Bombay HC Grants Relief to Sun Pharma, Restrains OTIDE Mark Over Similarity with OCTRIDE

Bombay: In a significant trademark and pharmaceutical passing-off dispute, the Bombay High Court has granted interim relief in favor of Sun Pharma Laboratories Limited in its legal battle against United Biotech Private Limited over the use of the marks OCTRIDE and OTIDE for medicinal products derived from the molecule Octreotide Acetate.

The matter arose after Sun Pharma alleged that United Biotech was manufacturing and exporting pharmaceutical products under the mark “OTIDE,” which was deceptively similar to Sun Pharma’s registered trademark “OCTRIDE.”

According to Sun Pharma, it and its predecessors had adopted and used the mark “OCTRIDE” since 1998 for medicines prescribed for serious ailments such as acromegaly, carcinoid tumors, bleeding esophageal varices, and pancreatic surgery complications. The company claimed extensive goodwill and reputation through substantial sales across India and abroad.

Sun Pharma informed the Court that it discovered United Biotech’s “OTIDE” products in Chennai and Myanmar in 2025 and argued that the rival mark was likely to confuse doctors, chemists, and patients because both products belonged to the same pharmaceutical segment and were phonetically similar. The company further alleged that United Biotech wrongfully secured registration for the marks “OTIDE” and “OCTIDE” despite knowledge of Sun Pharma’s earlier marks and therefore sought injunctions for trademark infringement and passing off.

United Biotech, however, strongly opposed the allegations and argued that it had honestly adopted the mark “OTIDE” as early as January 1, 1999, deriving it from the International Non-Proprietary Name (INN) “Octreotide.”

The company contended that both parties had adopted portions of the generic molecule name and therefore neither could claim exclusivity over such descriptive components. It further argued that the rival products had co-existed in the market for years without confusion and that Sun Pharma had suppressed material facts by falsely claiming it became aware of the mark only in 2025 despite both products being listed together in medical journals and online pharmacy platforms since at least 2010.

United Biotech also maintained that since both medicines had identical compositions and therapeutic uses, there could be no risk of health hazards. The defendant emphasized that its product was sold under distinct packaging carrying its house name prominently, thereby minimizing any possibility of deception. It additionally challenged Sun Pharma’s evidence of prior use and goodwill, arguing that invoices supporting commercial use were only from 2010 onwards and that the Chartered Accountant certificate relied upon by the plaintiff lacked independent verification.

After extensively examining the rival submissions, Justice Sharmila U. Deshmukh observed that while both parties possessed registered marks derived from the same pharmaceutical molecule, the plaintiff failed to establish that the defendant’s registration was “ex-facie illegal, fraudulent or such as shocks the conscience of the Court,” which was necessary to sustain a trademark infringement action against another registered proprietor.

The Court therefore held that no prima facie infringement case was made out. However, the Court took a different view regarding passing off. The Court observed that the marks “OCTRIDE” and “OTIDE” were phonetically similar and that medicinal products demanded a stricter standard of scrutiny because even minor confusion could have serious public health consequences.

The Court specifically noted that medicines are often prescribed verbally or through illegible handwriting and are sold across urban and rural markets where exact pronunciation cannot always be expected.

The judgment stated, “The incorrect pronunciation of trade marks used for marketing medicines is not uncommon,” and further emphasized that “the test is of bare possibility as opposed to the likelihood of confusion.” The Court also held that although neither side could claim monopoly over generic pharmaceutical terms, the defendant could have sufficiently differentiated its mark from that of the plaintiff by adopting a more distinct combination.

The Court further found that Sun Pharma had prima facie established prior goodwill and reputation through sales figures and documentary records dating back to 1999, whereas United Biotech could only produce concrete evidence of market use from 2006 onward.

The Court rejected the defence of acquiescence and held that mere delay or knowledge of a rival product could not automatically defeat a passing-off claim unless there was a clear positive act encouraging the defendant’s business expansion. Relying upon several Supreme Court precedents, the Court reiterated that fraud or dishonest intention was not essential to establish passing off and that the central question was the likelihood of deception among consumers.

The judgment stated, “The passing-off action which is common law remedy is founded on the principle that no man shall trade its goods as that of the others and be unjustly enriched by the others goodwill and reputation.”

The Court also stressed that pharmaceutical disputes required “exacting judicial scrutiny” due to the potentially dangerous consequences of confusion in medicinal products.

Consequently, the Bombay High Court allowed Sun Pharma’s interim application and granted a temporary injunction restraining United Biotech and all persons acting on its behalf from “trading, using, manufacturing, selling, marketing, stocking, promoting, advertising, distributing, exporting, importing” or otherwise dealing in medicinal products bearing the marks “OTIDE,” “OCTIDE,” or any deceptively similar variation of “OCTRIDE” during the pendency of the suit.

The Court held that the balance of convenience favoured Sun Pharma and concluded that continued use of the impugned mark was likely to damage the plaintiff’s established goodwill and reputation in the pharmaceutical market.

To view the official order, click the link below: