Full Judgment Text
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on : 6 May 2025
Pronounced on : 13 May 2025
+ FAO(OS) (COMM) 140/2024 & CM APPL. 38801/2024
ABROS SPORTS INTERNATIONAL PVT. LTD. ....Appellant
Through: Mr. Ranjan Narula, Mr. Shakti
Priyan Nair and Mr. Parth Bajaj, Advs.
versus
ASHISH BANSAL AND ORS .....Respondents
Through: Mr. Sanchay Mehrotra, Adv.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
JUDGMENT
% 13.05.2025
C. HARI SHANKAR, J.
1. By judgment dated 2 May 2024, a learned Single Judge of this
Court has dismissed IA 16555/2022 filed by the appellant Abros
1
Sports International Pvt. Ltd. under Order XXXIX Rules 1 and 2 of
2 3
the Code of Civil Procedure, 1908 in CS (Comm) 702/2022 .
Aggrieved thereby, ASIPL has filed the present appeal.
1
“ASIPL”, hereinafter
2
“CPC”, hereinafter
3
Abros Sports International Private Limited v Ashish Bansal and Ors.
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KUMAR
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The Impugned Judgment
2. Case setup by ASIPL before the learned Single Judge
2.1 ASIPL contended that, by use of the mark NEBROS, the
respondents Ashish Bansal and others were infringing the ASIPL’s
registered trademark ABROS and were also passing off their goods as
the goods of ASIPL.
2.2 The case was predicated on the following factual assertions.
(i) ASIPL was incorporated on 14 February 2020, and used
the trade name ABROS. The business of ASIPL, under the said
trademark, was carried out by a proprietorship of Anil Sharma.
Anil Sharma have conceived and adopted the ABROS mark in
March 2017. ABROS was a portmanteau of ‘A’, the first letter
of the first name of Anil Sharma and ‘BROS’, as the business
was run by Anil Sharma with his brothers. By assignment deed
dated 15 January 2021, Anil Sharma assigned all rights in the
trademark ABROS to ASIPL.
(ii) Resultantly, ASIPL was the proprietor of the following
4
trademarks, registered under the Trade Marks Act, 1999 :
4
“the Trade Marks Act”, hereinafter
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Trade Mark Reg. No. Regn. Date Class/
Goods/Services
Valid until
3500818 March 3,
2017
Class 25:
Footwear and sole
for footwear.
March 3,
2027
4384712 December
20, 2019
Class 25:
Footwear and sole
for footwear
December
20, 2029
4384713 December
20, 2019
Class 25:
Footwear and sole
for footwear
December
20, 2029
4384714 December
20, 2019
Class 35: Import,
export, wholesale,
retail marketing
and online trading
e-commerce of
footwear and sole
for footwear
December
20, 2029
4384716 December
20, 2019
Class 35: Import,
export, wholesale,
retail, marketing
and online trading
e-commerce of
footwear and sole
for footwear
December
20, 2029
4736618 November
7, 2020
Class 28:
Gymnastic and
sporting articles
not included in
other classes,
equipment for
various sports and
games
November
7, 2030
5235275 December
6, 2021
Class 28: Games,
toys and
playthings, video
game apparatus,
gymnastic and
sporting articles,
decorations for
Christmas trees.
December
6, 2031
(iii) Under the mark ABROS, ASIPL was manufacturing
shoes and soles. It was also operating under the domain name
www.abrosshoes.com since June 2018. The net sales of ASIPL
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using the mark ABROS, which vouchsafe its reputation in the
market, were ₹ 7,84,51,193.05 for the year 2020 and ₹
2,16,45,97,734.00 for the year 2021.
(iv) Similarly, the expenses incurred by ASIPL in advertising
and promoting the brand ABROS, for the years 2020-21 were ₹
35,12,536 for the year 2020 and ₹ 3,37,69,402.84 for the year
2021.
(v) Respondent 1 was using the mark NEBROS for identical
products, i.e., footwear, sold in the same ₹ 1500- ₹ 2000 price
range.
(vi) Respondent 1 was also the proprietor of a registration,
under the Trade Marks Act, for the mark NEBROS, in respect
of clothing and footwear with effect from 25 September 2019.
Respondent 1 had applied for registration of the said mark on
“proposed to be used” basis.
(vii) Respondent 2 used to produce footwear, using the
NEBROS trademark for Respondent 1. Respondents 3 to 6
were traders, who used to trade in goods bearing the infringing
NEBROS mark. As such, the main respondents were
Respondents 1 and 2, principally Respondent 1.
(viii) ASIPL’s domain name www.abrosshoes.com was
registered on 18 June 2020, and that the invoices appended by
ASIPL with its plaint indicated that it was selling goods using
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the ABROS mark since 2021. Though the Respondent 1 was
also the proprietor of a registration in respect of the mark
NEBROS, the registration of the appellant’s mark ABROS,
though as a device mark, dated back to 3 March 2017, which
was prior to the date of registration of Respondent 1’s NEBROS
trademark. As such, the appellant had priority of registration of
the mark ABROS, vis-à-vis the registration of the mark
NEBROS in favour of Respondent 1.
(ix) In para 23 of the plaint, it was specifically alleged thus:
“23. The registration of the impugned mark NEBROS
was wrongly granted and is prima facie invalid being a
mark deceptively similar to the Plaintiffs trade mark
ABROS. The publication of the Defendant No. 1's
impugned trade mark application in the Trade Mark Journal
escaped the attention of the Plaintiff due to inadvertent
oversight and thus an opposition was not filed. In any case,
the Registrar of Trade Marks should not have permitted the
registration of the impugned mark NEBROS on the
following grounds:
a. Section 57: The Plaintiff is a "person
aggrieved" within the meaning of Section 57 of the
Trade Marks Act, 1999 (hereinafter referred to as
"the Act") as its rights are being affected by
existence of the impugned mark NEBROS on the
register due to close similarity with ABROS marks
and identical/similar goods. Therefore, the
impugned registration is without sufficient cause
and is an entry wrongly remaining on the Register
which is liable to be cancelled under Section 57(2)
of the Act.
b. Section 9(1)(a) and 32: Being in the same
trade and industry, it is incomprehensible that the
Defendants were unaware of the prior use,
registrations, goodwill and reputation of the
ABROS trade marks. The impugned mark,
therefore, cannot qualify for protection as a trade
mark as the trade members. and public would
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invariably associate the same with the Plaintiff
Before commencement of the present proceedings,
the impugned mark NEBROS was not distinctive of
the Defendants' goods. The impugned registration
therefore ought to be cancelled under Sections
9(l)(a) and 32 of the Act.
c. Sections 9(2)(a) and 11(1)(b): The Plaintiff
is the prior adopter; user and registered proprietor of
the ABROS trade marks in classes 25, 28 and 35.
