Introduction

A Division Bench of the Bombay High Court recently considered an appeal arising from the refusal of interim injunctive relief in a trademark dispute between Minco India Private Limited and Minco India Flow Elements Private Limited. The case presents an intersection of trademark law principles with family business dynamics, highlighting how suppression of material facts and acquiescence can defeat even a registered proprietor’s claim at the interim stage.

Factual Background

The dispute originates from a commercial suit instituted by the plaintiff, Minco India Private Limited, alleging trademark infringement, passing off, and related claims against the defendant, Minco India Flow Elements Private Limited. The plaintiff sought to restrain the defendant from using the mark “MINCO” in connection with its business.

The plaintiff asserted that it had been engaged in the manufacture and supply of gauges and related instruments since 1982 and had continuously used the mark “MINCO INDIA” since then. Over decades, the mark was claimed to have acquired substantial goodwill and distinctiveness, becoming exclusively associated with the plaintiff’s business.

In February 2024, the plaintiff claimed to have discovered that the defendant was using the identical mark “MINCO” for similar industrial products such as flow meters. Alleging dishonest adoption and prior knowledge on the defendant’s part, the plaintiff pointed to an instance of confusion involving a third-party complaint wrongly attributed to it. On this basis, the suit and accompanying application for interim injunction were filed.

Order of the Single Judge

The Learned Single Judge declined to grant interim relief. While acknowledging certain aspects of the plaintiff’s case, the Court held that the plaintiff was not entitled to equitable relief.

The refusal was primarily grounded in:

1. Suppression of material facts and prima facie false statements by the plaintiff;
2. The defendant’s prior and continuous use of the mark since 2012;
3. The defendant’s substantial business operations and turnover; and
4. The plaintiff’s failure to establish a prima facie case of passing off, particularly in the absence of pleadings or evidence demonstrating misrepresentation.

Accordingly, the balance of convenience was found to favour the defendant.

Appeal Before the Division Bench

Aggrieved by the refusal of interim relief, the plaintiff preferred an appeal, contending inter alia:

1. The Single Judge erred in denying relief on the ground of suppression, relying on background facts such as the historical relationship between the parties.
2. The alleged omissions relating to a 2012 no-objection certificate (NOC), the plaintiff’s directorial role until 2015, and the date of knowledge did not constitute material suppression sufficient to disentitle equitable relief.
3. The plaintiff, being the prior user since 1982 and a registered proprietor, held superior rights in the mark.
4. The defendant’s reliance on concurrent use was misplaced, particularly as its 2022 trademark application was filed on a “proposed to be used” basis.
5. Mere delay does not amount to acquiescence unless it reflects implied consent creating enforceable rights, which was absent in the present case.

Defendant’s Submissions

The defendant, in response, argued:

1. The plaintiff had not made full disclosure of the relationship between the parties, reducing it to a bare reference despite deep business and familial ties.
2. The products in question were customized, specification-based industrial goods, often not bearing trademarks, and were sold under corporate names rather than as branded products.
3. The parties were brothers, and their businesses originated from a common family enterprise, later divided but continuing similar operations.
4. The defendant had adopted the name “MINCO” in 2012 pursuant to a no-objection from the plaintiff, and both parties had coexisted for over a decade.
5. The plaintiff’s prolonged inaction, despite knowledge, amounted to acquiescence, and the present suit disrupted a long-standing understanding of coexistence.

Findings of the Division Bench

The Division Bench reiterated the settled principle that an appellate court should not interfere with the exercise of discretion by a trial court unless it is shown to be arbitrary, perverse, or contrary to settled principles.

• Knowledge and Suppression of Material Facts

The Court found that the plaintiff’s assertion of acquiring knowledge only in February 2024 was prima facie incorrect. The records evidence that:

1. A no-objection certificate in 2012 permitting the defendant to adopt the name “MINCO”
2. The fact that both brothers served as directors in each other’s companies until 2015; and
3. Continued proximity and shared clientele.

In light of these facts, the plaintiff’s portrayal of the defendant as an unrelated third party was held to be misleading, amounting to suppression of material facts.

• Acquiescence as a Complete Defence

The Court held that the defendant’s open and continuous use of the mark since 2012, coupled with the plaintiff’s knowledge and inaction, constituted acquiescence.
This long-standing use of the defendant was found sufficient to disentitle the plaintiff from interim relief, particularly given the equitable nature of such relief.

• Scope of Trademark Rights in Context

While acknowledging that registration confers exclusivity, the Court clarified that such rights are not absolute and must be assessed in context.

In the present case:

1. Both entities originated from the same family business;
2. Their operations were historically intertwined; and
3. The defendant’s adoption of the mark was not in the nature of a third-party encroachment.

Accordingly, the plaintiff’s statutory rights could not be enforced in isolation from these surrounding circumstances.

• Absence of Prima Facie Case and Likelihood of Confusion

The Court also noted:

1. The goods involved were specialized, made-to-order industrial products, reducing the likelihood of confusion;
2. The plaintiff relied on only a single instance of alleged confusion; and
3. There was insufficient material to establish misrepresentation or passing off.

• Balance of Convenience

Given the defendant’s long-standing use since 2012 and the plaintiff’s inaction, the balance of convenience clearly favoured the defendant. Granting an injunction at this stage would disrupt an established business practice.

Conclusion

In view of the above, the Division Bench upheld the order of the Learned Single Judge and dismissed the appeal. The refusal of interim relief was affirmed on the grounds of:

1. Suppression of material facts, and
2. Acquiescence arising from prolonged inaction despite knowledge.

Comment

The decision reinforces that interim relief in trademark disputes is not granted as a matter of course, even in favour of a registered proprietor. Courts will closely scrutinize the conduct of the parties, especially in cases involving longstanding relationships and shared business origins. Where a plaintiff has acknowledged the defendant’s use over time and failed to make full and frank disclosures, equitable relief may justifiably be denied. The judgment thus highlights that delay, coupled with acquiescence and suppression of facts, can outweigh statutory rights at the interlocutory stage.

This appeal before the Division Bench (two Judge Bench) of the Bombay High Court arose from an order of the Learned Single Judge granting an interim injunction in a trademark dispute. The plaintiff, Bhavesh Suresh Kataria, had instituted a suit against Kataria Insurance Brokers Pvt. Ltd., alleging trademark infringement and passing off, and sought to restrain the defendant from using the mark “Kataria” in relation to its business.

