No Likelihood Of Confusion Being Caused To Public: Delhi High Court Dismisses Plea Of ‘Pro-ease’ Against ‘Pruease’ In Trademark Infringement Case
|RSPL Health Pvt. Ltd. filed an Appeal before the Delhi High Court under Section 13 of the Commercial Courts Act, challenging the Order of the District Judge, dismissing the Application filed under Order XXXIX Rules 1 and 2 of the CPC.
The Delhi High Court has dismissed the Appeal of ‘Pro-ease’ against ‘Pruease’ in a trademark infringement case.
RSPL Health Pvt. Ltd. filed an Appeal under Section 13 of the Commercial Courts Act, 2015 (CCA), challenging the Order of the District Judge, dismissing the Application filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
A Division Bench of Justice Navin Chawla and Justice Shalinder Kaur held, “In the present case as well, the goods are distinct, having distinct and separate trade channels, and there is no likelihood of confusion being caused to the public by the use of the marks. There is also no case of passing off made out by the appellant as the packaging of the products and the manner of the depiction of the mark along with other additional ingredients of the label do not indicate any likelihood of confusion resulting in the use of the same.”
The Bench noted that it is common practice that for distinct goods the manufacturers use distinct trademarks.
Senior Advocates Raj Shekhar Rao and Swathi Sukumar represented the Appellant while Senior Advocate Amit Sibal represented the Respondents.
Case Background
A Suit was filed by the Appellant praying for inter alia a Decree of permanent injunction restraining the Respondents from dealing in or using the trademark/label ‘PRUEASE’ (impugned mark) on the ground that it is deceptively similar to the Appellant’s trademark/label ‘PRO-EASE’ (subject mark). In the Plaint, the Appellant asserted that it had conceived and adopted the subject trademark in the year 2012, in relation to sanitary napkins, sanitary towels, sanitary pads, menstruation pads, menstruation briefs, sanitary panties, panty liners for hygienic or menstrual purposes, deodorizing agent and refreshener, panty shields for hygienic or menstrual purposes, menstruation tampons, sanitary wipes, paper wipes impregnated with sanitizers, paper wipes impregnated with disinfectants, and allied and other cognate goods.
It was alleged that the Respondents dishonestly adopted the impugned mark, which is identical/deceptively similar to the subject trademark and is bound to cause confusion and deception in the normal cause of business activities, thereby not only infringing the registered trademark of the Appellant, but also passing off of the same. On the contrary, the Respondents contended that for infringement to arise, confusion among the public must be probable or inevitable, and in this case, no reasonable consumer is likely to confuse a sanitary pad with a medicine designed for constipation relief. As the Application of the Appellant was dismissed, the Appeal was filed before the High Court.
Reasoning
The High Court in the above context of the case, observed, “As far as the plea of the appellant that non-grant of injunction may prevent the appellant from expanding its business to pharmaceuticals, apart from being based on mere conjectures, even otherwise, cannot be accepted. … In fact, it is own case of the appellant that it has other trademarks like GHARI/GHADI Label, VENUS, REDCHIEF, NAMASTE INDIA etc.. The above plea, therefore, appears to be a red herring, rather than any genuine concern.”
The Court said that equally, 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 to the applications of the appellant seeking registration of its mark. … Though much was also stated on the evidence of user of the mark by the respondents, in our view, at this stage, given the evidence placed on record by the respondents, it cannot be said that their claim of user of their mark since 2017 can be disbelieved”, it added.
The Court was of the view that selling its products through one selling partner cannot lead to an inference that the invoices are not genuine and these are, in any case, matters of evidence and trial.
“As far as the plea of the appellant that it cannot be held guilty of concealment, in our opinion, the same has lost significance once on merit we find that the appellant, even otherwise, was not entitled to grant of an interim injunction. However, we must state that the conduct of the appellant is not completely bona fide and transparent. Once it has been disclosed that the appellant was aware of the application filed by the respondents seeking registration of its mark, and it was aware of the user affidavit filed along with it, the appellant should have placed the same before the learned District Judge along with the suit itself. It appears to have intentionally withheld this document as it wanted to claim that the respondents came into market only in November 2024, that is, just before the filing of the suit, so that it can make out a case for grant of ex parte interim relief”, it further remarked.
The Court said that for grant of an interim injunction, the Appellant has to meet the trinity test that is, of showing a good prima facie case, balance of convenience in its favour, and that irreparable harm shall be caused to it in case such interim order is not granted.
“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, that is, for a period of almost seven years prior to the filing of the suit. 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, wherein alphabets are taken from the chemical compound the product is made of, and additions are made to it to make it a coined mark”, it also noted.
The Court concluded that the Respondents have taken the first three alphabets from the chemical compound prucalopride, and have added the word ‘Ease’ to the same, for reflecting the ultimate use of the medicine, that is, giving relief to constipation and 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.
Accordingly, the High Court dismissed the Appeal.
Cause Title- RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Limited & Anr. (Neutral Citation: 2025:DHC:4961-DB)
Appearance:
Appellant: Senior Advocates Raj Shekhar Rao, Swathi Sukumar, Advocates S.K. Bansal, Rishi Bansal, Rishabh Gupta, and Ayushi Arora.
Respondents: Senior Advocate Amit Sibal, Advocates Sachin Gupta, Rohit Pradhan, Tanmay Sharma, Prashansa Singh, Saksham Dhingra, Ankur Vyas, and Ankit.