RSPL in its trademark infringement petition had alleged that Sun Pharma was using the ‘Pruease’ name which is deceptively similar to its trademark ‘Pro-ease’ and the same is bound to cause confusion and deception in the normal course of business activities, a stand rejected by the HC, which ruled out any confusion.
A Division Bench comprising Justices Navin Chawla and Shalinder Kaur while dismissing RSPL’s plea on Thursday said that “… the goods are distinct, having distinct and separate trade channels, and there is no likelihood of confusion being caused to the public by the use of the marks.”
The court said that RSPL’s apprehension that Sun Pharma may venture out to the products like sanitary napkins, etc., had been answered by the latter by stating that they do not intend to use their marks for these goods. “This intent has also been evidenced by the respondents (Sun Pharma companies) withdrawing their oppositions to the applications of the appellant (RSPL) seeking registration of its mark,” it said, adding that RSPL had failed to make a prima facie case in its favour.
Sun Pharma firms had sought deletion of “hygiene and sanitary preparation etc.” from its goods classification for its own application seeking registration of the impugned mark, the companies had told the HC.
“The adoption of the impugned mark by Sun Pharma has also been explained by it, and the same appears to be bona fide and in accordance with industry practice, wherein alphabets are taken from the chemical compound the product is made of, and additions are made to it to make it a coined mark,” the judgment stated.The order noted that Sun Pharma had taken the first three letters from the chemical compound prucalopride and added the word ‘ease’ to the same, to reflect the ultimate use of the medicine, that is, giving relief to constipation.While challenging a district judge order that ruled in favour of Sun Pharma firms, RSPL had sought to restrain Sun Pharma from dealing or using the trademark Pruease on the grounds that the latter had dishonestly adopted the trademark, which is bound to cause confusion and deception in the normal course of business activities, thereby not only infringing its registered trademark, but also passing off of the same.
However, Sun Pharma argued that though the goods may fall under Class 5, they were completely distinct and cannot be termed as allied or cognate. Besides, they were being sold through different trade channels and there was absolutely no likelihood of confusion being caused by the use of the marks, they added.
