Glossy Paints India Pvt Ltd & Anr. vs Nippon Paint (India) Private Limited & Ors.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment delivered on: 10/04/2026


+ C.O. (COMM.IPD-TM) 169/2025, I.A. 17967/2025, I.A.
17968/2025 & I.A. 17969/2025

NIPPON PAINT (INDIA) PRIVATE LIMITED .....Petitioner

versus

GLOSSY PAINTS INDIA PVT. LTD. & ANR. .....Respondents

+ CS(COMM) 302/2025, I.A. 18402/2025, I.A. 20234/2025 & I.A.
25643/2025

GLOSSY PAINTS INDIA PVT. LTD. & ANR. .....Plaintiffs

versus

NIPPON PAINT (INDIA) PRIVATE LIMITED
& ORS. .....Defendants


Advocates who appeared in these cases

Mr. Manish Kumar Mishra and Ms. Akansha Singh, Advocates for
Petitioner in C.O. (COMM.IPD-TM) 169/2025 and D1 in
CS(COMM) 302/2025.

Mr. Sagar Chandra, Mr. Nikhil Sonker and Mr. Lakshay Gunawat,
Advocates for R1 in C.O. (COMM.IPD-TM) 169/2025 and Plaintiffs
in CS(COMM) 302/2025.
Ms. Nidhi Raman, CGSC with Mr. Om Ram, Advocate for R2 / UoI
in C.O. (COMM.IPD-TM) 169/2025.


C.O. (COMM.IPD-TM) 169/2025 & CS(COMM) 302/2025 Page 1 of 20
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
15:39:03

CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA

JUDGMENT

TEJAS KARIA, J
I.A. 8784/2025 in CS(COMM) 302/2025 and C.O. (COMM.IPD-TM)
169/2025

1. The present Suit being CS(COMM) 302/2025 (“ Suit ”) has been filed
seeking a decree of permanent injunction against the Defendants restraining
them from using the Mark ‘
’ (“ Impugned Mark ”),
along with I.A. 8784/2025 under Order XXXIX Rules 1 and 2 read with
Section 151 of Code of Civil Procedure, 1908 (“ CPC ”) seeking interim
injunction restraining the Defendants from using the Impugned Mark.
2. During the pendency of the Suit, Defendant No. 1 filed the present
Rectification Petition being C.O. (COMM.IPD-TM) 169/2025
(“ Rectification Petition ”) under Sections 47 and 57 read with Section 18(4)
of the Trade Marks Act, 1999 (“ Act ”) seeking removal / rectification of the
Trade Mark ‘INFINITY’ (“ Subject Mark ”) bearing registration no.
1106467 in Class 2, from the Register of Trade Marks.


FACTUAL BACKGROUND:
3. The Plaintiffs are engaged in the business of manufacturing and sale
of a variety of decorative and industrial paints including interior and exterior
wall paints, varnishes, polishes, epoxies, flooring paints, automotive paints,

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primers, lacquers, waterproofing products, protective coating, paints for
coating, reducers, acrylic paints, paints for wood, preservatives against rust
and deterioration of wood, furniture coatings, dyestuffs, mordants, resins,
metals in foil and powder form for painters and decorators, and related /
cognate and allied goods under various brands such as 1001, GLOSSY,
ELITE, SHEHNAI, HOME CARE, LOTUS, RAKSHAK, TUFFWOOD,
AUTOKING, WEATHERITE, WEATHERGOLD, SHEHNAI, among
others.
4. The Plaintiffs claim that the Subject Mark was adopted by the
Plaintiffs in the year 2001 with respect to goods being paints, varnishes,
lacquers, preservatives against rust and deterioration of wood, coloring,
matters, dyestuffs, mordants, resins, metals in foil and powder form for
painters and decorators, protective primers, PU coating/paints, etc., and the
said Mark has been in continuous and extensive use by the Plaintiffs after its
adoption. Plaintiff No. 1 secured registration of the Subject Mark under the
Act, bearing registration no. 1106467 in Class 2, claiming user since
01.07.2001.
5. Defendant No. l is the manufacturer and marketer of goods bearing
the Impugned Mark. Defendant No. 2 is the parent company of Defendant
No. l. Defendant No. 3 is one of the directors of Defendant No. l company
and is involved in the marketing of the goods sold under the Impugned
Mark.
6. The Plaintiffs claim that they first came to know about the goods
bearing the Impugned Mark in the third week of August 2024, when the
Plaintiffs’ representative came across the Defendants’ goods under the
Impugned Mark being promoted, offered for sale and sold on the e-

