Bombay High Court
United Biotech Private Limited vs Sun Pharma Laboratories Private … on 4 May, 2026
Digitally signed
by SHAGUFTA
QUTBUDDIN
2026:BHC-OS:11436
SHAGUFTA PATHAN
QUTBUDDIN
Date:
PATHAN 2026.05.04 IA-L-19536-2025 & IA-5318-2025-J.odt
19:59:30
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 19536 OF 2025
IN
COMMERCIAL IP SUIT (L) NO. 19268 OF 2025
Sun Pharma Laboratories Limited
A Company incorporated under the
Companies Act, 1956 having its
Corporate Office and principal place
Of business at Sun House, Plot No. 201 B/1
Western Express Highway, Goregaon (East) ...Applicant
Mumbai 400063 (Org. Defendant)
Versus
United Biotech Private Limited
A Private limited company having its
Registered address at E-142, Saket
New Delhi, Delhi, India, 110017
Also having its address at Fc/B-1 (Extn),
Mohan Co-operative Industrial Estate
Mat, Hura Road, New Delhi, Delhi
India, 110044,
Also having its address at
Bagbania, Baddi-Nalagard Road
Distt. Solan (HP) - 174101 ...Defendant
WITH
INTERIM APPLICATION NO.5318 OF 2025
IN
INTERIM APPLICATION (L) NO. 19536 OF 2025
IN
COMMERCIAL IP SUIT (L) NO. 19268 OF 2025
SQ Pathan/Sairaj 1/44
::: Uploaded on - 04/05/2026 ::: Downloaded on - 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
United Biotech Private Limited
A Private limited company
having its Registered address at E-142, Saket
New Delhi, Delhi, India, 110017
Also having its address at Fc/B-1 (Extn),
Mohan Co-operative Industrial Estate
Mat, Hura Road, New Delhi, Delhi
India, 110044,
Also having its address at
Bagbania, Baddi-Nalagard Road
...Applicant
Distt. Solan (HP) - 174101
(Org. Defendant)
IN THE MATTER BETWEEN :
Sun Pharma Laboratories Limited
A Company incorporated under the
Companies Act, 1956 having its
Corporate Office and principal place
Of business at Sun House, Plot No. 201 B/1
Western Express Highway, Goregaon (East)
Mumbai 400063
... Plaintiff
Versus
United Biotech Private Limited
A Private limited company having its
Registered address at E-142, Saket
New Delhi, Delhi, India, 110017
Also having its address at Fc/B-1 (Extn),
Mohan Co-operative Industrial Estate
Mat, Hura Road, New Delhi, Delhi
India, 110044,
Also having its address at
Bagbania, Baddi-Nalagard Road
Distt. Solan (HP) - 174101
...Defendant
------------
SQ Pathan/Sairaj 2/44
::: Uploaded on - 04/05/2026 ::: Downloaded on - 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
Mr. Alankar Kirpekar a/w Mr. Ayush Tiwari, Ms. Archita Gharat, Ms. Niyati
Davawala, Mr. Anil Shete, Ms. Nidhi Rao and Ms. Chandrika Devda i/b
Davawala & Co. for the Plaintiff
Mr. Rashmin Khandekar a/w Mr. Bahraiz Irani, Mr. Anand Mohan, Mr.
Anosh Irani, Mr. Amit Padwal, Ms Afreen Bano and Mr. Abhishek for the
Defendant
------------
CORAM : SHARMILA U. DESHMUKH, J.
RESERVED ON : MARCH 17, 2026
PRONOUNCED ON : MAY 4, 2026
ORDER :
1. Vide order dated 29th July 2025, this Court had granted ad-
interim relief in terms of prayer clauses (b) and (c) as regards passing
off and appointment of a Court Receiver. Subsequently, Interim
Application No. 5318 of 2025 was filed under Order XXXIX Rule 4 of
the Code of Civil Procedure (`CPC‘), seeking to vacate the ex-parte ad-
interim order dated 29th July 2025 passed by this Court. Both
applications were taken up for hearing. The decision on merits of
interim application for injunction decides the fate of the application
under Order XXXIX Rule 4 of CPC.
2. The Plaintiff and Defendant are engaged in the business of
manufacturing and marketing medicinal and pharmaceutical
preparations. The plaint traces the adoption, use and proprietary right
to the trade mark “OCTRIDE” to the year 1998 through the Plaintiff’s
pre-decessors in title. It is stated that in the year 1998, the Plaintiff had
adopted the mark “OCTIDE” which was registered and was thereafter
SQ Pathan/Sairaj 3/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
not pursued nor the registration renewed by the Plaintiff’s
pre-decessor in view of the adoption of “OCTRIDE”.
3. Insofar as the mark OCTRIDE is concerned, the application for
registration of the said mark was filed on 8 th September 2003, with
user claim of 30th September 1998. The molecule composition of the
Plaintiff’s product marketed under OCTRIDE is Octreotide Acetate. The
drug is prescribed to treat acromegaly, carcinoid tumors, and bleeding
esophageal varices and to prevent complications following surgery of
the pancreas. It is stated that the Plaintiff’s products under the
trademark OCTRIDE have pan India as well global sales. The annual
sales figures in respect of the products bearing the said trade mark for
the period 1999 to March 2024, duly certified by the Chartered
Accountant, are placed on record. The Plaintiff has also placed
promotional material on record to demonstrate goodwill and
reputation.
4. It is stated that in the month of June 2025, the Plaintiff’s
representative came across the Defendant’s product bearing the
impugned mark OTIDE in the markets of Chennai, Tamil Nadu, and by
way of further investigation and through the Plaintiff’s Myanmar team,
found the product OTIDE being manufactured by Defendants in India
and exported to Myanmar. The Plaintiff conducted further search,
which revealed the registrations in the name of Defendant for the
SQ Pathan/Sairaj 4/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
mark OCTIDE and the impugned mark OTIDE. The impugned mark
OTIDE was applied for registration on 29th December, 2003 with user
claim since 1st January, 1999. In the examination report in respect of
the Defendant’s mark OCTIDE, the Plaintiff’s predecessor’s mark
OCTIDE was cited as a conflicting mark. It is contended that the
registration obtained by the Defendant is wrongful, ex-facie illegal and
invalid, and is liable to be rectified and removed from the register.
5. In the affidavit-in-reply, the Defendant has contended that the
Defendant was incorporated in the year 1997, and apart from the
domestic market, the Defendant is exporting to various countries and
has entered into licences with international entities. The mark OTIDE
was adopted on 1st January 1999 for pharmaceutical preparations
containing the molecule Octreotide Acetate and the adoption was
made honestly from the International Non-Proprietary Name (`INN’) of
the molecule Octreotide. The Defendant applied for trademark
registration of the OTIDE mark on 29th December 2003, claiming user
since 1st January 1999. Similarly, the Defendant also applied for
registration of the mark OCTIDE on 18th October 2002, claiming user
since 1st January 2001. However, the mark OCTIDE has not been
commercially used by the Defendant till date. The sales turnover of the
Defendant’s product marketed under the mark OTIDE for the period
2006-2025 is set out in the affidavit. It is submitted that there is
SQ Pathan/Sairaj 5/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
suppression and concealment of material facts, as the Plaintiff was
aware about the existence of the use of the mark OTIDE by the
Defendant since the year 1999, as both rival marks OTIDE and OCTIDE
have been cited in medical journals at least since the year 2010. The
Plaintiff’s products and the Defendant’s products are recommended as
substitutes on all major e-commerce platforms where the said
products are sold. For the purpose of obtaining ad-interim injunction, a
false cause of action about acquiring knowledge about the existence of
the Defendant’s OTIDE mark in the month of June 2025 is set-out. It is
contended that the Plaintiff has put up a false story that the Plaintiff’s
predecessor-in-interest had adopted the mark OCTIDE in 1998 and
thereafter had adopted the mark OCTRIDE, whereas, the OCTIDE mark
by the Plaintiff was never used, and the registration had lapsed in the
year 2008. The Defendant is having statutory rights in the mark
OCTIDE, as the registration is still subsisting though not commercially
exploited, as well as the mark OTIDE.
