Registered Trademark Holder Cannot Claim Exclusivity Over Common or Non-Distinctive Parts.

The plaintiff, Mr. Anil Gopalji Thacker, engaged in construction and land development since 2015, claimed to be the adopter, proprietor, and user of the device mark and word mark "Shree Kshetrapal".

The plaintiff filed for registration of the device mark in Class 37 under application No. 6138925, which was subsequently registered.

Another application for the word mark "Shree Kshetrapal" (No. 6981533) is pending.

The plaintiff alleged that the defendant, Mr. Davda Jaydeepkumar Jagdishchandra, had commenced business activities in May 2025 under the trade name "Kshetrapal Construction," which was structurally, phonetically, and visually similar to the plaintiff's mark, constituting infringement and passing-off.

In Trademark Suit No. 1 of 2025, the plaintiff sought permanent injunction and interim relief.

An ex-parte ad-interim injunction was granted on 15.05.2025, which the defendant sought to vacate.

The defendant asserted prior use of "Kshetrapal Construction" since 2014, including obtaining a PAN card under this name on 29.05.2021.

The defendant also stated that from 2017 to April 2025, the plaintiff and defendant were business partners and jointly undertook construction projects using “Kshetrapal”.

The defendant specifically highlighted that the plaintiff suppressed material facts, including: (i) the joint business ventures (Shree Kshetrapal Square-1 and Square-2).

The defendant specifically highlighted that the plaintiff suppressed material facts, including: (ii) the objections raised by the Registrar of Trade Marks under Sections 9(1)(b) and 11 of the Trade Marks Act, 1999 during the plaintiff's device mark registration process, to which the plaintiff had claimed exclusivity only for the device mark as a whole and not for the word "Kshetrapal" alone.

The defendant further noted that the plaintiff’s device mark application declared the mark as "proposed to be used," contradicting the plaintiff's claim of use since 2015 for construction activities.

The trial court rejected the plaintiff's interim injunction application and vacated the ex-parte injunction on 12.08.2025.

Whether the plaintiff is entitled to an interim injunction restraining the defendant from using the mark "Kshetrapal Construction" on the grounds of trademark infringement and passing-off, considering the plaintiff's registered device mark and the defendant's alleged prior use and suppression of material facts by the plaintiff.

The court primarily applied the Trade Marks Act, 1999. Section 9 outlines absolute grounds for refusal of registration, focusing on distinctiveness and public interest, noting that non-distinctive or religious terms are generally not registrable unless they acquire distinctiveness through use.

Section 11 sets out relative grounds for refusal, protecting earlier trademark rights and preventing consumer confusion with existing marks.

Section 17 governs composite marks, stipulating that registration confers exclusive rights to the mark as a whole, not necessarily to individual components, especially if they are non-distinctive or common to the trade.

Section 28 grants registered proprietors exclusive use rights, but these are subject to other provisions of the Act.

Section 31 states that registration is prima facie evidence of validity but is rebuttable.

Crucially, Section 34 protects the rights of a prior user over those of a subsequent registrant.

The court also relied on the principle of suppressio veri, expressio falsi, holding that parties approaching court for equitable relief must disclose all material facts.

The Supreme Court's decision in Pernod Ricard India Pvt. Ltd. v. Karnaveer Singh Chhabra (2025 SCC Online 1701) was cited for the anti-dissection rule, emphasizing that composite marks must be assessed in their entirety, and generic or laudatory terms cannot be monopolized unless they acquire a secondary meaning.

The "average consumer test" for likelihood of confusion was also considered, especially in the context of commercial transactions for high-value goods like real estate.

The court found that the plaintiff had approached the court with "unclean hands" by suppressing material facts, specifically the joint business ventures (Shree Kshetrapal Square-1 and Square-2) with the defendant, and the objections raised by the Registrar of Trade Marks under Sections 9 and 11 during the registration process, where the plaintiff had stated exclusivity was claimed only for the device mark as a whole.

This suppression was deemed sufficient to deny equitable relief.

On the merits, the court determined that the plaintiff failed to establish prior and continuous use of "Shree Kshetrapal" for construction activities since 2015, particularly given that the device mark was registered as "proposed to be used".

The court noted that the plaintiff’s earlier entities were not primarily engaged in construction.

Conversely, the defendant provided prima facie evidence, including third-party affidavits, to show prior use of "Kshetrapal Construction" since 2014.

Applying Section 17 and the anti-dissection rule from Pernod Ricard India, the court held that the plaintiff's registration of the device mark did not confer exclusive rights over the individual words "Shree Kshetrapal".

The term "Kshetrapal" was considered a religious name and non-distinctive, making it unsuitable for monopoly without proof of secondary meaning, which the plaintiff failed to demonstrate.

The numerical sales data provided by the plaintiff was deemed too modest to establish such secondary meaning.

While Section 28 grants exclusive rights to a registered mark, it is subordinate to Section 34, which protects prior users.

The court also found that the "average consumer test" for real estate transactions implies a detailed inquiry process, making the likelihood of confusion remote, as potential buyers would investigate the developer thoroughly.

The court found no infirmity in the trial court's order rejecting interim relief and vacating the ex-parte injunction.

The Appeal from Order was dismissed with costs quantified at Rs. 50,000/-, and the Civil Application was also dismissed.