No Monopoly over Unused Goods within Same Trademark Class – A Commentary on RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Ltd. (2025 DHC 4961-DB)

1. Introduction

The Division Bench of the Delhi High Court in RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Ltd. & Anr., FAO (COMM) 65/2025, pronounced on 12 June 2025, has handed down an important decision clarifying the scope of protection available to a registered proprietor whose mark is used only for a subset of goods falling within a broad Nice/Indian classification. The Court rejected RSPL’s appeal for an interim injunction against Sun Pharma’s use of the mark “PRUEASE” for a constipation drug, notwithstanding RSPL’s prior registration and extensive sales of sanitary napkins under the mark “PRO-EASE” (both marks lodged in Class 5).

Key questions arose:

Does mere registration in a class confer exclusive rights against all goods in that class irrespective of actual use?
Can a registered proprietor block a pharmaceutical mark when it has, so far, sold only sanitary napkins?
How should an appellate court treat a trial judge’s discretionary refusal of an interim injunction?

2. Summary of the Judgment

The Division Bench dismissed RSPL’s appeal, holding that:

Sanitary pads and constipation drugs are “entirely distinct” goods with separate consumer circles, trade channels and purposes. Therefore, confusion or deception is improbable.
A proprietor cannot claim a monopoly over the whole of Class 5 when it actually trades only in one niche (feminine hygiene). This principle follows Nandhini Deluxe v. KMF and Vishnudas Trading.
Sun Pharma had demonstrated prima facie prior use since 2017; its explanation of coining “PRUEASE” (from “Prucalopride” + “Ease”) appeared bona fide.
The trial court’s refusal to grant interim relief was not perverse; hence the appellate court should not interfere (re-endorsing Wander Ltd. v. Antox and Ramakant Choksi).
RSPL’s alleged future expansion into pharmaceuticals was speculative; balance of convenience and irreparable injury did not favour it.

3. Analytical Discussion

3.1 Precedents Cited and Their Influence

Wander Ltd. v. Antox India (1990 Supp SCC 727) – The golden rule that appellate courts rarely overturn discretionary interlocutory orders unless they are perverse. The Bench leaned on Wander to uphold the trial court’s discretion.
Ramakant Ambalal Choksi v. Harish Ambalal Choksi (2024 SCC OnLine SC 3538) – Elaborated the test of “perversity” and reaffirmed Wander; the Bench quoted it extensively to demonstrate it would not substitute its own discretion.
Vishnudas Trading v. Vazir Sultan Tobacco (1997) 4 SCC 201 and Nandhini Deluxe v. KMF (2018) 9 SCC 183 – Core rationale that registration covering a broad specification does not grant a blanket monopoly across every article in that class when the proprietor does not trade in them.
United Brothers v. United Traders (1982 SCC OnLine Del 20) – Applied for the proposition that allied/cognate goods analysis must look at consumer understanding and market channels, not merely class number.
SK Sachdeva v. Shri Educare, ICOMM Tele v. BSNL, etc. – Cited by Sun Pharma for the doctrine of estoppel/approbate-reprobate; though the Court flagged RSPL’s inconsistency, it did not make concealment the decisive factor.

3.2 Legal Reasoning of the Bench

The judgment can be broken down into three logical layers:

Standard of Appellate Interference – The Bench commenced by setting the legal frame: it could intervene only upon finding arbitrariness, caprice or perversity in the trial judge’s order.
Likelihood of Confusion Test
• Section 29(2) TM Act governs same or similar marks for identical/similar goods; confusion is the linchpin.
• Sanitary napkins v. pharmaceutical tablets are not similar goods; RSPL had to rely on Section 29(4). That provision demands proof of reputation and unfair advantage/detriment. The Court saw no such evidence.
• The Bench underscored that “same class” does not equal “similar goods”. The Nice Classification is administrative, not dispositive.
Right to Future Expansion – RSPL asserted a notional right to branch into pharmaceuticals. The Court called this a “red herring”. Absent concrete steps (product development, DCGI filings, marketing), mere intent could not trump Sun Pharma’s present use since 2017.
Balance of Convenience & Irreparable Injury – Sun Pharma had allegedly invested in product development and nationwide sales for seven years. Stopping sales of a therapeutic drug would cause more disruption than RSPL might suffer (if any) from continued coexistence. Monetisable damages were adequate for RSPL.
Bona Fide Adoption – Evidence showed “PRU” derives from active ingredient Prucalopride; “Ease” is descriptive of relief. Such an etymology, coupled with industry custom, rebutted any allegation of malice.
Conduct of the Parties – The Bench did not decide purely on concealment but noted RSPL’s selective disclosure as a factor weighing against equitable relief.

3.3 Impact of the Decision

Re-affirmation of Limited Monopoly: The ruling fortifies precedent that registration cannot be weaponised to cordon off every product within a Nice class. Proprietors must actively use the mark in those sectors to claim exclusivity.
Guidance for Cross-Sector Trademark Disputes: The case will likely be cited where FMCG and pharma (or any dissimilar sectors) clash under the same class. Proof of actual confusion – not class overlap – will be central.
Trial–Appellate Dynamics: By showcasing the narrow lane for appellate interference, the judgment provides cover for trial courts to exercise pragmatic discretion, especially in commercial suits where injunctions can disrupt supply of medicines.
Compliance for Pharma Naming Conventions: The Court implicitly validated the industry practice of deriving brand names from active ingredients, so long as they remain coined and distinguishable.

4. Complex Concepts Simplified

Nice Classification (or Indian Classification) – An administrative list dividing goods/services into 45 classes for registration convenience. It does not determine similarity of goods for confusion analysis.
Allied & Cognate Goods – Goods that are so related in nature, purpose, trade channel or consumer expectation that the public might think they originate from the same source (e.g., bread and biscuits). Sanitary pads and laxatives are not allied.
Section 29(2) vs. 29(4) TM Act – Sub-section (2) deals with identical/similar marks for identical/similar goods. Sub-section (4) applies when goods are dissimilar; plaintiff must add proof of reputation plus unfair advantage/detriment.
Prima Facie Case / Balance of Convenience / Irreparable Injury – The “trinity” test for interim injunctions. Courts grant early relief only if (a) plaintiff shows a plausible claim, (b) harm tilts in its favour, and (c) monetary compensation later will not suffice.
Perversity Standard – An appellate court may reverse a discretionary order only if the lower court’s view is irrational, ignores evidence, or applies wrong legal principles. A mere “different possible view” is insufficient.

5. Conclusion

The Delhi High Court’s decision in RSPL v. Sun Pharma crystallises a crucial doctrinal checkpoint: trademark proprietors cannot claim carte-blanche exclusivity over the entire bandwidth of a Nice class merely on the strength of registration. Actual commercial overlap and likelihood of confusion remain decisive. Additionally, the ruling accentuates the deference owed to trial-court discretion in interlocutory matters and signals that speculative expansion plans will not outweigh the entrenched market presence of another trader in a dissimilar product segment. As brand portfolios diversify and cross-class skirmishes rise, this precedent will act as a pragmatic compass for courts, counsel and businesses alike.