6. The Defendant adopted the mark OTIDE on 1 st January 1999 and
on the date of adoption of OTIDE mark, the Defendant was not aware
of the Plaintiff’s OCTRIDE mark. The element “TIDE” appearing in the
Defendant’s OTIDE mark is a suffix derived from the INN system of the
World Health Organization and is descriptive of the pharmacological
class to which Octreotide belongs. There is no overall similarity
SQ Pathan/Sairaj 6/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
between the Plaintiff’s OCTRIDE mark and the Defendant’s OTIDE
mark. Both the rival marks are derived from INN of the API Octreotide,
and where the chemical composition of the rival drugs is the same, the
question of causing any health problems or side effects does not arise.
7. In the Interim Application No. 5318 of 2025, the same
submissions forming part of the affidavit-in-reply are reiterated, and it
is further claimed that the Defendant’s OTIDE mark has been
prominently featured in print and electronic media, including medical
journals. In the affidavit-in-rejoinder by the Defendant to the
application under Order XXXIX Rule 4, it is stated that the ex-parte
order was passed without notice to the Defendant. The Plaintiff has
consciously omitted the fact that the Defendant has been using the
OTIDE mark since 1999, and the impugned order causes undue
hardship to the Defendant.
8. Mr. Kirpekar, learned counsel appearing for the Plaintiff, would
submit that notice was issued to the Defendant and matter was
adjourned from time to time due to non-appearance of Defendant. He
submits that, ultimately, the matter was taken up for hearing and the
ad-interim order was passed on 29th July 2025. He submits that, insofar
as the Plaintiff’s mark OCTIDE is concerned, the Plaintiff is not using
the said mark, and hence the inquiry in the present case is confined to
OCTRIDE versus OTIDE. He submits that both parties are estopped
SQ Pathan/Sairaj 7/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
from raising the plea that the marks are non-registrable. He submits
that the Plaintiff’s mark was registered under the old Act, on which
date the present Section 13 relating to INN was not on the statute
book.
9. He submits that, even otherwise, passing off action would be
maintainable. He submits that the Defendant’s application for
registration of the mark OCTIDE, applied for on 18 th October 2002, was
objected by citing the Plaintiff’s mark as conflicting mark, and
therefore, the Defendant was aware of the existence of the Plaintiff
and its registered mark, and despite that, has adopted and secured
registration of its mark, OTIDE, on 29th December 2003. He submits
that the Plaintiff’s registration of the mark OCTIDE would assist the
Plaintiff’s claim of infringement of the mark OCTRIDE, as under Section
55 of the Trade Marks Act, the use of one of the associated or
substantially identical trademark is equivalent to the use of another.
He points out the Chartered Accountant’s certificate placed on record,
as well as the invoices, and would submit that the readily available
invoices were of the year 2010 and leave was sought to rely upon
additional invoices. He would further point out the promotional
materials which are set out from pages 171 onwards, and would submit
that there was extensive use of the Plaintiff’s mark OCTRIDE.
SQ Pathan/Sairaj 8/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
10. He submits that the use by the Defendant of the impugned mark
OTIDE in respect of the same ailment or consisting of the same
molecule does not mean that there can be no disastrous effect. He
submits that the pleading in the affidavit as regards the knowledge of
the Defendant is an argument on inordinate delay and not on
concealment, and the application under Order XXXIX Rule 4 proceeds
on that basis, whereas the Defendant was given notice of the hearing
and could have appeared. He submits that there is no positive act on
the part of the Plaintiff for the Defendant to claim acquiescence.
11. He submits that the Plaintiff secured registration of its mark
“OCTIDE” under the erstwhile Trade and Merchandise Marks Act, 1958,
which did not contain any prohibition on use of the mark derived from
INN, which came subsequently in the Trade Marks Act of 1999, and by
virtue of Section 159(2) of the Trade Marks Act, 1999, the registration
continues to be in force and have effect as if done under the provisions
of the Trade Marks Act, 1999. He submits that registration of the mark
OCTIDE helps OCTRIDE. He submits that the medical journals relied
upon by the Defendant to show that both the products were listed in
the medical journal show that, insofar as the price is concerned, the
Defendant’s price is stated as “NA,” which means that the product was
not available for sale, and hence it was not necessary, by virtue of
SQ Pathan/Sairaj 9/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
mere registration for the Defendant to initiate the present
proceedings and these medical journals do not impute knowledge
about the Defendant. He would further point out that the website
extracts set-out at page 381 of the Defendant’s application under
Order XXXIX Rule 4 do not show the date of availability of the product.
12. He would further submit that the Defendant has not given any
details as to its presence in the market, and there are no documents
certifying the sales invoices produced on record. He submits that the
Defendant’s case of co-existence cannot be accepted, as the drug
licence produced by the Defendant is of Philippines and not in India. He
would further point out that the Defendant first applied for
registration of the mark OCTIDE, claiming user since 1 st January 2001,
and has now changed stance to say that the Defendant is not using
OCTIDE. He submits that once the Defendant has secured registration
of its mark, the Defendant is estopped from taking up the plea of the
mark having been derived from INN. He submits that the Plaintiff’s
drug licence and the registration itself amounts to user. He submits
that the documents produced in rejoinder are permissible under Order
XI(1)(c), as the Plaintiff is answering the case of the Defendant. He
submits that in rejoinder, the Plaintiff has produced the annual reports,
and there is no sur-rejoinder. In support, he relied on the following
decisions :
SQ Pathan/Sairaj 10/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
(ii) Glaxo Automatic Electric Ltd. vs. United Biotech P. Ltd.2
(iii) Macleods Pharmaceuticals Ltd. vs. Union of India &
Ors.3
(iv) Hardie Trading Ktd & Anr. vs. Addisons Paint &
Chemicals Ltd.4
(vi) Midas Hygiene Industries P. Ltd.& Ors. vs. Sudhir Bhatia
& Ors.6
(vii) Hindustan Pencils P. Ltd. vs. India Stationary Products
Co. & Ors.7
(viii) Power Control Appliances & Ors. vs. Sumeet Machines
Pvt. Ltd.8
(xi) Siyaram Silk Mills Ltd. vs. Shree Siyaram Fab Pvt. Ltd. &
Ors.11
1 1999 SCC OnLine Del 27 : (1999) 77 DLT 292 : (1999) 1 Arb LR 260 : (1999) 19 PTC 81
2 MANU/DE/0999/2014
3 Judgment dated 15.02.2023 in WP/1517/2022
4 (2003) 11 SCC 92
5 MANU/MH/3536/2015
6 MANU/SC/0186/2004
7 MANU/DE/0383/1989
8 MANU/SC/0646/1994
9 F.A.O. (O.S.) 45/1976
10 (2016) 2 SCC 683
11 MANU/MH/0040/2012SQ Pathan/Sairaj 11/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
(xii) Syncom Formulations (I) Ltd. & Anr. vs. Usan
Pharmaceuticals Pvt. Ltd. & Anr.12
(xiv) Corn Products Refining Co. vs. Shangrila Food
Products Ltd.14
13. Per contra, Mr. Khandekar, learned counsel appearing for the
Defendant, submits that the Defendant is a pharmaceutical company
incorporated in the year 1997, having a global presence. He submits
that both the rival marks are derived from Octreotide and the
Defendant’s mark OTIDE has been in continuous, open and extensive
use since 1999 and is registered with effect from 2003. He submits that
the Defendant’s consolidated annual turnover for the past decade
alone is approximately Rs.3,900/- crores. He submits that, any
reference to the mark OCTIDE is immaterial, as the record shows that
neither party has commercially used OCTIDE. He submits that the rival
marks are different and there is no actionable similarity, considering
that both have been derived from generic molecule Octreotide. He
12 Order dated 01.12.2023 in IA/1588/2023 in COMIP/72/2023
13 MANU/SC/0512/2004
14 MANU/SC/0115/1959
15 Order dated 23.12.2014 in NML/2178/2012 in Suit (L)/1842/2012
SQ Pathan/Sairaj 12/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:38 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
submits that the Defendant is the registered proprietor of the mark
OTIDE, and hence there is no question of seeking any relief for
infringement.
