be produced
when required at appropriate time. It is a matter of record that no
such documents were produced. Therefore, this Court finds
substance in the contention raised on behalf of the defendant that the
plaintiff failed to produce specific documents and material to support
the said figure towards damages of Rs.10 lakhs.
45. Nonetheless, the stand taken by the defendant that it was using
the impugned marks and that it would continue to do so, coupled
with the fact that the plaintiff as well as the defendant exported their
products, does indicate that the actions of the defendant did cause
damage to the plaintiff. Therefore, this Court finds that the plaintiff
has made out a case for demonstrating that the defendant was
seeking to pass off its medicinal and pharmaceutical preparations as
those of the plaintiff. Hence, issue No.2 is answered in favour of the
plaintiff and against the defendant.
46. At this stage, it would be relevant to consider the contention
raised on behalf of the plaintiff that a decree for rendition of
accounts could be passed in these circumstances against the
defendant. In this regard, the plaintiff relied upon judgments of the
Madras High Court in the cases of Dart Industries Inc & Ors. vs.
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Techno Plastic Industries (supra) and Shyam Investments & Anr. vs.
Masti Health and Beauty Pvt. Ltd., 2020 SCC OnLine Mad 2326.
But, a perusal of the said judgments shows that in the said cases, the
Court had specifically framed an issue with regard to the entitlement
of the plaintiff for rendition of accounts. In the present case, no such
issue was framed. In the case of Shyam Investments & Anr. vs. Masti
Health and Beauty Pvt. Ltd. (supra), the Court further found that the
defendant, during the course of cross-examination, had conceded
that and given specific figures about its turnover and other such
aspects. Taking into account the said responses of the defendant’s
witness, in the said case, the Court thought it fit to grant a decree of
rendition of accounts. In the present case, neither such an issue was
framed nor was the witness for the defendant put any specific
question in that regard. Therefore, the plaintiff ‘s prayer for decree
of rendition of accounts cannot be granted.
47. As to issue Nos.3 and 4 : These issues are answered in favour
of the plaintiff and against the defendant in the light of the
observations made hereinabove. It is to be noted that at the time of
consideration of the notice of motion itself, the defendant made a
statement before this Court that it had not used the impugned trade
mark ‘E-MIST’ and that it did not intend to use the same. Even at
the stage of final hearing, the same stand was repeated and the
contest between the parties stood limited to the registered trade
marks / house marks of the plaintiff ‘SUN’/ ‘SUN PHARMA’ against
the impugned marks of the defendant ‘ABSUN’ / ‘ABSUN PHARMA’.
48. As to issue No.5 : The burden to prove this issue is on the
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defendant as it has claimed that the trade mark ‘SUN’ is common to
trade. This Court is of the opinion that the burden to prove the
aforesaid aspect on the defendant is a heavy burden, required to be
discharged by placing on record evidence to establish that marks of
third parties, identical to the registered trade mark ‘SUN’ of the
plaintiff, were in substantial and extensive use in India. The evidence
and material on record shows that the defendant failed to lead any
evidence in this regard. The defendant failed to place on record any
evidence about such alleged substantial and extensive use by third
parties. The defendant was also required to place on record data,
including sales figures etc. of such third parties to demonstrate that
the said mark had become generic in use, thereby indicating that it
was common to trade and that the plaintiff could not claim any
exclusivity in the mark.
49. Mere reference to a search report or claiming that other such
marks are found on the register of trade marks does not satisfy the
requirement of placing necessary evidence to prove such an
assertion. It is at the stage of final hearing that the defendant has
orally claimed that the said mark had become common to trade. In
the absence of cogent, oral and documentary evidence being led on
behalf of the plaintiff, it cannot be said that the defendant discharged
its burden. Hence, the said issue is answered against the defendant
and in favour of the plaintiff.
50. As to issue No.6 : The burden to prove this issue also is on the
defendant as it is claimed that the plaintiff acquiesced to use of the
impugned mark ‘ABSUN’/ ‘ABSUN PHARMA’ by the defendant. It is
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found that the defendant has merely stated at one place that the
present case was that of acquiescence on the part of the plaintiff. As a
matter of fact, in cross-examination, the sole witness of the
defendant while responding to question Nos.28, 29 and 35 to 37
gave answers, which completely negated the case of the defendant on
the allegation of acquiescence. In response to question Nos.28 and
29, the witness for the defendant conceded that there was no
document on record to show that the plaintiff was aware about the
existence of the defendant and its products prior to the third week of
December 2012. In response to question No.35, when it was put to
the witness that the plaintiff had not acquiesced to use of the
impugned mark ‘ABSUN’/ ‘ABSUN PHARMA’, the witness for the
defendant responded by stating that he did not understand the
question. Hence, in question No.36, the said witness was asked as to
whether he understood the term ‘acquiescence’, to which he
responded by saying that he did not know the meaning of the term.
In response to question No.37 put to the said witness to the effect
that the plaintiff was not aware about the defendant prior to third
week of December 2012 and therefore, there was no question of the
plaintiff taking action prior to the same, the said witness responded
in the affirmative. The aforesaid responses in cross-examination by
the sole witness for the defendant completely destroys its case with
regard to acquiescence on the part of the plaintiff. Hence, the said
issue is answered against the defendant and in favour of the plaintiff.
51. Submissions were advanced on behalf of the parties in respect
of costs also. It is to be noted that this being a commercial suit,
Section 35 of the CPC pertaining to costs, as applicable to
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commercial courts needs to be taken into consideration. Under
Section 35 of the CPC, the Court has a discretion to determine costs,
while taking into consideration factors like fees and expenses, legal
fees, etc. It is also stipulated that when an order for payment of costs
is made, a general rule is that the unsuccessful party shall be ordered
to pay costs to the successful party. The Court can deviate from the
same, for reasons to be recorded in writing. Although the plaintiff
has relied upon judgement of this Court in the case of Sanjay Soya
Private Limited vs. Narayani Trading Company (supra) to claim an
order of costs, it is to be noted that in the said judgement, a specific
statement of costs was submitted. In the present case, the learned
counsel for the plaintiff has simply stated that the approximate costs
incurred by the plaintiff, including court fees, miscellaneous expenses
etc. came to about Rs.27 lakhs. The Delhi High Court in the case of
Koninlijke Philips N.V. v. Amazestore, 2019 SCC OnLine Del 8198,
stipulated a general rule of awarding costs depending on the conduct
of the defendant. It was stipulated therein that if the defendant was
first-time innocent infringer, only an injunction could be granted.
But, in the case of a first-time knowing infringer, injunction with
partial costs could be granted and if the defendant was a repeated
knowing infringer, costs along with compensatory costs or even
aggravated damages could be granted.
52. In the light of the findings rendered hereinabove, this Court
does not find the defendant to be an innocent infringer. In the light
of the responses given to specific questions in cross-examination, the
sole witness of the defendant conceded that he knew about the
plaintiff ‘s company since the year 1995. This Court has already
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found that the plaintiff placed on record sufficient material to show
its goodwill and that it had registration for its device mark from the
year 1983 and its word marks since the year 2007. Sufficient
material is on record to show that house marks / trade marks of the
plaintiff were in the public domain much prior to the year 2007,
when the defendant started using its impugned marks and that the
defendant was very much aware about the plaintiff ‘s mark.
53. Therefore, it can be said that the defendant is a first-time
knowing infringer. Accordingly, apart from granting injunction
against the defendant, this Court is inclined to award partial costs. In
a recent judgement and order dated 8th December 2025 passed by a
learned Single Judge in Commercial Suit No.110 of 2012, costs of
Rs.10 lakhs were granted to the plaintiff. This Court is inclined to
grant costs in a similar manner to the plaintiff.
54. As to issue No.7: In view of the above, the suit is decreed in
terms of prayer clauses (a), (b), (c), (d) and (e).
55. The defendant shall pay costs of Rs.10 lakhs to the plaintiff.
MANISH PITALE, J.
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