[Cites 10, Cited by 0]
Bombay High Court
Rynox Gears vs Steelite India on 17 March, 2026
Digitally signed
by SHAGUFTA
SHAGUFTA
2026:BHC-OS:6731
QUTBUDDIN
QUTBUDDIN PATHAN
PATHAN Date:
2026.03.17 IA-L-897-2025 (1).doc
17:46:14 +0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (LODGING) NO.897 OF 2025
IN
COMMERCIAL IP SUIT (LODGING) NO.35513 OF 2024
Rynox Gears, a Partnership Firm,
having its address at 276/78, ...Applicant/
Samuel Street, 17 H.V. Building, Original Plaintiff
Masjid, Mumbai - 400 003, Maharashtra
Versus
Steelite India, A Partnership Firm,
having its address at I-18 Sector-8,
DSIDC Bawana Industrial Area,
Delhi - 110 039.
...Respondent/
Also at, I-18, DSIIDC Industrial Area,
Sector 5, Bawana, Delhi 110 039 Original Defendant
------------
Ms. Amreen Khan a/w Ms. Kanishka Chawla i/b Ms. Snehashree Hinge for
the Applicant/Original Plaintiff
Mr. Anand Mohan a/w Mr. Prasad A. Kamthe and Mr. Aditya Agarwal for
the Respondent/Original Defendant
------------
CORAM : SHARMILA U. DESHMUKH, J.
RESERVED ON : FEBRUARY 25, 2026
PRONOUNCED ON : MARCH 17, 2026
JUDGMENT :
1. The present suit for infringement of trademark and passing off.
The Plaintiff has pleaded that the Plaintiff is a partnership firm
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engaged in the business of manufacturing and marketing, inter alia, of
quality goods such as motorcycle protective accessories such as
helmets, clothing, and luggage. The Plaintiff was established in the
year 2012 and is marketing the aforementioned goods under its
trademark RYNOX, which also forms the main and essential feature of
the Plaintiff's trade name Rynox Gears. In the year 2019, the Plaintiff
conceived and adopted a distinctive label for its trademark RYNOX,
. The Plaintiff has acquired goodwill and
reputation in respect of the said trademark and is known as a premier
manufacturer, inter alia, of motorcycle protective clothing, luggage,
and safety helmets. The Plaintiff also owns an e-commerce website
under the domain name https://rynoxgear.com. The details of about 23
registrations secured by the Plaintiff in various classes of its
trademark are detailed in paragraph 7 of the plaint. The chartered
accountant certified expenses certificate for promotions and
investments, is annexed to the plaint and extracts from e-commerce
webpages and specimen sales invoices are annexed to the plaint.
IA-L-897-2025 (1).doc
2. It is stated that in the first week of June 2023, the Plaintiff learnt
that the Defendant has unauthorizedly and without the consent of the
Plaintiff, obtained registration of the trademark label of RHYNOX,
in Class 9 for identical goods. The
impugned mark is phonetically identical and deceptively similar to the
Plaintiff's registered trade mark/trade name RYNOX, in respect of
which rectification application has been filed by the Plaintiff. It is
pleaded that the Plaintiff issued cease and desist notice dated 25 th
October, 2023 calling upon the Defendant to immediately cease and
desist from using the impugned mark and pursuant to the receipt of
notice, the Defendant took down their website. In month of August,
2024, the Plaintiff learnt that the Defendant continues to infringe the
Plaintiff's trade mark and pass off its goods as that of the Plaintiff.
Hence the suit came to the filed.
3. The limited affidavit-in-reply contends that there is suppression
of facts, as the Plaintiff has made a false statement that it is engaged
in business of selling of identical goods as that of the Defendant, i.e.,
helmets; that it is suppressed that the cease and desist notice came to
be returned and false case is pleaded in the plaint that after receipt of
the legal notice, the Defendant has taken down its website. The
Defendant's products are not available in Mumbai and this Court does
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not have jurisdiction. It is pleaded that the Plaintiff is not engaged in
the manufacture or sale of protective/safety helmets, which requires
Bureau of Indian Standard certification. The Plaintiff's business of
specialized motorcycle accessories such as jackets, gloves, apparel,
luggage, bags, etc. is different and distinct from the Defendant's
business, and that the consumers and the trade channels are different
and consumers are discerning. The Plaintiff has no presence in the
business of helmets, whereas the Defendant is in the said business
since the year 2017. The Defendant's partnership firm was constituted
in the year 2016, and in the year 2016, the Defendant's mark was
adopted as a homage to the Defendant's partner's home state, i.e.
Assam, as the Defendant's mark is centered around the State animal of
Assam, i.e. Rhino, which is a symbol of strength and resilience. The
artwork associated with the Defendant's mark is an independent
creation and is the original artwork. It is pleaded that the Defendant's
goods are manufactured and marketed under the Defendant's mark
since 2016, and in the year 2019, the Defendant has registered and
used the domain name www.rhynoxhelmets.co.in. The Plaintiff's
trademark registrations are subsequent to the Defendant's adoption
and use of the mark, which was adopted after taking a search in the
trademark industry, and hence the use is bona fide and honest. The
Defendant commenced the use of the mark in or around 20 th December
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2016 and applied for registration in Class 9 on 2 nd January 2017, which
was granted without opposition on 28th November 2020. Since 2016,
the Plaintiff has conducted substantial business, and the Chartered
Accountant's Certificate is annexed to the affidavit-in-reply. The
rectification proceedings have been filed only in the year 2023. The
Defendant's use of the mark predates the Plaintiff's trademark
publication dated 23rd January 2017. It is pleaded that there is no
actionable similarity between the rival marks, as the Plaintiff's device
mark/word mark RYNOX and the Defendant's device mark RHYNOX are
entirely different. It is pleaded that there is no market overlap or
tangible evidence of confusion, since the Plaintiff is not in the helmets
segment.
4. In rejoinder affidavit, it is pleaded that the Plaintiff is engaged in
the business of motorcycle riding gear and protective accessories,
including jackets, pants, gloves, and luggage systems, which products
are closely associated with motorcycle safety and form part of the
same commercial category and consumer expectations as helmets. The
Plaintiff does not currently manufacture helmets,however, the
business overlaps with the Defendant's business in terms of product
function, trade channels, target consumers, and brand positioning. The
goods are cognate, allied, or likely to be associated in the course of
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trade. It is pleaded that a cease-and-desist legal notice was duly issued
to the Defendant, however, the proof of delivery has been
inadvertently misplaced. The Plaintiff is the prior adopter and user of
the mark RYNOX since 2012.
5. Ms Khan, learned counsel appearing for the Plaintiff would
submit that the Plaintiff had applied for registration of its word mark
RYNOX on 31st August 2016, with a user claim of 16 th February 2012,
which was published in the journal on 23 rd January 2017. She submits
that the Plaintiff has also obtained a registration of the device mark of
RYNOX, which application was filed on 28th November 2019. She would
further point out that the Plaintiff's e-commerce website advertises
the Plaintiff's motorcycle protective gear, luggage, and accessories
under its registered mark RYNOX. She would further point out the
media articles about the launch by the Plaintiff of touring accessories
and gloves and the events in which the Plaintiff had participated to
contend that there was widespread promotion of the Plaintiff's
registered mark. She would point out the chartered accountant's
certificate which shows the promotional expenses incurred towards
the promotion for the RYNOX brand. She would further point out the
invoices of the year dated 10th December 2012 annexed at page 210
onwards till page 224, showing the use of the mark since the year 2012
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onwards. She would further submit that the duly certified sales
turnover for the year 2022-2023 is about Rs. 42 crores. She would
further submit that the Defendant's mark RHYNOX is phonetically
similar to the Plaintiff's mark. She would submit that there has been
actual instance of confusion as one of the e-commerce websites,
Meesho, is selling the Defendant's impugned product described under
the Plaintiff's registered mark RYNOX .
