Case Note & Summary
The plaintiff, Sun Pharma Laboratories Limited, filed a commercial IP suit seeking an interim injunction to restrain the defendant, United Biotech Private Limited, from using the mark 'OCTRIDE' for pharmaceutical preparations containing Octreotide Acetate. The plaintiff claimed adoption and use of the mark since 1998 through its predecessors, with a registration application filed in 2003 claiming user since 1998. The defendant opposed the injunction, arguing that 'OCTRIDE' is descriptive of the active ingredient Octreotide and lacks distinctiveness. The court analyzed the nature of the mark and found it to be descriptive, not inherently distinctive. The plaintiff failed to provide sufficient evidence of acquired distinctiveness or secondary meaning. The court also noted that both parties use the mark for the same molecule, and the products are prescription drugs, reducing the likelihood of confusion. The balance of convenience favored the defendant, who had been using the mark since 2015 without opposition from the plaintiff. Consequently, the court dismissed the plaintiff's interim application for injunction and allowed the defendant's application to vacate the ad-interim order.
Headnote
A) Trade Marks - Descriptive Mark - Distinctiveness - The mark 'OCTRIDE' is held to be descriptive of the drug's active ingredient Octreotide and not inherently distinctive. The plaintiff failed to establish acquired distinctiveness or secondary meaning through extensive use. (Paras 10-15)
B) Trade Marks - Likelihood of Confusion - Pharmaceutical Products - No likelihood of confusion exists as both parties use the mark for the same molecule Octreotide Acetate, and the products are prescription drugs. The defendant's use is honest and concurrent. (Paras 16-20)
C) Trade Marks - Interim Injunction - Balance of Convenience - Balance of convenience lies in favor of the defendant as the plaintiff's mark is descriptive and the defendant has been using the mark since 2015 without opposition. Irreparable injury would be caused to the defendant if injunction is granted. (Paras 21-25)
Issue of Consideration
Whether the plaintiff is entitled to an interim injunction restraining the defendant from using the mark 'OCTRIDE' for pharmaceutical products containing Octreotide Acetate, pending trial.
Final Decision
The court dismissed the plaintiff's Interim Application (L) No. 19536 of 2025 and allowed the defendant's Interim Application No. 5318 of 2025, thereby vacating the ad-interim order dated 29 July 2025.
Law Points
- Descriptive mark
- lack of distinctiveness
- no secondary meaning
- no likelihood of confusion
- balance of convenience
- irreparable injury
Case Details
2026 LawText (BOM) (05) 41
Interim Application (L) No. 19536 of 2025 in Commercial IP Suit (L) No. 19268 of 2025
Mr. Alankar Kirpekar, Mr. Ayush Tiwari, Ms. Archita Gharat, Ms. Niyati Davawala, Mr. Anil Shete, Ms. Nidhi Rao, Ms. Chandrika Devda i/b Davawala & Co. for the Plaintiff; Mr. Rashmin Khandekar, Mr. Bahraiz Irani, Mr. Anand Mohan, Mr. Anosh Irani, Mr. Amit Padwal, Ms Afreen Bano, Mr. Abhishek for the Defendant
Sun Pharma Laboratories Limited
United Biotech Private Limited
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Nature of Litigation
Commercial IP suit for trademark infringement and passing off, with interim application for injunction.
Remedy Sought
Plaintiff sought interim injunction restraining defendant from using the mark 'OCTRIDE' for pharmaceutical products.
Filing Reason
Plaintiff alleged that defendant's use of 'OCTRIDE' infringes its trademark and amounts to passing off.
Previous Decisions
Ad-interim ex-parte order dated 29 July 2025 granted relief in terms of prayer clauses (b) and (c) regarding passing off and appointment of Court Receiver.
Issues
Whether the mark 'OCTRIDE' is descriptive or distinctive.
Whether the plaintiff has established a prima facie case for interim injunction.
Whether balance of convenience lies in favor of the plaintiff or defendant.
Submissions/Arguments
Plaintiff argued that it has adopted and used the mark 'OCTRIDE' since 1998 and has acquired distinctiveness and goodwill.
Defendant argued that 'OCTRIDE' is descriptive of the active ingredient Octreotide and lacks distinctiveness, and that the plaintiff has not established secondary meaning.
Ratio Decidendi
A mark that is descriptive of the product's active ingredient is not inherently distinctive and cannot be monopolized unless secondary meaning is proven. The plaintiff failed to prove acquired distinctiveness, and balance of convenience favored the defendant.
Judgment Excerpts
The mark 'OCTRIDE' is descriptive of the drug's active ingredient Octreotide and not inherently distinctive.
The plaintiff failed to establish acquired distinctiveness or secondary meaning through extensive use.
Balance of convenience lies in favor of the defendant as the plaintiff's mark is descriptive and the defendant has been using the mark since 2015 without opposition.
Procedural History
Plaintiff filed Commercial IP Suit (L) No. 19268 of 2025 and Interim Application (L) No. 19536 of 2025 seeking ad-interim injunction. On 29 July 2025, ad-interim ex-parte order was granted. Defendant filed Interim Application No. 5318 of 2025 under Order XXXIX Rule 4 CPC to vacate the ad-interim order. Both applications were heard together and disposed of by this order.
Acts & Sections
- Code of Civil Procedure, 1908 (CPC): Order XXXIX Rule 4
