Applying for trademark registration estops a party from challenging the senior mark's distinctiveness.

The Plaintiffs (Glossy Paints) are manufacturers of paints and allied products who adopted the trademark ‘INFINITY’ in 2001 and obtained registration under No. 1106467 in Class 2, claiming use since July 1, 2001

In 2024, the Plaintiffs discovered that the Defendants (Nippon Paint) were using an impugned mark comprising the word ‘INFINITY’, the symbol ‘∞’, and the suffix ‘TIMELESS APPEAL’ for identical goods, based on a 2022 trademark application filed on a "proposed-to-be-used" basis

The Plaintiffs filed a suit for permanent injunction

In response, the Defendants filed a Rectification Petition seeking the removal of the Plaintiffs' mark, alleging it was obtained via a false user claim and was descriptive in nature

The Defendants argued that their sales significantly exceeded the Plaintiffs' and that their overall packaging was distinct

The court applied the Trade Marks Act, 1999, specifically Section 9 (absolute grounds for refusal), Section 28 (rights conferred by registration), Section 29 (infringement), Section 31 (presumption of validity), and Sections 47/57 (rectification)

It relied on the precedent in Patel Field Marshal Agencies v. P.M. Diesels Ltd., which held that the court must be prima facie satisfied of a mark's invalidity to rebut the statutory presumption of validity

Furthermore, it applied the principle from Automatic Electric Ltd. v. R.K. Dhawan, establishing that a party who has sought registration of a mark is estopped from claiming that the same mark is descriptive or generic

The court also utilized the "Classical Trinity" test for passing off: goodwill, misrepresentation, and damage

The court found that the Plaintiffs had followed due process in obtaining their registration and that the Defendants failed to provide evidence beyond "bald averments" to prove a false user claim, thus failing to rebut the presumption of validity under Section 31

Regarding descriptiveness, the court held the Defendants were estopped from making such a claim because they had themselves applied for the registration of ‘INFINITY’ for identical goods

Analyzing the marks, the court determined that the word ‘INFINITY’ and the symbol ‘∞’ were dominant features of the Defendants' label; since the symbol is phonetically identical to the word ‘INFINITY’, the impugned mark was held to be deceptively similar

Given the identical trade channels and products, the court found a high likelihood of confusion

Finally, the court noted that the Defendants' significantly higher sales figures since 2022 actually supported the Plaintiffs' claim of passing off, as they evidenced actual loss of market share and damage to the Plaintiffs' established goodwill

It allowed the Plaintiffs' application for interim injunction (I.A. 8784/2025), restraining the Defendants and their affiliates from manufacturing, selling, or advertising paints under the impugned mark or any mark deceptively similar to ‘INFINITY’ during the pendency of the suit

The court held that a prima facie case of infringement and passing off was established