Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)

In this case, the plaintiff, formerly known as American Cynamid Company, was the owner of the trademark 'PACITANE,' which was registered in Class 5 of Pharma goods. The respondent was using the mark 'PARKITANE' on comparable goods. The plaintiffs filed a suit for infringement and passing off and sought various reliefs including interim injunction against the defendant for using the mark 'PARKITANE'.

The Court determined that the goods in both cases are similar, being pharmaceutical preparations for the treatment of Parkinson's disease, the customers buying these goods are similar, and the trade channels are similar. Because the defendants did not show any search of the Register prior to adopting the contested mark, prima facie adoption of the mark was not honest.

The Court held that, despite protests, if the defendants continue to sell the products, it cannot be said that the plaintiff has acquiesced. As a result, the Court ruled that an injunction should be granted in favour of the plaintiff.

Furthermore, the Court held that in the case of pharmaceutical products, the test is one of possibility of confusion rather than probability of confusion. Because the plaintiffs have been in the field since 1950, the balance of convenience favours them. The plaintiffs were granted an injunction by the Court.