No Distinction Between House Mark and Trademark: Bombay HC Grants Relief to Sun Pharma, Bars 'ABSUN'

The case revolved around the alleged infringement and passing off of the well-known “SUN” and “SUN PHARMA” trademarks through the use of the marks “ABSUN” and “ABSUN PHARMA”.

The judgment was passed by a Single Judge Bench of Justice Manish Pitale of the Bombay High Court on April 22, 2026, in its Commercial Division, bringing an end to litigation that had been pending since 2013.

Sun Pharmaceutical Industries Ltd, a leading pharmaceutical company, claimed longstanding use of its registered trademarks “SUN” (since 1978) and “SUN PHARMA” (since 1993), supported by statutory registrations and extensive market goodwill.

The dispute arose in December 2012 when the company discovered that Absun Pharma was marketing pharmaceutical products under the marks “ABSUN” and “ABSUN PHARMA”. Alleging deceptive similarity, Sun Pharma issued a cease-and-desist notice, which was rejected by the defendant, prompting the present suit seeking permanent injunction and damages.

Sun Pharmaceutical Industries contended that its trademarks “SUN” and “SUN PHARMA” are duly registered and have acquired substantial goodwill and reputation through long, continuous, and extensive use in the pharmaceutical market.

It argued that the defendant’s marks “ABSUN” and “ABSUN PHARMA” are deceptively similar, as they merely prefix the letters “AB” to the core and distinctive element “SUN”, thereby creating a strong likelihood of confusion among consumers. Emphasising the sensitive nature of pharmaceutical products, the petitioner submitted that even minimal similarity in marks can pose serious public health risks, warranting a stricter standard of scrutiny.

The petitioner further alleged that the defendant was attempting to pass off its products as those of the plaintiff by unfairly riding on its established reputation. It was also argued that the defence of “honest adoption” holds no relevance in cases of trademark infringement and passing off. Additionally, the petitioner asserted that exporting goods does not absolve liability, since application of a trademark on goods meant for export still constitutes use in India under the law. On these grounds, the petitioner sought injunction as well as damages for the losses suffered.

Satej M. Katekar, Proprietor of Absun Pharma, opposed the claims by asserting that the mark “ABSUN” was independently coined and derived from the names of his family members—Abhijeet and Sunita—and was adopted bona fide without any intention to infringe.

He argued that the word “SUN” is a common term referring to a natural phenomenon and cannot be exclusively monopolised by any single entity. The defendant further contended that “ABSUN” and “ABSUN PHARMA” were used merely as a trade name or house mark and not as trademarks, thereby placing them outside the scope of infringement provisions.

It was also submitted that all products bearing the impugned marks were exported to African countries and not sold within India, thus negating any claim of passing off in the domestic market. The defendant challenged the plaintiff’s evidence on goodwill and damages, arguing that the documents relied upon were not properly proved. Lastly, it was claimed that the business name had already been changed to “ABSUN REMEDIES”, and therefore, no cause of action survived.

The Court observed that under the Trade Marks Act, there is no distinction between a house mark and a trademark; any mark capable of distinguishing goods qualifies as a trademark. It found that the defendant’s marks “ABSUN” and “ABSUN PHARMA” clearly incorporate the plaintiff’s registered mark “SUN”, making them deceptively similar. The addition of the prefix “AB” was held insufficient to distinguish the marks and, in fact, likely to increase confusion.

The Court stressed that in the pharmaceutical sector, a stricter approach must be adopted due to potential risks to public health. It further held that once infringement is established, the defence of honest adoption becomes irrelevant. The argument regarding export was rejected, with the Court clarifying that use of a trademark on goods meant for export still constitutes use in India under Section 56 of the Trade Marks Act. The Court also noted that the defendant failed to conduct due diligence before adopting the mark and was aware of the plaintiff’s brand, indicating possible dishonest intent.

The attempt to change the business name at the final stage of the proceedings was viewed as a tactical move to evade liability. On the issue of passing off, the Court held that the plaintiff had successfully established goodwill, misrepresentation, and likelihood of damage, although it did not find sufficient evidence to quantify exact monetary damages.

The Court ultimately ruled in favour of Sun Pharmaceutical Industries Ltd, holding that the defendant had infringed its registered trademarks and engaged in passing off. The operative conclusion of the Court was:

"the plaintiff has indeed made out a case of infringement of its registered trade marks / house marks by the defendant, by using the impugned marks"

Accordingly, the suit was decreed, and a permanent injunction was granted restraining the defendant from using the infringing marks, while monetary relief was limited due to lack of specific proof of damages.