Can Two Trademarks Coexist Without Causing Consumer Confusion?

Trademark disputes in India often turn on one key question: will consumers be confused by two similar marks? Many businesses fear that a competitor’s brand could dilute their goodwill. But the Delhi High Court, in RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Ltd. (June 12, 2025), clarified that not all similar marks create confusion.

The Court held that “PRO-EASE” (sanitary napkins) and “PRUEASE” (constipation relief medicine) can legally coexist. This ruling explains how courts assess deceptive similarity, allied and cognate goods, distinct trade channels, and expansion rights, while stressing that trademark classification alone does not prove similarity. 

How the Dispute Began: A Sanitary Pad vs a Constipation Medicine?

The Brand with a Head Start: PRO-EASE

There are companies like RSPL, who invest heavily in building their sanitary napkin brand. They registered PRO-EASE back in 2012 under multiple classes, including pharmaceuticals. Their worry was simple: someone piggybacking on that goodwill.

The Challenger: PRUEASE by Sun Pharma

On the other side, Sun Pharma used PRUEASE since 2017 for a medicine containing Prucalopride. Their choice of name was not random; it flowed logically from the drug ingredient itself.

The Core Question Lawyers Asked Themselves

When RSPL sued, the central issue was simple: Would an ordinary customer confuse a sanitary napkin with a constipation relief medicine just because the names looked similar?

What RSPL (Appellant) Argued?

• The marks were phonetically alike, easy to confuse.
• Their Class 5 registration meant they could extend into pharmaceuticals.
• They had senior rights, registered since 2012.
• Sun Pharma’s adoption was dishonest.

As lawyers, it is often seen that, brand owners want to secure a wide umbrella of protection, even for categories they may enter in the future.

What Sun Pharma (Respondent) Argued?

• Different goods, different markets: pads vs prescription medicine.
• Their mark was derived from the active ingredient, showing good faith.
• No intent to overlap with sanitary products.
• RSPL had earlier admitted sanitary and pharma goods are not the same.

This was a strong defense, especially since medicine sales are strictly regulated.

How the Court Looked at It?

Real-World Buying Habits

Sanitary napkins are bought in stores, online, and by women directly. Constipation medicine is prescribed by doctors and sold at pharmacies. The Court said these were not allied or cognate goods.

Packaging and Trade Dress

When the product images were compared, it was clear, they looked nothing alike. This helped Sun Pharma.

Expansion Argument Dismissed

Courts do not like “maybe one day we’ll expand” arguments. RSPL’s claim of entering pharmaceuticals was speculative.

Bona Fide Use

PRUEASE was used since 2017, derived logically, and Sun Pharma even withdrew oppositions, showing fairness.

The Trinity Test

• Prima facie case, not made out.
• Balance of convenience in Sun Pharma’s favor.
• Irreparable harm, not proved.

Precedents the Court Relied On

• Cadila v. Cadila (2001): overall similarity test.
• Bajaj Electricals (1988): goods must be allied.
• Nandhini Deluxe (2018): same class does not mean same goods.
• Hoffmann-La Roche (1970): higher scrutiny for medicines.

The courts always go beyond classification to real-world consumer perception.

What This Means for You as a Brand Owner?

Here is the practical takeaway for clients:

• Same class registration is not enough: You must prove real overlap in goods.
• Think like your consumer: Would they really confuse the products?
• Future expansion will not save you: Rights have to be current, not hypothetical.
• Be transparent and bona fide: Courts respect genuine adoption stories.

Conclusion 

The Delhi High Court was right: sanitary napkin buyers and constipation medicine users are different markets entirely. As lawyers it is often seen that the businesses try to over-stretch their trademark rights. This judgment is a reminder that confusion must be real, not imagined.

So yes, PRUEASE and PRO-EASE can coexist, and that is good news for companies that genuinely adopt unique marks, even if they sound a little alike.

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FAQs

1. What is the “allied and cognate goods” test in trademark law?

Allied and cognate goods are products so closely related that the public may think they come from the same source. If goods are unrelated, even similar marks can coexist.

2. What is the difference between trademark infringement and passing off?

Infringement applies when a registered mark is misused. Passing off protects unregistered marks, requiring proof of reputation, misrepresentation, and damage.

3. Why did the Court emphasize trade channels in this case?

Because sanitary pads are sold in general markets and medicines only through pharmacies, the risk of overlap was minimal. Courts always examine where and how goods are sold.