Recently, the Delhi High Court was seized of an appeal arising out of a commercial trademark dispute between pharmaceutical entities concerning the use of a cough syrup brand. The appeal stemmed from proceedings initiated under the Code of Civil Procedure, 1908, in the context of rival claims over trademark rights governed by the Trade Marks Act, 1999.
Brief Facts:
The case arose from a dispute relating to the trademark “NOKUF / NOKUF SYRUP” used for pharmaceutical preparations. The appellant asserted rights over the mark NOKUF SYRUP on the basis of registration under Section 23 of the Trade Marks Act, 1999 and long-standing commercial use. It was claimed that rights in the mark NOKUF had been assigned to the appellant through an Assignment Deed executed in 1999. According to the Appellant, the respondents remained inactive for several years and subsequently sought to revive their claim over the mark by relying upon an earlier trademark application. Apprehending imminent manufacture and sale of cough syrup under the mark NOKUF, the appellant instituted a quia timet action and sought interim protection under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908.
Contentions of the Appellants:
The counsel for the Appellant submitted that the appellant had been the continuous and exclusive user of the mark since 1999 and had acquired significant goodwill and reputation. The counsel argued that the Respondents had abandoned the mark by prolonged non-use and had acquiesced in the appellant’s uninterrupted commercial exploitation. Placing reliance on Section 27(2) of the Trade Marks Act, 1999, the Appellant contended that a passing off action was maintainable even against a registered proprietor. It was further submitted that the respondents’ proposed use of the mark would lead to deception, confusion, and irreparable harm, satisfying the requirements for interim relief under Order XXXIX Rules 1 and 2 CPC.
Contentions of the Respondents:
The counsel for the Respondents contended that they were the prior adopters and users of the mark NOKUF since 1994, much before the appellant’s incorporation. It was submitted that the respondents’ registration of the mark related back to 1996 and continued to subsist under the Trade Marks Act, 1999. The Respondents denied the execution and validity of the alleged Assignment Deed, asserting that it was unenforceable under the Trade and Merchandise Marks Act, 1958, for want of transfer of goodwill. It was further argued that issues relating to abandonment, acquiescence, and goodwill were disputed questions of fact requiring trial and could not be decided at the interim stage.
Observations of the Court:
The High Court observed that in a case founded on passing off, the prior user assumes decisive significance, particularly where the defendant’s use of the mark predates both the plaintiff’s incorporation and claimed goodwill. Emphasising the settled position of law, the Court noted that “where the user of the mark by the defendant is prior to commencement of user by the plaintiff, the possibility of passing off stands ipso facto ruled out.” The Court held that the respondents’ use of the mark NOKUF since 1994 could not be ignored merely because such use was alleged to be intermittent.
Relying on the Supreme Court decision in Neon Laboratories Ltd. v. Medical Technologies Ltd., the Court underscored that commencement of user, and not continuous or extensive use, is the determinative factor at the interlocutory stage. The Court quoted with approval that “all that is required is commencement of user by the defendant, and not continuous user,” and observed that once prior user is established, subsequent goodwill claimed by another party cannot defeat vested rights.
On the plea of abandonment and acquiescence, the Court cautioned that mere non-use does not automatically amount to abandonment unless accompanied by an intention to abandon. Referring to Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., the Court reiterated that questions of abandonment are ordinarily matters for rectification proceedings and not determinable at the stage of interim injunction. It observed that “till a registered mark is removed from the register in accordance with law, it continues to enjoy statutory protection.”
The Court further held that the alleged Assignment Deed relied upon by the appellant could not, at the interim stage, confer enforceable rights, particularly in view of the statutory mandate under the Trade and Merchandise Marks Act, 1958, requiring transfer of goodwill. In absence of a prima facie valid assignment and in view of the respondents’ prior user, the Court found no legal basis to interdict the respondents’ use of the mark at the interlocutory stage.
The decision of the Court:
The Court dismissed the appeal, holding that no prima facie case for interim injunction was made out. The Court found that the respondents were prior users of the trademark and that disputed issues required trial. Accordingly, interference with the Commercial Court’s order was declined.
Case Title: Sana Herbals Private Limited v. Mohsin Dehlvi & Anr.
Case No.: FAO (COMM) 77/2025
Coram: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla
Counsel for the Appellant: Sr. Adv. Navin Pahwa, Sr. Adv. Ashish Mohan, Adv. Akshit Mago, AOR Akshit Pradhan.
Counsel for the Respondent: Sr. Adv. Parag Tripathi, Adv. Sonal K. Singh, Adv. Ayan De, Adv. Shivang Singh, Adv. Anmol Adhrit, AOR Sukanya Lal.
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