In a recent decision of significance to the pharmaceutical industry, the Bombay High Court was called upon to resolve a trademark dispute between Sun Pharma Laboratories Limited and United Biotech Private Limited concerning the competing marks OCTRIDE and OTIDE. The case presented an intersection between statutory trademark rights and the common law remedy of passing off, in the context of pharmaceutical products where the threshold for confusion is considerably lower owing to public health concerns.

While the Plaintiff relied on its registered trademark rights and longstanding reputation in the mark OCTRIDE, the Defendant asserted its own registration and prior adoption of the mark OTIDE. The Court was required to determine whether the Plaintiff was entitled to continue enjoying interim protection despite the Defendant being the registered proprietor of the impugned mark.

Background

Sun Pharma Laboratories Limited, the Plaintiff, traced its rights in the trademark OCTRIDE to 1998 through its predecessor-in-title. The mark is used in relation to medicinal preparations containing the active pharmaceutical ingredient, Octreotide Acetate, which is prescribed for the treatment of acromegaly, carcinoid tumours, bleeding oesophageal varices, and certain pancreatic conditions.

The Plaintiff contended that it adopted the mark OCTRIDE after discontinuing its earlier mark OCTIDE and obtained registration claiming use since September 1998. It asserted that continuous sales, extensive promotional efforts, and prolonged market presence had generated significant goodwill and reputation in the OCTRIDE mark.

The dispute arose when the Plaintiff discovered in June 2025 that United Biotech Private Limited was manufacturing and exporting pharmaceutical products under the mark OTIDE to Myanmar. Investigations revealed that the Defendant held registrations for OCTIDE and OTIDE, with the latter having been applied for in December 2003 claiming use since January 1999.

They contended that the Defendant’s registrations were invalid and had been procured despite the existence of the Plaintiff’s earlier rights. It therefore sought injunctive relief and challenged the Defendant’s use of the impugned mark.

The Defendant contended that it honestly adopted the mark OTIDE in 1999 from the INN Octreotide and had used it continuously for over two decades. It argued that both marks were derived from the generic molecule name and, therefore, no party could claim exclusive rights over any part of the molecule name.

The Defendant alleged that the Plaintiff had suppressed material facts, as both products had been referenced in medical literature and listed as substitutes on online pharmacy platforms since at least 2010, thereby rendering the Plaintiff’s claim of discovering the Defendant’s use only in 2025 implausible.

Rival Contentions

The Plaintiff argued that the dispute was confined to OCTRIDE and OTIDE, since neither party had commercially used the mark OCTIDE. It submitted that the Defendant was aware of the Plaintiff’s rights because the Plaintiff’s earlier OCTIDE registration had been cited during examination of the Defendant’s trademark application.

The Plaintiff relied on sales figures, invoices, promotional materials, licences, annual reports, and a Chartered Accountant’s certificate to establish extensive use and goodwill in the OCTRIDE mark. It further contended that the shared active ingredient did not negate the likelihood of confusion, especially in the pharmaceutical industry where even minor confusion could have serious consequences.

The Defendant contended that OTIDE was a registered trademark entitled to statutory protection and that an infringement action was not maintainable against a registered proprietor. Moreover, both marks were derived from the generic molecule Octreotide and were visually, structurally, and phonetically distinct.

The Defendant challenged the Plaintiff’s claim of goodwill, asserting that it had failed to establish reputation prior to the Defendant’s adoption and use of OTIDE. It argued, relying on medical literature and online pharmacy listings, that the Plaintiff had long been aware of the Defendant’s activities and had approached the Court with unclean hands.

Court’s Analysis

At the outset, the Court clarified that the controversy was not concerned with OCTIDE. Although both parties had registrations involving that mark, neither had commercially exploited it. The real dispute, therefore, was between OCTRIDE and OTIDE.

The Court rejected the Plaintiff’s attempt to rely upon the lapsed OCTIDE registration to strengthen its infringement claim. Since the registration had expired in 2008 and had never been commercially used, it could not materially assist the Plaintiff’s case.

The Court also observed that the Defendant held a valid registration for OTIDE. Consequently, any infringement claim against the Defendant would require the Plaintiff to satisfy the stringent standard that the Defendant’s registration was ex facie illegal, fraudulent, or so improper as to shock the conscience of the Court.

The Court held that the Plaintiff failed to establish a prima facie case of infringement. It found that the citation of the Plaintiff’s OCTIDE mark during examination of the Defendant’s application was insufficient to demonstrate fraud or illegality in the Defendant’s OTIDE registration, particularly as no rectification proceedings had been initiated against the registration.

Passing Off:

The Court reiterated that a passing-off action depends upon the existence of goodwill, misrepresentation, and resulting damage. Importantly, goodwill must be assessed as of the date when the Defendant commenced use of the impugned mark.

The Court found OCTRIDE and OTIDE to be phonetically similar when considered as a whole and rejected a fragmented comparison of the marks. Emphasising the heightened standard applicable to pharmaceutical trademarks, the Court observed that even a possibility of confusion was sufficient, given the nature of medicine purchases and the likelihood of imperfect pronunciation.

The Court emphasised that both marks were derived from the molecule Octreotide Acetate and that the Defendant could have adopted a mark far removed from the Plaintiff’s mark to avoid confusion and deception.

On the question of goodwill, the Court found that the Defendant had failed to substantiate its claim of use since 1999. The earliest reliable evidence produced by the Defendant was an invoice dated August 2006. Accordingly, 2006 was treated as the relevant date for assessing the Plaintiff’s goodwill.

Although the Court did not accept the Plaintiff’s packaging photographs as evidence of use, it held that the 1998 drug launch approval and the 2014 Chartered Accountant’s certificate constituted sufficient prima facie proof of continuous sales and market presence of the OCTRIDE mark since 1999.

The Court found the comparative sales figures significant, noting that the Plaintiff’s turnover of approximately ₹7 crores in 2006–07 far exceeded the Defendant’s turnover of approximately ₹27 lakhs, thereby indicating that the Plaintiff had acquired substantial goodwill and reputation before the Defendant established use of OTIDE.

Conclusion

The Bombay High Court ultimately drew a distinction between the Plaintiff’s infringement and passing-off claims. While the Court declined to disregard the Defendant’s statutory registration and found the infringement case weak, it concluded that the Plaintiff had established a strong prima facie case of passing off.

Given the phonetic similarity between OCTRIDE and OTIDE, the Plaintiff’s prior goodwill, and the heightened standard applicable to pharmaceutical products, the Court held that continued use of the impugned mark was likely to cause confusion and damage the Plaintiff’s reputation. The balance of convenience therefore favoured the Plaintiff, and the interim injunction was confirmed on the basis of passing off.

The decision serves as an important reminder that even where a defendant enjoys statutory trademark registration, the common law remedy of passing off may continue to provide effective protection to a prior user with established goodwill, particularly in the context of pharmaceutical trademarks.