14. He would submit that there is not even a case for passing off, as
the Defendant’s mark OTIDE was adopted on 1 st January 1999, and
material has been produced by way of invoices showing market use at
least as on 29th August 2006. He submits that for the purpose of
considering reputation and goodwill in the context of passing off, the
relevant date is the date of use of the mark by the Defendant, which
would be, if not from 1999, at least from 2006, and there is no material
produced by the Plaintiff to support any claim of goodwill or
reputation apart from one Chartered Accountant’s document, which is
also unreliable as the Chartered Accountant has certified the sales data
as being verified from the Defendant’s website. He submits that the
Chartered Accountant’s certificate at pages 74 to 82 is for a period
subsequent to the adoption of the Defendant’s mark and is therefore
immaterial. He submits that the certificate is stated to have been
issued at the request of the management and on the basis of
information and explanation given to the CA and the necessary records
produced before the CA, and there is no independent assessment.
15. He would further submit that the Plaintiff has made out a false
case of acquiring knowledge about the Defendant in June 2025,
SQ Pathan/Sairaj 13/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
whereas, way back in the year 2010, the Plaintiff’s and the Defendant’s
marks were cited in medical journals one below the other, showing the
same being derived from the molecule Octreotide. He submits that in
rejoinder, the Plaintiff has sought to brush aside such knowledge by
claiming that the same had escaped the Plaintiff’s attention. He
submits that not only have the marks been cited in medical journals,
but have also been listed as substitutes for one another, on third party
on-line pharmacies and hence, it is inconceivable that the Plaintiff had
no knowledge of the Defendant, particularly, when the Plaintiff claims
to be vigilant in protecting its registered trademark. He submits that
considering the false cause of action stated in the plaint, the Plaintiff is
not entitled to any interlocutory relief.
16. He would further submit that the rival products are admittedly
Octreotide Acetate products having the same composition and used
for the same purpose, and therefore, no question of any health hazard
arises. He would further submit that the marks having been adopted
from single molecule, the trivial differences are insufficient for
claiming infringement. He submits that the rival products are not
similar and are sold in distinct packaging, wherein the house mark as
well as the corporate names of the parties are prominently displayed,
and there is no likelihood of confusion. He submits that the Plaintiff’s
OCTRIDE mark was not cited by the trade mark registry in the
SQ Pathan/Sairaj 14/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
Defendant’s trade mark application for registration of OTIDE mark. He
submits that the co-existence of the rival marks in the market since
1999 indicates that there is no possibility of confusion, and hence no
case is made out for passing off.
17. He would submit that the action for infringement, even
otherwise, is not maintainable and is without merit, as the Plaintiff has
failed to plead any cogent case for going beyond the Defendant’s
registration of the mark. He submits that there is no question of any
ex-facie illegality, as the Plaintiff’s case is based on alleged actionable
similarity of the rival marks, alleged likelihood of confusion and alleged
failure to file documents in support of user claim of the Defendant’s
mark, which does not satisfy the extremely high threshold of ex-facie
illegality or fraud.
18. He would submit that the Plaintiff’s drug licence was obtained
on 10th September 1998, merely three months prior to the relevant
date, i.e. 1st January 1999, and the invoices are produced from the year
2010. He submits that the undated carton/packaging produced by the
Plaintiff would not substantiate goodwill on the relevant date, and
similar is the case in respect of the promotional material, which is
undated and some bear the dates after 2010. He submits that there is
no misrepresentation and no actionable similarity, as the added matter
vis-à-vis the packaging is sufficient to point out the distinction.