Background of the Dispute

The plaintiff claimed to be engaged in the insurance business since 1999 and to have specialized in jewellery insurance from 2004 under the name “Kataria Jewellery Insurance Consultancy.” According to the plaintiff, continuous and extensive use of the mark “KATARIA” since 2004 had rendered it distinctive of its business, resulting in substantial goodwill and reputation.

The plaintiff further asserted that it is the registered proprietor of the mark “KATARIA” and in Class 36 and has operated the domain name “www.kataria.insurance” since 2007.

In 2014, the plaintiff discovered that the defendant had incorporated a company under the name “Kataria Insurance Brokers Pvt. Ltd.” and raised objections. Despite assurances to change its name, the defendant allegedly failed to comply, leading to the issuance of a cease-and-desist notice. The plaintiff later found that the defendant continued using the impugned name through the domain “katariainsurance.co.in.”

Consequently, the plaintiff filed the present suit seeking a permanent injunction along with interim relief.

Defendant’s Case

The defendant refuted the allegations, contending that “Kataria” is a long-standing family surname used since 1955 across multiple group entities. It was argued that the plaintiff cannot claim exclusivity over a common surname.

The defendant traced its lineage to a partnership firm, Kataria Transport Company (established in 1955), and highlighted the subsequent incorporation of several entities such as Kataria Infrastructure Pvt. Ltd. (1982), Kataria Automobiles Pvt. Ltd. (1990), Kataria Motors Pvt. Ltd. (2002), and Kataria Wheelers (2011), many of which were engaged in automobile and insurance-related services.

It was further contended that:

1. The use of “KATARIA” is bona fide and protected under Section 35 of the Trademarks Act.
2. The parties operate in distinct segments, jewellery insurance versus automobile/general insurance.
3. No likelihood of confusion arises due to this market distinction.
4. The defendant was willing to undertake not to enter the jewellery insurance segment.

Findings of the Single Judge

The Single Judge granted interim relief in favour of the plaintiff, holding that:

1. The plaintiff is the registered proprietor of the mark “Kataria” in Class 36, and the defendant’s use of “Kataria Insurance” and its corporate name was identical or deceptively similar.
2. The defence under Section 35 was unavailable to the defendant, as it applies only to individuals and not corporate entities.
3. The plaintiff was the prior adopter and user of the mark, with established goodwill in the insurance sector.

Appeal Before the Division Bench

Aggrieved by the order, the defendant preferred an appeal before the Division Bench, reiterating its long-standing use of the surname and challenging the interpretation of Section 35.

Analysis and Findings of the Division Bench

The central issue before the Court was whether the protection under Section 35, relating to bona fide use of one’s own name extends to incorporated entities.

Applicability of Section 35 to Companies

The Division Bench disagreed with the Single Judge’s restrictive interpretation. It held that the term “person” under Section 35 includes companies, in light of the General Clauses Act. Accordingly, a corporate entity may also invoke the defence of bona fide use of its own name.

On facts, the Court found that:

1. “Kataria” is a family surname.
2. The name has been continuously used since 1955 across several family-run businesses.
3. The adoption of the name by the defendant was not opportunistic, but a continuation of established business practice.

The Court therefore held that the defendant’s use was bona fide and protected under Section 35.

Scope of Trademark Protection in Class 36

The Court also addressed the argument relating to the breadth of Class 36, noting that it encompasses a wide range of services, including insurance, finance, and real estate.

It clarified that:

• Registration in a class does not confer monopoly over all services within that class.
• Protection is limited to the specific services for which the mark is used and registered.

No Likelihood of Confusion

A key factor in the Court’s reasoning was the distinction between the parties’ businesses:

• The plaintiff operated in the niche segment of jewellery insurance.
• The defendant was engaged in automobile and general insurance.

Given this clear market differentiation, the Court held that there was no likelihood of confusion or deception, and therefore no infringement under Section 29.
Equities and Balance of Convenience

The Court further noted that:

• The defendant had built substantial goodwill over decades of continuous use.
• Restraining the defendant would cause significant prejudice.
• The defendant’s undertaking not to enter the jewellery insurance segment adequately safeguarded the plaintiff’s interests.

Conclusion

In light of the above findings, the Division Bench set aside the interim injunction granted by the Single Judge and allowed the appeal. The defendant was permitted to continue using “Kataria” in its trade name, corporate name, and domain name.

Comment

This decision underscores a balance in trademark law between statutory exclusivity and the legitimate use of personal or family names. By recognizing that Section 35 extends to corporate entities and giving due weight to long-standing, bona fide use, the Division Bench reaffirmed that trademark rights cannot be stretched to monopolize common surnames, especially in the absence of real market overlap or likelihood of confusion.

The Bombay High Court recently considered an interim injunction application in a trademark dispute between Rynox Gears and Steelite India, involving the competing marks “RYNOX” and “RHYNOX” in the motorcycle accessories market. The case raised questions of trademark infringement, passing off, prior use, and the consequences of inconsistent pleadings in commercial litigation.

Background of the Dispute

The Plaintiff, Rynox Gears, is a partnership firm established in 2012, engaged in the manufacture and sale of motorcycle protective gear such as jackets, gloves, and luggage systems under the mark “RYNOX.” The Plaintiff asserted that the mark forms a key part of its trade identity and enjoys substantial goodwill and reputation, supported by registrations, sales figures, and promotional activities.

The dispute arose when the Plaintiff discovered in June 2023 that the Defendant, Steelite India, had obtained registration for the mark in Class 9, specifically for helmets. Alleging deceptive similarity and likelihood of confusion, the Plaintiff issued a cease-and-desist notice in October 2023 and subsequently filed a suit when the Defendant resumed use of the impugned mark.

Plaintiff’s Case

The Plaintiff’s claims were founded on prior use since 2012 and registration of the “RYNOX,” and marks, with an application filed in August 2016 and registration granted in 2017. It also relied on its device mark registration obtained in 2019.

Key submissions included:

1. The marks “RYNOX” and “RHYNOX” are phonetically identical and likely to confuse consumers.
2. The Defendant’s goods, helmets are allied and cognate to the Plaintiff’s motorcycle gear, sharing trade channels and consumer base.
3. Substantial goodwill exists in the “RYNOX” mark across motorcycle accessories.
4. Evidence of actual confusion was cited, including an instance where an e-commerce platform listed the Defendant’s product under the Plaintiff’s mark.

