Trade Marks Act Makes No Distinction Between House Marks And Trade Marks: Bombay High Court

"Trade Marks Act does not specifically define house mark and it makes no distinction between a trade mark and a house mark... the moment a mark is capable of distinguishing the goods or services of one person from the other, it qualifies as a trade mark," Bombay High Court, in a significant ruling, held that the Trade Marks Act, 1999, recognizes no distinction between a "house mark" and a "trade mark" for the purposes of determining infringement.

A bench of Justice Manish Pitale observed that any mark used to distinguish the goods of one enterprise from another qualifies for statutory protection. The Court emphasized that a defendant cannot evade liability by claiming that an infringing mark is merely a house mark or a corporate trade name rather than a specific product brand.

The plaintiff, Sun Pharmaceutical Industries Ltd., filed a commercial IP suit seeking a permanent injunction against Satej M. Katekar (Absun Pharma). Sun Pharma alleged that the defendant’s use of ‘ABSUN’ and ‘ABSUN PHARMA’ infringed its registered marks ‘SUN’ and ‘SUN PHARMA,’ which have been in use since 1978 and 1993 respectively. The defendant contended that its marks were "house marks" used only for goods exported to African countries and were coined from the names of the proprietor’s family members.

The primary question before the court was whether the Trade Marks Act distinguishes between a house mark and a trade mark in infringement proceedings. The court was also called upon to determine if applying a mark in India for goods intended solely for export constitutes "use" under Section 56 of the Act. Additionally, the court examined whether the defendant’s failure to specifically deny the contents of Chartered Accountant certificates in a commercial suit amounted to an admission of the plaintiff's goodwill.

Statutory Definition Of Marks Includes House Marks and Trade Names

The Court analyzed the definitions of ‘mark’ under Section 2(m) and ‘trade mark’ under Section 2(zb) of the Trade Marks Act. Justice Pitale noted that the moment a mark is capable of distinguishing the goods or services of one person from others, it qualifies as a trade mark under the law. The bench rejected the defendant's argument that Sections 29(1) to (4) of the Act apply only to product-specific marks and not to general house marks.

"The Trade Marks Act does not specifically define house mark and it makes no distinction between a trade mark and a house mark... the defendant cannot claim that its marks do not qualify to be trade marks."

Infringement Under Section 29(5) When Registered Mark Is Subsumed

The Court found that the defendant’s marks ‘ABSUN’ and ‘ABSUN PHARMA’ clearly subsumed the plaintiff’s registered marks ‘SUN’ and ‘SUN PHARMA’ by merely prefixing the alphabets ‘AB’. The bench held that Section 29(5) of the Act is squarely attracted when a registered trade mark is used as part of a trade name or business concern. The Court dismissed the notion that "deceptive similarity" is foreign to Section 29(5), ruling that the aspect of confusion naturally arises when a registered mark is used as part of a trade name.

"The defendant is indeed using the registered trade marks of the plaintiff ‘SUN’/ ‘SUN PHARMA’, as part of its trade name and hence, the defendant cannot escape liability."

Stricter Test For Deceptive Similarity In Pharmaceutical Products

Reiterating established precedents, the Court held that a stricter approach must be adopted when comparing marks for medicinal and pharmaceutical preparations. The bench observed that confusion in this sector could have deleterious effects on public health. Applying the test of a person of average intelligence and imperfect recollection, the Court found the marks visually, phonetically, and structurally similar. The Court noted that merely prefixing alphabets does not sufficiently distinguish a mark when the core registered identity is retained.

"When the Court is considering the aspect of infringement in the context of medicinal and pharmaceutical preparations, it has to be all the more strict."

Export Of Goods Deemed As 'Use' Under Section 56

The defendant’s plea that it sold no products in the domestic market and exported only to Africa was rejected as a valid defense against infringement. The Court referred to Section 56 of the Trade Marks Act, which stipulates that applying a mark in India to goods intended for export constitutes "use" of the mark for any purpose material under the Act. Consequently, the Court held that the defendant’s export activities were sufficient to sustain an action for both infringement and passing off.

"The application in India of the trade mark, although to goods to be exported from India, is deemed to constitute use of the trade mark in relation to the said goods."

Evidentiary Standards In Commercial Suits And Admission Of Documents

A critical procedural point was decided regarding the proof of goodwill. The plaintiff relied on Chartered Accountant (CA) certificates to prove sales and promotional expenses. The defendant challenged these at the final hearing stage because the authors of the certificates were not examined. However, the Court ruled that under Order VIII Rules 3 and 5 and Order XI Rule 4 of the CPC (as applicable to Commercial Courts), a defendant must specifically admit or deny the contents of documents. Since the defendant failed to file a statement of admission and denial, the documents and their contents stood admitted.

"In a commercial suit... the procedure for admission and denial of documents is different... the defendant was specifically required to deny the contents of the documents."

Rejection Of Late-Stage Trading Name Changes

The Court strongly criticized the defendant's attempt to file an affidavit during the final hearing claiming a change of name from ‘ABSUN PHARMA’ to ‘ABSUN REMEDIES’. Justice Pitale described this as a tactic to defeat the trial and evade injunctions. The bench remarked that such conduct fortified the finding of dishonest adoption, noting that the defendant’s witness had admitted to being aware of Sun Pharma’s existence since 1995 but failed to conduct a search of the trade marks register.

"Honest men do not attempt to sail near the wind."

The Court concluded that the plaintiff successfully proved both trademark infringement and the tort of passing off. While the prayer for rendition of accounts was declined due to the absence of a specific issue and evidence, the Court granted a permanent injunction. Considering the defendant to be a "first-time knowing infringer" who was aware of the plaintiff's brand for decades, the Court awarded costs of Rs. 10 lakhs to Sun Pharma.

Date of Decision: 22 April 2026