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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commerce platform ‘https://indiamart.com’. The Plaintiffs also came across
the application dated 06.08.2022, bearing no. 5561114 in Class 2 seeking
registration of the Impugned Mark on a proposed-to-be-used basis.
7. Aggrieved by the same, the Plaintiffs filed the present Suit seeking a
decree of permanent injunction against the Defendants restraining them from
using the Impugned Mark. Vide order dated 04.04.2025 passed in the Suit it
was recorded that the Defendants are willing to give up the Impugned Mark,
and accordingly, the Parties were referred to mediation before the Delhi
High Court Mediation and Conciliation Centre. Further, the Defendants
were granted a week’s time to file an affidavit qua the present stocks along
with a copy of the books of accounts exhibiting the volume of manufactured
products under the Impugned Mark or any other Mark that is identical or
deceptively similar to the Subject Mark.
8. Vide order dated 13.05.2025 passed in the Suit, it was observed that
the mediation between the Parties to the Suit could not fructify and,
accordingly, notice was issued in the present application. Further, during the
pendency of the present Suit, Defendant No. 1 filed the Rectification
Petition on 25.07.2025, seeking removal / rectification of the Subject Mark
from the Register of Trade Marks. Vide order dated 29.07.2025, the
Rectification Petition was directed to be listed along with the Suit.
Thereafter, the Parties were heard and judgment was reserved vide order
dated 22.12.2025 in the Rectification Petition and I.A. 8784/2025 in the
Suit.




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Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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SUBMISSIONS ON BEHALF OF THE PLAINTIFFS:
9. The learned Counsel for the Plaintiffs made the following
submissions:
9.1. Plaintiff No. 1 adopted the Subject Mark qua goods being paints in
the year 2001, and has been using the same ever since its adoption.
Plaintiff No. 1 is the registered proprietor of the Subject Mark
bearing no. 1106467 in Class 2 for goods being ‘paints, varnishes,
lacquers, preservatives against rust and against deterioration of
wood, coloring matters, dyestuffs, mordants, resins, metals in foil
and powder form for painters and decorators’.
9.2. Defendant No. 1 had prior business dealings with the Plaintiffs in
the year 2010-2011, and therefore, it was aware of the Plaintiffs’
Subject Mark and its business.
9.3. Defendant No. 1 filed the Trade Mark application for the
registration of the Impugned Mark bearing application no.
5561114 in Class 2 for identical goods being ‘paints, including
material for wood finishing requirement, lacquers, colorants,
aluminium paints, ceramic paints, enamels for painting/enamel
paints, thinners or lacquers, pigments, primers, coatings (paints),
enamels for painting enamel paint’, filed on 06.08.2022, on a
proposed-to-be used basis.
9.4. The Defendants’ adoption and use of the Impugned Mark is
subsequent to that of the Plaintiffs’ adoption and registration of the
Subject Mark. In case of dishonest adoption, no amount of use can
justify the same.

