{"id":183,"date":"2025-02-21T08:31:15","date_gmt":"2025-02-21T08:31:15","guid":{"rendered":"https:\/\/litlegal.in\/blog\/?p=183"},"modified":"2025-02-21T08:31:17","modified_gmt":"2025-02-21T08:31:17","slug":"pruease-medicine-not-deceptively-similar-to-pro-ease-sanitary-napkins","status":"publish","type":"post","link":"https:\/\/litlegal.in\/blog\/index.php\/2025\/02\/21\/pruease-medicine-not-deceptively-similar-to-pro-ease-sanitary-napkins\/","title":{"rendered":"PRUEASE Medicine Not Deceptively Similar to PRO-EASE Sanitary Napkins"},"content":{"rendered":"\n

Brief overview:<\/h2>\n\n\n\n

This case involves a trade mark dispute between RSPL Health Private Limited (Plaintiff) and Sun Pharma Laboratories Limited (Defendant No. 1) along with Hetero Labs Limited (Defendant No. 2).
<\/p>\n\n\n\n

The Plaintiff sought an ad interim injunction under Order XXXIX Rules 1 and 2 of the CPC to restrain the Defendants from using the trade mark “PRUEASE,” alleging infringement of its registered trade mark “PRO-EASE” and passing off. <\/p>\n\n\n\n

The Commercial Court dismissed the application, finding no likelihood of confusion, no passing off, and disentitlement due to the Plaintiff\u2019s concealment of material facts.<\/p>\n\n\n\n

Factual Background<\/h2>\n\n\n\n

Plaintiff: <\/strong>RSPL Health Private Limited, part of the RSPL Group, adopted “PRO-EASE” in 2012 for sanitary napkins and related hygiene products (Class 5). The mark is registered, widely promoted (e.g., via Kriti Sanon), and has significant sales (\u20b932,202 Lacs in 2021-22).<\/p>\n\n\n\n


Defendants:<\/strong> Sun Pharma Laboratories Limited, a leading pharmaceutical company, adopted “PRUEASE” in 2017 for constipation relief tablets (containing Prucalopride), manufactured by Hetero Labs Limited. The Defendants claimed prior use since 2017, supported by invoices and a 2017 Drug Today advertisement.<\/p>\n\n\n\n

Given below tabulates the facts of the case:<\/p>\n\n\n\n

MARK<\/strong><\/td>PRO-EASE (RSPL)<\/strong><\/td>PRUEASE (SUN)<\/strong><\/td><\/tr>
Goods and services<\/td>Sanitary Napkins <\/td>Pharmaceutical medicine used for relief from constipation.<\/td><\/tr>
Picture<\/td> \u00a0\"\"<\/td>\u00a0 \"\"<\/td><\/tr>
Use<\/td>Earliest Invoice Aug. 2016 <\/td>Earliest Invoice November 2017 <\/td><\/tr>
Mark derived from:<\/td>NA<\/td>PRU derived from salt Pru<\/u><\/strong>calopride, and \u201cEase\u201d to indicate \u201cease from constipation\u201d <\/td><\/tr>
Reg. \/ Pending appli. (Earlier)<\/td>PROEASE \u2013 2450092 \u2013 27.12.12 \u2013 Cl. 5 \u2013 Registered \u2013 PTB \u2013 Goods: Sanitary Napkins. <\/td>PRUEASE \u2013 5353750 dt. 3.3.22 Use claimed 5.8.17 \u2013 Opp. by RSPL \u2013 CS filed on 3.1.2025 \u2013 yet to be served <\/td><\/tr>
Plf\u2019s appli. claiming Pharma<\/td>PRO-EASE LOVINGLY (Device) \u2013 dt. 28.4.2022 – 5426855 \u2013 Cl. 5 \u2013 PTB – Opposed by Sun \u2013 Abandoned \u2013 Review Petition against Abandonment filed.<\/td><\/tr>
PRO-EASE (Device) \u2013 dt. 28.11.2022 \u2013 5700638 \u2013 Cl. 5 \u2013 User: 20.1.14 \u2013 Opposed by Sun \u2013 No CS filed till so far. <\/td><\/tr><\/tbody><\/table><\/figure>\n\n\n\n

