Registration constitutes prima facie evidence of validity; infringement in pharmaceutical trademarks warrants injunction despite delay and non-disclosure.

The Appellant, proprietor of the registered trademark ‘PANTOCID’ (used since 1999 for Pantoprazole), sued the Respondents for infringing upon its mark through the use of ‘PANTOPACID’.

Although the learned Single Judge found the marks to be deceptively similar, he refused an interim injunction on three grounds: (i) a "credible challenge" to the validity of the Appellant’s registration based on a prior (but later removed) registration by a third party, Takeda; (ii) alleged concealment of a 2010 legal notice; and (iii) delay in approaching the court.

The Appellant challenged this refusal, noting that Takeda’s mark was removed from the register in 2019.

The court applied Section 31(1) of the Trade Marks Act, 1999, which mandates that registration is prima facie evidence of validity.

It relied on Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, establishing that an injunction must ordinarily follow where infringement is established, regardless of delay.

The court also invoked the principles from Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. regarding the higher standard of protection required for medicinal products to avoid public confusion.

The Court found that the Single Judge erred by doubting the validity of the ‘PANTOCID’ registration based on Takeda’s prior application, as that registration was removed in 2019—long before the suit was filed—meaning the Appellant’s statutory rights were perfected.

Regarding concealment, the Court held that the 2010 letter was not a "cease-and-desist" notice but a part of the opposition proceedings already disclosed in the plaint; thus, no material fact was suppressed.

On the issue of delay, the Court noted that the Respondents’ sales were relatively minimal (approx. ₹28 lakhs annually) compared to the Appellant’s (over ₹513 crores), refuting the claim that the Respondents had grown into a "formidable player" through the Appellant's acquiescence.

Given the finding of deceptive similarity in pharmaceutical products, public interest dictated that statutory protection outweigh the plea of delay.

It held that the Respondents’ mark ‘PANTOPACID’ prima facie infringes the Appellant’s mark ‘PANTOCID’.

The Court restrained the Respondents from further manufacturing or packaging under the impugned mark, while granting a four-month grace period to exhaust existing stock, subject to filing a detailed inventory affidavit.

The Court further directed the expedited framing of issues in the underlying suit.