Bombay HC Grants Relief to Sun Pharma, Restrains Use of PANTOZED Over Similarity with PANTOCID

New Delhi: In a significant ruling on pharmaceutical trademark disputes, the Bombay High Court in Sun Pharma Laboratories Limited vs. Zawadi Healthcare Limited has granted interim relief in favor of Sun Pharma Laboratories Limited, restraining infringement of its registered trademark "PANTOCID" by the defendants using the mark "PANTOZED-40".

The case background stems from a commercial intellectual property suit filed by Sun Pharma alleging infringement and passing off against Zawadi Healthcare Limited and another defendant.

Sun Pharma asserted proprietary rights over its registered trademark “PANTOCID”, originally adopted in 1998 and widely used for medicines containing Pantoprazole, a drug used to treat acid-related gastrointestinal conditions. The company demonstrated long-standing use, significant sales turnover, and promotional expenditure to establish goodwill and reputation. The dispute arose in January 2023 when Sun Pharma discovered that the defendants were marketing a similar drug under the mark “PANTOZED-40”, manufactured in India and exported to Kenya, without seeking trademark registration in India.

The petitioner (plaintiff), Sun Pharma, argued that it is the prior adopter and registered proprietor of the trademark “PANTOCID” and that the defendants’ mark “PANTOZED-40” is deceptively similar, particularly as both marks are derived from the same molecule “Pantoprazole” and are used for identical therapeutic purposes. It was contended that the defendants’ act of manufacturing in India and exporting the product constitutes infringement under Sections 29(6) and 56 of the Trade Marks Act, 1999.

The plaintiff further argued that the combination of “PANTO” with “CID” forms a distinctive mark and that the defendants cannot claim that the prefix “PANTO” is generic to avoid liability. It also rejected the defence that the mark was based on International Non-Proprietary Names (INN), stating that its trademark was registered prior to the introduction of such restrictions and therefore enjoys statutory protection.

On the other hand, the defendants strongly opposed the claim, arguing that the plaintiff had suppressed material facts, including opposition proceedings related to a subsequent trademark application. They contended that “PANTO” is derived from the generic drug Pantoprazole and is widely used across the pharmaceutical industry, with numerous trademarks containing the same prefix.

The defendants argued that no monopoly can be claimed over such a generic component and highlighted the existence of thousands of similar marks on the registry. They also submitted that their mark “PANTOZED” is registered in Kenya and is structurally distinct. Additionally, they questioned the jurisdiction of the Bombay High Court and argued that there was no deceptive similarity when the marks are considered as a whole.

After examining the rival submissions, statutory provisions, and judicial precedents, the Court made several key observations. It held that the plaintiff had successfully established prior adoption and use of the registered trademark “PANTOCID” since 1998.

The Court clarified that although the prefix “PANTO” may be derived from a generic molecule, the distinctive combination with “CID” is entitled to protection.

It further noted that the defendants failed to provide any explanation for adopting a similar mark and that mere existence of similar marks on the register does not prove widespread usage or negate infringement. Importantly, the Court emphasized that trademarks must be compared as a whole and found that “PANTOCID” and “PANTOZED” are phonetically similar, especially considering that “CID” and “ZED” sound alike, increasing the likelihood of confusion.

The Court also underscored that in pharmaceutical products, even minimal confusion must be avoided due to potential risks to public health. It held that manufacturing in India for export purposes constitutes “use” of a trademark under the law, thereby bringing the defendants’ activities within the scope of infringement.

However, the Court declined to grant relief on the ground of passing off, noting the absence of sufficient evidence to establish misrepresentation or damage to goodwill in India.

Concluding the matter, the Court ruled in favour of the plaintiff and granted an interim injunction against trademark infringement. The operative part of the order states:

“In view of above, Interim Application is allowed in terms of prayer clause (a).”

To view the court order, click the link below: