No Mistaking Pads for Pills | Delhi High Court Rejects RSPL’s Trademark Claim Against Sun Pharma’s Pruease | Finds No Confusion With Pro-Ease Used For Sanitary Products
Safiya Malik
The High Court of Delhi Division Bench of Justice Navin Chawla and Justice Shalinder Kaur held that there was no likelihood of confusion or deception between the use of the trademark 'PRUEASE' for medicinal purposes by the respondents and 'PRO-EASE' for sanitary products by the appellant. The Court directed the dismissal of the appeal challenging the trial court's refusal to grant interim injunction and concluded that the respondent's adoption of the impugned mark was bona fide.
The appeal arose from a dispute concerning the use of the trademark 'PRUEASE' by the respondent, a subsidiary of Sun Pharmaceutical Industries Ltd., and the registered mark 'PRO-EASE' by the appellant. The appellant manufactures and sells sanitary napkins, panty liners, and related hygiene products, with its trademark registered under multiple classes since 2012. It claimed that the respondent's mark, used for a medication intended to relieve constipation, was deceptively similar and likely to cause confusion or deception among consumers.
The appellant relied upon its trademark registrations, extensive sales and advertising expenditure, and claimed first use dating back to 2012. It alleged that the respondent dishonestly adopted a deceptively similar mark and initiated proceedings to protect its mark, including oppositions to the respondent's applications before the Trademark Registry.
The respondents contended they independently adopted the mark 'PRUEASE' based on the active ingredient prucalopride and its therapeutic purpose. They argued the trademark was coined and distinct, emphasizing that their product falls under the pharmaceutical category and targets a completely different consumer base. They also presented evidence of use dating back to 2017.
Previously, the District Judge had granted an ex parte injunction to the appellant. However, that order was later vacated by the High Court, and the matter was remanded for a fresh hearing. Upon reconsideration, the District Judge rejected the appellant's injunction application, leading to the present appeal.
The Court began by noting that the appellant and respondents use their respective marks for entirely different product categories—sanitary napkins and medicinal products designed for relief from constipation. These goods were assessed to be neither allied nor cognate.
It was observed that the channels of trade, purpose of use, and target consumers of these goods differ substantially. As such, the court found no likelihood that consumers would confuse the two trademarks.
The judges found that the appellant had not succeeded in establishing a prima facie case for interim relief. The balance of convenience also weighed in favour of the respondents, who had been using the 'PRUEASE' mark since 2017, well before the initiation of the present litigation.
Further, the court accepted the explanation offered by the respondents about the origin of their trademark. It was derived from the chemical component "prucalopride" combined with "Ease," signifying the product's purpose. This mode of deriving marks was acknowledged as a standard industry practice.
The Court also considered the matter of irreparable harm and concluded that any injury to the appellant could be adequately compensated through damages, should the appellant succeed later in the case.
Lastly, the Court noted that the appellant had prior knowledge of the respondent’s trademark application and associated user affidavit but failed to present these documents before the District Judge when filing the suit. This omission was regarded as lacking transparency.
In its conclusive findings, the Division Bench articulated that for the grant of interim injunction, the appellant was required to establish a prima facie case, show that the balance of convenience lay in its favour, and demonstrate that it would suffer irreparable harm if the injunction was not granted. The Court held that the appellant had failed to meet the first requirement of demonstrating a prima facie case. Furthermore, it found that the balance of convenience tilted in favour of the respondents, who had, on a prima facie basis, shown use of the impugned mark since 2017—a period extending nearly seven years prior to the filing of the suit.
The Court accepted the explanation provided by the respondents regarding the adoption of the mark 'PRUEASE', noting that it appeared to be bona fide. It highlighted the prevailing industry practice where names are derived from the chemical composition of the product, with additional words appended to formulate a coined term. Specifically, the respondents derived the first three letters from the chemical compound prucalopride and added the term 'Ease' to signify the product's purpose in relieving constipation.
With regard to irreparable injury, the Court concluded that the appellant could be compensated by monetary damages in the event it later succeeds in establishing its claims. As such, interim protection was not warranted.
Having weighed all factors, the Court declared that it found no merit in the present appeal and ordered its dismissal, including the dismissal of the pending application. It further clarified that all observations made in the judgment are prima facie in nature and shall not influence the ongoing trial proceedings.
Advocates Representing the Parties:
For the Petitioners: Mr. Raj Shekhar Rao, Sr. Adv. & Ms. Swathi Sukumar, Sr. Adv. with Mr. S.K. Bansal, Mr. Rishi Bansal, Mr. Rishabh Gupta & Ms. Ayushi Arora, Advs.
For the Respondents: Mr. Amit Sibal, Sr. Adv. with Mr. Sachin Gupta, Mr. Rohit Pradhan, Mr. Tanmay Sharma, Ms. Prashansa Singh, Mr. Saksham Dhingra, Mr. Ankur Vyas & Mr. Ankit, Advs.
Case Title: RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Ltd. & Anr.
Neutral Citation: 2025:DHC:4961-DB
Case Number: FAO (COMM) 65/2025
Bench: Justice Navin Chawla and Justice Shalinder Kaur
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