SQ Pathan/Sairaj 15/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
19. He submits that the ad-interim order itself would not have been
passed if it had been pointed out to the Court that the Plaintiff has
acquired its mark from the generic molecule and that incorrect reliance
was placed on the mark OCTIDE, which had, in fact, lapsed. He would
further point out paragraph 6 of the ex-parte order dated 29 th July
2025, showing that the Court proceeded on the basis that the
predecessor-in-title of the Plaintiff started using the mark OCTIDE and
OCTRIDE since 1998. He submits that the attention of the Court was
not brought to the fact that none of the invoices of the promotional
material showed user from 1998, and that the earliest invoice is from
2010. He submits that the ex-parte order came to be passed upon
comparison between both marks of the Plaintiff i.e. OCTRIDE and
OCTIDE, wherein OCTIDE ought not to have featured in the evaluation
at all. He submits that the Defendant’s mark has been openly used in
the market from 1999 to 2025 and has done substantial business, and
is pitched as a direct substitute/competitor for the Plaintiff’s OCTRIDE
product, under the Plaintiff’s mark, and shown common trade
channels. He submits that it is, therefore, unacceptable that the
Plaintiff was unaware of the Defendant’s existence till June 2025. He
submits that the balance of convenience is clearly in favour of the
Defendant, considering its adoption and user since the year 1999. In
support, he would rely on the following decisions:
SQ Pathan/Sairaj 16/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
(i) Schering Corporation & Anr. vs. United Biotech (P) Ltd &
Anr.16
(ii) Macleods Pharmaceuticals Ltd. vs. Swisskem Healthcare &
Anr.17
(iii) Sun Pharmaceutical Laboratories Ltd. vs. Hetero
Healthcare Ltd. & Anr.18
(v) Amritdhara Pharmacy vs. Satya Deo Gupta20
(vii) Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories
Ltd.22
(x) Chemco Plastic Industries Pvt. Ltd. vs. M/s. Chemco Plast25
(xi) Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd. & Ors.26
(xii) Corona Remedies Pvt. Ltd. vs. Franco-Indian
Pharmaceuticals Pvt. Ltd.27
16 2010 SCC OnLine Bom 1528 : (2010) 7 Mah LJ 611
17 Order dated 02.07.2019 in COMIP Suit NO.32/2011
18 2022 SCC OnLine Del 2580 : (2022) 92 PTC 538
19 Judgment dated 08.02.2023 in C.O. (Comm.IPD-TM) 55/2021
20 1962 SCC OnLine 13 : (1963) 2 SCR 484 : AIR 1963 SC 449
21 MANU/TN/1162/2015
22 2005 SCC OnLine Bom 1160 : (2006) 1 Bom CR 292
23 1990 (Supp) SCC 727
24 Order dated 09.09.2025 passed in IA(L)/22614/2022 in COMIP Suit No.348/2025
25 Order dated 03.12.2025 in IA/2165/2024 in COMIP Suit/80/2024
26 (2001) 5 SCC 95
27 2023 SCC OnLine Bom 833SQ Pathan/Sairaj 17/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
(xiii) Mangalam Organics Ltd. vs. N. Ranga Rao & Sons Pvt. Ltd.28
(xv) Sun pharmaceuticals Laboratories Ltd. vs. Hetero
Healthcare Ltd. & Anr.30
20. In rejoinder, Mr. Kirpekar would submit that, insofar as the
passing off action is concerned, the alleged user is required to be
considered from the year 2006. He submits that there is no response to
the submission that the Plaintiff’s drug licence is of Philippines and
Srilanka and that under Section 18(6)(c) of the Drugs and Cosmetics
Act, without a licence, the impugned product could not have been
manufactured and marketed by the Defendant. He would further
submit that the decision relied upon by the Defendant to contest the
case of goodwill and reputation on the basis of the CA certificate arises
out of proceedings under Section 57 of the Trade Marks Act. He would
further point out that the CA certificate is dated 2014 and is not
created for the purpose of the suit and hence is believable. He would
further submit that, as on the date the Defendant commenced use, the
Plaintiff had already achieved substantial sales turnover and produces
the chart showing the comparative sales. He would submit that the
decision in the case of Macleods Pharmaceuticals vs. Swiss Cam
28 Order dated 03.09.2025 passed in IA(L)/7446/2025 in COMIP Suit/194/2025
29 501 2015 (1) Mh.L.J.
30 2022 SCC OnLine Del 2580 : (2022) 92 PTC 536
SQ Pathan/Sairaj 18/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
Health Card & Ors. (supra), arose out of IPAB proceedings and the
proposition of law can be found in paragraph 24 of the said decision.
REASONS & ANALYSIS :
21. The action is for infringement of trade mark and passing off. The
rival marks are OCTRIDE vs. OTIDE.
22. Though the plaint pleads about the registration of the mark
OCTIDE, the cause of action is based on infringement of the trade
mark OCTRIDE. The Defendant had secured registration of the mark
OCTIDE, however neither the Plaintiff nor the Defendant commercially
used the mark OCTIDE and hence the mark OCTIDE is beyond the
scope of consideration.
23. The contest is essentially between Plaintiff’s OCTRIDE vs. OTIDE.
The Plaintiff’s mark “OCTRIDE” is used for medicinal preparation
prescribed to treat acromegaly, carcinoid tumors and bleeding
esophageal varices and to prevent complications following surgery of
the pancreas. The active pharmaceutical ingredient (API) is Octreotide
Acetate. The Defendant’s product marketed under the impugned mark
OTIDE was applied for registration on 29th December, 2003 claiming
user since 1st January, 1999. The impugned product is used for treating
identical ailment and is derived from the same molecule i.e. Octreotide
Acetate.
SQ Pathan/Sairaj 19/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
24. Mr. Kirpekar would emphasize on the registration of the mark
“OCTIDE” to bolster its case of infringement against “OCTRIDE”.
Section 55 of the Trade Marks Act, 1999 provides that where use of a
registered trade mark or of substantially identical trade mark is
required to be proved for any purpose, the Court may accept the use of
a registered associated trade mark. It is an admitted position that the
registration of the Plaintiff’s mark “OCTIDE” lapsed way back in the
year 2008 and the mark was never commercially exploited. No help can
be derived by the Plaintiff of the lapsed registration of its mark
“OCTIDE”, which was never put to use.
25. The Defendant has also secured registration of its mark “OTIDE”
under the Trade Marks Act, 1999 and under Section 31, the
registration is prima facie evidence of its validity. The registration of
the Defendant’s mark surpasses the challenge under Sections 9 and 11
which constitute the grounds for refusal of registration. The position is
that both the Plaintiff and the Defendant are registered proprietors of
the mark and are entitled to statutory protection granted by the Trade
Marks Act, 1999. Section 28(3) of Trade Marks Act, 1999 reads as under:
“(3) Where two or more persons are registered
proprietors of trade marks which are identical with or
nearly resemble each other, the exclusive right to use of
any of those trade marks shall not (except so far as their
respective rights are subject to any conditions or
SQ Pathan/Sairaj 20/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
limitations entered on the register) be deemed to have
been acquired by any of those persons as against any
other of those persons merely by registration of the
trade marks but each of those persons has otherwise the
same rights as against other persons(not being
registered users using by way of permitted use) as he
would have if he were the sole registered proprietor.”
26. Section 30 of the Trade Marks Act, 1999 limits the effect of
registered trade mark and Section 30(2)(e) reads as under:
“(2) A registered trade mark is not infringed where-
(e) the use of registered trade mark, being one of two or
more trade marks registered under this Act which are
identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by
registration under this Act.”
27. To overcome the obstacle of registration of the Defendant’s
mark, the Plaintiff would seek to assail the validity of the registered
mark. The rival marks are derived from the API Octreotide Acetate.
The Plaintiff has appropriated the first four letters “OCTR” and the last
three letters “IDE” from the API and the Defendant has appropriated
the last five letters “OTIDE” from the API.
28. To maintain an action for infringement of the registered trade
mark against another registered proprietor, the Plaintiff is required to
show that the registration of the impugned mark is ex-facie illegal,
fraudulent and as such shocks the conscience of the Court,which are
SQ Pathan/Sairaj 21/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
the principles laid by the Hon’ble Full Bench of this Court in Lupin
Limited vs. Johnson and Johnson (supra).
29. The pleading in the plaint to assail the validity of the Defendant’s
registered trade mark can be found in paragraph no. 26 of the plaint
that the Defendant had express and/or constructive notice of the
Plaintiff’s trade mark and that there is no documents produced to
show user claim. The other averments are the usual pleadings as
regards likelihood of confusion, mala fide intent etc, which are in
essence reproduction of the ingredients of Section 29 of the Trade
Marks Act, 1999.
30. In the examination report for registration of the Defendant’s
mark “OCTIDE”, the Plaintiff’s mark “OCTIDE” was cited. The same by
itself is not sufficient to assail the validity as being fraudulent or illegal
or such that it shocks conscience of the Court insofar as the impugned
mark “OTIDE” is concerned. As the Defendant has already secured
registration of its mark, it has passed the muster of distinctiveness and
to disturb the same, there must be ex-facie fraud or illegality shown.
