The Bombay High Court recently adjudicated a trademark dispute between Trackon Couriers Private Limited, the registered proprietor of the ‘TRACKON’ marks, and its former business associate, B.N. Srinivas. The issue arose from the Defendant’s continued use of the mark ‘TRACK-ON’ and allied trade names following the termination of their commercial relationship. Alleging infringement and passing off, the Plaintiff sought interim protection of its statutory and common law rights.

Background

Trackon Couriers Private Limited has been engaged in domestic courier services, international shipping, e-commerce logistics, and supply chain management since 2002. It holds valid and subsisting registrations in Class 39 for several composite label marks containing the word “TRACKON” .

The mark ‘TRACKON’ is a coined expression adopted in 2002. Through continuous and extensive use, it has acquired substantial goodwill and reputation in relation to the Plaintiff’s services.

In 2016, the Plaintiff appointed the Defendant as its business associate to promote its services in Andhra Pradesh and Telangana. By a letter dated May 5, 2016, the Defendant was authorised to operate under the name ‘M/S. Trackon Couriers & Cargo Services’ in those regions. Pursuant to this arrangement, the Defendant and his wife formed a partnership and carried on business under that name between 2016 and 2023.

In October 2023, the Plaintiff called upon the Defendant to cease using ‘TRACKON’ and to change the business name. In correspondence exchanged between October 28, 2023, and November 6, 2023, the Defendant agreed to comply.

However, in September 2024, the Plaintiff discovered that the Defendant had applied to register the mark ‘TRACK-ON EXPRESS’ on a ‘proposed-to-be-used’ basis and had established a new partnership firm under the name ‘Track On Express Logistics.’ A cease-and-desist notice dated September 16, 2024, was issued, followed by a termination notice dated September 19, 2024, formally ending the business association.

Plaintiff’s Case

The Plaintiff contended that:

1. ‘TRACKON’ is a coined and distinctive mark, adopted in 2002, and has acquired significant goodwill through long and continuous use.
2. The essential and dominant feature of its composite registrations is the word ‘TRACKON’ (including its Devanagari representation).
3. Registration of a composite mark confers exclusivity over its essential features, and unauthorised use of such a feature amounts to infringement.
4. The Defendant’s mark ‘TRACK-ON’ is virtually identical and deceptively similar to the Plaintiff’s registered marks, and is used for identical services.
5. The Defendant had earlier used ‘TRACKON’ only as a business associate and had expressly agreed to change its name in 2023.
6. The plea of prior use was unsupported by credible evidence and was contradicted by the Defendant’s July 2024 trademark application, which described the mark as ‘proposed to be used.’
7. There was no documentary evidence establishing any independent proprietorship predating the Plaintiff’s rights.

On these grounds, the Plaintiff submitted that it had established a strong prima facie case and was entitled to interim relief.

Defendant’s Contentions

1. Lack of Territorial Jurisdiction
   It was argued that the Court lacked jurisdiction, as both parties operated outside Mumbai and the alleged acts of infringement occurred elsewhere. Reliance on the Defendant’s website to establish a Mumbai presence was said to be misplaced.
2. Inconsistent Pleadings
   The Defendant contended that the Plaintiff had taken contradictory positions denying permission in the plaint while arguing permissive use during oral submissions.
3. Absence of Written Licence
   It was submitted that even if permissive use were assumed, there was no written agreement as contemplated under the Trademarks Act, 1999, nor any evidence of trade connection or quality control.
4. Suppression of Material Document
   The Defendant alleged suppression of the May 5, 2016 letter, which, according to him, demonstrated the Plaintiff’s knowledge of and consent to use of the name.
5. Acquiescence
   The Defendant argued that the Plaintiff had knowingly allowed use of ‘TRACKON’ since 2016 and had thereby acquiesced.

Plaintiff’s Rejoinder

In response, the Plaintiff submitted that:

1. Jurisdiction was invoked on the basis that a substantial part of the cause of action arose in Mumbai and loss was suffered there.
2. Territorial jurisdiction is a mixed question of fact and law to be determined at trial upon filing of a written statement.
3. The plea of permissive use was not inconsistent; the Plaintiff consistently asserted proprietorship while acknowledging that the Defendant had used the mark during the subsistence of their business association.
4. The plea of acquiescence was untenable in light of the October–November 2023 correspondence and the prompt cease-and-desist notice.
5. The alleged reply dated October 10, 2024, was never received and no proof of delivery was produced.

Court’s Analysis and Findings

The Court held that the Plaintiff is admittedly the registered proprietor of the TRACKON marks, all containing ‘TRACKON’ as their dominant and essential feature. These registrations are valid and unchallenged, entitling the Plaintiff to exclusivity.
It reiterated that unauthorised use of the essential part of a registered composite mark amounts to infringement. Given the Plaintiff’s longstanding use and goodwill, and in the absence of dispute as to similarity of marks or services, the Plaintiff was prima facie entitled to protection.

The Court found:

1. The Defendant had abandoned its plea of prior use during oral arguments.
2. The July 2024 application on a ‘proposed-to-be-used’ basis contradicted any claim of longstanding use.
3. The May 5, 2016 letter referred only to ‘Trackon Couriers & Cargo Services’ and described the Defendant as a business associate acting ‘on behalf of’ the Plaintiff, supporting the case of permissive use rather than independent proprietorship.
4. The Defendant had not denied correspondence in which it agreed to change its name.
5. The plea of acquiescence failed, as the Plaintiff had acted promptly upon discovering the impugned use.

The Court further held that objections on territorial jurisdiction and inconsistent pleadings were misconceived and based on selective readings. Notably, the Defendant had failed to file a written statement within the prescribed time, rendering the Plaintiff’s case uncontroverted at this stage.

Grant of Interim Relief

The Court concluded that:

1. The Plaintiff had established a strong prima facie case.
2. The balance of convenience lay in its favour.
3. Refusal of interim relief would cause irreparable injury.
4. The Defendant would suffer no legitimate prejudice by being restrained from using a mark to which it had no legal entitlement, particularly after having agreed to cease such use.

Accordingly, the Court granted an injunction restraining the Defendant from using the mark TRACKON/TRACK-ON” or any deceptively similar mark pending disposal of the suit.

Comment

The decision underscores the protection afforded to the dominant feature of a registered composite mark and reaffirms that a former business associate cannot, after termination, appropriate a deceptively similar mark for identical services.