Marks Visually and Phonetically Dissimilar: Bombay High Court Denies Sun Pharma’s Plea for Injunction Against ‘EsiRaft’

“The opening syllables of the two competing marks are completely different... even making allowance for mispronunciation, it is difficult to accept that the first syllable ‘Esi’ would sound like ‘Raci’”, Bombay High Court (Justice Sharmila U. Deshmukh) delivered a significant ruling in Sun Pharmaceutical Industries Ltd. v. Meghmani Lifesciences Ltd. & Anr. (INTERIM APPLICATION (L) NO. 9484 OF 2025), refusing to grant an interim injunction against the defendants’ use of the trademark ‘EsiRaft’, alleged to infringe the plaintiff’s registered mark ‘RACIRAFT’. The Court found that the rival trademarks were not deceptively similar — either visually or phonetically — and declined to extend the protection under Section 2(h) of the Trade Marks Act, 1999.

“Even a Slight Possibility of Confusion Would Justify Injunction — But No Confusion Found Here”

The plaintiff, Sun Pharmaceutical Industries Ltd, had sought interim relief to restrain the use of the mark ‘EsiRaft’ by Meghmani Lifesciences Ltd., arguing it was deceptively similar to its own registered mark ‘RACIRAFT’ — both used for identical medicinal products used in the treatment of heartburn and indigestion. Despite relying on claims of prior use, visual and phonetic similarity, and the two-colour format used in both marks, the Court found no prima facie case of infringement or passing off.

Background of the Case:

Sun Pharma, claiming use of the mark 'RACIRAFT' since January 2022, argued that the mark was a distinctive combination of the coined prefix ‘RACI’ and the suffix ‘RAFT’, which referred to foam formation caused by the active ingredient sodium alginate. Sun had registered the mark and achieved impressive sales — ₹11.85 Cr in 2022–23 and ₹24.49 Cr in 2023–24. It objected to Meghmani’s use of the mark ‘EsiRaft’, especially since both products contained the same active ingredients and were manufactured by the same third-party manufacturer (Defendant No. 2), who was under contractual restrictions from producing similar trademarks for third parties.

Meghmani, in response, argued that the term ‘RAFT’ is generic, common in antacid pharmaceuticals, and descriptive of the product’s foaming action due to sodium alginate. It contended that the prefix ‘ESI’ stood for “Enhanced System Improvement” or “Esophageal Symptom Index” — a defensible, medically-relevant acronym. Meghmani also pointed out that its product had been in the market since July 2024, generating nearly ₹89 lakh in sales by March 2025, while Sun only filed suit in March 2025, thus raising issues of delay.

Legal Issues and Court’s Observations:

The central legal questions revolved around deceptive similarity under Section 2(h) of the Trade Marks Act, passing off, and whether the visual and phonetic similarities were sufficient to mislead an average consumer.

Justice Deshmukh clarified that “the assessment of deceptive similarity must proceed from a holistic comparison of the marks,” in line with the anti-dissection rule, where composite marks must be judged as a whole.

“The rival marks are combination of generic word with invented prefix — RACI vs ESI... The marks must be viewed from the perspective of an average consumer with imperfect recollection,” the Court stated.

On visual appearance, the Court rejected the claim that similar two-colour formatting could cause deception, noting that such formatting was common in pharmaceutical trade, particularly for products treating indigestion.

“Even accepting the Plaintiff’s contention that production of mere photographs is not sufficient... the use of two colour combination, by itself, is not sufficient to come to a prima facie finding of deceptive similarity,” the Court held.

On Phonetic Similarity: The plaintiff’s counsel argued that ‘EsiRaft’ would be pronounced similarly to ‘RaciRaft’, especially in hurried or colloquial speech. The Court, however, disagreed:

“The Plaintiff’s trademark begins with the consonant ‘R’, pronounced ‘Ray-see’, whereas the Defendant’s begins with vowel ‘E’, pronounced ‘Easy’ or ‘Ee-si’. The opening syllables are completely different… It is difficult to accept that ‘E’ will be pronounced as ‘A’.”

In reaching this conclusion, the Court referred to leading precedents, including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., F. Hoffmann-La Roche v. Geoffrey Manner, and Johann A. Wulfing v. CIPLA, among others.

On the Passing Off Claim: The Court also dismissed the plaintiff’s passing off claim. Relying on the settled factors from Cadila, including visual similarity, class of consumers, mode of purchase, and surrounding circumstances, the Court found no evidence of intentional misrepresentation or consumer confusion.

“Apart from the two colour combination, there is no similarity in placement of elements, packaging, label, or trade dress. The overall visual appearance of the rival products is dissimilar.”

On Dishonest Adoption: Sun Pharma had argued that Meghmani’s use of a common manufacturer indicated dishonest adoption. This was rejected outright.

“The agreement with the manufacturer follows the adoption of the mark, not vice versa… This does not constitute dishonest adoption,” observed Justice Deshmukh.

Meghmani’s explanation for choosing the prefix ‘ESI’ was accepted as “prima facie cogent,” and the Court noted that such acronyms often reflect the product composition, medical condition treated, or body part affected.

On Procedural Law – Order 39 Rule 4 CPC: Sun Pharma objected to the oral prayer for vacating the ad-interim relief, arguing it did not comply with Order 39 Rule 4 CPC. The Court dismissed this procedural objection since the matter had been heard finally on merits, rendering such technicalities immaterial.

Finding no prima facie case of infringement or passing off, the Court vacated the ad-interim relief granted on 7 April 2025, and dismissed the interim injunction application.

However, considering the Plaintiff’s request, the Court continued the ad-interim relief for one week from the date of the order’s uploading, to enable Sun Pharma to take further legal recourse.

“In the absence of any deceptive similarity prima facie being demonstrated, the Defendant No. 1 cannot be restrained from use of the impugned mark which has been adopted and in use since July 2024.”

Date of Decision: 23 December 2025