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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9.5. Plaintiff No. 1 is the registered proprietor of the Subject Mark in
Class 2. The Impugned Mark contains the word ‘INFINTY’ and
symbol of infinity as its dominant part. The Plaintiffs’ Subject
Mark bearing registration no. 1106467 was cited as an objection in
the Examination Report dated 11.01.2023 issued in Defendant No.
1’s aforesaid Trade Mark application.
9.6. Due to competing Marks, competing goods and the trade channels
of the competing goods being identical, there is a clear
presumption of confusion and, therefore, the Defendants’ use of
the Impugned Mark is liable to be injuncted under Section 29(2)(c)
of the Act.
9.7. Moreover, use of the symbol '∞' is also liable to be injuncted as the
word ‘INFINITY’ and the symbol '∞' convey the same meaning
and idea. The symbol '∞' will be spoken and read as ‘INFINITY’
and therefore, the said symbol’s spoken use is phonetically
identical to the Subject Mark. Further, when the said symbol will
be used on goods, its use will likely be taken as ‘use as a Trade
Mark’.
9.8. The Plaintiffs have established goodwill and reputation due to
prior, long, continuous and uninterrupted use. The Defendants’
adoption is dishonest, and amounts to misrepresentation and
causes confusion.
9.9. Defendant No. 1 has applied for the registration of an identical
Mark for identical goods by way of the aforesaid application no.
5561114 in Class 2 and is, therefore, estopped from claiming that
the Subject Mark is descriptive in nature. In any event, the Subject

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SHARMA
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Mark is inherently distinctive and arbitrary in relation to paints and
allied goods, and does not make any reference to the nature, kind,
quality, quantity, intended purpose, values or other characteristics
of paints.
9.10. In view of the foregoing submissions, it is prayed that the
Rectification Petition be dismissed and I.A. 8784/2025 filed by the
Plaintiffs in the Suit be allowed.

SUBMISSIONS ON BEHALF OF THE DEFENDANTS:
10. The learned Counsel for the Defendants made the following
submissions:
10.1. Defendant No. 1 is a company incorporated in 2006 and is a
subsidiary of Defendant No. 2, which is a Japan-based company
founded in the year 1881 and has over 140 years of experience in
the paint industry. Defendant No. 1 is engaged in the manufacture
of high-quality paints and coatings for the automotive, industrial
and decorative sectors, and is a leading paint and coatings
company in India with substantial goodwill and reputation.
Defendant No. 1 also has a strong international presence as it is
operating over 118 manufacturing facilities across 28 countries,
employing over 31,196 staff in 28 countries.
10.2. Defendant No. 1 has received various certifications and awards for
its quality products and social welfare initiatives. Defendant No. 1
has also invested extensively in marketing because of which, it has
been able to achieve a turnover of approximately Rs. 2,400 crores
in 2024 and has, therefore, become a household brand in India.

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Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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10.3. Defendant No. 1 adopted the Impugned Mark on 06.08.2022 in a
bona fide manner and has been using the same continuously and
extensively since then, which is evident from the total sales of Rs.
20.2 crores as of December 2024.
10.4. Defendant No. 1 has also filed application no. 5561114 dated
06.08.2022 for the registration of the Impugned Mark in Class 2
for goods being “Paints, including material for wood finishing
requirement, lacquers; colorants; aluminium paints, ceramic
paints, enamels for painting / enamel paints, thinners for lacquers,
pigments, primers, coatings [paints], enamels for painting /
enamel paint” , which is under opposition by Plaintiff No. 2 vide
opposition no. 1359937 dated 08.11.2024.
10.5. Plaintiff No. 2 issued a cease-and-desist notice dated 22.08.2024 to
Defendant No. 1, pursuant to which the parties tried to negotiate a
settlement. However, the same did not materialize and the present
Suit was filed by the Plaintiffs.
10.6. The registration of the Subject Mark by Plaintiff No. 1 is invalid as
it has been filed on the basis of false user claim since 01.07.2001.
The Plaintiffs despite claiming such use of the Subject Mark have
not produced any evidence of use before the learned Registrar or
before this Court in the present proceedings. The explanation of
the Plaintiffs that the records of the Plaintiffs were burnt in a fire in
2024 is ex-facie misleading. Notwithstanding the same, admittedly
the Plaintiffs have been selling their goods through their
distributors and surely could have produced the invoices of sale
from them.