As no monopoly can be claimed in the generic molecule, and both
marks being derived from API, in my view, the registration is not ex-
facie illegal, fraudulent or such as shocks the conscience of the Court.
There is no prima facie case made out for going beyond the validity of
the Defendant’s registration on basis of abandoned mark of “OCTIDE”
SQ Pathan/Sairaj 22/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
and absence of user document since 1999. Pertinently, the Plaintiff
has not filed any rectification application, and hence, no action for
infringement of trade mark would lie against the Defendant’s mark.
Neither party can raise the plea of the mark being non-registrable as
they have themselves applied for registration of the mark which
implies that the parties considered their mark to be distinctive.
31. The only issue which remains to be considered is the action for
passing off. Section 27(2) of the Trade Marks Act, 1999 provides that
nothing in the Trade Marks Act shall be deemed to affect right of
action of passing-off.
32. The well settled tests to be applied in an action for passing off
remains undisturbed as to reputation and goodwill, misrepresentation
and damage. The goodwill and reputation to be established is on the
date on which the use of the impugned mark commences. In case of
passing off, the similarity of the rival marks should be relatable to the
aspect of confusion and deception. The rival marks are OCTRIDE vs
OTIDE. The Defendant has deleted the alphabet “C” and “R” from their
mark. The well settled test is that the marks have to be compared as a
whole and when so compared there is phonetic similarity between the
two marks. It is not permissible to dissect the marks and compare its
syllable to syllable. (See Order dated 8th April, 2026 passed in
Commercial Appeal (L) No 42382 of 2025- Sun Pharmaceuticals India
SQ Pathan/Sairaj 23/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
Ltd vs Meghmani Lifesciences Ltd.). The molecule is Octreotide
Acetate and it was possible for the Defendant to create sufficient
distance between its mark and that of the Plaintiff using different
permutations and combinations. Using portions of the API Octreotide
in a deceptively similar manner results in the possibility of rival marks
being pronounced similarly and likely to cause confusion especially
where there is hurried utterances. The incorrect pronunciation of trade
marks used for marketing medicines is not uncommon, when the mark
is derived from the molecule which is usually not a known and often
used word. It cannot be accepted that there would be eloquent precise
pronunciation of the Plaintiff’s mark with the correct syllables. The
medicines would be purchased across the country including the rural
areas and exacting judicial scrutiny is the well settled principle to be
applied. In my view, the decision in Cadila Health Care vs Cadila
Pharmaceuticals Ltd. (supra) lays down the proposition which aligns
with the concept that medicinal and pharmaceutical preparations
operates in a distinct silo demanding lesser threshold of confusion and
deception. The test is of bare possibility as opposed to the likelihood
of confusion. When so applied, by reason of their phonetic similarity,
there is strong possibility of the confusion being caused by use of the
impugned mark.
33. The Defendant has secured registration of its mark on 29 th
SQ Pathan/Sairaj 24/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
December, 2003 claiming user since 1st January, 1999. In its Affidavit-in-
reply to the Interim Application, the Defendant has annexed the
certificate of product registration which is however, of Republic of
Philippines and which has been issued on 8th September, 2023. The
certificate of registration of the mark OTIDE under the National
Medicines Regulatory Authority, 2015 shows the period of validity
from the year 2018-2020 and onwards. The invoice which has been
produced is of 29th August, 2006 which shows the sale of medicinal
preparation bearing the impugned mark. There is no document which
has been produced on record to show user since 1999 as claimed or
from the year 2003 i.e. from the date of registration. In view of the
material which is placed on record, at this stage, it would be
appropriate to consider the use of the impugned mark as of the year
2006, and the Plaintiff has to show goodwill and reputation as of 2006.
34. Coming to the documents produced by the Plaintiff to
demonstrate goodwill and reputation, the Plaintiff has produced
photographs of different cartons used by the Plaintiff in respect of its
product bearing the trade mark “OCTRIDE”. Perusal of the said
document at Exhibit-D would indicate that the cartons are undated and
does not reflect any details as regards manufacturing date, batch
number, etc. The photographs of the cartons cannot be accepted as
proof of user. The product permission for launch of new drug OCTRIDE
SQ Pathan/Sairaj 25/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
was granted by the Commissioner of Food & Drugs Control
Administration on 10th September, 1998. The Plaintiff has produced the
chartered accountant’s certificate which has been issued on 21 st
November, 2014 certifying the sales in respect of the trade mark
OCTRIDE for the period from 1999-2000 onwards. Considering the date
of the chartered accountant’s certificate, the same is evidently not
issued for the purpose of filing of the suit. The area wise sales figure
from the year 1999 is given as Annexure to the certificate. There is no
reason as to why after obtaining product launch permission, the drug
would not have been marketed by the Plaintiff. For the period from
2006-2007, the sales are shown in the range about Rs. 7,70,00,000/-.
Though the invoices produced are since the year 2010, at this stage,
the certificate of the chartered accountant along with the permission
from the Food and Drugs Control Administration can be accepted to
show use of the Plaintiff’s mark since the year 1999 and the goodwill
and reputation of the Plaintiff as of the year 2006, when the
Defendants commenced the use of the mark. In the case of Brihan
Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana31, the Hon’ble Apex Court in the
context of goodwill and reputation has held that while deciding an
application for temporary injunction in the suit for passing-off action,
31 2023 INSC 831.
SQ Pathan/Sairaj 26/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
in the given case, the statement of accounts signed by the chartered
accountant of Plaintiff indicating expenses incurred on advertisement
and promotion and figures of sales may constitute a material which can
be considered for examining whether a prima facie case was made out
by the Appellant/Plaintiff, however, at the time of final hearing of the
suit, the figures must be proved in the manner known to law.
35. The Defendant has not produced any material to show user
since the year 1999 and has produced chartered accountant certified
statements showing the sales turn over from the year 2006-2007. The
annual sales turnover for the period 2006-2007 is about 27 lakhs at the
time when the Plaintiff’s sales turnover was about Rs 7 Crores. At the
interim stage, considering the voluminous sale of its product under the
OCTRIDE mark at the relevant date upon commencement of user by
the Defendant, prima facie, the Plaintiff has demonstrated reputation
and goodwill in the mark.
36. In so far as the aspect of delay and misrepresentation is
concerned, it will be apposite to refer to the decision of Wockhardt vs.
Torrent Pharmaceuticals Ltd32 in some detail. In that case, the Appeal
reached the Hon’ble Apex Court against the order of the Hon’ble
Division Bench of this Court upsetting the findings of the Learned
Single Judge of this Court in respect of action of passing off. The
32 AIR 2018 SC 5106
SQ Pathan/Sairaj 27/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
Hon’ble Apex noted the findings of the Learned Single Judge in
paragraph 2 as under:
“2. The skeletal facts necessary to decide this appeal are
that the plaintiff-respondent has a trade mark called
“Chymoral” and “Chymoral Forte”, which is a drug
administered post-surgically for swellings that may arise
and/or wounds that may arise. It is interesting to note
that the expression “Chymo” comes from the generic
name of the drug which is Chymotrypsin-Trypsin. The
Single Judge ultimately found, after a copious reference
to the facts and case law, as follows: (Torrent
Pharmaceuticals Ltd. case [Torrent Pharmaceuticals Ltd. v.
