Bombay HC Grants Passing Off Relief In 'OCTRIDE' vs 'OTIDE' Pharma Trademark Dispute Despite Bar On Infringement Claim
The Bombay High Court has held that although a trademark infringement action is generally barred between two registered proprietors under Sections 28(3) and 30(2)(e) of the Trade Marks Act, 1999, a passing off action remains independently maintainable under Section 27(2), particularly in pharmaceutical trademark disputes where even a possibility of confusion may justify injunctive relief.
Justice Sharmila U. Deshmukh was dealing with a dispute between Sun Pharma Laboratories Limited and United Biotech Private Limited concerning the marks “OCTRIDE” and “OTIDE”, both used for medicinal preparations derived from the molecule Octreotide Acetate.
Sun Pharma claimed adoption and use of the mark “OCTRIDE” since 1998 and alleged that United Biotech's use of the mark “OTIDE” amounted to infringement and passing off. The Plaintiff also relied on its substantial sales figures, promotional materials, and prior market presence to establish goodwill and reputation.
United Biotech opposed the plea, contending that “OTIDE” had been adopted honestly from the International Non-Proprietary Name (INN) “Octreotide,” that both parties were registered proprietors, and that the Plaintiff was aware of the Defendant's use for several years. It further argued that no monopoly could be claimed over marks derived from a generic molecule.
The Court first examined the infringement claim and held that both parties being registered proprietors, the Plaintiff could not restrain the Defendant unless the Defendant's registration was shown to be ex facie illegal, fraudulent, or such as to shock the conscience of the Court, as laid down in Lupin Limited v. Johnson & Johnson.
The Court observed that both rival marks were derived from the API Octreotide Acetate and that no monopoly could be claimed over a generic molecule. It held that the Plaintiff had failed to establish any prima facie fraud or illegality in the Defendant's registration and therefore no interim relief for infringement could be granted.
However, the Court held that the common law remedy of passing off survived independently under Section 27(2) of the Trade Marks Act. Reiterating the settled requirements of goodwill, misrepresentation, and damage, the Court proceeded to compare the rival marks “OCTRIDE” and “OTIDE.”
The Court found that the marks were phonetically similar when compared as a whole and observed that merely omitting the letters “C” and “R” from “OCTRIDE” was insufficient to distinguish the marks. Referring to the stricter standard applicable in pharmaceutical disputes, the Court noted that medicines are often purchased in hurried circumstances and across varied linguistic and educational backgrounds, making the possibility of confusion particularly significant.
Relying on the principles laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Court observed that in pharmaceutical trademark disputes, the test is one of a “bare possibility” of confusion rather than an ordinary likelihood of deception.
On the issue of goodwill and prior use, the Court noted that while the Defendant claimed use since 1999, the material placed on record substantiated use only from 2006 onwards. In contrast, the Plaintiff had produced regulatory approvals and a Chartered Accountant's certificate reflecting substantial sales of products sold under the mark “OCTRIDE” since 1999. The Court accepted this material at the interim stage as sufficient to establish prima facie goodwill and reputation.
The Court further noted that the Plaintiff's annual sales turnover for 2006–2007 was approximately Rs.7 crores, whereas the Defendant's turnover during the same period was approximately Rs.27 lakhs, thereby reinforcing the Plaintiff's prior market reputation.
Rejecting the Defendant's defence of delay and acquiescence, the Court held that mere inaction or alleged knowledge of the Defendant's use was insufficient in the absence of any positive act encouraging such use. The Court relied on Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd. to reiterate that acquiescence requires clear conduct amounting to consent or encouragement.
Holding that the Plaintiff had established prima facie goodwill, phonetic similarity, and a strong possibility of confusion in relation to medicinal products, the Court concluded that the balance of convenience lay in favour of the Plaintiff and continued interim protection on the ground of passing off.
Case Title: Sun Pharma Laboratories Limited v. United Biotech Private Limited
Case Numbers: I A (L) No. 19536 of 2025 In Commercial IP Suit (L) No. 19268 of 2025
Appearances:
Mr. Alankar Kirpekar along with Mr. Ayush Tiwari, Ms. Archita Gharat, Ms. Niyati Davawala, Mr. Anil Shete, Ms. Nidhi Rao and Ms. Chandrika Devda i/b Davawala & Co. for the Plaintiff.
Mr. Rashmin Khandekar along with Mr. Bahraiz Irani, Mr. Anand Mohan, Mr. Anosh Irani, Mr. Amit Padwal, Ms. Afreen Bano and Mr. Abhishek for the Defendant.