No confusion between a sanitary pad and medicine designed for constipation relief. The Delhi High Court dismisses Appeal in Trademark Dispute Between RSPL and Sun Pharma. The court concluded that there was no likelihood of confusion between the two trademarks, PRO-EASE (of RSPL) and PRUEASE (of Sun Pharma) considering the distinct nature of the goods, trade channels, packaging, prior use and bona fide adoption of the mark.

Background of the Dispute

1. The Appellant, RSPL Health Pvt. Ltd (RSPL)., filed a suit seeking permanent injunction against Sun Pharma Laboratories Limited (Sun Pharma) for using the trademark “PRUEASE”.
2. RSPL claims “PRUEASE” of Sun is deceptively similar to its registered trademark “PRO-EASE.”
3. RSPL claimed that it has used PRO-EASE” since 2012 in relation to sanitary products such as sanitary napkins, pads, and related items. It holds multiple trademark registrations under Class 5 and other classes, with significant sales and advertising expenditure demonstrating the mark’s reputation.
4. Sun Pharma and its subsidiary, claim use of the “PRUEASE” mark since 2017 in relation to pharmaceutical products, specifically a medicine for constipation relief. Sun Pharma asserted that the competing marks are used in distinct product categories with different trade channels, negating the likelihood of confusion.
5. Sun Pharmaalso claims that the term “PRU” derives from the active pharmaceutical ingredient prucalopride, combined with “Ease” to indicate relief from constipation.

Previous Proceedings and Impugned Order

An ad interim ex parte injunction was initially granted to RSPL/the appellant but was subsequently set aside by the District Court, with the case being remitted to the District Judge for further consideration. The District Judge, vide order dated 15th Feb 2025 (impugned order), dismissed RSPL’s application for interim injunction. The District Court found no likelihood of confusion given the different nature of goods, packaging, and trade channel/s. RSPL was found to have withheld material documents, including the respondents’ user affidavit filed with the Trademark Registry

RSPL case in Appeal

1. RSPL’s case was based on their long-standing use and reputation of the “PRO-EASE” trademark. Sun Pharma’s “PRUEASE” mark is deceptively similar to “PRO-EASE”.
2. RSPL asserted that their trademark rights extend to allied and cognate goods, including pharmaceuticals, and that Sun Pharma’s use of the similar mark was dishonest and likely to cause confusion and deception in the market.
3. RSPL challenged Sun Pharma’s claim of prior use, highlighting a lack of supporting documents and the fact that invoices showed sales only to a related entity.
4. RSPL also contended that Sun Pharma could not claim to be prior users due to the abandonment of an earlier trademark application and that Sun Pharma should be restrained from using the impugned mark for sanitary products.

Sun Pharma’s case

1. Sun Pharma asserted that they independently coined and adopted the “PRUEASE” mark in 2017 for medicinal and pharmaceutical preparations. They claim to have been continuously using the mark since then without any interruptions.
2. Sun Pharma submitted that they initially applied for the registration of the “PRUEASE” mark in 2017 under application no. 3562708, which was later abandoned for non-prosecution. Subsequently, they filed another application in 2022 (application no. 5353750) with a prior user claim from 2017. This application is still pending before the Registrar of Trade Marks.
3. Sun Pharma contended that the term “PRU” in their mark is derived from the active pharmaceutical ingredient prucalopride, while “Ease” indicates relief from
4. They asserted that they have built up an immense reputation in the “PRUEASE” mark and have disclosed their sales figures to support this claim.
5. They further argued that their products (pharmaceutical drugs for constipation relief) are distinct from RSPL’s products (sanitary goods), with different trade channels and purposes, reducing the likelihood of confusion.
6. Sun Pharma has filed a user affidavit with the Trademark Registry showcasing their use of the “PRUEASE” mark since 2017.

Delhi High Court’s Findings

The High Court found no merit in the appeal and upheld the findings of the District Court.

1. The goods were not allied or cognate, and differed in purpose, consumer segment, and trade channels.
2. The marks, though phonetically similar, were used in unrelated markets, reducing the risk of consumer confusion.
3. RSPL’s expansion argument lacked immediate relevance, particularly since RSPL already used distinct marks for unrelated products.
4. Sun Pharma’s adoption of the mark was honest and descriptive, referencing the active ingredient, Prucalopride.
5. RSPL’s non-disclosure of the user affidavit was a material lapse and supported the trial court’s rejection of interim relief.

Conclusion

The Division Bench of the Delhi High Court dismissed the Appeal as it found no reason to interfere with the District court’s order. The decision highlights that similarity in marks does not automatically amount to infringement, more so where the goods are unrelated and trade channels and target customers differ.