Plaintiff’s arguments:<\/strong><\/h2>\n\n\n\n
    \n
  1. Plaintiff<\/strong> claimed itself to be owner and proprietor of trade mark\/ label PROEASE and stated that said trade marks\/ label and formative trade marks have been registered under various classes under the provisions of Trade Mark Act, 1999, alleged that the defendants recently adopted and started using the word \/ mark PRUEASE and label\/logo \"\"as their trade mark [hereinafter referred to as the \u201cimpugned trademark\/ label] for the impugned goods and business.<\/li>\n\n\n\n
  2. It<\/strong> was further argued that in the 1st week of November, 2024, the plaintiff came across display\/ solicitation\/sale of impugned goods under the impugned trademark on the interactive online markets and trade channels like www.1mg.com and www.indiamart.com, through which online sales of the impugned goods bearing impugned trademark are being carried out<\/li>\n\n\n\n
  3. It <\/strong>was further argued that the defendants have dishonestly and malafidely adopted impugned trade mark\/ label PRUEASE\/ \"\", which is identical and \/or deceptively and confusingly similar to plaintiff\u2019s registered trade mark\/ label PRO-EASE in relation to similar goods, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is that of the plaintiff.<\/li>\n<\/ol>\n\n\n\n
    It is pertinent that the Ld. Trial Court initially granted ex-parte ad interim injunction vide Order dt. 3.12.2024. The same was vacated by the Hon'ble Division Bench, vide Order dt. 18.12.2024 directing the Ld. Trial Court to decide the matter afresh!<\/pre>\n\n\n\n
    Defendant’s arguments:<\/h2>\n\n\n\n
    C<\/b>oncealment No. 1:<\/strong><\/p>\n\n\n\n
    It was argued that Plaintiff filed Document being the File Wrapper of the Defendant\u2019s Application for registration of the trade mark PRUEASE under No. dated 5353750 dated 3.3.2022 in class 5 for the goods namely Pharmaceutical, Phytopharmaceutical, Medical Preparations, herbal medicines, etc<\/em>., and the Notice of Opposition filed by the Plaintiff dated 3.1.2024.<\/p>\n\n\n\n
    It was contended that both Trade Mark Application (TM-A) and Notice of Opposition (TM-O) is available on the official website of the Trade Marks Registry i.e., https:\/\/tmrsearch.ipindia.gov.in\/eregister\/. However, Plaintiff cleverly only downloaded the file wrapper and the TM-O from the official website of the Trade Marks Registry and placed the same on record, in order to conceal the fact that Plaintiff had prior knowledge of Defendant’s presence in the market, way prior than the contentions raised in the Plaint. <\/p>\n\n\n\n
    Given below is the assertions made in the Plaint:<\/p>\n\n\n\n
    \n
    ” 30. …Aggrieved, the plaintiff launched an enquiry<\/u> and learnt from its marketing personnel, dealers and distributors<\/u> in the 1st week of November, 2024 itself, that the defendant has recently started<\/u> using, selling, soliciting and networking for the impugned goods under the impugned trade mark in the markets of New Delhi…”<\/em><\/p>\n<\/blockquote>\n\n\n\n
    It was submitted that the very first document attached to the affidavit of use in the TM-A is the DRUG TODAY Medical Journal dated 2017, which clearly shows that \u2018Pruease\u2019 is soon going to be launched.\u00a0 It was further submitted that Defendant placed 5 sample invoices of sale of PRUEASE, earliest being of the year 2017. <\/p>\n\n\n\n
    It was submitted that, had the Plaintiff disclosed the complete set of documents of use, filed along with the Trade Mark Application or the Reply to Examination Report demonstrating the Defendant\u2019s use of the mark ‘PRUEASE’ since 2017, the Ld. Trial Court would have been in a better position to appreciate the lack of prima facie case for the Plaintiff.<\/p>\n\n\n\n
    Concealment No. 2:<\/strong><\/p>\n\n\n\n
    It was submitted that Plaintiff filed an application for registration of the mark PROEASE under no. 2450092 dt. 27.12.2012 only for Sanitary Napkins in class 5. The Registry in the examination report cited the mark PROAGE and PROACE as conflicting marks. It may be noted that PROACE is used by Alembic Pharmaceuticals Ltd. to treat high blood pressure and heart failure. The Plaintiff in its reply to Examination report dt. 25.2.2014 categorically submitted as under:<\/p>\n\n\n\n
    \n
    “6. That it is further submitted that the goods\/services and distribution channels as well as the trade channels of the applicant’s goods\/services\/products in respect of which the applicant’s mark PROEASE has been filed are altogether different from the others as mentioned in the search report.<\/em>“<\/p>\n<\/blockquote>\n\n\n\n
