Trademark applicant is estopped from challenging a prior mark’s validity on grounds of descriptiveness or non-distinctiveness.

The Plaintiffs (Glossy Paints) are manufacturers of decorative and industrial paints who adopted the trademark ‘INFINITY’ (“Subject Mark”) in 2001 and obtained registration (No. 1106467) in Class 2 with a user claim from 01.07.2001

In August 2024, the Plaintiffs discovered the Defendants (Nippon Paint) selling paints under a mark containing the word ‘INFINITY’, the symbol ‘∞’, and the suffix ‘TIMELESS APPEAL’ (“Impugned Mark”)

The Defendants had applied for the Impugned Mark on a "proposed-to-be-used" basis in 2022

The Plaintiffs filed a suit for permanent injunction, while the Defendants filed a Rectification Petition seeking removal of the Subject Mark, alleging it was descriptive, common to trade, and obtained through a false user claim

1. Whether the Subject Mark ‘INFINITY’ is descriptive or was obtained through a false user claim, rendering its registration invalid under Sections 9, 31, and 47 of the Trade Marks Act, 1999

2. Whether the Defendants are estopped from challenging the distinctiveness of the Subject Mark after applying for registration of a deceptively similar mark

3. Whether the Impugned Mark constitutes infringement and passing off of the Plaintiffs’ Subject Mark

The court primarily applied Sections 9, 28, 29, 31, 47, and 57 of the Trade Marks Act, 1999

Section 31 establishes a rebuttable presumption of the validity of a registered trademark

The court relied on Patel Field Marshal Agencies v. P.M. Diesels Ltd., holding that a person challenging validity must prima facie establish that the registration is plausibly invalid

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

For passing off, the court applied the "Classical Trinity" test: goodwill, misrepresentation, and likelihood of damage

Regarding validity, the court observed that the Plaintiffs followed due process in registration and the Defendants’ allegations of a "false user claim" were mere bald averments insufficient to rebut the Section 31 presumption

On descriptiveness, the court held that since the Defendants themselves applied for the registration of ‘INFINITY’ (as part of their label) in Class 2, they were estopped from arguing the mark was descriptive of paints

The court noted the Rectification Petition was an afterthought, filed only after mediation failed

Analyzing deceptive similarity, the court found the Impugned Mark prominently featured the word ‘INFINITY’ and the symbol ‘∞’, the latter being phonetically identical to the Subject Mark

Given the identity of goods and trade channels, the court found a strong likelihood of confusion

Finally, the court noted that the significant disparity in sales figures since 2022 suggested the Plaintiffs suffered actual loss due to the Defendants' misrepresentation, satisfying the requirements for passing off

Consequently, the court allowed the Plaintiffs’ interim injunction application (I.A. 8784/2025), restraining the Defendants and their agents from manufacturing, selling, or advertising paints under the Impugned Mark or any other mark deceptively similar to ‘INFINITY’ during the pendency of the suit