Phonetic similarity in pharmaceutical marks necessitates interim injunction against passing off despite defendant’s trademark registration.

The Plaintiff, Sun Pharma, filed a suit seeking a permanent injunction against the Defendant for trademark infringement and passing off.

The Plaintiff uses the mark ‘OCTRIDE’ (registered in 2003 with a 1998 user claim) for a drug containing ‘Octreotide Acetate’.

The Defendant uses the mark ‘OTIDE’ (registered in 2003 with a 1999 user claim) for a drug with the same composition.

The Plaintiff previously held a registration for ‘OCTIDE’ which lapsed in 2008 without commercial use.

The Defendant filed an application (IA 5318/2025) under Order XXXIX Rule 4 of the CPC to vacate an ex-parte ad-interim order dated July 29, 2025, which had restrained the use of the mark ‘OTIDE’.

1. Whether an action for trademark infringement is maintainable against a registered proprietor of a mark when the Plaintiff’s own registration has lapsed or the mark is derived from a generic molecule.

2. Whether the Defendant’s mark ‘OTIDE’ is deceptively similar to the Plaintiff’s mark ‘OCTRIDE’ so as to constitute passing off.

3. Whether the Plaintiff is barred by the principles of delay, laches, and acquiescence from seeking interim relief.

The Court applied Section 28(3) and 30(2)(e) of the Trade Marks Act, 1999, which stipulate that one registered proprietor cannot sue another for infringement.

Regarding the validity of registration, it relied on the Full Bench decision in Lupin Limited v. Johnson & Johnson, requiring a showing of ex-facie illegality or fraud to bypass the registration shield.

For passing off, the Court applied the "Classical Trinity" test (goodwill, misrepresentation, and damage) and the principles for medicinal marks established in Cadila Health Care v. Cadila Pharmaceuticals Ltd. and Milmet Oftho Industries v. Allergan Inc.

It followed Wockhardt v. Torrent Pharmaceuticals Ltd. to distinguish between mere delay and positive acquiescence.

The Court first dismissed the infringement claim, noting that since both parties are registered proprietors and no ex-facie fraud was proved in obtaining the ‘OTIDE’ registration, Section 28(3) bars infringement proceedings.

Moving to passing off, the Court found ‘OCTRIDE’ and ‘OTIDE’ phonetically similar under the "whole mark" comparison test, emphasizing that medicinal products require a lower threshold of confusion.

The Court accepted the Plaintiff’s Chartered Accountant certificate (dated 2014) and FDA permissions as prima facie proof of prior user and substantial goodwill since 1999, overshadowing the Defendant’s 2006 user evidence.

Regarding acquiescence, the Court held that the Plaintiff’s failure to act earlier despite the Defendant’s presence in medical journals did not constitute a "positive act" of encouragement; rather, it was mere delay, which does not bar an injunction.

The Court allowed Interim Application (L) No. 19536 of 2025, granting a temporary injunction restraining the Defendant from using ‘OTIDE’ or ‘OCTIDE’ in relation to medicinal preparations.

Consequently, the Defendant's application (IA 5318/2025) to vacate the order was disposed of.