    It was submitted that on the basis of the said averment that Sanitary pads and Medicine are different goods, the Plaintiff obtained<\/strong> registration for the mark PROEASE.<\/p>\n\n\n\n
    Concealment No. 3:<\/strong><\/p>\n\n\n\n
    It was submitted that that the Plaintiff had filed an application for registration for the mark PROEASE under no. 2662319 dt. 20.1.2014 for Sanitary Napkins falling in class 5. The Registry cited the mark PROACE and PROACE-H. It may be noted that PROACE is used by Alembic Pharmaceuticals Ltd. to treat high blood pressure and heart failure. The Plaintiff in its reply to ER dt. 25.2.2014 categorically submitted that:<\/p>\n\n\n\n
    \n
    “1. \u2026Even the goods of the applicants are totally different form the cited applications<\/em>.”<\/p>\n<\/blockquote>\n\n\n\n
    The Plaintiff again took the same stand that both goods are different and therefore there will be no confusion and the same stand was taken in counter-statement filed in support of its Application no. 2662319 \u2013 PROEASE, which was opposed by Charak Pharma P. Ltd. where conflicting mark was PROSTEEZ in class 5 for goods i.e., Ayurvedic Medicinal Preparation. It was the stand that:<\/p>\n\n\n\n
    \n
    “7. \u2026It is surprising how the opponents claim the similarity of the goods when clearly there is no similarity whatsoever. It is submitted that the opponent is dealing with Ayurvedic medicinal preparation\/s which are very specific and distinguishable from the sanitary napkins being dealt with by the applicant. It is further submitted that the marks in relation to the respective goods\/business shall not cause any confusion or deception in the market.”<\/em><\/span><\/p>\n<\/blockquote>\n\n\n\n
    It was further contended that, nor only Plaintiff stated that pharmaceutical medicinal goods to be different from its sanitary napkins but also ayurvedic medicinal goods. Therefore, in overall spectrum of medicinal\/pharmaceutical goods, it is the stand of the Plaintiff that the Sanitary Napkins are different and on the basis of such claims the Registration has been obtained.<\/p>\n\n\n\n
    The competing goods are not allied and cognate:<\/h3>\n\n\n\n
    It was submitted that sanitary napkins are entirely distinct from pharmaceutical goods due to the following reasons:<\/p>\n\n\n\n
    Uses of the respective goods:<\/strong> Sanitary napkins (SN) used for feminine hygiene (menstruation), whereas the Def.\u2019s pharma. medicine is used to treat constipation.<\/p>\n\n\n\n
    Users of the respective goods:<\/strong> SN for women (menstrual hygiene), whereas pharma is for patient<\/p>\n\n\n\n
    Physical nature:<\/strong> SN is hygiene products for external use, Def.\u2019s is med. for internal consumption.<\/p>\n\n\n\n
    Trade channels:<\/strong> SN also sold in grocery stores, supermarkets, etc as consumer goods and can be picked from the counter, while Def.\u2019s product is a prescription drug are distributed only through pharmacies, requiring medical advice.<\/p>\n\n\n\n
    Placement in retail:<\/strong> SN found in non-medical sections in shops, medicines are placed in pharmacy.<\/p>\n\n\n\n
    Competition:<\/strong> SN and medicines for constipation are not in competition.<\/p>\n\n\n\n
    It was further submitted that Defendant is the prior user in Pharmaceuticals. <\/p>\n\n\n\n
    Further arguments on behalf of the Plaintiff<\/h2>\n\n\n\n
      \n
    1. The<\/strong> impugned trade mark\/ label PRUEASE is still not registered under the provisions of Trade Marks Act in favour of the defendants and thus, use of phonetically and visually similar mark PRUEASE by the defendants amounts to infringement of plaintiff\u2019s registered trademark PROEASE<\/li>\n\n\n\n
    2. It<\/strong> is own case of the defendants, as per their trademark application, they have claimed user of their mark \u2018PRUEASE\u2019 since the year 2017, whereas, the plaintiff has been using the trade mark\/ label \u2018PROEASE\u2019 much prior to that. Thus, by virtue of prior adoption, prior use and registrations, the plaintiff has got exclusive rights in the mark and to restrain others from using the identical or similar mark.<\/li>\n\n\n\n
    3. The<\/strong> goods bearing impugned trade mark of the defendants fall in the category of allied and cognate goods within the meaning of S.29(2)(b) of the Trade Marks Act, 1999 and for this reason also, the plaintiff is entitled to ad interim injunction against the defendants.<\/li>\n\n\n\n