Wockhardt Ltd., 2017 SCC OnLine Bom 318] , SCC OnLine
Bom para 50)“50. In the present case, I am not satisfied that any
of these tests are met. Reputation as to source is
not sufficiently demonstrated. The rival products
have long co-existed and I cannot and will not
presume misrepresentation by Wockhardt as to
source, even assuming there is similarity. There is no
explanation at all for Torrent’s past conduct and the
inaction with knowledge, or deemed knowledge, of
Wockhardt’s trade mark registration application, its
advertisement and subsequent registration, with
not a single objection from Torrent or is
predecessor-in-title. There is no answer about the
caveats or about the coexistence of other players in
the market. There is simply no misrepresentation
shown as required by law, at this prima facie stage.
SQ Pathan/Sairaj 28/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
There being no prima facie case made out, I cannot
grant the injunction. The balance of convenience
seems to me to favour entirely the defendants; after
all, to the plaintiff’s knowledge, they have had their
product in the market for a very long time, at the
very least for five years, possibly more, and an
injunction at this stage is far removed from the
prima facie status quo that Wander v. Antox
[Wander Ltd. v. Antox (India) (P) Ltd., 1990 Supp SCC
727] tells us is the primary objective. There is no
injury, let alone an irreparable one, to the plaintiff
that I can tell if an injunction is refused. It has not
had one all this time while the defendants’ business
has grown into crores. To grant the injunction would
be unfairly monopolistic.”
(emphasis in original)
37. The Hon’ble Apex Court held in paragraph 8 and 9 as under:
“8. We may indicate, at this juncture, that insofar as the
second test is concerned, this Court has in a plethora of
judgments held that though passing off is, in essence, an
action based on deceit, fraud is not a necessary element
of a right of action, and that the defendant’s state of
mind is wholly irrelevant to the existence of a cause of
action for passing off, if otherwise the defendant has
imitated or adopted the plaintiff’s mark. We need only
state the law from one of our judgments, namely, in
Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V. Patel
v. Chetanbhai Shah, (2002) 3 SCC 65] , which reads as
under: (SCC p. 73, para 13)SQ Pathan/Sairaj 29/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt“13. In an action for passing off it is usual, rather
essential, to seek an injunction, temporary or ad
interim. The principles for the grant of such injunction
are the same as in the case of any other action against
injury complained of. The plaintiff must prove a prima
facie case, availability of balance of convenience in his
favour and his suffering an irreparable injury in the
absence of grant of injunction. According to Kerly
[Law of Trade Marks and Trade Names (12th Edn.,
Sweet & Maxwell, London 1986).] (ibid, para 16.16)
passing off cases are often cases of deliberate and
intentional misrepresentation, but it is well settled
that fraud is not a necessary element of the right of
action, and the absence of an intention to deceive is
not a defence, though proof of fraudulent intention
may materially assist a plaintiff in establishing
probability of deception. Christopher Wadlow in Law
of Passing Off (1995 Edn., at p. 3.06) states that the
plaintiff does not have to prove actual damage in
order to succeed in an action for passing off.
Likelihood of damage is sufficient. The same learned
author states that the defendant’s state of mind is
wholly irrelevant to the existence of the cause of
action for passing off (ibid, paras 4.20 and 7.15). As to
how the injunction granted by the court would shape
depends on the facts and circumstances of each case.
Where a defendant has imitated or adopted the
plaintiff’s distinctive trade mark or business name, the
order may be an absolute injunction that he would not
use or carry on business under that name. (Kerly [LawSQ Pathan/Sairaj 30/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odtof Trade Marks and Trade Names (12th Edn., Sweet &
Maxwell, London 1986).] , ibid, para 16.97).”
This judgment has been followed in S. Syed
Mohideen v. P. Sulochana Bai [S. Syed Mohideen v. P.
Sulochana Bai, (2016) 2 SCC 683 : (2016) 2 SCC (Civ)
201] , SCC at pp. 699-700. Also, in Satyam Infoway Ltd.
v. Siffynet Solutions (P) Ltd. [Satyam Infoway Ltd. v.
Siffynet Solutions (P) Ltd., (2004) 6 SCC 145] , this
Court held: (SCC p. 151, para 14)
“14. The second element that must be
established by a plaintiff in a passing off action is
misrepresentation by the defendant to the public. The
word misrepresentation does not mean that the
plaintiff has to prove any mala fide intention on the
part of the defendant. Of course, if the
misrepresentation is intentional, it might lead to an
inference that the reputation of the plaintiff is such
that it is worth the defendant’s while to cash in on it.
An innocent misrepresentation would be relevant only
on the question of the ultimate relief which would be
granted to the plaintiff [Cadbury Schweppes Pty. Ltd. v.
Pub Squash Co. Pty. Ltd. [Cadbury Schweppes Pty. Ltd.
v. Pub Squash Co. Pty. Ltd., 1981 RPC 429 : (1981) 1
WLR 193 (PC)] , Erven Warnink Besloten Vennootschap
v. J. Townend and Sons (Hull) Ltd. [Erven Warnink
Besloten Vennootschap v. J. Townend and Sons (Hull)
Ltd., 1980 RPC 31 : 1979 AC 731 (HL)] ].
9. The Division Bench essentially interfered with the
judgment of the Single Judge on this score and also found
SQ Pathan/Sairaj 31/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
that the Single Judge was incorrect in stating that
“reputation as to source is not sufficiently demonstrated”.
It found that reputation was established from the sales
figures, and the fact that the plaintiff was clearly a prior
user would make it clear that the first pre-requisite for the
action in passing off was made out. Where the Division
Bench and the Single Judge really locked horns was on the
point of acquiescence. The Single Judge found that not
only was there a lying by for a long period, but that there
was positive action on the part of the plaintiff in leading
the defendant to believe that he could build up his
business, at which point the plaintiff swooped in to
interdict and throttle that business as it was rising just as
sales were rising. On this count, the Division Bench
[Torrent Pharmaceuticals Ltd. v. Wockhardt Ltd., 2017 SCC
OnLine Bom 9666] interfered with the Single Judge as
follows: (SCC OnLine Bom paras 89-91)
“89. The learned Judge then attributes acquiescence
to the plaintiff. The plaintiff’s predecessor in title did
not object to the trademark registration application.
It allowed others to do so and it is the plaintiff’s
failure to bring a suit on service of a caveat. Thus,
there is no objection from the plaintiff. It only
means that the plaintiff kept quiet when the
application for registration was made by the
defendant. They failed to object to the advertisement
of the defendant’s application or when the
defendant brought its project in market. They did not
object to other entities introducing their products in
the market either. This is enough to assume
SQ Pathan/Sairaj 32/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
acquiescence. We do not think this to be the position
on facts and in law. A plea of acquiescence to be raised
in defence so as to succeed ought to be supported by
weighty materials to that effect. Since the Single
Judge has referred to the judgment of the Hon’ble
Supreme Court in Power Control Appliances v. Sumeet
Machines (P) Ltd. [Power Control Appliances v. Sumeet
Machines (P) Ltd., (1994) 2 SCC 448] , we would refer
to it in some details. Paras 4, 5, 7, 11, 12, 13, 14, 15 and
16 of this judgment were heavily relied upon by
Mr Tulzapurkar. In that, the facts and the submissions
are summarised. Then, in para 20, the argument of
the respondent before the Hon’ble Supreme Court
was set out. In paras 27, 28, 29 and 30, the English
judgments were noted and up to para 31. Thereafter,
the decisions rendered by our Hon’ble Supreme Court
and other courts have been noted.
90. We are in agreement with Mr Tulzapurkar that
even at this prima facie stage, there is no positive act
which can be attributed to the plaintiff so as to deny
the relief. There is no acquiescence which can be
culled out. Beyond referring to some general
principles, we do not find any material placed before
the Single Judge from which an inference of
acquiescence can be drawn. Mr Dwarkadas has, on this
point, relied upon certain judgments and even in the
written submissions, there is reference to general
principles. All that the first defendant says is as under:
‘(ii) The defence of the acquiescence is available to
Respondent 1 since the plaintiff was aware of its rightSQ Pathan/Sairaj 33/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odtand the defendant was ignorant of its own right and
despite the same, the plaintiff assents to or lays by in
relation to the acts of the defendant and in view of
the same, it would be unjust in all circumstances to
grant the relief of injunction to the plaintiff. It is
submitted that the requirements stand duly fulfilled
and on the above set of facts where from 2009/11, the
appellant/its predecessors are duly aware of
Respondent 1’s trademark; the use of Respondent 1’s
mark openly and on an extensive scale; and at no point
for over 7 years did the appellant or its predecessors
contest the same. On the contrary, the appellant’s
2014 acquisition of the trademark is with full notice of
the adoption and use and registration of Respondent
1’s trademark. As such, the principles of acquiescence
and waiver apply with full vigour.
(iii) Acquiescence is a species of estoppel and
therefore both a rule of evidence and a rule in equity.
It is an estoppel in pais: a party is prevented by his
other own conduct from enforcing a right to the
detriment of another who justifiably acted on such
conduct.
(iv) The “positive act” as referred to in the decision of
the Hon’ble Apex Court in Power Control Appliances v.
Sumeet Machines (P) Ltd. [Power Control Appliances v.
Sumeet Machines (P) Ltd., (1994) 2 SCC 448] (relied
upon by the appellant) cannot mean that the plaintiff
“green lighting” the defendant’s action only to later
complain of it. The “positive act” is the “sitting by” or
“laying by” i.e. not mere silence or inaction but a
SQ Pathan/Sairaj 34/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
refusal or failure to act despite knowledge of invasion
and opportunity to stop it. In the present case, from
2009, the appellant and/or its predecessors have
been at notice of Respondent 1’s adoption, use and
registration of its trademark and against that there
has been a complete failure to register any protest or
objection. In 2014, the appellant acquired the
trademark with full notice of Respondent 1’s
registration and use of the trademark “Chymtral”. This
qualifies for both acquiescence and estoppel
defences.’
91. Thus, the attempt is to equate delay with
acquiescence and which is not correct. We do not
think that because the appellants stepped in the
year 2014 with notice of the first respondent’s
registration and use of the mark that means the
appellant-plaintiff has acquiesced in the same. That is
not a positive act and which is required to deny the
relief on the ground of acquiescence.”
38. The Hon’ble Apex Court approved the view of the Hon’ble
Division Bench that delay cannot be equated with acquiescence merely
because the Plaintiff had stepped in after several years after notice of
the Respondent’s mark. This is precisely the case here, where the
submission of acquiescence is that by reason of its presence in medical
journals, by being cited as substitute of Plaintiff’s product, trading in
common channels etc. As held by the Hon’ble Division Bench and
SQ Pathan/Sairaj 35/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
approved by the Hon’ble Apex Court, the sitting by cannot be said to be
a positive act and amounts to equating delay with acquiescence. Mr.
Kirpekar has also pointed out that in the medical journals, though the
mark OTIDE is reflected, the price is shown as non applicable for the
reason that the drug marketed under the impugned mark was not
available. There was thus no reason for the Plaintiff to institute any
proceeding as there was no damage to its reputation and goodwill.
39. The Plaintiff has been able to show the sales turnover of the
product marketed under the registered trade mark OCTRIDE since the
year 1999, which prima facie implies prior user of the mark since the
year 1999. The documents produced by the Defendant are of the year
2006 and the comparative sales figures show the great divide between
the sales under the rival marks. In Bal Pharma Ltd. vs. Centaur
Laboratories Pvt. Ltd. & Anr.33, the Hon’ble Division Bench of this
Court has held that where the Defendant to an action has been using
the mark, even if concurrently, without making himself aware as to
whether the same mark is registered in the name of some other
person, he cannot be heard to complain as he has not bothered to take
the elementary precaution of making himself aware by taking a search
of the trade mark registry as to whether the mark is registered in the
name of other person.
33 2001 SCC OnLine Bom 1176
SQ Pathan/Sairaj 36/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
40. The Supreme Court in the decision between Milment Oftho
Industries (supra) after reviewing the law on the subject held as
follows:
“7. In respect of medicinal products it was held that
exacting judicial scrutiny is required if there was a
possibility of confusion over marks on medicinal products
because the potential harm may be far more dire than
that in confusion over ordinary consumer products. It
was held that even though certain products may not be
sold across the counter, nevertheless it was not
uncommon that because of lack of competence or
otherwise that mistakes arise specially where the trade
marks are deceptively similar. It was held that confusion
and mistakes could arise even for prescription drugs
where the similar goods are marketed under marks which
looked alike and sound alike. It was held that physicians
are not immune from confusion or mistake. It was held
that it was common knowledge that many prescriptions
are telephoned to the pharmacists and others are
handwritten, and frequently the handwriting is not
legible. It was held that these facts enhance the chances
of confusion or mistake by the pharmacists in filling the
prescription if the marks appear too much alike.”
41. The passing-off action which is common law remedy is founded
on the principle that no man shall trade its goods as that of the others
and be unjustly enriched by the others goodwill and reputation. In light
of the said proposition, the fact that the compositions may be similar
SQ Pathan/Sairaj 37/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
by itself is not sufficient to refuse injunction against passing off.
Careful scrutiny is also necessitated for the reason that the ailments
that the rival drugs treat are serious ailments. In Sun Pharmaceuticals
India Ltd vs Meghmani Lifesciences Ltd. (supra), the Hon’ble Division
Bench held that the Plaintiff cannot claim any monopoly over a word,
which may be indicative of the active ingredient used in the product or
in cases where there is presence of a component which it generic, but
in cases where there is phonetic similarity, there is more chance of
confusion as one product may be taken as a prescribed medicine, but it
may not give the desired result.
42. Mr. Khandekar has emphasised on the difference in the
packaging/trade dress of the products. In Sun Pharmaceuticals India
Ltd vs Meghmani Lifesciences Ltd(supra), the Hon’ble Division Bench
of this Court in context of medicinal preparations has declined to go
into the difference of trade dress and has gone into phonetic similarity,
which was held to have potential for confusion and is the real test to
determine the similarity. This Court is respectfully bound by the
decision of the Hon’ble Division Bench.
43. Coming to the decisions relied upon by Mr. Khandekar, in
Schering Corporation and Another vs. United Biotech (P) Limited
(supra), the Court noted that there was no possibility of confusion as
the Defendant’s product was purchased in bulk by hospitals and not
SQ Pathan/Sairaj 38/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
sold over the counter, whereas the Plaintiff’s products were sold over
the counter.
44. In the case of Macleods Pharmaceuticals Limited vs. Swisskem
Healthcare Limited and Another (supra), the action was in respect of
passing-off. The Co-ordinate Bench held that the marks were not
similar and there was no consideration as regards the packaging/trade
dress as no proprietary right in the packaging/trade dress was proved
by the Plaintiff. In that case, the packaging was similar and despite
thereof, as there was no visual, phonetic similarity between the two
marks, the Court did not consider the question of similarity between
the rival marks.
45. In the case of Sun Pharmaceutical Laboratories Limited vs.
Hetero Healthcare Limited (supra), the inquiry was not confined to the
trade dress in the context of passing-off and on overall conspectus of
the matter, the Delhi High Court held the marks not to be deceptively
similar.
46. In the case of Anubhav Jain vs. Satish Kumar Jain (supra), the
proceedings arose out of Section 57 of the Trade Marks Act, 1999 and
the Court was not convinced with mere chartered accountant’s
certificate unsupported by any document could suffice any evidence
for user.
SQ Pathan/Sairaj 39/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
47. In the case of Amritdhara Pharmacy vs. Satya Deo Gupta
(supra), the Hon’ble Apex Court considered the plea of acquiescence
and held in the facts of that case that there was no fraudulent user as
the name was first used in 1923. In that case, the Hon’ble Apex Court
found that rival marks were similar, however, did not find any
fraudulent user and that the claimant was well-aware of the
advertisements of Respondents. In the present case, the
advertisements would indicate that the price quoted was nil which
implies that the goods were not available.
48. The next decision is Sun Pharma Laboratories Limited vs.
Psycoremedies Ltd. (supra), where Madras High Court found that the
rival marks were constantly featuring together since 2008 and
therefore, the Plaintiff ought to have knowledge of the Defendant’s
trade mark, in that case, the Court held that the case is of delay as well
as laches and acquiescence. The decision in Wockhardt vs Torrent
Pharmaceuticals Ltd. (supra) would bind this Court.
49. In the case of Medley Pharmaceuticals Limited vs. Khandelwal
Laboratories Limited (supra), this Court upon comparison of the marks
therein has held that no exclusivity could be claimed by the Plaintiff as
the same is commonly used by many companies in the market. The
decision was rendered in the facts of that case.
SQ Pathan/Sairaj 40/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
50. The proposition of law laid down in the case of Wander Limited
vs. Antox India P. Limited (supra) is not debated.
51. The decision in the case of Velji Karamshi Vaid vs. V3 Fashion
(supra) turned on the facts where there were no documents produced
to demonstrate the goodwill and reputation and there was
suppression of material facts.
52. In the decision in the case of Chemco Plastic Industries Private
Limited vs. M/s Chemco Plast (supra), the Co-ordinate Bench, in the
facts of that case found that the Plaintiff had failed to establish prior
user of the mark. In the context of passing-off, the Co-ordinate Bench
considered the classical trinity test and found that Plaintiff has not
established the formidable goodwill and reputation at the time when
Defendant commenced the use of the mark. On the aspect of
acquiescence, it held that the user by the Plaintiff was neither
dishonest nor negligent and is traceable to the year 1999. The decision
was rendered in the facts of that case and there is no quarrel with the
test applied by Co-ordinate Bench in the facts of that case.
53. In the case of Uniply Industries Limited vs. Unicorn Plywood
Pvt. Ltd. (supra), the Hon’ble Apex Court considered the aspect of prior
user and in that context noted that even prior small sales of the mark
are sufficient to establish priority, the test being to determine
continuous prior user and volumes of sale or the degree of familiarity
SQ Pathan/Sairaj 41/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
of the public with the mark. The Hon’ble Apex Court has further noted
that contrary view has also been taken where the Courts have
classified small sales volume as so small and inconsequential which
facts have to be thrashed out at the time of trial. The Plaintiff in the
present case has demonstrated prior use of its mark.
54. Insofar as Corona Remedies Private Limited vs. Franco-Indian
Pharmaceuticals Private Limited (supra) is concerned, the Hon’ble
Apex Court has directed that the same will not constitute a precedent.
55. The decision in the case of Mangalam Organics Limited vs. N.
Ranga Rao and Sons Private Limited (supra) was rendered in the facts
of that case as apart from the merits of the case, the Court found
suppression of material facts.
56. In light of the above discussion, the Plaintiff has made out prima
facie case for grant of interim injunction against passing off. The
Plaintiff has produced documentary material to prima facie establish
the use of the registered mark OCTRIDE since the year 1999, whereas
the documents produced by the Defendants prima facie establishes
user since the year 2006. At the relevant time, when the Defendant
commenced the use of the mark, the Plaintiff had achieved substantial
goodwill and reputation. Comparatively, the Plaintiff’s sales turnover
was about Rs 7 crores as against the Defendant’s turnover of about Rs
27 lakhs in the year 2006. The balance of convenience is in favour of
SQ Pathan/Sairaj 42/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
the Plaintiff as the deceptively similar mark is likely to cause damage to
the reputation and goodwill of the Plaintiff. Considering that the
parties are in same pharmaceutical segment, the Defendant is deemed
to be aware of existence of the Plaintiff’s mark.
57. In view of the above, the Interim Application (L) No.19536 of
2025 is allowed in terms of prayer clause (b), which reads thus :
“b) that pending the hearing and final hearing of the suit, the
Defendant by itself, its proprietors/partners, promoters,
directors, affiliates, associate/s, sister/group companies,
employees, servants, agents, dealers, stockist, super-stockists,
e-commerce and warehouse aggregators, distributors,
wholesalers, retailers, custodians, agents, assignees,
franchisees, licensees, predecessors, successors and all persons
claiming through and/or under them or acting on their behalf
and all those connected with them be restrained by a
temporary order and injunction of this Hon’ble Court from
trading, using, manufacturing, selling, marketing, stocking,
promoting, advertising, distributing, exporting, importing,
exhibiting, displaying and/or offering for sale or otherwise in
shops or on their own website or any other website owned,
managed and/or controlled by the Defendant/s or on any other
e-commerce or platforms/sites or websites and/or using in any
manner in relation to their medicinal and pharmaceutical
preparations the impugned marks ‘OCTIDE’ and ‘OTIDE’ and/or
trademark containing the word ‘OCTRIDE’ and/or any mark
identical and/or being deceptively and/or being confusingly
similar to the Plaintiff’s ‘OCTRIDE’ trademark so as to pass off
or enable others to pass off the Defendant’s goods as and for
that of the Plaintiff.”
58. The Interim Application (L) No. 19536 of 2025 stands disposed of
accordingly.
SQ Pathan/Sairaj 43/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
IA-L-19536-2025 & IA-5318-2025-J.odt
59. The Interim Application No.5318 of 2025 does not survive for
consideration. The same stands disposed of accordingly.
[SHARMILA U. DESHMUKH, J.]
SQ Pathan/Sairaj 44/44
::: Uploaded on – 04/05/2026 ::: Downloaded on – 04/05/2026 21:49:39 :::
