Relief for Sun Pharma in PruEase Trademark Dispute as Delhi HC Denies RSPL's Injunction Plea

The division bench comprising Justice Navin Chawla and Justice Shalinder Kaur upheld the earlier decision of the Commercial Court and ruled that the nature of goods involved, their purpose, consumers, and trade channels are distinct, and hence, there is no likelihood of confusion or deception.

RSPL had filed a suit seeking a permanent injunction against Sun Pharma, alleging that its use of the mark 'PruEase' infringed upon RSPL’s registered trademark 'Pro-Ease'. The petitioner argued that it had conceived and adopted the trademark 'Pro-Ease' in 2012 and had acquired multiple registrations under Class 5 of the Trade Marks Act, 1999, covering sanitary napkins, towels, pads, tampons, deodorizing agents, and related hygiene products. It submitted that the mark had acquired significant goodwill and reputation through years of use and massive advertisement expenditure. RSPL contended that Sun Pharma's adoption of a deceptively similar mark was dishonest and likely to confuse consumers.

RSPL’s legal team, led by Senior Advocate Raj Shekhar Rao, argued that despite the difference in product categories, it was entitled to protection even for allied or cognate goods such as pharmaceutical products. They further pointed out that Sun Pharma’s application to register 'PruEase' was made only in 2022, while RSPL had been using and marketing 'Pro-Ease' since 2012. The appellant also alleged that Sun Pharma falsely claimed use of the mark since 2017 and had failed to substantiate this with genuine evidence. It was argued that the only available invoices showed internal transactions with Sun Pharma’s distribution arm, Aditya Medisales, and did not inspire confidence about genuine market use. RSPL also raised concerns that Sun Pharma might extend use of the mark to sanitary products in the future, thereby encroaching on its brand space.

On the other hand, Sun Pharma, represented by Senior Advocate Amit Sibal, countered these claims by asserting that the mark 'PruEase' had been coined independently and was derived from the active pharmaceutical ingredient Prucalopride. The suffix 'Ease' indicated relief from constipation. Sun Pharma emphasized that the product was a medicine for gastrointestinal use and bore no connection with feminine hygiene products. It contended that there could be no confusion between a sanitary napkin and a laxative drug, given their distinct usage, audience, and market routes. The company argued that even though both products fell under Class 5 of trademark classification, they served entirely unrelated purposes and should not be seen as allied goods.

Sun Pharma also accused RSPL of withholding crucial facts, including the trademark filings and user affidavits submitted by the respondent before the Trademark Registry. It claimed that RSPL had taken inconsistent stands — arguing before the Trademark Office that its products were distinct from pharmaceuticals, but before the Court claiming the opposite. Moreover, Sun Pharma pointed out that it had withdrawn its earlier opposition to RSPL’s trademark applications and had also amended its own filings to delete references to “hygienic and sanitary preparations,” thereby evidencing its bona fide intent to restrict its trademark usage to medicines alone.

Upholding the Commercial Court’s findings, the High Court emphasized that the marks ‘Pro-Ease’ and ‘PruEase’ are used for fundamentally different products, and there was no case of prima facie infringement or deception. The Court observed;

“the nature of goods, their trade channel, their purpose, and the intended consumers are distinct, and there is no likelihood of confusion being caused by the use of the marks for such goods.”

It also concluded that RSPL failed to make out a case for injunction, especially when the respondents had been using the mark for nearly seven years. The bench noted;

“The appellant has failed to make a prima facie case in its favour. The balance of convenience is also in favour of the respondents and against the appellant inasmuch as the respondents have, at least prima facie, been able to show the user of their mark since 2017...”

The judges further remarked on Sun Pharma’s explanation for adopting the mark;

“The adoption of the Impugned Mark by the respondents has also been explained by it, and the same appears to be bona fide and in accordance with industry practice...”

They added that the suffix ‘Ease’ had been used to reflect relief from constipation and the prefix ‘Pru’ was derived from the chemical ingredient prucalopride.

Regarding potential damage, the Court said;

“As far as irreparable harm and injury is concerned, the appellant can always be compensated in terms of the damages, in case, it is later found to have made out a case for the same.”

On RSPL’s apprehension that Sun Pharma may enter the sanitary product segment, the Court dismissed the argument as speculative;

“the plea of the appellant that the respondents may venture out to the products like sanitary napkins, etc., has been answered by the respondents by stating that they do not intend to use their marks for these goods. This intent has also been evidenced by the respondents withdrawing their oppositions...”

Concluding, the Court dismissed both the appeal and interim application, clarifying;

“the appellant has failed to make out a case for grant of an interim injunction... we find no merit in the present appeal. The same is dismissed. The pending application also stands dismissed.”

And finally,

“We, however, make it clear that the observations made hereinabove shall in no manner influence the trial as they are only prima facie in nature.”

To view the original order, click on the link below: