[Cites 7, Cited by 0]
Bombay High Court
Skg Consultants And Engg Pvt Ltd vs Skg Project And Engg Pvt Ltd on 22 January, 2026
2026:BHC-OS:2040 1/12 901-COMIP-84-2013.DOCX
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL IP SUIT NO. 84 OF 2013
WITH
INTERIM APPLICATION NO. 2323 OF 2022
SKG Consultants And Engg Pvt Ltd ...Plaintiff
Versus
SKG Project And Engg Pvt Ltd ...Defendant
_______
Mr. Suneet Moholkar, for the Plaintiff.
None for the Defendant.
Mr. Ashutosh Kane - Amicus Curiae
_______
CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 14TH JANUARY, 2026.
PRONOUNCED ON : 22nd JANUARY, 2026.
JUDGMENT:
1. The Plaintiff has, in the captioned Commercial IP Suit prayed for the
following substantive final reliefs:
"(a) That the Defendants, their Directors, Officers, Agents, Servants be
restrained by a permanent order and injunction of this Hon'ble Court from in
any manner using the words & "SKG" and/or any other deceptively similar
name, in relation to their business of doing civil engineering testing and/or as
a part of their corporate name and/or their services or otherwise whatsoever
so as to pass off and/or enable others to pass off the Defendants' said business
and/or company and/or services as that of the Plaintiffs or as has been
connected with and/or authorized by and/or licensed by and/or agency of the
Plaintiffs.
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(a1) That the Hon'ble Court be pleased to declare that the Plaintiff is the
registered owner of trade mark "SKG" under activities falling class 42 i.e. civil
quality control services, material testing services, project management
consultancy services by virtue of certificate of registration dated 16th May,
2017 bearing no.1553210 issued by the Registrar of Trade Marks u/s. 23(2)
of the Trade Marks Act, 1999.
(b) The Defendants be ordered and decreed to pay to the Plaintiffs damages
quantified at Rs.5,00,000/- (Rupees Five Lacs only) or in the alternative, the
Defendants be ordered and decreed to render a true and faithful account of
the all the profits earned by passing off their business of doing civil
engineering testing as that of the Plaintiffs and the Defendants be ordered
and decreed to pay to the Plaintiffs such amounts as may be found due and
payable on such accounts being taken with interest thereon @ 21% per
annum till payment and/or realizing.
(c) That the Defendants be ordered and decreed to deliver up to the Plaintiffs
for destruction, all the Defendants' books, invoices, literature, materials,
advertisements, logos etc. and all other goods and articles of all kinds and
nature bearing and/or containing any reference in any manner whatsoever to
the name "SKG" and/or any other deceptively similar name.
(d) Pending the hearing and final disposal of the suit, the Defendants, their
Directors, Officers, Agents, Servants be restrained by a permanent order and
injunction of this Hon'ble Court from in any manner using the words "SKG"
and/or any other deceptively similar name, in relation to their business of
doing civil engineering testing and/or as a part of their corporate name
and/or their services or otherwise whatsoever so as to pass off and/or enable
others to pass off the Defendants' said business and/or company and/or
services as that of the Plaintiffs or as has been connected with and/or
authorized by and/or licensed by and/or agency of the Plaintiffs.
(e) Pending the hearing and final disposal of the suit, the Court Receiver,
High Court, Bombay or some other fit and proper person be appointed
Receiver of all the Defendant's books, invoices, literature, materials,
advertisements, logos, etc. bearing and/or containing any reference in any
manner whatsoever to the words "SKG" collectively or individually, with all
powers under Order XL Rule 1 of the Code of Civil Procedure, 1908,
including the power to take possession, charge and custody thereof from the
Defendants, their Directors, Officer, agents and servants or any other persons
claiming through or under them and wherever situated by visiting the
premises simultaneously irrespective of time schedule, day or night, holidays,
with the help of police authorities, if so required and if necessary, by
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breaking open the premises if found locked, and to hand over the same to the
Plaintiffs."
Brief Background of Facts:
2. The Plaintiff is a private limited company incorporated under the
provisions of the Companies Act, 1956, on 27 th August 2004, and has since then
been engaged in the business of civil quality control, material testing, and
project management consultancy services. Since its incorporation, the Plaintiff
has adopted and used the trade mark " " ("the Plaintiff's trade mark").
3. On 10th March 2010, the Plaintiff filed Trade Mark Application No.
193395 seeking registration of the Plaintiff's trade mark in Class 42 in respect
of civil quality control, material testing, and project management consultancy
services.
4. During the pendency of the Plaintiff's trade mark application, the sons
and the wife of one of the Directors of the Plaintiff, namely Mr. Sanjay Mehta
incorporated the First Defendant Company, which not only carried out the
identical business as that of the Plaintiff Company but also adopted the Plaintiffs
trade mark. The Plaintiff, on becoming aware of this, filed the present Suit. The
Defendant then, on 20th September 2016, filed its Written Statement.
5. During the pendency of the Suit, the Plaintiff was granted registration of
the Plaintiff trade mark under Registration No. 1933925 in Class 42 on 16th
May 2017.
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6. The Defendant thereafter filed a Rectification Application challenging the
Plaintiffs' registration before the Intellectual Property Appellate Board ("IPAB")
on 18th July 2017.
7. The Plaintiff then, on 21 st January 2019, amended the Plaint and, in
addition to the prayer of passing off, also sought a prayer for a declaration that
the Plaintiff is the registered owner of the mark " ".
8. This Court vide an Order dated 15 th April 2019, framed the following
Issues:
"(i) Whether the Plaintiff proves that the Plaintiff is entitled to seek a
declaration that the Plaintiff is the registered owner of the trade mark
"SKG" in Class 42 based upon registration certificate no. 1933925 issued
by the Registrar of Trade Marks?
(ii) Whether the plaintiff proves that defendant has infringed the Plaintiff's
Registered Trade Mark "SKG"?
(iii) Whether the defendant proves that the Mark "SKG" was used by the
plaintiff only upon consent of Mrs. Sharda Mehta, proprietor of "SKG
INDUSTRIES" and Director of the Defendant on non-exclusive basis?
(iv) What Order?
(v) What reliefs?"
9. This Court thereafter vide an order dated 28 th August 2019, inter alia
recorded as follows:
"3. Today, Ms Patil states that defendant had filed a rectification application in July
2017 and defendant will be soon taking out a notice of motion for the court to frame
an issue for rectification and stay of the suit. It was defendant's bounden duty to have
informed the court in 2017 itself or, atleast when the matters were heard and orders
were passed, that such a rectification application has been filed. That would have saved
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substantial judicial time of this court. Parties cannot take court for granted and make
the court go through the entire process of hearing the parties and then pass orders one
by one and suddenly come and tell the court to stay the proceedings because they have
filed the rectification application some years ago. This is nothing but abuse of process
of court.
4. Ms Patil states that within one week, defendant will take out necessary application
and serve a copy thereof on plaintiff. Plaintiff to file affidavit in reply within two weeks
of receiving copy of notice of motion. Notice of motion be listed for hearing on 24-9-
2019."
"6. Defendant to pay a sum of Rs.50,000/- as cost to plaintiff by way of cheque drawn
in favour of advocate on record for plaintiff. Defendant shall also pay a sum of
Rs.25,000/- as donation to K.E.M. Hospital to be used in the neurosurgery department
and confirmation letter, alongwith a copy of this order, be sent to Dean, K.E.M.
Hospital..."
"..Both these amounts shall be paid within two weeks from today, failing which,
defendant's defence as well as the proposed notice of motion will be struck off/
dismissed."
This cost, it appears, has not been paid.
10. The Defendant then, on 3 rd September 2019, filed Notice of Motion (L)
No. 2100 of 2019 and prayed for a stay of the Suit proceedings.
Crucially, the Defendant also filed an Additional Written Statement on 25 th
January 2021, wherein the Defendant for the first time assailed the Plaintiff's
registration.
11. On 10th November 2025, Notice of Motion (L) No. 2100 of 2019 came to
be dismissed for non-prosecution.
12. On 18th December 2025, I heard the final arguments on behalf of the
Plaintiff and thereafter, on 22nd December 2025, found the need to appoint an
Amicus Curiae to assist the Court on whether, in view of the pendency of the
rectification application filed by Defendant No. 1, the Suit could proceed or
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would have to be stayed under the provisions of Section 124 of the Trade Marks
Act, 1999. This impasse was resolved after hearing Learned Amicus Curiae and
this Court 14th January 2026, passed the following Order:
1. I have heard the learned counsel for the Plaintiff, Mr. Mohalkar, as well as Mr.
Ashutosh Kane, who was appointed by this Court to assist as Amicus Curiae.
2. Mr. Kane, learned Amicus Curiae, has correctly submitted that, at this stage, the
pendency of the rectification proceedings does not operate as a bar to the disposal
of the present Suit. He pointed out that the Suit, even after amendment, does not
seek any relief for infringement of the trade mark. The reliefs sought are confined
to a declaration that the Plaintiff is the registered proprietor of the trade mark "
" in Class 42, together with consequential reliefs founded on passing
off.
3. Mr. Mohalkar, learned counsel for the Plaintiff, fairly conceded that by an order
dated 15th April 2019, this Court had framed the following issues:
"(i) Whether the Plaintiff proves that the Plaintiff is entitled to seek a declaration
that the Plaintiff is the registered owner of the trade mark 'SKG' in Class 42
based upon Registration Certificate No. 1933925 issued by the Registrar of
Trade Marks?
(ii) Whether the Plaintiff proves that the Defendant has infringed
the Plaintiff's registered trade mark 'SKG'?
(iii) Whether the Defendant proves that the mark 'SKG' was used by the Plaintiff
only upon the consent of Mrs. Sharda Mehta, proprietor of 'SKG Industries'
and Director of the Defendant,on a non-exclusive basis?
(iv) What reliefs?
(v) What order?"
4. Upon a closer scrutiny of the pleadings and the reliefs actually sought in the Suit,
it is evident that Issue No. (ii), as originally framed, does not arise for
consideration. Since the Suit does not seek any relief in respect of infringement,
but is founded on the Plaintiff's claim of proprietorship and allegations of passing
off, Issue No. (ii) was incorrectly cast.
5. Accordingly, at the request of Mr. Mohalkar, and in order to align the issues with
the pleadings and the nature of the reliefs claimed, Issue No. (ii) is deleted and
recast as under:
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"(ii) Whether the Plaintiff proves that the Defendant is passing off its business and/or
services as those of the Plaintiff's?"
6. In view of the findings recorded hereinabove on the issues as recast, list the Suit
along with the ORA No. 12 of 2018 on 22nd January 2026. High on Board.
7. At this stage I must place on record my appreciation for the valuable assistance
rendered by Mr. Ashutosh Kane, learned Amicus Curiae."
Submissions on behalf of the Plaintiff
13. Mr. Mohalkar, Learned Counsel for the Plaintiff at the outset submitted
that the Plaintiff was pressing for relief only in terms of prayer (a) and (a1) of
the Plaint.
14. He then submitted that since its incorporation, the Plaintiff has
continuously and extensively used the Plaintiff's trade mark in all its business
correspondence, invoices, test reports, and commercial documents. He submitted
that "SKG" is an acronym for "Shree Krishna God" and that the Plaintiff has
placed on record voluminous documentary evidence, including invoice books,
test reports, brochures, and certifications, establishing long, uninterrupted, and
bona fide use of the said trade mark.
15. He submitted that, by virtue of such continuous use and the high quality
of services rendered, the Plaintiff's trade mark has acquired substantial goodwill
and reputation in the relevant trade and among customers.
16. Learned Counsel further submitted that the Defendant's adoption of an
identical trade mark for identical services was patently dishonest, particularly in
view of the Defendant's prior relationship with the Plaintiff's Director. He
contended that the adoption was a deliberate and calculated attempt to deceive
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and mislead customers into believing that the Defendant was associated with, or
was the same as, the Plaintiff. Such conduct, he submitted, was intended to cause
confusion in the market and to unlawfully divert the Plaintiff's business to the
Defendant. In support of these submissions, reliance was placed on the
correspondence and test reports issued by the Defendant bearing the impugned
trade mark.
17. Mr. Mohalkar then invited my attention to the evidence of Mr. N.P. Singh,
Managing Director of the Plaintiff, and submitted that the same clearly
establishes the Plaintiff's case of passing off. He pointed out that the Defendant
neither cross-examined the Plaintiff's witness nor led any evidence in rebuttal.
Consequently, the Plaintiff's evidence has remained unchallenged and
unrebutted.
18. He further submitted that there was no impediment to proceeding with
the Suit, particularly since the Defendant had remained absent and its Notice of
Motion for stay stood dismissed for non-prosecution.
19. Upon considering the pleadings, evidence, and submissions, I find as
follows:
A. The Plaintiff is a Company incorporated in the year 2004 and has, since
its incorporation, been continuously engaged in the business of civil
quality control, material testing, and project management consultancy
services. The Plaintiff has also, by cogent material which includes invoices
and contemporaneous business records, none of which is controverted,
clearly established continuous and uninterrupted use of the trade mark "
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" since the year 2004. The Plaintiff's services have also received
international recognition, including the grant of Europa Certification,
which lends further credence to the Plaintiff's claim of being a reputed
and established service provider in the field of quality control and
consultancy. The Plaintiff has thus led cogent, credible, and
uncontroverted evidence demonstrating prior adoption, continuous use,
and the goodwill and reputation accrued in the said trade mark.
Significantly, the Defendant has made no attempt whatsoever to dislodge
the Plaintiff's case on any of these aspects.
B. The Defendant had sought to raise an objection under Section 124 of the
Trade Marks Act, 1999, which provides for a stay of infringement
proceedings where the validity of the registration of the trade mark is
under challenge. However, given that there is no prayer for infringement
in the Suit and the Notice of Motion seeking a stay of the present Suit has
been the question of staying the Suit does not arise.
C. The Defendant's adoption of the impugned trade mark is ex facie
dishonest. The Defendant is closely connected with the Plaintiff and was,
at all material times, fully aware of the Plaintiff's prior use of the trade
mark " ". Despite this, the Defendant has chosen to adopt an
identical mark in respect of identical services. The Defendant has led no
evidence whatsoever to establish honest adoption or bona fide use of the
impugned mark. Given the identity of the marks and the identity of the
services is not in dispute, the likelihood of confusion and deception is
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inevitable. The Plaintiff has, in fact, placed on record material evidencing
actual confusion and diversion of business, which evidence has remained
entirely unchallenged.
D. The Plaintiff, being the prior and long-standing user of the trade mark "
", is therefore entitled to the relief of passing off as
contemplated under Section 135 of the Trade Marks Act, 1999.
Independent of registration, the Plaintiff has established all the essential
elements of the tort of passing off, namely prior adoption, continuous use,
and the existence of goodwill and reputation in the trade mark. The
Defendant's subsequent adoption of an identical mark for identical
services constitutes a clear misrepresentation calculated to deceive, which
has resulted, and is likely to continue to result, in confusion, diversion of
business, and consequent loss and damage to the Plaintiff. The classical
trinity of goodwill, misrepresentation, and likelihood of damage stands
fully satisfied.
E. It is also material to note that after filing its written statement, the
Defendant has failed to appear in the proceedings, has not led any
evidence, and has not cross-examined the Plaintiff's witness. The
Plaintiff's evidence has therefore remained wholly uncontroverted. The
Defendant's abstention from the proceedings warrants the drawing of an
adverse inference and further reinforces the conclusion that the adoption
and use of the impugned trade mark is entirely lacking in bona fides.
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F. Insofar as the relief for a declaration is concerned, the Plaintiff has
conclusively established its registration of " " in Class-42 by
producing the Certificate of Registration dated 16 th May 2017, by the
Registrar of Trade Marks in terms of Section 23(2) of the Trade Marks
Act, 1999. The fact that the said registration is valid and subsisting is not
in dispute. Hence, clearly, the Plaintiff's status as the registered proprietor
of the mark cannot be denied. Though the Defendant has challenged the
validity of Plaintiff's registration by filing Commercial Miscellaneous
Petition No. 514 of 2022, the same would have no bearing on the present
Suit for the reasons set out in 'B' above. Thus, I have no hesitation in
holding that the Plaintiff is a registered proprietor of the mark "
" and would be entitled to a declaration to that effect.
G. There is and can be no dispute that the present Suit is a Commercial Suit
and is thus governed by the provisions of Section 35 of the Code of Civil
Procedure, 1908, as amended by Section 16 of the Commercial Courts
Act, 2015. Thus, cost would have to ordinarily follow the event. The
Defendant has been manifestly negligent in defending the Suit and has
compelled the Plaintiff to incur unnecessary litigation costs. In view of the
Defendant's conduct and the statutory mandate, the Plaintiff is entitled to
an award of costs towards legal fees and all other expenses incurred in
the present proceedings.
20. Hence, for the reasons stated in (A) to (F), Issue Nos. (i) and (ii) as recast
above are answered in the affirmative. For the reasons set out in (G), the
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Plaintiff shall be entitled to an order of costs. Therefore, the Plaintiff has made
out a case for the grant of reliefs in terms of prayer clauses (a) and (a1).
21. Hence the following Order:
ORDER
i. The Suit is decreed in terms of prayer clauses (a) and (a1).
ii. The Defendant shall pay Rs.10,00,000/- (Rupees Ten Lakhs only)
as costs to the Plaintiff within a period of 8 weeks from today.
iii. In the event, the Defendants do not pay the costs within a period
of 8 weeks from today, then interest at the rate of 8% per annum
shall apply.
iv. The Plaintiff shall be at liberty to apply for the return of the
original documents.
v. The Suit is disposed of in these terms.
vi. In view of the above, the Interim Application is accordingly
disposed of.
[ARIF S. DOCTOR, J.]
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