Defendant’s Defence

The Defendant contested both infringement and passing off, raising several defences:

1. The mark “RHYNOX” was independently adopted in 2016, inspired by the rhinoceros, and selected after a trademark search.
2. Registration was obtained in 2017, and continuous use has been made specifically for helmets.
3. The Plaintiff does not manufacture helmets and has misrepresented this fact.
4. The alleged cease-and-desist notice was never received.
5. The parties operate in distinct markets, motorcycle apparel versus helmets, which require specific certifications and cater to a different segment.
6. The Plaintiff’s delay and lack of awareness of the Defendant’s activities since 2017 indicate separate market presence.

The Defendant also challenged the Plaintiff’s entitlement to equitable relief, citing inconsistencies and alleged false statements in the pleadings.

Issues Before the Court

The Court examined:

1. Whether a prima facie case of trademark infringement was made out.
2. Whether the Plaintiff established the classical trinity of passing off, goodwill, misrepresentation, and damage.
3. The effect of alleged suppression and misstatements on the Plaintiff’s claim for equitable relief.

Court’s Analysis

• Trademark Infringement

The Court noted that both parties were registered proprietors of their respective marks. Moreover, the Plaintiff had not challenged the validity of the Defendant’s registration.
It further observed that:

1. The Defendant applied for registration in January 2017 after conducting a search.
2. At that time, the Plaintiff’s mark had not yet been published.
3. The Plaintiff’s mark was published later in January 2017 and registered in June 2017.

In these circumstances, the Defendant’s registration was not prima facie illegal or fraudulent. Accordingly, the Court held that no case for infringement was made out.

• Passing Off and Clean Hands

The Court placed significant emphasis on inconsistencies in the Plaintiff’s pleadings:

1. The Plaintiff initially claimed to be manufacturing and marketing helmets since 2012.
2. When challenged, it shifted its position to argue that its goods are allied and cognate to helmets.
3. The Court found the original assertion regarding helmets to be prima facie incorrect.

Similarly, with respect to the cease-and-desist notice:

1. The Plaintiff claimed the notice had been received and acted upon by the Defendant.
2. However, records showed the notice was returned unserved.
3. The Plaintiff later stated that proof of delivery had been misplaced.

The Court held that these misstatements were material and appeared to have been made to justify the delay in filing the suit. Such conduct, it observed, undermines a party’s entitlement to equitable relief.

Reiterating the principle that a litigant must approach the Court with clean hands, the Court held that suppression or misrepresentation of material facts can itself be a ground to deny relief at the threshold.

• Goodwill and Market Overlap

On the substantive elements of passing off:

1. The Court found that the Plaintiff failed to establish goodwill in the helmet segment as of 2016, when the Defendant adopted its mark.
2. The Plaintiff’s business was primarily in apparel and accessories, not helmets.

While the Plaintiff argued that the goods were allied and cognate, the Court was not persuaded that sufficient market overlap existed to establish misrepresentation.

• Similarity of Marks

The Court conducted an overall comparison of the marks and found:

1. is a composite mark with a rhinoceros device and stylized lettering.
2. The visual and structural elements distinguished it from “RYNOX.”

On this basis, the Court held that the marks were not deceptively similar to cause confusion.

• Evidence of Misrepresentation and Damage

The Plaintiff relied on a single instance of alleged confusion on an e-commerce platform. The Court held that:

1. A solitary instance is insufficient to establish likelihood of deception.
2. There was no evidence that the Defendant marketed its goods as those of the Plaintiff.

Further, in the absence of goodwill in the relevant segment, the Plaintiff failed to establish damage.

Decision

The Court concluded that:

1. No prima facie case of infringement was made out.
2. The Plaintiff failed to establish the elements of passing off.
3. Material inconsistencies and misrepresentations in the pleadings disentitled the Plaintiff to equitable relief.

Accordingly, the application for interim injunction was dismissed.

Comment

The ruling serves as a reminder for litigants in commercial disputes to ensure accuracy and consistency in pleadings, particularly when seeking equitable remedies such as injunctions.

A contentious trademark dispute before the Delhi High Court between Novartis AG and the “Noviets” group of entities has resulted in the grant of an interim injunction restraining the Defendants from using the mark “NOVIETS.” The case presents a conflict involving allegations of trademark infringement, passing off, unfair competition, dilution, etc, in the pharmaceutical sector where courts consistently apply an enhanced standard due to public health implications. This note discusses the rival submissions of the parties and the Court’s ruling on the interim injunction application.

Background and Plaintiff’s Case

The Plaintiffs, forming part of the globally renowned Novartis Group, asserted longstanding rights in the mark “NOVARTIS,” adopted in 1996 and used extensively across jurisdictions, including India. With a presence in India dating back to 1947, the Plaintiffs emphasized their substantial goodwill, extensive sales, and significant promotional activities.

The “NOVARTIS” mark, serving as a house mark, has acquired distinctiveness and source-identifying significance. The Plaintiffs contended that the Defendants’ mark “NOVIETS,” used in relation to pharmaceutical and veterinary products, is deceptively similar, visually, phonetically, and structurally.

The dispute traces back to October 2020, when the Plaintiffs discovered the Defendants’ trademark application for “NOVIETS.” Despite issuing multiple legal notices and initiating opposition proceedings which led to abandonment of the application, the Defendants continued their use. In January 2024, the Plaintiffs discovered the Defendants’ products bearing the impugned mark on IndiaMart, prompting the present suit.

The Plaintiffs argued that:

1. The marks ‘NOVARTIS’ and ‘NOVIETS’ are deceptively similar and used for identical goods.
2. The Defendants’ adoption is dishonest and intended to ride on the Plaintiffs’ goodwill.
3. In pharmaceutical cases, even a likelihood of confusion is sufficient due to potential public health risks.
4. Interim injunction can be granted even against a registered mark if prior rights are established.

Defendants’ contentions

The Defendants resisted the injunction on several grounds:

1. Lack of territorial jurisdiction, asserting no commercial activity in Delhi and their IndiaMart listing as passive.
2. Distinctiveness of the mark “NOVIETS,” arguing that “NOV” is a generic prefix widely used in the pharmaceutical trade.
3. Bona fide adoption and limited use as a trade name rather than a product mark.
4. Absence of confusion, misrepresentation, or damage, given their localized, offline operations.