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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10.7. As per the Plaintiffs’ website in 2010 and 2014 and the Plaintiffs’
Facebook posts, there was no reference of paints and allied
products under the Subject Mark, despite the entire range of
Plaintiffs’ Glossy Paints being displayed. The said fact establishes
that Plaintiff No. 1’s Trade Mark application dated 23.05.2002 was
obtained based on false user claim made by Plaintiff No. 1 and,
therefore, is liable to be cancelled on that ground alone. In support
of the said argument, the Defendants place their reliance on the
following decisions:
• Suresh Kumar Jain v. Union of India , 2012 SCC OnLine
Del 12
• Times Publishing House Ltd. v. Financial Times Limited ,
2012 SCC OnLine IPAB 62
• Mahomad Oomar v. S. M. Nusurrudin AIR 1956 Bom 76.
10.8. The registration of a Trade Mark does not confer absolute right,
which is evident from the language of Section 28 of the Act which
incorporates the phrase “ if valid ” as a pre-condition for the
exclusive right to use of the Trade Mark in question. Moreover,
even though there is a presumption of prima facie validity in
favour of registration under Section 31 of the Act, such
presumption is not conclusive and is rebuttable. Hence, the grant
of registration is also not conclusive evidence of its validity.
10.9. Once the said statutory presumption is rebutted to show that the
registration is not prima facie valid, the onus shifts on the
registered proprietor to establish its validity. Till such validity is

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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established, the registered proprietor is not entitled to any relief
based on such registration.
10.10. The registration obtained by Plaintiff No. 1 for the Subject Mark is
prima facie invalid as the registration has been granted by the
learned Registrar despite objection to the registrability of the
Subject Mark under Section 9 of the Act, in the Examination
Report dated 05.04.2003.
10.11. The Plaintiffs have placed on record a reply to the said
Examination Report dated 19.04.2003, which purportedly appears
to be ingenuine and fabricated as no such reply, as claimed by
Plaintiffs, is available on the online records of the Trade Mark
Registry. Further, it was not filed along with the Rejoinder to the
present application on 25.07.2025 and was only filed at a later
stage on 11.09.2025 along with the documents filed with
Replication. Moreover, the Plaintiffs have claimed that on account
of fire at their premises in August 2024, all the old records and
data have been destroyed except since 2017. The Plaintiffs have
also failed to disclose in the Replication as to how they discovered
the reply when all records and data got destroyed.
10.12. Even otherwise, no evidence of use was produced and therefore,
objection under Section 9 of the Act was not met and the
registration granted is invalid.
10.13. In any event, the Trade Mark application of Plaintiff No. 1 was not
accepted by the learned Registrar, which is evident from the order
of the Registrar dated 03.12.2003.

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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10.14. Therefore, the registration of the Subject Mark bearing no.
1106467 is invalid and the Plaintiffs ought to prove the validity of
the registration of the Subject Mark in the trial.
10.15. The Plaintiffs have claimed to be using the Subject Mark since
01.07.2001. However, the Plaintiffs have failed to produce
evidence showing goodwill and reputation in the Subject Mark on
the date of adoption of the Impugned Mark by Defendant No. 1 in
the year 2022. On the other hand, Defendant No. 1 has established
enormous sales of its products under the Impugned Mark since its
adoption in the year 2022. The following comparative figures are
sufficient to negate the claim of the Plaintiffs that the Defendants
have misappropriated the goodwill and reputation of the Plaintiffs:

10.16. The above figures also establish that no irreparable injury has been
caused to the Plaintiffs on account of use of the Impugned Mark by
Defendant No. 1.
10.17. The competing Marks are different in appearance, name, design
and the overall presentation. Defendant No. 1’s Impugned Mark is
unique, suffixed with the words ‘TIMELESS’ and ‘APPEAL’,
having no reference to the goods sold thereunder making it

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SHARMA
Signing Date:15.04.2026
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sufficiently distinguishable, which is evident from the table
produced below:

The competing Marks are used along with their different brand
name, i.e., ‘GLOSSY’ and ‘1001’ of the Plaintiffs and ‘NIPPON
PAINT’ of Defendant No. 1, as is evident from the table produced
below:

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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10.18. The term ‘INFINITY’ is descriptive per se in relation to
paints/coatings, which is also evident from the fact that even the
learned Registrar of Trade Marks had raised objection in the
Examination Report dated 05.04.2003. Additionally, the Subject
Mark is common to the trade as well.
10.19. In view of the foregoing submissions, it is prayed that the
Rectification Petition be allowed and I.A. 8784/2025 filed by the
Plaintiffs in the Suit be dismissed.

ANALYSIS AND FINDINGS:
11. Heard the learned Counsel for the Parties and perused the material
placed on record.
12. Defendant No. 1 has submitted that the registration of the Subject
Mark bearing registration no. 1106467 in Class 2 was secured by the
Plaintiffs claiming false user date. It is also contended by Defendant No. 1
that the Subject Mark was registered by the Registrar of Trade Marks,
despite objection under Section 9 of the Act.
13. It is further contended by Defendant No. 1 that the presumption of
validity of the Subject Mark is rebuttable in nature and is not absolute.
Furthermore, Defendant No. 1 claims that the Subject Mark is descriptive,
and hence, it is liable to be struck off the Register of Trade Marks.
14. The Trade Mark application for the registration of the Subject Mark
bearing no. 1106467 in Class 2 was filed on 23.05.2002 by Plaintiff No. 1.
The Examination Report was issued in the said application by the Trade
Marks Registry on 05.04.2003 observing that the Subject Mark is open to
objections under Section 9 of the Act.

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Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
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15. Plaintiff No. 1 filed its reply to the Examination Report on
19.04.2003, stating that Subject Mark had become distinctive with respect to
Plaintiff No. 1 and is non-descriptive in nature, having no direct reference to
the character of the goods sold thereunder.
16. Upon consideration of the said reply to the Examination Report, and
in accordance with the applicable provisions of the Act, it is apparent that
the Trade Marks Registry processed the aforesaid application filed for the
registration of the Subject Mark, and granted registration to Plaintiff No. 1
in Class 2, which is valid up to 23.05.2032. Therefore, due procedure was
followed for granting registration of the Subject Mark to Plaintiff No. 1.
17. Defendant No. 1 also contended that the presumption of validity of
the registration of the Subject Mark is rebuttable and is not absolute in
nature. With regard to the presumption of validity of registration under
Section 31 of the Act, the same is rebuttable, however, the onus rests with
the person that challenges the Trade Mark’s validity to establish that it is
plausibly invalid. In Patel Field Marshal Agencies v. P.M. Diesels Ltd. ,
(2018) 2 SCC 112, it has been held that the Court must be prima facie
satisfied that there exists a case of invalidity in order to eliminate false,
frivolous and untenable claims of invalidity, so as to further the cause of
justice.
18. In the present case, Defendant No. 1 has contended that the
registration has been obtained by way of false user claim by Plaintiff No. 1.
However, Defendant No. 1 has not been able to make out even a prima facie
case supporting the said claim. Mere bald averments made by Defendant No.
1 regarding the false user claim of the Subject Mark, are not sufficient to
render prima facie satisfaction to this Court that the presumption of validity

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is rebutted in the present case with respect to the registration of the Subject
Mark.
19. Defendant No. 1 has also contended that the Subject Mark is
descriptive in nature, when used for the Plaintiffs’ products, i.e., paints,
coatings, etc. Per contra , the Plaintiffs submitted that the Subject Mark is
inherently distinctive and arbitrary in relation to paints and allied products,
and does not make any reference to the nature, kind, quality, quantity,
intended purpose, values or other characteristics of the said products.
20. The Plaintiffs further contend that Defendant No. 1, having applied
for the registration of the Impugned Mark, which is identical to the Subject
Mark for identical goods, is estopped from claiming that the Subject Mark is
descriptive in nature. In support of this contention, the Plaintiffs placed
reliance on this Court’s decision in Automatic Electric Ltd. v. R.K. Dhawan ,
1999 SCC OnLine Del 27, wherein it was held as under:

21. In the present case, Defendant No. 1 has applied for the registration of
the Impugned Mark bearing application no. 5561114 in Class 2. The Subject
Mark, i.e., the word ‘INFINITY’, is completely subsumed within the
Impugned Mark as its dominant feature, which is displayed prominently
therein, along with the symbol of ‘INFINITY’, i.e., ‘∞’.
22. Having applied for the registration of the Impugned Mark, there is
force in the Plaintiffs’ contention that Defendant No. 1 is estopped from

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claiming that the Subject Mark is descriptive / non-distinctive in nature,
when used for paints and allied goods.
23. Further, the Rectification Petition / plea of invalidity of the Subject
Mark is an afterthought. In the Examination Report dated 11.01.2023 for the
Impugned Mark, the Subject Mark was cited as an objection to Defendant
No. 1’s application bearing no. 5561114 in Class 2. Thereafter, the Plaintiffs
also formally opposed the said application filed by Defendant No. 1 for the
registration of the Impugned Mark, vide opposition no. 1359937 dated
08.11.2024, to which the Counter-Statement dated 10.01.2025 was filed by
Defendant No. 1.
24. In view of the above, there is no cavil that Defendant No. 1 was
certainly aware of the existence of the Subject Mark on the Register of Trade
Marks, however, the Rectification Petition was filed / plea of invalidity was
raised by Defendant No. 1 only after the Mediation between the Parties
failed, wherein they were referred to by this Court in the Suit vide order
dated 04.04.2025 upon considering the statement made by Defendant No. 1
that it was willing to give up the Impugned Mark. Therefore, the plea of
invalidity of the Subject Mark / Rectification Petition filed by Defendant
No. 1 is an afterthought and, accordingly, deserves to be rejected in view of
the above analysis.
25. Plaintiff No. 1 claims that it adopted the Subject Mark with respect to
goods being Paints in the year 2001 and has been using the same ever since
its adoption. Further, it is a matter of fact that Plaintiff No. 1 is the registered
proprietor of the Subject Mark bearing registration no. 1106467 in Class 2
for goods being ‘paints, varnishes, lacquers, preservatives against rust and
against deterioration of wood, coloring matters, dyestuffs, mordants, resins,

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metals in foil and powder form for painters and decorators.’ Whereas,
Defendant No. 1 claims that it adopted the Impugned Mark in the year 2022
in respect of goods being paints and other allied products and has also filed
application no. 5561114 dated 06.08.2022 for the registration of the
Impugned Mark in Class 2.
26. The learned Counsel for Defendant No. 1 contended that the
competing Marks in question are different in appearance and the overall
presentation as the Impugned Mark is a label, which is suffixed with the
words ‘TIMELESS’ and ‘APPEAL’, while having no reference to the goods
sold under the said Mark, thereby, making it sufficiently distinguishable
from the Subject Mark.
27. A comparison of the competing Marks makes it clear that the
Impugned Mark has completely subsumed the Subject Mark, i.e., the word
‘INFINITY’ in the label, along with the symbol of ‘INFINITY’, i.e., ‘∞’, in
addition to the suffix - ‘TIMELESS APPEAL’. The word ‘INFINITY’ and
the symbol ‘∞’ are prominently highlighted in the Impugned Mark and
constitute dominant features of the Impugned Mark.
28. It is also imperative to note that the said symbol’s spoken use is
phonetically identical to the Subject Mark, i.e., ‘INFINITY’. Further, mere
addition of the suffix ‘TIMELESS APPEAL’ to the Word ‘INFINITY’ and
its symbol ‘∞’, does not render the Impugned Mark distinct from the Subject
Mark considering that the Subject Mark along with its symbol, is retained as
the dominant feature of the Impugned Mark. Therefore, in view of the above
analysis, it clear that the Impugned Mark is prima facie deceptively similar
to the Subject Mark of the Plaintiffs.

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SHARMA
Signing Date:15.04.2026
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29. The competing Marks of the Plaintiffs and Defendant No. 1 are used
for paints and allied products. The Subject Mark has been registered in Class
2 bearing registration no. 1106467 for paints and other allied products as
mentioned above, whereas the Impugned Mark is also sought to be
registered by way of application no. 5561114 in Class 2 by Defendant No. 1,
and has been used in respect of paint products since the year 2022.

30. Considering that the competing Marks are being used for identical
products, having identical trade channel and consumer base, in addition to
the fact that the Impugned Mark is prima facie deceptively similar to the
Subject Mark as held hereinabove, there exists a strong likelihood of
confusion amongst the members of the trade and public, who may confuse
the products of Defendant No. 1 bearing the Impugned Mark with the
products of the Plaintiffs, believing that the products of Defendant No. 1
bearing the Impugned Mark originate from the Plaintiffs.
31. It is settled law that in order to constitute the tort of passing off, three
ingredients must be satisfied - firstly, plaintiff should have acquired
significant goodwill; secondly , defendant must indulge in misrepresentation
to deceive the public, leading them to believe that the defendant’s goods
originate from the plaintiff; and thirdly , there should be actual or likelihood
of damage because of defendant’s misrepresentation.
32. Given that the Subject Mark was first adopted by the Plaintiffs in the
year 2001 and has been in use since then and that the Plaintiff has the
registration of Subject Mark, the Plaintiffs has gained goodwill and
reputation over time. The Plaintiffs have contended that Defendant No. 1’s
adoption and use of the Impugned Mark in 2022 was dishonest and
amounted to misrepresentation. Upon comparison of the sales figures of the

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Plaintiffs’ products sold under the Subject Mark and the Defendants’
products sold under the Impugned Mark after the adoption of the Impugned
Mark, the sales figures of the Defendants’ products are significantly higher
than that of the Plaintiffs since the year 2022 when the Impugned Mark was
adopted and put to use by the Defendants. The said difference in the sales
figures widened in the years 2023 and 2024 in favour of the Defendants,
which clearly shows that the Plaintiff has suffered actual loss due to use of
the Impugned Mark by the Defendants. Therefore, prima facie case of
passing off is made out against the Defendants.
CONCLUSION:
33. Having considered the submissions advanced by the learned Counsel
for the Parties, the pleadings and documents placed on record, a prima facie
case has been made out on behalf of the Plaintiffs for the grant of an interim
injunction restraining the Defendants from infringing and passing off the
Plaintiffs’ Subject Mark.
34. Accordingly, during the pendency of the present Suit, the Defendants,
their individual proprietors, partners, agents, representatives, distributors,
assigns, heirs, successors and all others acting for and on their behalf are
restrained from manufacturing, selling, offering for sale, advertising,
directly and indirectly dealing in paints or any other allied or cognate goods
under the Impugned Mark ‘
’ and / or any other Mark
identical with and / or deceptively similar to that of the Plaintiff’s Subject
Mark ‘INFINITY’, so as to cause infringement and / or passing off of the

C.O. (COMM.IPD-TM) 169/2025 & CS(COMM) 302/2025 Page 19 of 20
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
15:39:03

Plaintiffs’ Subject Mark. Accordingly, I.A. 8784/2025 in CS(COMM)
302/2025 stands disposed of in the aforesaid terms.
35. Further, in view of the foregoing analysis, no case is made out for the
rectification / removal of the Subject Mark from the Register of Trade
Marks. Therefore, the Rectification Petition being C.O. (COMM.IPD-TM)
169/2025, stands dismissed. Pending Application(s) in the Rectification
Petition, if any, stand disposed of.


TEJAS KARIA, J
APRIL 10, 2026
‘ st ’


C.O. (COMM.IPD-TM) 169/2025 & CS(COMM) 302/2025 Page 20 of 20
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:15.04.2026
15:39:03