Recently, the Delhi High Court dismissed a batch of trademark infringement and passing-off appeals filed by Westend Green Farms Society, holding that the mere display of the words “WESTEND GREENS” on residential signboards does not amount to trademark infringement unless such use is shown to be “in the course of trade.” Upholding the rejection of the plaints at the threshold, the Court emphasised a decisive principle: “It is not mere trade which attracts Section 29; it is use of the mark in the course of trade.”
Brief facts:
The case arose from a cluster of commercial suits filed by a registered residential welfare society managing a gated farmhouse enclave in South Delhi, asserting exclusive rights over the mark “WESTEND GREENS,” which it claimed to have used continuously since 1993 and for which it held registrations under Class 45 for member welfare services. The controversy emerged in March 2021, when neighbouring farmhouse owners belonging to a separate residential society installed signboards outside their properties displaying the words “WESTEND GREENS.” Terming this use as unauthorised, the society alleged trademark infringement under Section 29 of the Trade Marks Act, 1999, along with passing off, and sought permanent and mandatory injunctions, damages, and rendition of accounts. The Commercial Court rejected the plaints at the threshold under Order VII Rule 11(a) of the Code of Civil Procedure, 1908, finding that the pleadings failed to disclose any cause of action, prompting the society to carry the matter in appeal before the Delhi High Court.
Contentions of the Appellant:
The Appellant contended that the Society was the registered proprietor of the “WESTEND GREENS” trademark and enjoyed exclusive statutory rights under Sections 28 and 29 of the Trade Marks Act. It was argued that the respondents, who were admittedly not members of the Society, had no justification to use the mark on their signboards. According to the appellant, such use was intended to mislead prospective buyers or lessees into believing that the respondents’ farmhouses formed part of the Westend Greens Society, thereby enhancing property value and constituting commercial exploitation of the mark. The appellant further submitted that even if infringement was disputed, the plaint sufficiently disclosed a cause of action for passing off, which the Commercial Court had failed to consider.
Contentions of the Respondent:
On the other hand, the respondents supported the Commercial Court’s reasoning, asserting that “use in the course of trade” is a mandatory statutory ingredient for infringement under Section 29 of the Trade Marks Act. It was submitted that the plaint contained only bald assertions of commercial activity without disclosing its nature or demonstrating any nexus between such activity and the use of the mark. The respondents argued that merely displaying a nameplate outside a residential property could not be equated with commercial use. They also relied on the layout plan filed by the appellant itself to contend that Amaltas Avenue formed part of the broader Westend Green Farms area, thereby negating any allegation of misrepresentation.
Observation of the Court:
The Court made it clear that trademark infringement cannot be inferred from mere residential or descriptive use of a name unless it is demonstrably connected to commercial activity. Emphasising the statutory threshold under Section 29 of the Trade Marks Act, 1999, the Bench observed that “It is not mere trade, by the defendant, which attracts Section 29. It is use of the infringing trade mark in the course of trade.”
The Court further noted the absence of any pleaded nexus between the impugned signboards and a commercial offering, remarking that, “Absent any further averments, the mind boggles as to how a commercial activity, assuming it were to be carried out in the respondent’s premises, would profit by the use of ‘WESTEND GREENS’ on the name plate or signboard outside the premises.”
On the plea of passing off, the Bench delivered an equally pointed observation, holding that vague allegations were insufficient to sustain such a claim, and cautioned that, “An allegation of misrepresentation, by itself, cannot make out a cause of action to sustain a passing off suit.”
The Court crystallised the ratio that trademark infringement under Section 29 requires pleaded and demonstrable use of the mark “in the course of trade,” and residential or descriptive use, without a commercial nexus, is insufficient. Similarly, a passing-off action cannot survive on vague allegations of misrepresentation divorced from identifiable goods or services.
The decision of the Court:
In light of the foregoing discussion, the Delhi High Court dismissed the appeals and affirmed the Commercial Court’s rejection of the plaints under Order VII Rule 11(a) CPC.
Case Title: Westend Green Farms Society v. Vicky Kakkar
Case No.: RFA (Comm.) 196/2025
Coram: Justice C. Hari Shankar and Justice Om Prakash Shukla
Advocate for the Petitioner: Sr Adv, Abhinav Mukerji, Advs. Sumit Gehlot, T.S. Thakran, Abhishek Singh, Manju Gehlot,
Advocate for the Respondent: Advs. Shivani Kher, Akash Kumar and Bhavya Sharma
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