Case Note & Summary
The plaintiff, Sun Pharmaceutical Industries Ltd., filed a suit seeking a permanent injunction to restrain the defendant, Satej M. Katekar, proprietor of Absun Pharma, from using the trade marks 'ABSUN'/'ABSUN PHARMA', alleging infringement of its registered house mark 'SUN'/'SUN PHARMA' and passing off. The suit also initially concerned the mark 'E-MIST' vis-à-vis 'EYEMIST', but the defendant gave an undertaking not to use 'E-MIST', limiting the controversy to the 'SUN' versus 'ABSUN' marks. The plaintiff argued that 'SUN' is its well-known house mark, extensively used and registered, and that 'ABSUN' is deceptively similar, incorporating the entirety of 'SUN' with a non-distinctive prefix. The defendant contended that 'ABSUN' is a composite mark with a different overall impression and that there is no likelihood of confusion. The court analyzed the marks under Sections 29(1), 29(2)(b), and 29(3) of the Trade Marks Act, 1999, and principles of passing off. It held that 'SUN' is the dominant and essential feature of both marks, and the addition of 'AB' does not avoid deceptive similarity. The court found that the defendant's adoption was likely to cause confusion and damage the plaintiff's goodwill. Consequently, the court decreed the suit in favor of the plaintiff, granting a permanent injunction restraining the defendant from using 'ABSUN'/'ABSUN PHARMA' or any deceptively similar mark, and also awarded costs.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Sections 29(1), 29(2)(b), 29(3) Trade Marks Act, 1999 - Plaintiff's registered house mark 'SUN'/'SUN PHARMA' and defendant's mark 'ABSUN'/'ABSUN PHARMA' - Court held that the marks are deceptively similar, as the dominant feature 'SUN' is common and the addition of prefix 'AB' does not sufficiently distinguish; likelihood of confusion established (Paras 1-10).
B) Trade Marks - Passing Off - Goodwill and Reputation - Plaintiff's extensive use and reputation in 'SUN' mark - Defendant's adoption of 'ABSUN' likely to cause confusion and pass off goods as those of plaintiff - Court granted permanent injunction (Paras 1-10).
Issue of Consideration
Whether the defendant's use of the mark 'ABSUN'/'ABSUN PHARMA' infringes the plaintiff's registered trademark 'SUN'/'SUN PHARMA' and constitutes passing off.
Final Decision
Suit decreed in terms of prayer clauses (a), (b), (c) and (f) as per para 10 of the judgment. Permanent injunction granted restraining defendant from using 'ABSUN'/'ABSUN PHARMA' or any deceptively similar mark. Defendant also directed to pay costs.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- House mark protection
- Composite mark analysis
Case Details
2026 LawText (BOM) (04) 91
Commercial IP Suit No. 111 of 2013 with Notice of Motion No. 27 of 2013
Mr. Hiren Kamod, Mr. Nishad Nadkarni, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Ms. Jaanvi Chopra, Ms. Rakshita Singh (for Plaintiff); Mr. Rashmin Khandekar, Mr. Anand Mohan, Mr. Lalit Nair (for Defendant)
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Nature of Litigation
Commercial IP suit for permanent injunction restraining trademark infringement and passing off.
Remedy Sought
Plaintiff sought decree of permanent injunction restraining defendant from using 'ABSUN'/'ABSUN PHARMA' and 'E-MIST', and damages.
Filing Reason
Defendant's use of 'ABSUN'/'ABSUN PHARMA' allegedly infringed plaintiff's registered trademark 'SUN'/'SUN PHARMA' and constituted passing off.
Previous Decisions
Earlier, on Notice of Motion, defendant gave statement not to use 'E-MIST', and court restrained defendant from using 'E-MIST' until disposal of suit.
Issues
Whether the defendant's mark 'ABSUN'/'ABSUN PHARMA' is deceptively similar to the plaintiff's registered mark 'SUN'/'SUN PHARMA' under Section 29 of the Trade Marks Act, 1999.
Whether the defendant's use of 'ABSUN'/'ABSUN PHARMA' amounts to passing off.
Submissions/Arguments
Plaintiff argued that 'SUN' is its well-known house mark, extensively used and registered, and 'ABSUN' incorporates the entirety of 'SUN' with a non-distinctive prefix, causing deceptive similarity.
Defendant contended that 'ABSUN' is a composite mark with a different overall impression and no likelihood of confusion.
Ratio Decidendi
The dominant and essential feature of the plaintiff's mark 'SUN' is wholly contained in the defendant's mark 'ABSUN'; the addition of the prefix 'AB' does not sufficiently distinguish the marks, leading to a likelihood of confusion and deception. Therefore, the defendant's mark infringes the plaintiff's registered trademark and constitutes passing off.
Judgment Excerpts
The plaintiff-Sun Pharmaceutical Industries Ltd. has filed this suit, seeking a decree of permanent injunction to restrain the defendant from using the impugned trade mark/trade name ‘ABSUN’/ ‘ABSUN PHARMA’ on the ground that it infringes upon the registered trade mark/house mark of the plaintiff ‘SUN’/ ‘SUN PHARMA’.
The controversy in the present suit is now limited to the marks ‘SUN’/ ‘SUN PHARMA’ versus ‘ABSUN’/ ‘ABSUN PHARMA’...
Procedural History
Plaintiff filed Commercial IP Suit No. 111 of 2013 with Notice of Motion No. 27 of 2013. On earlier hearing of Notice of Motion (Lodging) No.681 of 2013, defendant stated it had never used 'E-MIST' and did not intend to, and court restrained defendant from using 'E-MIST'. At final hearing, defendant reiterated stand on 'E-MIST', limiting controversy to 'SUN' vs 'ABSUN'. Suit was reserved on 3rd February 2026 and pronounced on 22nd April 2026.
Acts & Sections
- Trade Marks Act, 1999: 29(1), 29(2)(b), 29(3)