The registration and use of the impugned mark
NEBROS is bound to cause confusion and
deception and create the minds of trade members
and consumers that Defendants’ goods belong to or
are associated with the Plaintiff which is not the
case. Therefore, the impugned registration is liable
to be removed under Sections 9(2)(a) and 11(l)(b) of
the Act.
d. Section 11(2): Given the well-known nature
of ABROS trade marks, if the registration of the
impugned mark NEBROS is allowed to remain on
the Register, it would take unfair advantage of and
be detrimental to distinctive character and repute of
the ABROS trade marks. Therefore, registration of
the impugned mark is contrary to Section 11(2) of
the Act.
e. Section 11(3)(a): The adoption of
deceptively similar impugned mark for
identical/similar goods is bound to pass off the
Defendants' goods for those of the Plaintiff. Thus,
the impugned registration is contrary to Section
11(3)(a) of the Act.
f. Section 11(4): The Plaintiff, being the
registered proprietor of the prior ABROS trade
marks, has not consented to the adoption, use or
registration of the impugned mark. Thus, the said
registration is liable to be cancelled under Section
11(4) of the Act.
g. Section 11(10): The registration of the
impugned mark NEBROS has been obtained by
misrepresentation. Being in the same trade and
industry, the Defendants were fully aware of the
well-known ABROS trade marks and have no
justification for adoption of the impugned mark
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except done in bad faith to misappropriate the
goodwill therein. Thus, the impugned registration is
contrary to Section 11(l0) of the Act.
h. Section 12: Since the adoption of the
impugned mark is tainted from its inception, the use
of the same subsequent to filing of the application is
void ab initio. Under the circumstances, no amount
of use can render the adoption of the impugned
mark to be honest. Thus, the registration of the
impugned mark contravenes Section 12 of the Act
and deserves to be expunged from the Register.
i. Sections 18(1) and (4): Under Section 18(1)
of the Act, only a proprietor of it trade mark can
apply for registration. The Defendant No. 1 cannot
claim to be a bona fide proprietor of the impugned
mark NEBROS due to the aforesaid reasons. The
adoption of the impugned mark was illegitimate and
has continued to be illegitimate and unlawful, which
is in violation of the Plaintiff s rights and also
affects public interest. The existence of the
impugned registration on the Register affects its
purity and sanctity thus contravening the very intent
for which the Act was promulgated. The impugned
registration is in violation of Sections 18(1) and (4)
of the Act and is liable to be removed.
Therefore, the registration of the impugned mark deserves
to be declared invalid and its entry rectified. In view of the
ordinance dated April 4, 2021 abolishing Intellectual
Property Appellate Board and also in view of the order
dated July 7, 2021 for establishment of Intellectual Property
Division (hereinafter, "the IPD"), the Plaintiff seeks leave
of the Hon'ble Court to file cancellation action before the
IPD under Sections 124 and 125 of the Act.”
Thus, a specific challenge to the validity of the registration of
the mark NEBROS in favour of Respondent 1 was raised in
para 23 of the plaint. This aspect is of significance, as would
become apparent later.
(x) Compared as whole marks, the marks NEBROS and
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ABROS were phonetically deceptively similar.
(xi) Inasmuch as both marks were used in respect of identical
goods, available through the same trade channels and catering
to the same customer segment, the presence of both the marks
in the market was bound to result in likelihood of confusion, in
the mind of a consumer of average intelligence and imperfect
recollection, or to an impression that there was an association
between the two marks.
(xii) Thus, the mark NEBROS infringed the mark ABROS
5
within the meaning of Section 29(2)(a) and (b) of the Trade
Marks Act. Inasmuch as ASIPL enjoyed priority of registration
as well as priority of user of the mark ABROS vis-à-vis the
NEBROS mark of Respondent 1, ASIPL was entitled to an
injunction, against the use, by Respondent 1, of the mark
NEBROS. It was also submitted that ASIPL’s yearly turnover,
using the ABROS mark, was in the region of ₹ 190 crores, as
against the yearly turnover of Respondent 1 which was nearly ₹
8.5 crores.
Reliance was placed, to support these submissions, on the judgments
of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v
5
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the
registered trade mark.
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6
Navaratna Pharmaceutical Laboratories , Amritdhara Pharmacy v
7
Satya Deo Gupta , K.R. Chinna Krishna Chettiar v Shri Ambal &
8
Co. and of this Court in Russell Corp. Australia Pty. Ltd. v Ashok
9
Mahajan .
3. Submissions of respondents before the learned Single Judge
Before the learned Single Judge, the respondents advanced the
following submissions, to contest the suit and ASIPL’s prayer for
interim injunction.
(i) NEBROS was also a coined term. The paternal uncle of
Respondent 1 was running a business in the name of Nice
Footwear, which was one of the biggest footwear distributors in
Ahmedabad. The word NEBROS was a portmanteau of the first
and last letters of the word “Nice” and “BROS”, which was an
acronym for “Brothers”. Thus, NEBROS was also a unique and
coined word, and was not intended to be a copy or imitation of
ASIPL’s mark ABROS.
(ii) In any event, the appellant could not plead infringement
against the mark NEBROS as NEBROS was also registered in
favour of Respondent 1 since September 2020. In the year
2021-22 itself, the sales figures of Respondent 1 were in excess
of ₹ 8.5 Crores.
6
AIR 1965 SC 980
7
1962 SCC Online SC 13
8
(1969) 2 SCC 131
9
2023 SCC OnLine Del 4796
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(iii) ASIPL could not plead priority of user of the ABROS
mark vis-à-vis the use of the NEBROS mark by Respondent 1.
The invoice representing the earliest evidence of user, by
ASIPL, of the mark ABROS, was of 2021, and was of a later
date than the invoices representing use of the NEBROS mark by
Respondent 1. ASIPL could not seek to rely on the use of the
ABROS mark by its predecessor-in-interest Narmada Polymers,
as Narmada Polymers made soles and not shoes. ASIPL
commenced use of the mark ABROS for shoes at a much later
point of time. Respondent 1 could not, therefore, be alleged to
have dishonestly adopted the mark NEBROS.
(iv) The marks ABROS and NEBROS could not be said to be
phonetically similar. They were also completely distinct in
appearance, as presented to the customer in the market. A
comparative table in this regard was thus presented in the
written statement:
Product of the Respondent
Product of the Appellant
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(v) Besides, “BROS” was a common generic expression,
used by a variety of manufacturers for a variety of goods. No
one manufacturer could claim exclusivity over BROS as a
suffix or a prefix.
(vi) The first invoice submitted by ASIPL was on 1 February
2021, whereas Respondent 1 had placed on record invoices
dating back to 1 September 2020, showing use of the NEBROS
mark by Nice Footwear. Thus, even if ASIPL could claim
priority of registration, priority of user was definitely with the
respondents. In such circumstances, ASIPL could not be
entitled to any injunction against the use of the mark NEBROS
by the respondents.
To support their submissions, the respondents placed reliance on
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(i) the judgments of the Supreme Court in S. Syed
10
Mohideen v P Sulochana Bai and Uniply Industries Ltd. v
11
Unicorn Plywood Pvt. Ltd . ,
(ii) the judgment of a Division Bench of this Court in Airtec
12
Electrovision Pvt Ltd v Sunil Kumar Saluja which was also
affirmed by the Supreme Court, and
(iii) the judgment of this Court in Hindustan Sanitaryware
13
and Industries Ltd. v Champion Ceramic .
4. Submissions of ASIPL in rejoinder before the learned Single
Judge
4.1 In rejoinder, ASIPL submitted before the learned Single Judge,
thus:
(i) The sales figures shown by Respondent 1 were of its total
turnover and not of the sales of goods using the mark NEBROS.
(ii) The plea of Respondent 1 of priority of user was also
14
misplaced as Section 34 of the Trade Marks Act, disentitled
the plaintiff to an injunction against the defendant even where
the defendant’s mark was infringing in nature, only where
10
(2016) 2 SCC 683
11
(2001) 5 SCC 95
12
MANU/DE/1095/2022
13
2011 SCC Online Del 246
14
34. Saving for vested rights . – Nothing in this Act shall entitle the proprietor or a registered user of
registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or
nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of
his has continuously used that trade mark from a date prior—
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the
proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or
services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second
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defendant enjoyed priority of user and priority of registration
over the plaintiff.
(iii) Apropos Respondent 1’s contention that the suffix
‘BROS’ was common to the trade, ASPIL relied on the
judgment of the Division Bench of this Court in Pankaj Goel v
15
Dabur India Ltd . . It was further contended that ASIPL could
maintain an infringement action even against the owner of a
registered trademark, for which purpose reliance was placed on
the judgment of a Division Bench of this Court in Raj Kumar
16
Prasad v Abbott Healthcare Pvt. Ltd.
