Use of a registered trade mark as a prefix in a trade name constitutes infringement under Section 29(5).

The Plaintiff, a prominent pharmaceutical company, has used the registered trade marks ‘SUN’ and ‘SUN PHARMA’ as house marks since 1978 and 1993, respectively

In December 2012, the Plaintiff discovered the Defendant using the marks ‘ABSUN’ and ‘ABSUN PHARMA’ for medicinal preparations and the mark ‘E-MIST’ (similar to Plaintiff’s ‘EYEMIST’)

The Plaintiff issued a cease-and-desist notice, which the Defendant resisted, claiming ‘ABSUN’ was a coined word derived from his family members' names (‘Abheejit’ and ‘Sunita’)

The Defendant further argued that its products were exclusively for export to Africa and not sold in India

The suit was filed seeking permanent injunction for infringement and passing off, and damages

1. Whether the Defendant infringed the Plaintiff’s registered house marks ‘SUN’/‘SUN PHARMA’ by the use of ‘ABSUN’/‘ABSUN PHARMA’

2. Whether the Defendant is passing off its preparations as those of the Plaintiff

3. Whether the use of marks on goods meant exclusively for export constitutes "use in India" under the Trade Marks Act

4. Whether the Plaintiff is entitled to damages and costs

The court applied Section 29 of the Trade Marks Act, 1999, which defines infringement, noting that a mark is infringed if used as part of a trade name dealing in similar goods

It relied on Section 2(zb) regarding the definition of a trade mark as a mark capable of distinguishing goods

Under Section 56 of the Act, the application of a trade mark in India to goods to be exported constitutes "use of the trade mark" for the purposes of the Act

Precedential application included Cadila Pharmaceuticals Ltd. v. Sami Khatib regarding export as "use"

Aglowmed Ltd. v. Aglow Pharmaceuticals regarding deceptive similarity in corporate names

The court also applied Section 35 of the CPC (as amended by the Commercial Courts Act, 2015) regarding the awarding of costs

The court found that ‘ABSUN’ and ‘ABSUN PHARMA’ subsume the Plaintiff's registered marks ‘SUN’ and ‘SUN PHARMA’, with the prefix ‘AB’ being insufficient to distinguish them

It rejected the "honest adoption" defense, holding that in infringement actions, the similarity of the marks takes precedence over the Defendant's intent

Regarding exports, the court applied Section 56 to hold that affixing marks in India for export is deemed use within India, thereby satisfying the criteria for infringement

The court noted the Defendant failed to conduct a registry search despite knowing of the Plaintiff since 1995, indicating a "knowing infringer" status

The Plaintiff's goodwill was deemed proved as the Defendant failed to specifically deny the contents of the Chartered Accountant certificates during the admission/denial stage under the Commercial Courts' procedural rules

The suit was decreed in terms of permanent injunction against the Defendant for both infringement and passing off regarding ‘ABSUN’/‘ABSUN PHARMA’ and ‘E-MIST’

While the prayer for specific damages of Rs. 10 lakhs was not supported by itemized evidence, the court awarded partial costs of Rs. 10 lakhs to the Plaintiff due to the Defendant’s conduct as a "knowing infringer"

The Defendant was further restrained from using the impugned marks on all business papers, labels, and packaging