Court’s Analysis and Findings

Jurisdiction

At the interim stage, the Court applied the demurrer principle, accepting the plaint’s averments as true. It held that the Defendants’ IndiaMart listing and “Contact Us” page indicating Delhi as a place of business prima facie established purposeful targeting of consumers within Delhi.

The Court observed that the determination of whether the online presence is “passive” or “interactive” involves a mixed question of law and fact and therefore cannot be conclusively decided at the preliminary stage.

Deceptive Similarity and Dishonest Adoption

The Court found a strong prima facie case of deceptive similarity:

1. Both marks share the dominant element “NOV”
2. Structurally and phonetically, “NOVARTIS” and “NOVIETS” are similar.
3. Minor variations were held insufficient to dispel confusion.

Applying the dominant feature test, the Court held that the essential feature of the Plaintiffs’ mark had been appropriated.

The Defendants’ argument that “NOVIETS” was used only as a trade name was rejected, with the Court clarifying that such use does not safeguard against infringement or passing off.

Further, the Court noted the absence of any plausible explanation for the adoption of the mark “NOVIETS,” concluding that the adoption was prima facie dishonest and intended to capitalize on the Plaintiffs’ reputation.

Goodwill, Confusion, and Public Interest

The Plaintiffs successfully demonstrated substantial goodwill and reputation. The Court emphasized that:

1. Actual confusion need not be proven; likelihood of confusion suffices.
2. From the standpoint of an average consumer with imperfect recollection, the marks are nearly indistinguishable.
3. In pharmaceutical cases, stricter scrutiny is warranted due to risks to public health.

Generic Defence Rejected

The Defendants’ argument that “NOV” is generic was dismissed. The Court observed that having themselves sought registration of “NOVIETS,” the Defendants could not simultaneously claim that the mark lacks distinctiveness.

Triple Identity and Balance of Convenience

The Court found the presence of “triple identity”, similar marks, identical goods, and overlapping consumer base, strongly favouring the Plaintiffs.

On the balance of convenience, the Court held that:

1. Continued use by the Defendants would irreparably harm the Plaintiffs’ goodwill.
2. The Plaintiffs had established a strong prima facie case.
3. Irreparable injury would ensue absent interim relief.

Conclusion

The Delhi High Court granted an interim injunction restraining the Defendants from using the mark “NOVIETS” or any deceptively similar mark in relation to pharmaceutical and veterinary products, whether as a trademark or trade name.

The case is a reaffirmation of the enhanced protection accorded to pharmaceutical trademarks and the judiciary’s role in preventing consumer confusion in matters impacting public health.

A recent decision of the Delhi High Court reiterates a fundamental principle of Indian trademark law, prior user rights prevail over statutory registration. In a dispute over the mark “ATHERMAL,” the Court set aside an injunction granted by the District Court and granted interim protection to the party claiming earlier use of the mark.

Background

The appeal arose from an order passed by the Additional District Judge-04, North-West District, Rohini Courts, Delhi. Aggrieved by the order restraining him from using the mark “ATHERMAL,” the Defendant, Amit Bansal, approached the High Court in appeal.

The Respondent/Plaintiff, Amit Garg, had instituted a suit before the District Court claiming that he carried on business under the name M/s Athermal Industries AG, engaged in the manufacture and marketing of various goods. It was further asserted that Respondent No. 2, a proprietorship concern run by his family members, marketed the same range of goods under the subject mark.

According to the Respondents, the mark “ATHERMAL” was honestly conceived and adopted in 2003 through a predecessor. An application for registration of the mark in Class 9 was filed in 2010, which was subsequently granted registration in 2017.

In response, the Appellant/Defendant asserted in the Written Statement that the mark “ATHERMAL” had been in use since 1985 by his predecessor-in-title, Rajinder Kumar Bansal, who carried on business as M/s Ambay Traders and Manufacturers from the same premises. Mr. Bansal, the Appellant’s father, was said to have adopted and used the mark, which the Appellant later continued to use after establishing his own enterprise in 2006 under the name M/s Ambay Industrial Corporation.

Both parties moved applications before the District Court seeking interim injunctions against the use of the mark “ATHERMAL.” By the impugned order, the Court allowed the Plaintiff’s application and rejected the Defendant’s application, thereby restraining the Appellant from using the mark.

Appellant’s Contentions Before the High Court

The Appellant argued that the mark “ATHERMAL” was coined and adopted in 1985 by his father, Mr. Rajinder Kumar Bansal, who extensively used it for welding-related goods, including welding apparatus, cables, regulators, transformers, machines, tools and welding safety glasses.

When the Appellant commenced his own business in 2006 under M/s Ambay Industrial Corporation, he continued using the mark with his father’s permission, operating from the same premises and issuing invoices under the mark.

The Appellant further contended that:

1. The Respondents had commenced business only in October 2011, making it improbable that they had used the mark earlier.
2. The Appellant had filed trademark applications for “ATHERMAL” in 2011 in Classes 9 and 7, which were still pending before the Trademarks Registry.
3. Several examination reports issued by the Registry cited the Appellant’s applications as conflicting marks against the Respondents’ applications.
4. In response to those examination reports, the Respondents argued that the Appellant’s mark was visually, structurally and phonetically different, thereby acknowledging the existence of the Appellant’s mark.

The Appellant also alleged that the invoices filed by the Respondents to establish prior use were forged and illegible.

Respondents’ Submissions

The Respondents maintained that Respondent No. 1 commenced business under the subject mark in 2003 through Respondent No. 2, M/s Shiva Traders, a family proprietorship run by his mother, Ms. Asha Rani. According to them, rights in the mark were transferred through an oral family settlement.

They further argued that:

1. The Appellant’s claim of use since 1985 was unsupported by documentary evidence.
2. No assignment deed existed transferring the mark from Mr. Rajinder Bansal to the Appellant.
3. The Appellant’s trademark applications claimed use only from 2006, indicating that the Appellant was neither the prior applicant nor prior user.
4. The Respondent had secured registration of the subject mark in 2017, while the Appellant’s applications remained pending.
5. The Appellant attempted to amend the user date from 2006 to 1985 in 2018, which is belated and a substantial change.