4.2 Additionally, the appellant placed on the judgments of the
Supreme Court in
17
(i) Neon Laboratories Ltd. v Medical Technologies Ltd .
and
(ii) Toyoto Jidosha Kabushiki Kaisha v Prius Auto
18
Industries Ltd . ,
and the judgment of this Court in Zydus Wellness Products Limited v
19
Cipla Health Ltd .
5. The observations and findings of the learned Single Judge
5.1 The learned Single Judge has held that ASIPL could not entitle
to any injunction for the following reasons::
mentioned trade mark by reason only of the registration of the first-mentioned trade mark.
15
2008 SCC OnLine Del 1744
16
2014 SCC OnLine Del 7708
17
(2016) 2 SCC 672
18
(2018) 2 SCC 1
19
(2016) 2 SCC 672
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(i) There was no distinct phonetic similarity between
ABROS and NEBROS.
(ii) As presented to the consumer, there was no structural or
visual similarity between the marks either, viewed as logos.
(iii) The respondents’ user of the mark NEBROS dated back
to September 2020 whereas the earliest invoice produced by
ASIPL was of 1 February 2021.
(iv) There was no evidence of user of the ABROS mark by
Narmada Polymers since 2017, as pleaded by ASIPL.
(v) The use of the mark ABROS by Narmada Polymers in
respect of soles was immaterial, as the Court was concerned
with the use of the rival marks for shoes . Qua user of the marks
on shoes, Respondent 1 enjoyed priority of user as compared to
ASIPL.
(vi) The balance of convenience was also against ASIPL as
Respondent 1 had been selling the goods since 2020.
(vii) There was no opposition by ASIPL to the registration of
the mark NEBROS in favour of Respondent 1.
(viii) The fact that ABROS and NEBROS were not similar was
also evidenced by the Examination Report of the Trade Marks
Registry in response to the application of Respondent 1 for
registration of the mark NEBROS, in which the ASIPL mark
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ABROS was not thrown up as a similar mark.
(ix) Infringement analysis invited comparison of the
competing marks. When the competing marks were compared,
it was seen that there was no visual, structural or phonetic
similarity between ABROS and NEBROS.
(x) The fact that both marks had BROS as a common suffix
was insufficient to trigger any confusion in a consumer of
average intelligence and imperfect recollection.
(xi) As Respondent 1 was a registered proprietor of the mark
NEBROS, the issue was essentially one of passing off, for
which a higher threshold had to be met by the appellant, as held
by the Supreme Court in S Syed Mohideen v P Sulochana Bai .
Where the respondent had priority of user in its favour, the
appellant’s case would not subsist even if the case was one of
deceptive similarity.
(xii) To sustain a case of passing off, added features made all
the difference. Thus viewed, the labels/logos of the respondents
and ASIPL was so different that it could not be said that, by use
of the NEBROS label, the Respondent 1 was passing off their
products as the products of ASIPL.
(xiii) No proof of actual confusion had been shown. The
Division Bench of this Court, in its decision in Shree Nath
20
Heritage Liquor Pvt Ltd v Allied Blender & Distilers Pvt Ltd ,
20
2015 SCC Online Del 10164
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has held that actual confusion was also a relevant factor.
(xiv) Ultimately, the comparison of the marks had to be
undertaken in a holistic manner instead of concentrating on
individual aspects or adopting a compartmentalized approach.
Holistically viewed, no case of likelihood of confusion between
ASPIL’s mark ABROS and Respondent 1’s mark NEBROS
could be said to exist. Reliance was also placed in this context
21
on the following test in In re. Pianotist Co. Application :
“You must take the two words. You must Judge them, both
by their look and by their sound. You must consider the
goods to which they are to be applied. You must consider
the nature and kind of customer who would be likely to buy
those goods. Infact you must consider all the surrounding
circumstances and you must further consider what is likely
to happen if each of those trade marks is used in a normal
way as a trade mark for the goods of the respective owners
of the marks.”
5.2 Based on the above reasoning, the learned Single Judge,
holding that no case for grant of interlocutory injunction exists, has
dismissed ASIPL’s application for stay.
6. Aggrieved thereby, the ASIPL is before this Court in appeal.
7. We have heard Mr. Ranjan Narula, learned counsel for the
appellant and Mr. Sanchay Mehrotra, learned counsel for the
respondents, at length.
Rival Submissions
21
(1906) 23 RPC 774
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8. Submissions of Mr. Narula, learned Counsel for ASIPL
8.1 Before us, Mr Narula advanced the following submissions:
(i) The learned Single Judge was in error in holding
that Respondent 1 enjoyed priority of user of the
NEBROS mark over the user of the ABROS mark by
ASIPL. The registration of the ABROS mark in favour
of the ASIPL is of 3 March 2017, claiming user with
effect from 1 March 2017. The learned Single Judge has
materially erred in his understanding of the concept of
‘use’ of a registered trademark within the meaning of the
Trade Marks Act. It is admitted, in the written statement
filed by Respondent 1 before the learned Single Judge,
that Narmada Polymers was using the ABROS mark,
albeit on soles, in 2017. Soles and shoes are allied and
cognate goods, and use of the mark on soles also
constitutes user of the ABROS mark for the purposes of
the Trade Marks Act. Besides, the ABROS mark figured
in the Certificate of Incorporation of ASIPL and the PAN
Card issued to ASIPL, both dated 14 February 2020 as
well as in the records of ASIPL with the Ministry of
Corporate Affairs. In view of Sections 2(2)(b) as well as
22
2(2)(c) of the Trade Marks Act, Mr. Narula submits that
22
(2) In this Act, unless the context otherwise requires, any reference –
*
(b) to the use of a mark shall be construed as a reference to the use of printed or other visual
representation of the mark;
(c) to the use of a mark,—
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use of the mark ABROS on the Certificate of
Incorporation of ASIPL and on its Pan Card would also
constitute ‘use’ of the mark. Placing reliance, for the
purpose, on the judgment of a learned Single Judge of
this Court in FDC Ltd v Docsuggest Healthcare Services
23
Pvt Ltd. , Mr. Narula submits that the learned Single
Judge was materially in error in holding that Respondent
1 enjoyed priority of user of the NEBROS mark vis-à-vis
user by ASIPL of the ABROS mark.
(ii) The result is that ASIPL enjoys both priority of
registration as well as priority of user over Respondent 1.
This by itself, entitles ASIPL to interlocutory injunction
pending disposal of the suit by the learned Single Judge,
as sought by it.
(iii) Even on the aspect of deceptive similarity, the
findings of the learned Single Judge are unsustainable in
law. ABROS and NEBROS are unquestionably
phonetically similar. Besides, they are used by ASIPL
and the respondents on identical goods i.e. shoes, sold
within the ₹1500-2000/- price range, through the same
trade channels, catering to the same customer segment.
The Triple Identity Test is, also, therefore, satisfied.
(i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as
or as part of any statement about the availability, provision or performance of such
services;
23
2017 SCC OnLine Del 6381
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(iv) The learned Single Judge was not justified in
bisecting the rival marks by segregating the BROS suffix
from each of them it is well settled that, while examining
the aspect of similarity, whether phonetic or otherwise,
the rival marks have to be compared as whole. Mr Narula
relies, for this purpose, on paras 13 and 14 of Amritdhara
Pharmacy , para 19 of Corn Products Refining Co. v
24
Shanrila Food Products Ltd and para 30 of Kaviraj
Pandit Durga Dutt Sharma. ASIPL is not seeking any
exclusivity with respect to the BROS suffix and has made
this clear in the replication filed before the learned Single
Judge by way of response to Respondent 1’s written
statement.
(v) The explanation proffered by Respondent 1 for
adopting the mark NEBROS is ludicrous. No person in
his ordinary senses would pick out the first and last
letters of the word NICE and combine them with the
suffix BROS, to result in the mark NEBROS.
(vi) The invoice dated 1 September 2020, filed by
Respondent 1, does not reflect the mark NEBROS
anywhere and, in fact, does not reflect any mark at all. It
cannot, therefore, be regarded as evidence of user by the
respondents of the NEBROS mark. Reliance is placed, in
this context, on para 34 of the judgment of the Supreme
Court in Satyam Infoway Ltd v Sifynet Solutions Pvt
24
AIR 1960 SC 142
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25
Ltd and on the judgment of a learned Single Judge of
26
this Court in Rajnish Aggrwal v Anantam .
(vii) Respondent 1 has not provided any figures of
turnover using the impugned NEBROS mark.
(viii) The submission of Respondent 1 that actual
confusion had to be proved is completely unfounded in
law. He submits that it is a well settled principle that, for
the purposes of infringement or passing off, it is not
necessary to prove actual confusion. Mr Narula relies, for
this purpose, on para 31 of the judgment of the Supreme
Court in Toyota Jidosha Kabushiki Kaisha .
(ix) Section 34 of the Trade Marks Act has no
applicability at all. For this purpose, Mr. Narula cites
para 7 of the judgment of the Supreme Court in Neon
Laboratories Ltd .
(x) Finally, the learned Single Judge was in error in
holding that no case of passing off was made out because
of the difference between the overall appearance of the
logos used by the ASIPL and the respondent. He submits
that, in each logo, the concerned word mark – ABROS in
the case of ASIPL and NEBROS in the case of the
Respondents – was starkly visible. The overall
dissimilarity between the logos, therefore, he submits,
25
(2004) 28 PTC 566 (SC)
26
2010 (43) PTC 442 (Del)
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cannot discredit the case of passing off, sought to be set
up by ASIPL against the respondents.
In order to support these submissions, apart from the judgments
already cited supra, Mr. Narula relies on the decisions of the Supreme
Court in K.R. Chinna Krishna Chettiar and Ruston & Hornsby Ltd.
27
v Zamindara Engneering Co. .
8.2 To a query from the Court as to whether an action for
infringement would lie against the proprietor of a registered
trademark, Mr. Narula answers in the affirmative, relying, for the
purpose, on the judgment of the Division Bench of this Court in Raj
Kumar Prasad which was subsequently followed by another Division
28
Bench in Corza International v Future Bath Products Pvt Ltd . He
points out that one of us (C. Hari Shankar, J.) has, in fact, followed
Raj Kumar Prasad and Corza in Jaquar & Co. Pvt Ltd v Ashirvad
29
Pipes Pvt Ltd .
9. Submissions of Mr. Sanchay Mehrotra, by way of response
9.1 Mr. Mehrotra, appearing for the respondents, basically adopted
the reasoning contained in the impugned judgment. He submits that
his client enjoys priority of user of the mark NEBROS vis-à-vis the
user of the mark ABROS by ASIPL. He further submits that Mr.
Narula is not justified in relying on the judgment of the Division
27
(1969) 2 SCC 727
28
2023 SCC OnLine Del 153
29
2024 SCC OnLine Del 2281
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30
Bench of this Court in A irtech Electrovision Pvt Ltd as that case
dealt with the rival marks AIRTEC and AIRNET.
9.2 Mr. Mehrotra further submits that ASIPL has not been able to
produce any substantial documentary evidence evidencing user by it,
of the mark ABROS since March 2017. Thus, ASIPL is not entitled to
plead priority of user vis-a-vis the respondents. As against this, the
respondents have been using the mark NEBROS continuously and
without interruption since September 2020.
9.3 Mr. Mehrotra also submits that there is no likelihood of
confusion between the ABROS mark of ASIPL and the NEBROS
mark of his client, given the complete visual dissimilarity between
them.
31
9.4 Mr. Mehrotra further submits that in view of Sections 28 (1)
32
and 28 (3) of the Trade Marks Act, no claim for infringement can lie
against his client as he is the proprietor of the registered trade mark
NEBROS.
9.5 Mr. Mehrotra further adopts the reasoning of the learned Single
Judge that the suffix BROS is publici juris and that that no person can
monopolize such a suffix. Except for the suffix BROS, he submits that
30
MANU/DE/1095/2022
31
28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this Act.
32
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or
nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as
their respective rights are subject to any conditions or limitations entered on the register) be deemed to have
been acquired by any one of those persons as against any other of those persons merely by registration of the
trade marks but each of those persons has otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
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the marks ABROS and NEBROS are dissimilar to each other,
phonetically as well as structurally and visually.
9.6 For all these reasons, Mr. Mehrotra submits that the impugned
order deserves to be affirmed and appeal dismissed.
Observations
10. While we have set out the facts of the case and the rival
contentions of the parties, as we felt it to be necessary to justify the
observations that follow, we find ourselves handicapped from finally
deciding this appeal, as, on a fundamental question of law, we are
unable to agree with the view expressed by a coordinate Bench of this
Court, and, on the decision on that question, may pivot the final
outcome of this appeal. While this may sound esoteric, we clarify the
position below.
11. Clearly, as in any trademark suit seeking injunction, the two
issues which arise for consideration are whether the respondent has
infringed the trademark of the plaintiff, and whether the respondent
has sought to pass off its products as the products of the plaintiff. In
either event, the plaintiff would be entitled to injunction – as held by
the Supreme Court in Midas Hygiene Industries (P) Ltd v Sudhir
33
Bhatia in the case of infringement, and in Laxmikant V. Patel v
34
Chetanbhai Shah in the case of passing off.
12. Section 29
33
(2004) 3 SCC 90
34
(2002) 3 SCC 65
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Before that, however, we need to turn to Section 29, which elucidates
the circumstances in which infringement can be set to occur. Plainly,
35
each of the sub-sections (1) to (4) of Section 29 envisages
infringement as taking place only where the infringer is not the
registered proprietor of the allegedly infringing trademark . Each of
the sub- sections (1), (2) and (4) of Section 29 starts with the words “a
registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use , uses
in the course of trade, a mark …” In other words, infringement by the
registered proprietor of a trade mark, or by a person who has been
permitted to use the mark, by the registered proprietor thereof, is
foreign to the concept of infringement under the Trade Marks Act.
Plainly said, there can be no infringement by the proprietor of a
registered trade mark. A finding of infringement, against the
proprietor of a registered trademark, would be explicitly contrary to
35
29. Infringement of registered trade marks . –
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which is identical with,
or deceptively similar to, the trade mark in relation to goods or services in respect of which the
trade mark is registered and in such manner as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with
the registered trade mark.
(3) In any case falling under clause ( c ) of sub-section (2), the court shall presume that it is
likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which
the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.
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Section 29, and the very concept of infringement as envisaged in the
Trade Marks Act.
13. Section 30(2)(e)
13.1 The fact that a registered trademark can never infringe, which is
clear from the various sub-sections of Section 29, is further explicitly
36
made clear in Section 30(2)(e) . Section 30(2) sets out certain
circumstances in which infringement cannot be said to have taken
place. These circumstances, therefore, operate as exceptions to Section
29. In other words, irrespective of whether the rival marks are
identical, or deceptively similar, or whether there is, or is not,
likelihood of confusion between them, if the case falls within one of
the clauses of Section 30(2), there is no infringement.
13.2 Clause (e) of Section 30(2) clarifies, in no uncertain terms, that
if there are two or more identical or nearly resembling registered
trademarks, the use of one cannot be said to infringe the other. This
provision is as plain as it can be, and needs no explanation or
elucidation. The fact that his trademark is registered, therefore, affords
the defendant an absolute defence against infringement, by virtue of
Section 30(2)(e). The plaintiff cannot be heard to contend that, by
using his registered trademark, the defendant is infringing the
plaintiff’s registered trademark.
36
(2) A registered trade mark is not infringed where –
*
(e) the use of a registered trade mark, being one of two or more trademarks registered under
this Act which are identical or nearly resemble each other, in exercise of the right to the use of that
trade mark given by registration under this Act.
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37
14. Section 28(1)
14.1 Infringement occurs when the defendant uses a mark, in the
course of trade, which is deceptively similar to the registered
trademark of the plaintiff, within the meaning of one or more of the
clauses of Section 29 of the Trade Marks Act. Where infringement is
found to occur, the plaintiff, as the proprietor of the registered trade
mark which has been infringed, is entitled, under Section 28(1), to
38
relief against infringement. Section 135(1) includes, among the
reliefs available against infringement, injunction, damages, rendition
of accounts and delivery up of the infringing marks or labels.
14.2 As we have already seen, however, Section 29 envisages
infringement as taking place only by a person who is not a registered
proprietor of the allegedly infringing trademark , or a permissive user
thereof. If the defendant is a registered proprietor of a trademark,
therefore, the said trademark cannot be regarded as infringing in
nature, irrespective of any similarity between the said trademark and
the registered trademark of the plaintiff. To reiterate, a registered trade
mark cannot be infringing.
14.3 The obvious sequitur is that there can be no concept of “relief
37
28. Rights conferred by registration . –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this Act.
38
135. Relief in suits for infringement or for passing off . –
(1) The relief which a court may grant in any suit for infringement or for passing off referred
to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the
option of the plaintiff, either damages or an account of profits, together with or without any order
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against infringement” by a registered trademark, simply because a
registered trade mark can never be infringing in nature. As such, if the
defendant’s trademark is registered, the plaintiff, despite being the
proprietor of a registered trade mark himself, cannot obtain any relief
against infringement, against the defendant or its trade mark.
Expressed otherwise, no “relief against infringement”, as envisaged by
Section 28(1) of the Trade Marks Act, would be available against the
proprietor of a registered trade mark.
14.4 Section 28(1) is, moreover, expressly made “subject to the other
provisions of” the Trade Marks Act. This indicates that the right to
relief against infringement, available to the proprietor of a registered
trade mark under Section 28(1), is subject to the exercise of the right
not being contrary to any other provision of the Trade Marks Act –
which, in turn, would imply that the right cannot be exercised in such
a manner as would entrench on the statutory rights conferred on the
defendant by the Trade Marks Act.
14.5 Notably, Section 28(1) omits, entirely, any reference to the
defendant. This significant feature, read with the opening words
“subject to the other provisions of this Act”, indicates that a Court
cannot grant relief against infringement, even to the proprietor of a
validly registered trade mark, if, by doing so, the rights available
under the Trade Marks Act to the person against whom injunction is
granted, are being compromised or jeopardized.
14.6 The “subject to” caveat, with which Section 28(1) commences,
for the delivery-up of the infringing labels and marks for destruction or erasure.
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directly invokes Section 28(1) itself. Section 28(1) confers, on the
registered proprietor of a trademark, not only the right to seek relief
against infringement, but also “the exclusive right to the use of the
trademark in relation to the goods or services in respect of which the
trademark is registered” . This latter right is available to the registered
proprietor of every trademark. In other words, it is available as much
to the plaintiff as to the defendant, if the allegedly infringing
trademark of the defendant is a registered trademark. By virtue of
Section 28(1), the registration of the impugned trademark in favour of
the defendant would confer, on the defendant, the exclusive right to
use the said mark in relation to the goods or services in respect of
which the trademark is registered.
14.7 Section 28(1) cannot, therefore, be used by the plaintiff to
injunct the defendant from using the impugned trademark, if the
trademark is registered in favour of the defendant, as grant of any such
injunction would entrench on the exclusive right of the defendant to
use the trademark in respect of the goods or services for which the
trademark is registered.
14.8 Expressed otherwise, the right to obtain relief against
infringement, conferred on the registered proprietor of a trademark by
Section 28(1), is not available to injunct the proprietor of a registered
trade mark, from using that trade mark. A registered proprietor of a
trademark cannot, therefore, in exercise of the right to obtain relief
against infringement, conferred by Section 28(1), seek injunction
against the use, by another person, of a registered trademark, in
respect of the goods or services for which the trademark is registered.
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14.9 This, of course, is without prejudice to the fact that there can, in
law, be no infringement by a registered trademark. Even assuming, for
the sake of argument, that a registered trademark could infringe,
nonetheless, the exclusive right to use the trademark in respect of the
goods or services for which the trademark is registered, would insulate
the registered proprietor of the trademark from being injuncted.
39
15. Section 28(3)
15.1 The legislature has, by Section 28(3), made this legal position
explicitly clear. Section 28(3) may be sub-divided into distinct parts.
It recognises the fact that the registration of a trademark confers, on
the registered proprietor thereof, the right to exclusive use of the
trademark. Even so, if another person is also the registered proprietor
of a deceptively similar, or even an identical, trademark, Section 28(3)
does not allow the former registered proprietor, while exercising his
right to exclusive use of his registered trademark, to trespass on the
right of the latter proprietor of the identical or deceptively similar
trademark, which flows from the registration thereof. In other words,
as both trademarks, despite being identical or deceptively similar to
each other, are registered in favour of their respective proprietors,
each proprietor has to respect the right of the other to exclusive use of
the trademark in respect of the goods or services for which it is
39
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or
nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as
their respective rights are subject to any conditions or limitations entered on the register) be deemed to have
been acquired by any one of those persons as against any other of those persons merely by registration of the
trademarks but each of those persons has otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
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registered. This is merely another way of expressing the proscription
contained in Section 28(1). While each of the registered proprietors
would have a right to exclusivity, in respect of his registered
trademark, qua the goods or services in respect of which it is
registered, against the rest of the world, he cannot have any such right
against the proprietor of the other registered trademark, even though it
is identical or deceptively similar.
16. The Sequitur
16.1 The sequitur, from a reading of the above provisions of the
Trade Marks Act, is obvious.
16.2 There can be no infringement by a registered trademark. An
unregistered trademark alone can infringe. Use of a registered
trademark, for the goods or services in respect of which it is
registered, can never be infringing in nature.
16.3 Ergo, the right to “relief against infringement”, otherwise
available to a registered proprietor of a trademark under Section 28(1),
can never extend to relief against another registered proprietor of a
trademark.
16.4 The very fact of registration confers, on the proprietor of the
mark, exclusive right to use the mark in respect of the goods or
services for which it is registered. So long as the mark remains
registered, this exclusive right cannot be jeopardised or injuncted by
anyone, even by the registered proprietor of another identical or
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similar trademark.
16.5 The obvious consequence is that an action for infringement
cannot lie against a registered proprietor or a trademark.
17. The judgment in Raj Kumar Prasad
17.1 A coordinate Division Bench of this Court has, however, in Raj
Kumar Prasad , held that an action for infringement can lie against a
registered proprietor of a trademark and, further, that an injunction
against use of the mark by such registered proprietor can also be
granted by a Court.
17.2 To our mind, and with greatest respect to the indisputable legal
acumen of the learned Judges comprising the Bench that decided Raj
Kumar Prasad , we find ourselves unable to accept this proposition.
To our mind, conferring, on a Court, the right to grant an injunction
against the use of a registered trademark, by its proprietor, in respect
of the goods or services for which the mark is registered, would
violate Section 29(1) to (4), Section 28(1), Section 28(3) and Section
30(2)(e) of the Trade Marks Act.
17.3 The reasoning adopted by the Coordinate Division Bench in Raj
Kumar Prasad , in holding that a suit for infringement would lie
against a registered trademark, and that the use of such registered
trademark can also be injuncted, needs to be understood.
17.4 While the facts of Raj Kumar Prasad may not seriously impact
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this discussion, they may briefly be noted.
17.5 The Division Bench identified, in the very opening sentence of
the judgment, the issue arising for consideration as “whether the
registered proprietor of a trademark can sue another registered
proprietor of a trademark alleging deceptive similarity”. As already
noted, the question has been answered, ultimately, in the affirmative,
by the Division Bench.
40
17.6 Abbott Healthcare Private Limited , the respondent before the
Division Bench, was the registered proprietor of the trademark
ANAFORTAN, under which it was manufacturing and selling
veterinary pharmaceutical preparations. Abbott alleged that Raj
41
Kumar Prasad , the appellant before the Division Bench, was using
the trademark AMAFORTEN, for pharmaceutical products. It was
further alleged that Prasad had surreptitiously obtain registration of the
mark AMAFORTEN under the Trade Marks Act and that Abbott was
in the process of moving an application before the Trade Marks
Registry under Section 57 of the Trade Marks Act, for rectification of
the register and removal, therefrom, of the mark AMAFORTEN.
Abbott sought an injunction against the use by, Prasad of the mark
AMAFORTEN.
17.7 One of the contentions advanced by Prasad before the learned
Single Judge of this Court, while opposing Abbott’s prayer for
injunction, was that there could be no injunction of the use, by Prasad,
40
“Abbott”, hereinafter
41
“Prasad”, hereinafter
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of the mark AMAFORTEN, as it was a registered trademark.
17.8 The learned Single Judge rejected the contention and granted
injunction.
17.9 Prasad appealed to the Division Bench. It was thus that the
judgment under discussion came to be rendered.
17.10 In arriving at the conclusion that Abbott was entitled to sue
Prasad for infringement, despite Prasad’s trademark AMAFORTEN
being registered, and to obtain an injunction against use of the said
42
trademark, the Division Bench entirely relied on Section 124 of the
Trade Marks Act. The reasoning of the Division Bench is brief, and is
contained in paras 15 to 18 of the judgment, which may be thus
reproduced:
42
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc . –
(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30
and the plaintiff pleads the invalidity of registration of the defendant's trade mark,
the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to the plaintiff's or
defendant's trade mark are pending before the Registrar or the High Court, stay the suit
pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea
regarding the invalidity of the registration of the plaintiff's or defendant's trade mark
is prima facie tenable, raise an issue regarding the same and adjourn the case for a period
of three months from the date of the framing of the issue in order to enable the party
concerned to apply to the High Court for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is
referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such
extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until
the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within
such extended time as the court may allow, the issue as to the validity of the registration of the trade
mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit
in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-
section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to
such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not
preclude the court from making any interlocutory order (including any order granting an injunction,
directing account to be kept, appointing a receiver or attaching any property), during the period of
the stay of the suit.
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“15. It is no doubt true that a reading of sub-Section 1 of Section
28 of the Trademarks Act, 1999 would evidence a legal right
vested in the registered proprietor of a trademark to exclusively use
the same in relation to the goods or services in respect of which the
trademark is registered and to obtain relief in respect of
infringement of the trademark. It is also true that a mere reading of
sub-Section 3 of Section 28 of the Trademarks Act, 1999 would
evidence a mutually exclusive right in two or more registered
proprietors of trademarks which are identical with or nearly
resemble each other to use the trademarks; none being in a position
to sue the other, and each being empowered to sue other persons.
16. But what does Section 124 of the Trademarks Act, 1999
say? And in what manner does it affect the rights conferred under
Section 28?
17. The guiding star being the principle of law: every attempt
has to be made, as long as the language of a statute permits, to give
effect to every phrase and sentence used by the legislature, and if
there emerges an apparent conflict, the duty of the Court would be
to iron out the creases and interpret the provisions harmoniously so
that the provisions are given effect to.
18. Sub-Section 1 of Section 124 of the Trademarks Act, 1999
would guide us that it contemplates a suit for infringement of a
trademark on the allegation of invalidity of registration of the
defendant's mark and even includes a case where a defendant
pleads invalidity in the registration of the plaintiff’s trademark. In
such a situation the legislative intent clearly disclosed is, as per
sub-Section 5 of Section 124, to stay the suit, to enable either party
to take recourse to rectification proceedings before the Registrar of
Trademarks, but after considering what interlocutory order needs
to be passed. Sub-Section 5 reads: “The stay of a suit for the
infringement of a trademark under this Section shall not preclude
the Court for making any interlocutory order including any order
granting an injunction direction account to be kept, appointing a
receiver or attaching any property, during the period of the stay of
the suit”.
(Emphasis supplied)
17.11 Thus, the reasoning adopted by the Division Bench in arriving
at a conclusion that a Court could, in infringement proceedings,
injunct the use of a registered trademark, by its proprietor, may be
thus set out:
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(i) It was true that Section 28(1) vested, in the registered
proprietor of a trademark, the exclusive right to use the
trademark in respect of the goods or services qua which it was
registered.
(ii) It is equally true that Section 28(3) proscribes the
registered proprietor of a trademark from suing another
registered proprietor of a trademark, so as to jeopardize the
right of such latter registered proprietor to use the mark in
respect of the goods for which it is registered.
(iii) However, Section 124 of the Trade Marks Act could not
be ignored. One had to apply the principle that, in the event of
an apparent conflict between the provisions in the same statute,
the Court has to harmonise the rival provisions.
(iv) Section 124(1) envisages a suit for infringement, against
the registered proprietor of a trademark, provided the plaintiff
pleads invalidity of the defendant trademarks.
(v) If the plaintiff thus pleads invalidity of the defendant
trademark in his suit, the Court hearing the suit has, under
Section 124(3), to stay the suit so as to enable the plaintiff to
apply for rectification of the defendant trademark.
(vi) That, however, has to be “after considering what
interlocutory order needs to be passed.” Section 124(5) of the
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Trade Marks Act specifically saves the power of the Court to
pass interlocutory orders, including orders of injunction, even
while the suit remain stayed under Section 124(2).
It is by this process of reasoning that the Division Bench held, in Raj
Kumar Prasad, that, so long as the plaintiff pleads invalidity of the
defendant’s registered trademark, it was entitled to sue for relief
against infringement, by the defendant, of its own registered
trademark and seek injunction against the defendant in that regard.
17.12 The decision in Raj Kumar Prasad has been subsequently
followed by another Division Bench of this Court in Corza
International .
18. Correctness of the decision in Raj Kumar Prasad
18.1 We reiterate that, with greatest respect to the learned Bench
which decided Raj Kumar Prasad , we find ourselves unable to
subscribe to the view expressed in the said decision. Our reasons, for
saying so, are the following:
(i) While generally observing that, faced with conflicting
provisions in a statute, a Court has to harmonise the provisions,
the Division Bench in Raj Kumar Prasad has, in our respectful
opinion, not gone on to examine whether it was actually
harmonising the concerned provisions of the Trade Marks Act.
To our mind, if the reasoning in Raj Kumar Prasad is accepted,
it would be starkly contradictory to Sections 28(1), 28(3), 29(1)
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to (4) and 30(2)(e) of the Trade Marks Act. It would also
enable an action for infringement to be brought against the
registered proprietor of a trademark, to injunct the use, by such
registered proprietor, of the registered trademark, merely by
incorporating, in the plaint, a plea regarding invalidity of the
defendant’s trademark. In other words, by a mere plea
regarding the invalidity of the defendant’s trademark, a plaintiff
can completely divest a defendant of his right to exclusive use
of his registered trademark, conferred and sanctified by
Sections 28(1), 28(3) and 30(2)(e). To our mind, this appears to
be impermissible.
(ii) Another serious aspect which appears not to have been
considered by the Division Bench while returning the decision
in Raj Kumar Prasad, is whether there can at all be a case of
infringement by a registered trademark. Notably , there is no
reference, in paras 15 to 18 of Raj Kumar Prasad, of Section
29 of the Trade Marks Act. The Division Bench has only
referred to Sections 28(1) and 28(3). Before proceeding to
Sections 28(1) and 28(3), which deal with the availability of
reliefs against infringement, it has first to be seen whether any
infringement can at all be said to exist, where the defendant’s
trademark is registered. If the statute expressly envisages
infringement only by an unregistered trademark, the question of
proceeding further to the availability of relief against
infringement does not arise. With greatest respect, the Division
Bench in Raj Kumar Prasad has not addressed itself to the
question of whether there can at all be a case of infringement,
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where the defendant’s trademark is registered.
(iii) To our mind, the answer to this question can only be in
the negative. There are no two ways about it. Sections 29(1)
and 29(4) clearly envisage infringement only by a person who is
not the proprietor of a registered trademark or the permissive
user thereof. Section 29 is a self contained provision insofar as
the circumstances in which infringement can be said to exist is
concerned. There is no other provision in the Trade Marks Act
which envisages any circumstance which could amount to
infringement. All circumstances in which infringement could be
said to exit are contained in Section 29, and one cannot look
outside Section 29, while examining whether infringement has,
or has not, taken place .
(iv) To reiterate, Section 29 expressly requires the infringing
trademark to be unregistered. It envisages infringement only by
a person, who is not a registered proprietor of a trademark or
using the trademark by way of permitted use. It does not,
therefore, contemplate infringement by the proprietor of a
registered trademark, by the use thereof.
(v) This aspect is clarified further by Section 30(2)(e) which
clearly excepts, from the ambit of infringement, use of a
registered trademark by its proprietor. The clause clearly states
that the use of a registered trademark, by its proprietor, can
never be infringing, even if there is another identical or
deceptively similar trademark.
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(vi) If there is thus no question of infringement, the question
of a right to sue for relief against infringement, much less to
obtain such relief can, in our respectful opinion, never arise.
(vii) What, then, of Section 124 of the Trade Marks Act?
(viii) According to the Division Bench in Raj Kumar Prasad ,
Section 124 expressly envisages the filing of a suit alleging
infringement against a registered trademark. The Division
Bench has opined that such a suit is permissible, and the
plaintiff has only to allege that the registration of the
defendant’s trademark is invalid. In case such an allegation
finds place in the plaint, the Division Bench has expressed the
view that the suit would be competent.
(ix) In the event of such a suit being filed, and the plaintiff
pleading invalidity of the registration of the defendant’s
trademark, the Division Bench holds that the Court is required
to stay the suit, to enable the plaintiff to initiate rectification
proceedings against the registration of the defendant’s
trademark . Before doing so , however, according to the
Division Bench, the Court has to consider what interlocutory
order needs to be passed. The power to pass such an
interlocutory order vests in the Court by Section 124(5).
(x) We, with greatest respect, are unable to subscribe to the
interpretation placed by the learned Division Bench in Raj
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Kumar Prasad on Section 124.
(xi) In the first place, Section 124 does not expressly, or even
by necessary implication, envisage the filing of a suit seeking
injunction of the use of a registered trademark by the defendant.
Section 124(1)(b) envisages, in a suit filed by a plaintiff for
infringement of a trademark, a defence being raised by the
defendant, predicated on Section 30(2)(e) of the Trade Marks
Act . In other words, Section 124(1) does not recognise the right
of a plaintiff to sue for injunction against use, by the defendant,
of a registered trademark . It envisages a “suit for infringement
of a trademark”. The word “infringement” has obviously to be
understood in the backdrop of Section 29 of the Trade Marks
Act. Infringement can only be by an unregistered trademark. A
registered trademark cannot infringe. There can, therefore, be
no suit for infringement of a registered trademark.
(xii) With greatest respect, we, therefore, have our difficulty in
accepting the view, expressed in para 18 of Raj Kumar Prasad,
that Section 124 contemplates a suit for infringement of a
registered trademark, merely by incorporating a plea that the
registration is invalid. We do not think that Section 124 says so.
To reiterate, in our view, Section 124 envisages a suit for
infringement of a trademark, which, read in the backdrop of
Section 29, itself envisages the plaint proceeding on the premise
that the allegedly infringing trade mark is not registered.
(xiii) Once it is accepted that the defendant’s trademark is
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registered, there can be no suit for infringement of such a
trademark, as infringement, by its very definition, can only be
by an unregistered trademark.
(xiv) What, then, does Section 124(1)(b) refer to?
(xv) Section 124(1)(b), in our opinion, envisages a situation in
which, though the suit does not proceed on the premise that the
defendant’s trademark is registered, the defendant raises a
Section 30(2)(e) defence . In other words, in a suit, filed by a
plaintiff against a defendant, alleging that the defendant’s
trademark infringes the registered trademark of the plaintiff,
Section 124(1)(b) envisages the defendant raising a defence
predicated on Section 30(2)(e), i.e., that, as the defendant’s
trademark is registered, the use of such mark cannot amount to
infringement. This must be by way of a defence raised by the
defendant in its written statement.
(xvi) We, therefore, reiterate that Section 124 does not
envisage a plaintiff suing for infringement of a registered
trademark.
(xvii) Where the plaintiff sues, without knowing that the
defendant’s trademark is registered, and the defendant sets up a
Section 30(2)(e) defence , the plaintiff then has the right to plead
that the defendant’s registration is invalid. Section 124 proceeds
to examine the situation that arises if such a plea is raised .
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(xviii) Thus, what Section 124(1)(ii) contemplates is that if
(a) a plaintiff sues a defendant on the ground that the
defendant trademark infringes the registered trademark of
the plaintiff,
(b) the defendant sets up a Section 30(2)(e) defence,
by pleading that its trademark is registered and that,
therefore, its use cannot amount to infringement and
(c) the plaintiff then pleads that the registration of the
defendant trademark is invalid,
then, in such circumstances,
(i) the Court has to satisfy itself that the plea of
invalidity of the defendant’s registration, as raised by the
plaintiff, is tenable,
(ii) if the Court is so satisfied, the Court has to raise an
issue in that regard, and
(iii) the Court has thereafter to adjourn the matter by
three months, in order to enable the plaintiff to initiate
rectification proceedings against the registration of the
defendant’s trademark.
(xix) This sequence is, in our opinion, of fundamental
significance. It underscores the position that there can be no
infringement action against a registered trademark. Section
124(1) does not envisage a suit being instituted alleging
infringement by a registered trade mark of the defendant. It
envisages a suit being instituted, alleging infringement by the
defendant, and the defendant raising the plea of registration as
a defence under Section 30(2)(e) . When such a defence is
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raised, ordinarily, the plaint would be liable to be rejected under
43
Order VII Rule 11(a) and (d) of the CPC as being bereft of a
cause of action, as also as being barred by law, as there can be
no cause of action of infringement against a registered
trademark, and Section 28(3) specifically bars the proprietor of
one registered trade mark seeking an injunction against the use
of another registered mark by its proprietor, even if it is
identical or deceptively similar.
(xx) The plaintiff would, nonetheless, be entitled to apply for
rectification of the register of trade marks under Section 57(1)
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and (2) of the Trade Marks Act, by removing the defendant’s
trademark therefrom. Section 124(1)(ii) apparently aims at
short-circuiting this process by allowing the suit to remain
pending while the plaintiff applies for rectification of the
register by removing the defendant’s trademark therefrom. Till
the register is rectified, and the defendant’s trademark is
removed, there can be no valid proceeding for infringement
against the defendant’s mark.
(xxi) In the event that, during the period of three months, for
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11. Rejection of plaint . – The plaint shall be rejected in the following cases:—
(a) where it does not disclose a cause of action;
*
(d) where the suit appears from the statement in the plaint to be barred by any law;
44
57. Power to cancel or vary registration and to rectify the register . –
(1) On application made in the prescribed manner to the High Court or to the Registrar by
any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as
it may think fit for cancelling or varying the registration of a trade mark on the ground of any
contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by
any entry made in the register without sufficient cause, or by any entry wrongly remaining on the
register, or by any error or defect in any entry in the register, may apply in the prescribed manner to
the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may
make such order for making, expunging or varying the entry as it may think fit.
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which the Court adjourns the suit, the defendant initiates
rectification proceedings, Section 124(2) requires the Court to
stay the trial of the suit pending final disposal of the
rectification proceedings. This also indicates that trial of a suit
alleging infringement of a trademark cannot proceed if the
allegedly infringing trademark is registered. It is only once the
registration is invalidated in appropriate rectification
proceedings, that the suit can proceed and the aspect of
infringement examined.
(xxii) This is the clear scheme of Section 124(1)(b) read with
Section 124(1)(ii) and Section 124(2).
(xxiii) In our respectful opinion, the Division Bench in Raj
Kumar Prasad was in error in observing that the plaintiff could
institute a suit against a registered trademark, pleading
invalidity of the registration and, in such a case, the Court was
required to stay the suit, enabling the plaintiff to initiate
rectification proceedings and, before staying the suit , consider
the interlocutory order that was required to be passed.
(xxiv) On the other hand, in our view, Section 124(5), which
forms the fulcrum, so to speak, of the Raj Kumar Prasad
decision, applies only once the trial of the suit is stayed under
Section 124(2). Section 124(5) merely states that the stay of the
trial of the suit under Section 124(2) would not inhibit the Court
from passing interlocutory orders, including orders granting
injunctions.
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(xxv) The nature of the injunctive order which can be passed
under Section 124(5) has not been specified in the sub-section.
It may, however, be difficult to understand the reference to “any
order granting an injunction”, as envisaged by Section 124(5),
as empowering a Court to injunct the use of a registered
trademark. Such an interpretation, in our view, would be in the
teeth of Section 28(1), Section 28(3) and Section 30(2)(e) of the
Trade Marks Act. Harmonizing provisions in a statute is one
thing; according, to one provision, an interpretation which
would totally efface another, is quite another.
(xxvi) In any event, before any interlocutory order is passed
under Section 124(5), in our opinion, the entire drill of Section
124(1)(b), Section 124(1)(ii) and Section 124(2) has to be gone
through. In other words, the plaintiff has to sue, alleging
infringement by the defendant’s trademark; the defendant has to
raise a Section 30(2)(e) defence by pleading that, as its mark is
registered, no infringement can be alleged; the plaintiff has led
to plead invalidity of the defendant’s trademark; the Court has
to be satisfied that the plea is tenable; if the Court is so satisfied,
the Court has to frame an issue; the Court has then to adjourn
the matter by three months; within the said period of three
months, the plaintiff has to institute rectification proceedings,
for rectification of the register and removal of the defendant’s
mark therefrom; and the Court has to stay the trial of the suit
pending disposal of the rectification proceedings.
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(xxvii) In our opinion, it is not open to a plaintiff to
institute an infringement suit against a registered trademark,
merely plead invalidity of the registration of the defendant’s
mark in the plaint, and seek an injunction on the ground of
infringement.
18.2 We are of the opinion, therefore, that the opinion to that effect,
as expressed in Raj Kumar Prasad , requires a reconsideration.
19. The Overall Sequitur
19.1 Thus, the position of law which emerges, in our considered
opinion, and with great respect to the learned authors of the decision
in Raj Kumar Prasad , is as under:
(i) A registered trademark cannot infringe. Infringement can
only be by an unregistered trademark.
(ii) No infringement proceedings can, therefore, ordinarily lie
against a registered proprietor of a trademark, alleging that the
trademark is infringing.
(iii) The registration of a trademark confers an absolute right
on the registered proprietor of the trademark to exclusive use of
the trademark in respect of the goods and services for which the
registration is granted.
(iv) The right to relief against infringement, available under
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Section 28(1), to a registered proprietor of a trademark, cannot
extend to injuncting the use of another registered trademark by
the proprietor thereof.
(v) If two trademarks are registered, then, even if they are
deceptively similar to each other, the proprietor of one cannot
seek to injunct the proprietor of the other from use of the mark.
(vi) A suit alleging infringement by a registered trademark
and seeking an injunction against the use of such registered
trademark, by its proprietor is, therefore, fundamentally
unsound.
(vii) Nonetheless, in the event that the plaintiff sues for
infringement by the defendant’s mark, and the defendant pleads
registration of the allegedly infringing mark as a defence under
Section 30(2)(e) of the Trade Marks Act, the plaintiff then has
the option to plead that the registration of the defendant’s
trademark is invalid.
(viii) In the event that such a plea is raised, the following
procedure has mandatorily to be followed:
(a) The Court has to examine whether the plea of
invalidity of the defendant’s mark is tenable.
(b) If the Court finds the plea to be tenable, the Court
has to frame an issue in that regard.
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(c) Having framed the issue, the Court has to adjourn
the suit by three months in order to enable the plaintiff to
initiate rectification proceedings.
(d) If the plaintiff initiates rectification proceedings
within the said period, the Court would stay trial in the
suit.
(ix) It is only once this sequence of proceedings is exhausted
that Section 124(5) would apply, and the Court would, even
while the trial of the suit remains stayed, be within its power to
pass interlocutory orders. Even then, in our considered opinion,
it is highly debatable as to whether a Court can, till the
registration of the defendant’s mark is declared invalid and the
mark is removed from the register, injunct the use, by the
defendant, of such mark. Grant of such an injunction would
seriously entrench the sanctified statutory right of the
defendant, under Section 28(1) to 28(3) and Section 30(2)(e) of
the Trade Marks Act.
20. This question is of pivotal importance in the present case as the
Respondent 1’s NEBROS trademark is registered. No doubt, the
plaintiff has pleaded invalidity of the defendant’s mark in the suit.
That, however, would not ipso facto render the suit maintainable,
insofar as it alleges infringement or seeks injunction against the
defendant on that ground.
21. This aspect would have to be clarified before the Court
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proceeds to examine the merits of the matter or the plea of the
appellant that the NEBROS mark of Respondent 1 infringes the
ABROS mark of ASIPL.
22. As the view we have taken is at variance with the view
expressed in Raj Kumar Prasad, which stands followed in Corza , we
are of the opinion that the matter requires to be resolved by a Larger
Bench.
23. We, accordingly, frame the following questions for
reference to a Larger Bench, to be constituted by Hon’ble the
Chief Justice:
(i) Whether a suit for infringement can lie against the
proprietor of a registered trademark, with respect to the use
of such trademark?
(ii) Whether, assuming such a suit can lie, the Court can
pass any interlocutory order, injuncting the use, by the
defendant, of the allegedly infringing registered trademark?
(iii) Assuming the Court can do so, whether such an order
of injunction can be passed without, in the first instance, the
proceedings going through the steps envisaged in para
19.1(viii) supra , i.e., without
(a) the defendant raising a Section 30(2)(e) defence,
(b) the plaintiff pleading invalidity of the
defendant’s trade mark in response thereto,
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(c) the Court being satisfied that the plea of
invalidity raised by the plaintiff is tenable,
(d) an issue being framed by the Court in that
regard,
(e) the suit being adjourned by a period of three
months in order to enable the defendant to initiate
rectification proceedings,
(f) rectification proceedings being initiated by the
defendant within the said period and
(g) trial of the suit being stayed, pending the
outcome of the rectification proceedings?
OR
Whether the mere incorporation , in the plaint, of a plea that
the registration of the defendant’s trade mark is invalid, is
sufficient to empower the Court to injunct the defendant
from using its registered trade mark on the ground of prima
facie infringement, without proceeding through steps (a) to
(g) above?
(iv) Whether, therefore, the judgement in Raj Kumar
Prasad v Abbott Healthcare (P) Ltd can be said to be laying
down the correct legal position, particularly in para 18
thereof?
24. As the answer to these issues would affect the outcome of this
appeal, we defer passing final orders in the appeal, pending resolution
of the aforesaid disputes by a Full Bench.
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25. Re-notify the appeal on 7 July 2025 for hearing.
26. The Registry is directed to place this order before Hon’ble the
Chief Justice expeditiously, as the issue referred impacts a large
number of cases.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
MAY 13, 2025
aky/yg/ar
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