Relief from gas: Bombay HC grants makers of acidity med PANTOCID relief in trademark case against PANTOZED

The Bombay High Court has restrained a Kenyan pharma company and its Indian contract manufacturer from using the mark “PANTOZED” for their anti‑acidity drug, holding that it prima facie violated Sun Pharma’s “PANTOCID” trademark [Sun Pharma Laboratories Ltd v Zawadi Healthcare Ltd & Anr]..Justice Sharmila Deshmukh allowed Sun Pharma Laboratories’ interim application for the restraining order in a trademark infringement suit filed against Zawadi Healthcare Ltd (Kenya) and its Indian manufacturer over the export of “PANTOZED‑40” tablets from India to Kenya. "The Plaintiff has succeeded in making out a prima facie case for infringement of trade mark by use of the deceptively similar mark 'PANTOZED.' ... The Defendants have no registration in India and even its Kenyan registration is of recent origin. The Plaintiffs (Sun Pharma) have thus made out prima facie case for grant of injunction against infringement of its registered trade mark," the Court held. .The Court noted that both “PANTOCID” and “PANTOZED/PANTOZED‑40” are based on the same active pharmaceutical ingredient, pantoprazole, and are used for identical ailments, namely acid‑related diseases. While both marks share the common prefix “PANTO”, the Court focused on the suffixes “CID” and “ZED” and found them phonetically similar when the marks are spoken as a whole, creating a strong likelihood of confusion among customers. "When the marks are pronounced as a whole, it is likely that both the marks would sound similar as ZED is phonetically similar to CID. There is strong likelihood of the Defendant’s drug being handed over when asked for the Plaintiff’s product," the Court observed. In the context of medicinal products, even a slight possibility of confusion must be avoided, the Court stressed, relying on the Supreme Court’s Cadila Healthcare ruling..Zawadi had argued that “PANTO” comes from the generic molecule and is common to trade, pointing to numerous third‑party marks with “PANTO” and “CID”, and also relied on its Kenyan registration for “PANTOZED”. The Court, however, concluded that Sun's 1998 registered mark, "PANTOCID," is a distinctive combination of "PANTO" (from the molecule) and "CID" (referring to the ailment, acid). The Court also said that simply showing many similar trademarks on the register, without any proof that they are widely used in the market, does not prove the mark is common in the trade.Crucially, the Court clarified that trademark infringement can be made out even when the allegedly infringing goods are only exported.It ruled that applying a trademark in India to goods intended for export and the subsequent export of those goods under the mark constitute ‘use’ for trademark infringement under Sections 29(6) and 56 of the Trade Marks Act, 1999. "The statutory provisions would indicate that the activity of Defendant No 2 of manufacturing the impugned product with the impugned mark carried out in India and exporting the impugned products from India is liable for an infringement action as such use constitutes use of the trademark," the judgment reads. .However, the judge did not find force in Sun Pharma's claim that the defendants had "passed of" its goods as Pantocid. The Court noted that there was no material to show that “PANTOZED” products were available in India or that Zawadi misrepresented its goods as those of Sun Pharma to damage its goodwill here."There is no material brought to the notice of the Court that the Defendant’s products are available in India so as to damage the Plaintiff’s goodwill and reputation which is shown in India. I am thus not inclined to grant interim relief as against passing off," the Court said. .Advocates Anees Patel, Vaibhav Keni, Neha Iyer, Vishwajeet Jadhav, Mohd. Affan briefed by Legasis Partners appeared for Sun Pharma.Advocates Atmaram Patade, Pranav Manjrekar, Shraddha Patil, Atharva Kudtarkar and Rahul Dubey appeared for Zawadi Healthcare..[Read order]