6. Mr. Mohan, learned counsel appearing for the Defendant would
submit that the Defendant has bona fide adopted and continuously
used the trademark/label in respect of helmets and has secured
registration of its mark. He submits that the Defendant applied for
registration of its mark on 2 nd January 2017, by which date the
Plaintiff's trademark application had not even been published. He
submits that the action of infringement is not maintainable, as there is
no case made out for going beyond the validity of the Defendant's
registration.
7. He would further submit that there is no case for grant of
equitable interim relief of passing off, as the Plaintiff has not come
with clean hands before this Court and has set up a false case. He
submits that the Plaintiff has pleaded that it is a renowned
manufacturer of helmets, which was contested in the response, and in
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the rejoinder, there is only a bald assertion of commonality of trade
channels. He would further submit that the Plaintiff has set up a false
plea with regard to its cease-and-desist notice and taking down of the
Defendant's website, whereas it was the Plaintiff's own stand before
the trademark registry that the cease-and-desist notice was in fact
returned undelivered. He submits that the falsity is sought to be
compounded by pleading in the rejoinder that the proof of delivery has
been misplaced. He submits that a specific statement of truth is
required to be filed under the Commercial Courts Act, and unverified
pleadings are not even permitted to be relied upon.
8. He would submit that, in any event, there is no case made out for
passing off, as there is no goodwill/reputation demonstrated in the
field of helmets and neither any misrepresentation/deception is made
out. He submits that common field of activity may not be the necessary
ingredient for maintaining an action for passing off, but is a relevant
factor to be taken into account while testing passing off. He submits
that the Plaintiff's label/composite mark with the rhinoceros and the
manner of depiction of the alphabet "X" in an exaggerated manner, is
not even alleged to be similar to any label/logo of the Plaintiff and
there is sufficient added material to distinguish the rival marks. He
submits that the Plaintiff lacks goodwill in the relevant segment, as the
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Defendant only sells helmets, whereas the Plaintiff does not deal in
helmets at all. He submits that the fact that the Plaintiff had never
learnt of Defendant, who is in the market since the year 2017, itself is
evidence that the rival markets/trade channels are distinct, and the
Plaintiff has not shown a single entity who has presence in both
markets. He submits that the class of consumers is distinct, as the
consumers of Defendant's segments are ordinarily motorcycle riders
who are unlikely to purchase the Plaintiff's products meant for
sporting enthusiasts, who are bound to be discerning. He submits that
the Defendant has a running business in the segment of helmets since
the year 2016-2017, and the Defendant does not deal in any goods,
which the Plaintiff actually sells, and therefore the balance of
convenience is in favour of the Defendant.
9. Rival contentions now fall for determination:
10. The rival marks are reproduced herein below for purpose of
comparison :
RYNOX, Vs.
11. The Plaintiff and the Defendant are both registered proprietors
of their respective trade marks. The statutory framework of the Trade
Marks Act, 1999 recognises more than one proprietor and limits the
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vested rights in such an eventuality. Before proceeding further it
would be appropriate to have brief look at the relevant sections.
Section 28(3) of the Trade Marks Act, 1999 provides as under:
"28(3): Where two or more persons are registered proprietors of
trade marks,which are identical with or nearly resemble each other,
the exclusive right to the use of any of those trade marks shall not
(except so far as their respective rights are subject to any conditions
or limitations entered on the register) be deemed to have been
acquired by any one of those persons as against any other of those
persons merely by registration of the trade marks but each of those
persons has otherwise the same rights as against other persons (not
being registered users using by way of permitted use) as he would
have if he were the sole registered proprietor. "
12. Section 30(2)of the Trade Marks Act, 1999 limits the effect of
registered trade mark by providing that a registered trade mark is not
infringed where :
"(e) the use of a registered trade mark, being one of two or more
trade marks registered under this Act which are identical or nearly
resemble each other, in exercise of the right to the use of that trade
mark given by registration under this Act."
13. Section 29 of the Trade Marks Act, 1999, which provides for
infringement of registered trademarks, speaks of infringement by a
person who is not the registered proprietor of the trademark which is
being used. Conjoint reading of the relevant statutory provisions will
disclose that claim against infringement will lie against unregistered
proprietor as even in case of identical trade marks, which are
registered, the statutory protection is available. The expression "if
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valid" used in Section 28(1) was considered by the Full Bench of this
Court in the case of Lupin Ltd. v. Johnson & Johnson1. The Hon'ble Full
Bench held that at the stage of granting an interim injunction, the civil
court can go beyond the validity of the registration where the
registration is ex facie illegal, fraudulent, or such, which shocks the
conscience of the Court. The pleadings in the plaint do not assail the
validity of the registration of the Defendant's trademark, nor any
submissions were canvassed to assail the registration within the small
window left open by the Hon'ble Full Bench in the case of Lupin Ltd. v.
Johnson & Johnson (supra). The Defendant being registered
proprietor of its mark, no relief of infringement would lie against the
Defendant.
14. Even assuming for sake of arguments, that the validity of
registration of the impugned mark is assailed, this is not a case of ex-
facie illegality or fraud or such as shocks the conscience of the Court in
view of the sequence of events which led to the registration of the
trade marks. The Plaintiff applied for registration of its word mark
RYNOX on 31st August, 2016 with user claim since 16 th February, 2012.
The Defendant applied for registration of its mark on 2 nd January, 2017
after conducting search of the trade mark registry, which obviously did
not reveal the Plaintiff's registration. The Plaintiff's mark was
1 (2014) SCC OnLine Bom 4596
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published in the journal on 23 rd January, 2017 subsequent to the
Defendant's application for registration and the Plaintiff's mark was
granted registration on 15th June, 2017. It is therefore not a prima facie
case of the Defendant's registration being ex facie illegal or result of
fraud and no relief can be claimed in respect of infringement of the
Plaintiff's mark.
15. That leaves for consideration the issue of passing off. The
Plaintiff has pleaded in the plaint that the Plaintiff was established in
the year 2012 and that it is marketing its motorcycle protective
accessories such as helmets, clothing, and luggage under the
trademark RYNOX. The pleading in paragraph 14 of the plaint is that
the Defendant has adopted an identical mark for identical business. A
dispute has been raised in the response affidavit that the Plaintiff is
not marketing helmets under the registered trademark and in
rejoinder, a case is sought to be made out that the products which are
being marketed by the Plaintiff are closely associated with motorcycles
safety, and form part of the same commercial category as helmets.
The plea of the rival products being allied/cognate products is pleaded
for the first time in the rejoinder affidavit in response to the
contention raised by the Defendant that the Plaintiff is not in the
helmet segment.
IA-L-897-2025 (1).doc
16. There is also a misrepresentation in the plaint that since the year
2012, the Plaintiff is in the business of manufacturing and marketing of
helmets, which has been prima facie proved to be false, which
contention is reiterated in paragraph 6 of the plaint.
17. The Plaintiff has further pleaded that a cease-and-desist notice
was issued on 25th October 2023, which was received by the Defendant,
and that after receipt of the notice, the Defendant has taken down its
website, and that the Plaintiff learnt in the month of August 2024, that
the Defendant is continuing to infringe and pass off its goods under
the trademark of the Plaintiff, as the Defendant has activated its
interactive website. The Defendant has placed on record the
application for rectification filed by the Plaintiff, in which it is admitted
by the Plaintiff that the cease-and-desist notice had been returned
unserved. The pleadings of the Plaintiff are replete with false
statement on oath not only as regards the manufacturing and
marketing of safety helmets under the registered trademark, but also
about the receipt of cease-and-desist notice and the consequent act of
taking down of its website by the Defendant. Though the said fact was
specifically pleaded in the reply affidavit, in the rejoinder the Plaintiff
has compounded the falsity by stating that the proof of delivery has
been inadvertently misplaced.
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18. The present suit has been filed in November 2024, and it appears
that the pleading about receipt of the cease-and-desist notice and the
taking down of the Defendant's website is an attempt to justify the
delay in filing of the present suit, which has been filed after almost one
year from the issuance of the cease-and-desist notice. Though it is well
settled that delay by itself does not constitute a defence in an action
for infringement, it could have been argued by the Defendant that, by
reason of remaining passive for a period of almost one year, though
being aware of the Defendant's existence, the Plaintiff has allowed the
Defendant's business to grow and therefore now cannot seek any
injunction. It appears that, in order to obviate any such submission on
the part of the Defendant, a false statement is made in the plaint
about receipt of the cease-and-desist notice and taking down of the
website by the Defendant, which is pleaded to have been reactivated in
August 2024, and the suit has been filed in November 2024.
19. In the case of Ramjas Foundation & Anr. vs. Union of India &
Ors.2, the Hon'ble Apex Court has held that a person who does not
come to the Court with clean hands is not entitled to be heard on the
merits of his grievance, and the object is that every Court is duty-
bound to protect itself from unscrupulous litigants who make
2 (2010) 14 SCC 38
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misstatements or suppress facts which have a bearing on the
adjudication of the issues arising in the case.
20. The application deserves to be dismissed at this stage itself by
reason of making false statements on oath. Going a step further, this
Court has considered whether any case for passing off is made out. The
Plaintiff is not in the business of manufacturing or marketing helmets
in which the Defendant's trades. It is well settled that, for maintaining
an action of passing off, the classical trinity test is of
goodwill/reputation, misrepresentation, and damage to the Plaintiff. In
the present case, insofar as the goodwill and reputation is concerned,
the same is required to be shown as on the date when the Defendant
has commenced the use of its mark, which in the present case was in
the year 2016. The CA certificate which has been placed on record
shows that for the year 2016-2017, the sales turnover was Rs.
4,85,40,857/- but the sales turnover is not in the helmet segment. It
cannot be said that the Plaintiff had any goodwill or reputation in the
helmet segment.
21. In the case of Kirloskar Diesel Recon Pvt. Ltd. & Anr. Vs.
Kirloskar Proprietary Ltd. & Ors.3, this Court has held that the real
question in each case is whether there is as a result of
misrepresentation a real likelihood of confusion or deception of the
3 1995 SCC OnLine Bom 312
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public and consequent damage to the Plaintiff, and the focus has
shifted from the external objective test of making comparison of
activities of parties to the state of mind of public in deciding whether
it will be confused. It is therefore clear that even though a common
field of activity is not the sole criterion in an action for passing off, it is
one of the relevant factors to be taken into consideration.
22. A comparison of the Plaintiff's mark with the Defendant's
composite label mark would indicate that the Plaintiff's mark RYNOX,
the word mark as well as the label mark, is dissimilar to the
Defendant's trademark RHYNOX with the pictorial representation of a
rhinoceros and the manner of depiction of the alphabet "X" in an
exaggerated manner.
23. In the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna
Pharmaceuticals Laboratories4, the Hon'ble Apex Court has held that
in a case of passing off, the Defendant may escape liability if he can
show that the added matter is sufficient to distinguish his goods from
those of the Plaintiff. Upon an overall comparison of the manner of
depiction of its mark adopted by the Defendant, it cannot be said that
there is any similarity between the two marks so as to cause
misrepresentation or to pass off the Defendant's goods as those of the
Plaintiff. Insofar as the damage to the Plaintiff's reputation and
4 1964 SCC OnLine SC 40
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goodwill is concerned, the Plaintiff is not in the business of selling of
helmets, and the goodwill which has been generated is in respect of
the other products and there is no goodwill which has been shown in
the helmet segment, and hence there is no question of damage to the
goodwill and reputation of the Plaintiff.
24. The Defendant is in the business of selling helmets since the year
2017, and the only solitary instance of misrepresentation which has
been shown is of an e-commerce website displaying the Defendant's
product using the Plaintiff's mark RYNOX. A solitary instance is not
sufficient for this Court to arrive at a finding of likelihood of deception
or misrepresentation, or that the Defendant is passing off its product
as that of the Plaintiff. It is not demonstrated that the Defendant
intentionally or unintentionally marketed its products as that of the
Plaintiff.
25. In light of the above, no prima facie case has been made out for
grant of injunction against infringement or for passing off. Resultantly,
the application fails and stands dismissed.
[SHARMILA U. DESHMUKH, J.]