The Respondents also alleged that the Appellant’s invoices were fabricated and argued that there was no evidence of use after 1999, suggesting abandonment.

High Court’s Analysis and Findings

The High Court examined two principal issues: (i) alleged inconsistency in the Respondents’ stand before the Trademarks Registry and the Court, and (ii) the competing claims of prior use.

The Appellant contended that the Respondents had earlier asserted before the Trademarks Registry that the marks were dissimilar and therefore could not now claim deceptive similarity in the suit. However, the Court observed that although the Appellant’s mark had been cited against some applications of the Respondents, it had not been cited against the subject mark in Class 9, which formed the basis of the present suit. Consequently, the principle of approbate and reprobate did not apply in the circumstances.

The Court then examined the rival claims of prior use. The District Court had accepted the Respondents’ claim of use since 2003, while rejecting the Appellant’s claim on the ground that the Appellant had not produced a formal assignment deed from his predecessor and that his trademark applications were still pending.

The High Court found this reasoning erroneous. It noted that the Appellant had produced invoices dating back to 1990, showing use of the mark through his predecessor, Mr. Rajinder Kumar Bansal. At the same time, the Respondents’ claim of rights in the mark was based on an oral family settlement, which had been accepted by the Trial Court without similar scrutiny.

In view of the documentary material placed on record, the Court held that the Appellant had made out a prima facie case of prior use since at least 1990. The Court reiterated the settled principle that prior user rights prevail over registration, and therefore the Appellant’s earlier use was prima facie superior to the Respondent’s registered mark, which claimed user only from 2003.

Decision

In light of these findings, the High Court allowed the appeal and set aside the order of the District Court. The Court restrained the Respondent/Plaintiff from using the subject mark “ATHERMAL” or any mark deceptively similar to it in relation to welding goods during the pendency of the suit.

Comment

This ruling reinforces the well-established principle of trademark law that prior user rights prevail over statutory registration. By recognising the Appellant’s prima facie evidence of earlier use of the mark “ATHERMAL,” the Court emphasised that actual market use and commercial goodwill carry greater weight than mere registration, particularly at the interim stage.

The Division Bench of the Delhi High Court recently dismissed the appeal filed by Star Smith Export Private Limited and upheld the interim injunction granted in favour of A. O. Smith Corporation in a trademark infringement dispute. The dispute concerned the defendants’ use of the mark “STAR SMITH” in relation to products such as geysers, water heaters and purification systems. The plaintiffs contended that the impugned mark was deceptively similar to their well-known and registered trademark “AO SMITH.” The Court observed that “SMITH” constituted the dominant element of the competing marks, and considering the identical nature of goods, overlapping trade channels and the likelihood of consumer confusion, the use of the mark “STAR SMITH” was likely to mislead consumers. The Court also took note of the plaintiffs’ prior use and established reputation in India, which predated the defendants’ adoption of the impugned mark.

Accordingly, the appeal was dismissed and the defendants were restrained from using “STAR SMITH” as a trademark, corporate name or domain name. The Court further directed the defendants to change their corporate name and domain name within the timelines prescribed by the Court. RNA Technology and IP Attorneys represented A.O. Smith Corporation in this matter.

In a significant ruling concerning pharmaceutical trademark infringement, the Bombay High Court granted interim relief in favour of Laboratoires Griffon Private Limited, restraining the Defendants from using the marks “GLYNET” and “GLYZET” or any other mark deceptively similar to the Plaintiffs’ registered trademarks “GLIMET” and “GLIMET DS.” The Court also directed initiation of perjury proceedings against Defendants and imposed ₹50 lakh as costs, citing their breach of undertakings and false statements on oath.

Background of the Dispute

The Plaintiffs are the registered proprietors of the trademarks “GLIMET” and “GLIMET DS” in Class 05 for pharmaceutical preparations used in the treatment of diabetes. Plaintiff No. 2, a sister concern of Plaintiff No. 1, has been granted a limited, non-exclusive licence to manufacture and sell products under these marks under the supervision of Plaintiff No. 1.

In 2021, the Plaintiffs instituted a suit before the Bombay High Court against the Defendants and ZeeLab Generic Pharmacy challenging the use of the mark “GLYNET.” The suit was disposed of by an order dated March 11, 2021, after the Defendants made a statement before the Court that they would discontinue the use of “GLYNET” and any of its variants and take steps to withdraw their pending trademark applications.

The Defendants also informed the Court that certain stock bearing the impugned mark had already entered the market. Accordingly, the Court granted them 90 days to clear the existing stock, after which any unsold goods were to be destroyed or repackaged after removing the impugned marks. In view of the undertaking given by the Defendants, the suit was decreed in favour of the Plaintiffs, who chose not to press their claim for damages.

Plaintiffs’ allegations in the present suit

The Plaintiffs later discovered that the Defendants had continued manufacturing and selling products under the mark “GLYNET,” in violation of the undertaking recorded by the Court. They also found that the Defendants had adopted a new mark, “GLYZET,” for an identical pharmaceutical product used for the treatment of diabetes.

The Plaintiffs placed online orders in July 2021 for products advertised under the mark “GLYZET.” However, the goods delivered bore the mark “GLYNET.” Although the invoices referred to the product as “GLYZET,” the packaging prominently displayed “GLYNET,” and the products bore a manufacturing date of May 2021, indicating continued production even after the Court’s earlier order.

According to the Plaintiffs, the adoption of “GLYZET” was merely an attempt to make minor alterations to their mark “GLIMET.” The substitution of the letters “I” and “M” with “Y” and “Z” did not eliminate the likelihood of confusion, particularly since the competing products were pharmaceutical preparations intended for the same therapeutic purpose.

The Plaintiffs also alleged that the Defendants had made false statements on oath by claiming that the use of “GLYNET” had ceased after the order dated March 11, 2021 and that the impugned products were manufactured prior to that date.

Defendants’ Submissions

The Defendants argued that the earlier suit had not been decided on merits but had merely been disposed of on the basis of their recorded statement before the Court. They also submitted that once the present suit was filed and ex parte ad-interim relief was granted, they had discontinued the use of the mark “GLYZET.”

