In a recent judgment concerning trademark protection in the pharmaceutical industry, the Bombay High Court ruled in favour of Sun Pharmaceutical Industries Ltd. in a trademark infringement and passing off action against Mr. Satej M. Katekar. The dispute centred around the defendant’s use of the marks “ABSUN” and “ABSUN PHARMA,” which the plaintiff alleged infringed its well-known “SUN” and “SUN PHARMA” trademarks.

Background of the Dispute

Sun Pharmaceutical Industries Ltd. claimed that it is engaged in the manufacture and sale of pharmaceutical and medicinal products since 1978 and had extensively used the mark “SUN” in relation to its business. According to the plaintiff, the marks “SUN PHARMA” had also been used as house marks since 1993 across pharmaceutical products, packaging materials, promotional literature, and business communications.

The plaintiff relied upon several trademark registrations in Class 5, including a stylized “SUN” device mark registered since 1983 and registrations for the word marks “SUN PHARMA” and “SUNPHARMA” since 2007. It asserted that, owing to decades of extensive use, large sales turnover, and substantial promotional activities, the marks had acquired immense goodwill and reputation in the pharmaceutical market.

The dispute arose in December 2012, when the plaintiff discovered that the defendant was marketing pharmaceutical products under the marks “ABSUN” and “ABSUN PHARMA.” A cease-and-desist notice was issued, but the defendant failed to discontinue use of the impugned marks, leading to the institution of the present suit seeking injunctions, damages, rendition of accounts, and other consequential reliefs.

Defendant’s Defence

1. The defendant contended that “ABSUN” and “ABSUN PHARMA” were independently coined and honestly adopted, with “AB” derived from the proprietor’s son’s name, “Abheejit,” and “SUN” from the proprietor’s wife’s name, “Sunita.”
2. Denied deceptive similarity, contending that “SUN” is a common word referring to a celestial body and incapable of exclusive appropriation, and further argued that the plaintiff held registrations only for the stylized “SUN” device mark and the marks “SUN PHARMA” and “SUNPHARMA,” not the standalone word “SUN.”
3. Further “ABSUN PHARMA” was merely a house mark or trade name, not a product trademark, and that consumers in the pharmaceutical industry identify medicines by their product names rather than by house marks.
4. Its products were exported exclusively to African countries and not sold in India and later claimed to have changed its trading name from “ABSUN PHARMA” to “ABSUN REMEDIES” in October 2025.

Plaintiff’s Submissions

1. The plaintiff argued that its registrations for “SUN” and “SUN PHARMA” conferred exclusive statutory rights, and that “ABSUN” and “ABSUN PHARMA” were deceptively similar, with the addition of the prefix “AB” being insufficient to distinguish the marks.
2. Emphasising the heightened standard applicable in pharmaceutical trademark disputes, the plaintiff argued that even slight similarities were likely to cause confusion among consumers, particularly because pharmaceutical products directly affect public health.
3. Once infringement was established, the defendant’s plea of honest adoption was immaterial, particularly as the defendant had failed to conduct any trademark registry search or market inquiry before adopting the impugned marks.
4. Significantly, during cross-examination, the defendant’s witness admitted that he had known about the plaintiff and its “SUN/SUN PHARMA” marks since around 1995. The plaintiff relied heavily on this admission to establish prior knowledge and dishonest adoption.
5. The defendant remained liable despite exporting the goods, as affixing the impugned marks to products, packaging, invoices, and advertisements in India before export constituted use of the trademark within India under the Trademarks Act.

Court’s Findings on Trademark Infringement

The Court held that the plaintiff, as the registered proprietor of “SUN” and “SUN PHARMA” in Class 5, enjoyed exclusive rights over pharmaceutical products and rejected the defendant’s house mark defence, holding that the Trademarks Act does not distinguish between a house mark and a trademark when the mark identifies and distinguishes goods.
In the instant case Section 29(5) of the Trademarks Act applied, as the defendant had incorporated the plaintiff’s registered marks into its trading style by merely adding the prefix “AB,” rendering “ABSUN” and “ABSUN PHARMA” deceptively similar.

The defence of honest adoption was rejected, noting that the defendant had conducted neither a market survey nor a trademark registry search before adopting the impugned marks, and that its admission of prior knowledge of the plaintiff’s marks undermined its claim of bona fide adoption.

The Court therefore concluded that the adoption of “ABSUN/ABSUN PHARMA” was not bona fide and indicated a dishonest attempt to benefit from the plaintiff’s reputation.

Export Sales and Trademark Use in India

Under Section 56 of the Trademarks Act, affixing the impugned marks to products and packaging in India before export constituted trademark use in India, making the defendant liable despite the goods being sold exclusively abroad.

Passing Off and Proof of Goodwill

On passing off, the Court held that the plaintiff had established substantial goodwill and reputation in the marks “SUN” and “SUN PHARMA” through extensive documentary evidence, including packaging, promotional materials, corporate records, and sales and advertising figures.

The Court held that the defendant’s failure to deny the plaintiff’s documents or file an admission-denial affidavit resulted in the documents and their contents being deemed admitted.

The Court concluded that the defendant’s use of deceptively similar marks for identical pharmaceutical products amounted to misrepresentation likely to deceive consumers and damage the plaintiff’s goodwill.

Rejection of Other Defences

The Court rejected the contention that “SUN” was common to trade, holding that such a defence requires substantial evidence of widespread third-party use, and that trademark search reports or similar registry entries alone are insufficient.
The plea of acquiescence was rejected as during cross-examination, the defendant’s witness admitted that there was no evidence showing that the plaintiff was aware of the defendant’s use prior to December 2012.

The Court refused to consider the defendant’s belated plea of changing its name from “ABSUN PHARMA” to “ABSUN REMEDIES,” holding that it could not rely on documents not formally brought on record after the completion of pleadings, evidence, and arguments.

Damages, Costs and Relief

The Court declined the plaintiff’s claim for damages and rendition of accounts due to lack of evidence quantifying the loss but held that the defendant was a knowing infringer in light of its prior knowledge of the plaintiff’s marks and dishonest adoption of deceptively similar marks.

Consequently, the suit was decreed in favour of the plaintiff, permanent injunction granted restraining use of “ABSUN” and “ABSUN PHARMA,” and costs of Rs. 10 lakhs (approx. US$10,600) were awarded to the plaintiff.

Comment

The judgment serves as a reaffirmation of trademark rights in the pharmaceutical sector, emphasizing the importance of honest adoption, the evidentiary burden for common-to-trade defences, and the applicability of trademark protection even to goods manufactured in India for export.