    4. Even<\/strong> if this Court finds that there has been some suppression\/ concealment of material facts on the part of the plaintiff, still, the plaintiff deserves an ad interim injunction against the defendants and this Court can always impose appropriate terms including imposition of costs for such negligent conduct if any on the part of the plaintiff<\/li>\n\n\n\n
    5. The<\/strong> principles of \u2018Initial Interest Confusion\u2019, \u2018Hush Hush Products\u2019, and \u2018Reverse Confusion\u2019 would be attracted to the facts and circumstances of the present case<\/li>\n<\/ol>\n\n\n\n
      Further arguments on behalf of the Plaintiff<\/h2>\n\n\n\n
      The plaintiff is only seeking relief against infringement under S. 29(2) of TM Act, which is not maintainable as the marks cannot be said to be deceptively similar under S. 2(h) i.e. as there is no likelihood of any confusion or deception, as also that the goods of the plaintiff i.e. sanitary napkins\/pads and the goods of the defendants i.e. medicinal drugs are not related \/ allied or cognate goods.<\/p>\n\n\n\n
      Judgment<\/h2>\n\n\n\n
      No case for Passing off made out as products of the defendants are prima facie shown to be having starkly different packaging and design elements, which would clearly distinguish their goods from the goods of the plaintiff.<\/p>\n\n\n\n
      It was also observed that prima facie evident from the material available on record that the defendant no.1 is one of the reputed manufacturers of pharmaceutical goods. In the cited judgment of Sun Pharmaceutical Industries Ltd. (supra), Hon`ble High Court of Delhi has declared \u2018Sun Pharma\u2019 to be a well-known trademark.<\/p>\n\n\n\n
      The Hon’ble Court also did not find any force in the contention raised on behalf of the plaintiff that the medicinal goods bearing impugned trade mark of the defendants, would fall in the category of allied and cognate goods insofar as the consumer hygiene products in the form of sanitary napkins\/ pads bearing trade mark of the plaintiff is concerned.<\/p>\n\n\n\n
      The Hon’ble Court also did not agree with the other contention raised on behalf of plaintiff that facts of the present case would attract \u2018Initial Interest Confusion\u2019 test.<\/p>\n\n\n\n
      The Hon’ble Court observed that the sanitary napkins\/pads are considered \u2018hush products\u2019. Still, the \u2018Hush Products\u2019 principle will not get attracted to the facts of the present case, for the reason that the defendants\u2019 pharma tablet is not a \u2018hush product\u2019, it being a pharmaceutical medicine used for constipation treatment, and is openly discussed and often dispensed with medical advice, lacking the discretion typically associated with hush product. \u2018Hush Hush Test\u2019 will only be applicable if competing products are identical and competing with each other.<\/p>\n\n\n\n
      The Hon’ble Court observed that the plaintiff is prima facie shown to have made false statement that it had already filed all the documents as were in its power, control and possession at the time of institution of the suit. It was only when the defendants filed their written statements, it has come to the fore that it had made false averments in the plaint duly supported by Statement of Truth that in the first week of November, 2024 itself, the plaintiff launched an enquiry and learnt from it dealers and distributors that the defendants had recently (emphasis laid) started using, selling, soliciting and networking for the impugned goods under the impugned trade mark in the markets of New Delhi.<\/p>\n\n\n\n
      The Hon’ble Court further noted that the plaintiff is also shown to have withheld user affidavit along with documents i.e. sample invoices showing use of goods bearing impugned trade mark by defendant no.1 since the year 2017, as also reply to examination report w.r.t. it\u2019s application under no. 2450092 \/ 2662319 and counter statement w.r.t. it\u2019s application no. 2662319. Although, all the said documents were well within the power, control and possession of the plaintiff, but still, the plaintiff did not place them on record. The same, prima facie amounts to grave misuse of judicial process.<\/p>\n\n\n\n
      The Hon’ble Court consequently dismissed the Order XXXIX Rule 1 and 2 Application filed by the Plaintiff. <\/p>\n\n\n\n
      Judgment:<\/h2>\n\n\n\n