They further contended that:

1. The marks “GLYZET” and “GLIMET” were visually, structurally and phonetically distinct.
2. The packaging of the rival products was different, eliminating the likelihood of confusion.
3. The mark “GLYZET” had been honestly adopted, with “GLY” referring to the active pharmaceutical ingredient Glimepiride and “ZET” derived from the Defendants’ corporate name “ZEM.”
4. The manufacturing date printed on the strips was May 2020, prior to the Court’s earlier order, and the endorsement “Read as GLYZET-PM2 Tablets” indicated that there was no intention to breach the undertaking.

Court’s Findings

After examining the record and the rival marks, the Court held that the Plaintiffs had established a strong prima facie case for interim relief.

The Court observed that the Plaintiffs were the registered proprietors of the marks “GLIMET” and “GLIMET DS,” and the Defendants were already aware of these rights due to the earlier litigation.

Dishonest Adoption

The Court rejected the Defendants’ explanation for the adoption of “GLYZET.” It observed that if the mark had genuinely been derived from Glimepiride and the corporate name “ZEM,” the resulting mark would logically have been “GLYZEM.” The adoption of “GLYZET” therefore appeared to be a deliberate attempt to imitate the Plaintiffs’ mark “GLIMET.”

Deceptive Similarity

The Court held that “GLYZET” was deceptively similar to “GLIMET.” Both marks shared the same prefix “GL” and suffix “ET,” had similar lengths and structures, and were phonetically similar.

The substitution of “IM” with “YZ” was considered a minor variation that would not dispel confusion, particularly in the context of oral prescriptions and sales of medicines in India.

Stricter Approach for Pharmaceutical Products

The Court emphasized that a higher degree of caution is required in cases involving pharmaceutical products, as confusion between medicines can pose serious risks to public health. Even a possibility of confusion between competing medicinal products is sufficient to justify the grant of an injunction.

Breach of Undertaking and False Statements

The Court also found that the Defendants had breached the undertaking recorded in the order dated March 11, 2021 by continuing to manufacture and sell products under “GLYNET.” Documentary evidence indicated that products bearing the mark had been manufactured in May 2021, well after the Court’s order.

Further, the Court concluded that certain Defendants had made false statements on oath regarding the cessation of use of the impugned mark, thereby misleading the Court.

Relief Granted

In view of these findings, the Court granted an interim injunction restraining the Defendants from manufacturing, selling, advertising, or dealing in pharmaceutical products under the marks “GLYNET,” “GLYZET,” or any other mark deceptively similar to the Plaintiffs’ registered trademark “GLIMET.”

The Court also directed that appropriate action be initiated against the Defendants for perjury for making false statements on oath.

Additionally, considering the Defendants’ breach of undertaking, continued infringement, and misleading conduct, the Court imposed exemplary costs of ₹50 lakh payable to the Plaintiffs.

Conclusion

The ruling reiterates the strict standards applied by courts in pharmaceutical trademark disputes, where even minor variations between competing marks may not be sufficient to avoid confusion. It also highlights that breach of undertakings given to the court and false statements on oath can attract serious consequences, including perjury proceedings and substantial monetary costs.

The rapid proliferation of artificial intelligence technologies has ushered in an era of synthetically generated information (SGI), encompassing deepfakes, AI altered audio-visual content, and algorithmically manipulated media that blurs the line between reality and fabrication. In response, the Ministry of Electronics and Information Technology (MeitY) on 10th Feb amended the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) and brought in new Amendment Rules, 2026 (Amendment Rules). The Amended Rules became effective from February 20, 2026, these changes mark India’s first comprehensive statutory framework for SGI, prioritizing transparency, swift enforcement, and accountability amid rising misinformation threats.

The objective of these rules is to address exponential digital growth from 250 million to over 1 billion internet users in less than a decade outpacing digital literacy, fuelling SGI driven scams. These varied from financial scams to celebrity impersonation, false endorsements and offering merchandise bearing celebrity names etc. The Delhi and Bombay High Courts in last one year has witnessed a flurry of personality rights cases involving SGI impersonations, underscoring judicial consensus on harm and injury arising out of such SGI impersonations.

Definition of Synthetically Generated Information (SGI)

The cornerstone of the Amendment Rules lies in the introduction of the definition of “synthetically generated information” under Rule 2(1)(wa), a novel definition absent in the original 2021 framework. SGI is defined as any audio, visual, or audio-visual content that is “artificially or algorithmically created, generated, modified or altered using a computer resource” in a manner that depicts or conveys information appearing authentic but which a reasonable person would perceive as realistically depicting persons, events, or scenes that have not occurred. Exclusions carve out bona fide uses, such as routine photo/video editing, academic/research content, watermarking for branding, or AI training data devoid of realistic impersonation.

This precise delineation, addresses ambiguities in prior rules while targeting high-risk deepfakes including, but not limited to, realistic forgeries often used for electoral manipulation, defamation, or non-consensual pornography. MeitY further clarifies that the focus is multimodal (images, audio, video) and not just textual content, narrowing the scope to perceptible harms. However, platforms/intermediaries fear overbroad interpretations could interfere against legitimate generative AI tools, potentially stifling innovation without clear technical standards for the term “realistic depiction”.

Labelling and Meta Data Obligations for Intermediaries

1. Amendments to Rule 3(1) impose stringent due diligence on intermediaries, particularly Significant Social Media Intermediaries (SSMIs) with over 5 million users. Rule 3(3) mandates prominent disclosure of SGI at upload, prohibiting users from removing or suppressing labels/metadata. Intermediaries must ensure all SGI is embedded with unalterable metadata or unique identifiers tracing origin, provenance, and alterations, while deploying algorithms to detect and prevent non-disclosure.
2. Rule 4(1A), inserted for SSMIs, elevates user declarations from mere endeavours to mandatory verification i.e. platforms are directed to confirm SGI disclosures before publication and reject non-compliant uploads. The Rules emphasize upon a clear and prominent marking visible to recipients underscoring permanence and mandating that no intermediary may facilitate label stripping. Non-compliance risks forfeiture of safe harbour immunity under Section 79(1) of the Information Technology Act, 2000, exposing platforms to vicarious liability for user generated SGI violations.

Accelerated Takedown Regime and Grievance Redressal

1. A paradigm shift emerges in enforcement timelines with clear obligation on SSMIs to acknowledge complaints upon actual knowledge received by i) an order of a court of competent jurisdiction or ii) a reasoned intimation from the authorised officer of the Appropriate Government or its agency. SSMIs must remove/disable access or issue warnings within three hours to the publisher for unlawful SGI, slashing the prior 36-hour window.
2. Grievance officers are also now required to acknowledge complaints within twenty-four hours and resolve issues within seven days (halved from 15). The Rules also specifies that the intermediaries are required to deploy reasonable and appropriate technical measures like automated detection to ensure that unlawful/prohibited SGI must be prevented under Rule 3(3)(a)(i) such as child in sexually explicit manner (CSEAM), sexually explicit content or non-consensual intimate imagery.

Challenges for Intermediaries/Businesses

1. The labelling requirement for SGI highlights a shift to proactive obligations, akin to EU AI Act watermarking. However, the lack of grace periods for tech upgrades could burden the SMEs disproportionately.
2. Businesses apprehend the three-hour clock as operationally unfeasible without 24/7 human-AI hybrids, risking erroneous takedowns and free speech under Article 19(1)(a).
3. The amendments explicitly link SGI lapses to its breach of due diligence requirement. The Amendments to Rule 3(2) specify that failure to expeditiously remove flagged content post-notice voids protection as an intermediary. Resultantly incentivizing over removal.
4. MeitY has clarified that the application of the Rules is platform wide, and not per-post, which could lead to platforms pre-emptively censoring ambiguous content to mitigate risks.
5. While advancing transparency, the new Rules raises certain implementation hurdles. Technical feasibility of metadata persistence across edits/sharing chains remains unaddressed with no government provided tools are being offered under the new Amendment to The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
6. The overall cost burden of implementation and talent shortages for compliance teams may have an impact on innovation with resources being allocated towards compliance.

Conclusion

While free speech curtailment and operational infeasibility challenges remain, such criticisms overlook India’s scam epidemic such as use of SGI for “digital arrest” frauds exploiting low literacy users. The 2026 Amendments indicate a proactive, SGI-centric evolution of India’s intermediary liability framework, mandating labelling, verification, and ultra-swift takedowns to combat AI-fuelled misrepresentation and misinformation. By tethering compliance to safe harbour survival, the Amended Rules would compel platforms to internalize harms, fostering a safer digital ecosystem. Yet success of the new regime would hinge on clarificatory guidelines, technical aids, and judicial guardrails to balance innovation with rights. Policymakers must monitor efficacy through annual reports, refining ambiguities lest overregulation stifles the very openness AI promises.

In every patent infringement case, the most important exercise is a careful comparison between the patent claims and the infringing product or process. The claims define the exact scope of the patentee’s rights. Therefore, infringement cannot be decided by broadly comparing two products or by looking at general similarities. The court must compare the infringing product strictly with the claims, as they are properly interpreted.

Claims define the monopoly

Indian courts have consistently held that claims define the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively and purposively in light of the specification, without enlarging, rewriting, or substituting their language. The scope of the claims must remain consistent for both validity and infringement.

Claim construction comes first

The first stage, namely claim construction, is a matter of law. The court must identify the essential elements of the claims. Only thereafter can the claims be compared with the impugned product or process, which is a mixed question of law and fact.

Element-by-element comparison

Infringement is established by comparing the claimed elements with the infringing product. Essential features must be identified and mapped against the impugned feature. The exercise is a claim-to-product comparison, not a comparison of the plaintiff’s and defendant’s products.

Doctrine of equivalents

An infringer cannot escape liability by minor or insubstantial changes. Where elements differ insignificantly, the doctrine of equivalents applies. Trivial or cosmetic variations do not defeat patent rights if the essential elements are appropriated.

The decision in Canva Pty Ltd & Ors. v. Rxprism Health Systems Private Limited & Anr., is a recent example where the Delhi High Court closely examined whether this disciplined claim-to-product comparison was properly carried out while granting an interim injunction.

The present case was originally brought by RxPrism Health Systems Private Limited (Plaintiff), being engaged in providing technology products for social selling and social commerce to business organizations for digital customer engagement. The Plaintiff asserted ownership of Indian Patent No. IN360726 titled “A system and a method for creating and sharing interactive content rapidly anywhere and anytime” against Canva Pvt Ltd (Defendant), an Australian technology company operating a globally used online design and content-creation platform under the brand name CANVA. The dispute in the present proceedings arises from the Plaintiff’s allegation that Canva’s feature titled “Present and Record” infringes the suit patent by enabling users to create presentations containing a video overlay, along with certain interactive elements.

Cause of action

The Plaintiff became aware of the Defendant’s “Present and Record” feature in June 2021and undertook a technical assessment, which indicated that the feature incorporated the essential elements of the suit patent.

Over the following two and a halfmonths, the Plaintiff engaged with the Defendant, sharing patent details, providing claim mapping analyses, outlining the alleged technical overlap, and proposing a commercial license. The Plaintiff states that it responded to all requests in good faith with a view to reaching an amicable resolution.

Notwithstanding these efforts, the Defendant allegedly continued to commercially exploit the impugned feature in India without a license. The Plaintiff therefore concluded that an amicable resolution was not feasible and instituted the present suit seeking injunctive relief and other remedies under the Patents Act, 1970.

Decision of Single Judge (Delhi High Court)

The Single Judge compared the suit patent claims with Canva’s “Present and Record” feature. Based on the Plaintiff’s claim charts, screen recordings, and presentations, the Court noted that Canva allowed uploading slides, recording a PiP video overlay, integrating interactive CTA elements, and generating cloud-hosted links, reproducing the layered multimedia architecture of the suit patent.

The Defendant argued that Canva lacked three layers, that CTA elements were embedded, PiP movement was browser dependent, and editing was limited. The Court rejected these as mere tactical distinctions, holding that “slight variations in implementation do not absolve infringement.” Evidence showed Canva permitted independent slide modification and server-side layered editing.

The Defendant relied on prior art such as Microsoft PowerPoint 2016, Loom, Auto Auditorium, and academic works, and also challenged the patent on grounds of Section3(k) of the Patents Act, insufficiency, lack of clarity, and obviousness.

The Plaintiff’s expert provided claim by-claim mapping. The Defendant’s expert acknowledged overlapping elements. The PCT application by the Defendant showing a similar architecture strengthened the Plaintiff’s prima facie case.

The Court directed Canva to deposit INR50,00,000 (approx. USD 56,000) as security and imposed INR 5,00,000 (approx. USD 5,000) in costs. It held that:

1. A strong prima facie case of infringement exists.
2. The balance of convenience favors an injunction.
3. Denial would cause irreparable harm.

Canva appealed this order before the Division Bench.

Canva contended that the Single Judge erred in applying the novelty test, ignoring essential elements, and mechanically applying the triple test, making the INR 50,00,000 (approx. USD 56,000) deposit disproportionate.

Contentions of Canva

• Incorrect infringement analysis

The Single Judge relied on functional similarity rather than the required element by- element claim comparison. Canva argued that four essential features identified by the Plaintiff were absent in its product.

• Absence of the alleged “third/ sandwiched layer”

1. Canva asserted that the Plaintiff ’s patent hinged on a three-layered architecture: slides, PiP video, and a separate CTA layer;
2. Canva’s system allegedly uses only two layers (slides and PiP), with CTAs embedded in slides, not independent;
3. The patent describes PiP as movable via haptic interaction; however, Canva claimed its PiP is not movable, and any movement is browser dependent, not product based;
4. According to Canva, CTA in its system appears during authoring, while the patent allegedly requires CTA only to appear during playback.

• Claim construction and validity

Canva argued that the Single Judge:

1. Failed to properly construe the claims before applying them;
2. Compared prior art (e.g., PowerPoint 2016 and Loom) with the Plaintiff ’s product instead of the claims;
3. Ignored serious validity challenges (prior art, obviousness, insufficiency, Section 3(k) issues).

Contentions of RxPrism

• Claim-to-product mapping was properly done

The Single Judge explicitly compared the patent claims to Canva’s feature, not product to product. Infringement was found for 40 patent claims (two independent and 38 dependent).

• No “third layer” requirement

The patent never mentions “third layer” or “sandwiched layer;” these were introduced by Canva. Canva’s own expert admitted that “the word layer does not appear in any of the 54 claims.”

• PiP movability is not essential

Movability was a descriptive, not mandatory, element. Evidence, including video demonstrations, showed that Canva’s PiP functions as a foreground overlay.

• CTA visibility during authoring is irrelevant

The claims do not mandate the CTA to be hidden at authoring, and the Defendant’s expert also acknowledged that such a limitation does not exist in the patent.

Principles laid down for claim-to-product mapping by the appellate court and reasons for upholding the injunction in favor of RxPrism.

Correct application of legal principles

The learned Single Judge exercised discretionary jurisdiction in granting interim relief. It is trite law that appellate interference with such discretionary orders is limited and circumscribed. An appeal against an order granting or refusing an injunction is not an appeal on facts, but an appeal on principle.

The threshold question before the Court was not whether a different conclusion could have been arrived at on the same set of facts but whether the methodology adopted by the learned Single Judge conforms to settled principles of patent jurisprudence, and whether the findings suffer from legal infirmity, perversity, or misapplication of law.

Claim construction

The Court observed that the first stage, namely claim construction, is a matter of law. The second stage, comparison with the impugned product or process, is a mixed question of law and fact.

Patent claims defi ne the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively, purposively, and in light of the specification without enlarging, rewriting, or substituting their language. The scope must remain consistent for validity and infringement; inconsistent narrowing or broadening is impermissible.

Essential features of the suit patent are: (i) layered media architecture with background and foreground media; and (ii) post-creation configurability of interactive elements, including CTAs. The alleged third layer, CTA invisibility, and PiP movability are not essential.

Doctrine of equivalents

Infringement is established by comparing claimed elements with the infringing product. Where elements differ insignificantly, the doctrine of equivalents applies to prevent minor changes from depriving the patentee of the core inventive concept. An infringer cannot escape liability by minor or insubstantial changes.

For product or device patents, infringement by equivalence uses the function-way-result triple test. For process or method patents, the essential element test applies:

1. construe the claims to identify essential elements;
2. compare with the allegedly infringing process;
3. if all elements exist, literal infringement is established;
4. if not, the doctrine of equivalents applies;
5. assess substantial identity of essential elements, steps, and their interactions. Minor or inessential variations do not avoid liability.

Court’s reasons for holding the injunction against Canva

The Court concluded that the Single Judge properly construed the four disputed claims, mapped them to the Defendant’s product, and applied the doctrine of equivalents, treating the absence of a “third/sandwiched layer” or PiP movability as non-essential. CTA functionality via a configuration interface satisfied the claims.

The Court held that, prima facie, all essential inventive steps are present in the Defendant’s product, and the findings are consistent with claim construction and settled infringement principles. Claims 1 and 39 of the suit patent require a layered media architecture with first media as background, second media as foreground PiP overlay, and interactive elements with post-creation configurability. Seven inventive steps (A1, A2, A3, A4, B5, C6, C7) were identified; the Defendant admits A2, A3, and B5, leaving A1, A4, C6, and C7 in dispute. The Single Judge compared these disputed steps with the Defendant’s product, finding layered presentation and PiP present (A1, A4), with movability being non-essential, and that interactive elements and CTAs are configurable through a separate interface and rendered during playback (C6, C7). The so-called “third” or “sandwiched” layer is not required by the claims or specifications, and minor differences such as browser-dependent PiP movement or CTA visibility during authoring do not avoid infringement.

The Court concluded that the learned Single Judge applied claim-to-product comparison, considered prior art, and properly invoked the doctrine of equivalents, holding that trivial or cosmetic differences cannot defeat the patent. Patent validity is assessed by comparing the claims, as construed, with prior art. The Single Judge rejected anticipation from Microsoft PowerPoint 2016, Auto Auditorium, and Loom, noting these lacked layered media, post-creation configurability, and non-merging of streams, which are essential elements of the suit patent. Reliance on the Defendant’s PCT application was only corroborative.

Based on user data, revenue, and lack of assets in India, the order to deposit INR 50,00,000 (approx. USD 56,000) was a reasonable protective measure.

Conclusion

The present judgment reaffirms that overturning an interim injunction requires a serious and structured validity challenge. Claim construction is a matter of law, and infringement is established by comparing the claimed elements with the alleged infringing product, including application of the doctrine of equivalents. Minor or inessential variations do not avoid liability. Appellate interference is limited to cases of perversity, arbitrariness, or misapplication of law.

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.