Delhi High Court
New Balance Athletics Inc vs Astormueller Ag And Ors on 13 July, 2026
Author: Jyoti Singh
Bench: Jyoti Singh
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 13th July, 2026
+ CS(COMM) 962/2025
NEW BALANCE ATHLETICS INC. .....Plaintiff
Through: Mr. Urfee Roomi, Ms. Janaki Arun,
Mr. Ayush Dixit and Ms. Vanshika Bansal,
Advocates.
versus
ASTORMUELLER AG AND ORS. .....Defendants
Through: Mr. Rohan Rohatgi and Ms. Muthu
Praba, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J.
I.A. 22346/2025
1. This judgment will dispose an application filed on behalf of the
Plaintiff under Order XXXIX Rules 1 and 2 CPC seeking ad interim
injunction against the Defendants.
2. Plaintiff is a company incorporated under laws of State of
Massachusetts, USA and had its beginnings in 1906 with the founding of
New Balance Arch Support Company, the predecessor-in-interest, which
was engaged in manufacture and sale of footwear. Plaintiff is engaged in
designing, manufacturing, marketing and selling of footwear, headgear,
readymade clothing, bags and backpacks in over 120 countries, including
India. Plaintiff is the proprietor of various trademarks, internationally and in
India, which include the device trademarks , ,
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and (‘N-marks’), in relation to footwear, readymade clothing, bags
and backpacks.
3. It is stated that Plaintiff first used the logo ‘N’ as a trademark on
footwear in USA in 1970s, when it launched its new ‘320’ model of athletic
shoe, which became increasingly popular among fitness enthusiasts and was
lauded by ‘Runner’s World’, one of the world’s most prestigious magazines
for runners, as the best running shoes in the world. Currently, Plaintiff
employs more than 14,000 employees worldwide and has numerous
subsidiaries and related entities including in India, UK, Singapore etc. and
sells through retail stores as also online on Plaintiff’s website
www.newbalance.com and other third-party e-commerce websites. Over
time, due to extensive and uninterrupted use, multiple variants of N-marks
have been introduced including in collaboration with designers and the N-
marks are a core component of Plaintiff’s brand identity such that Plaintiff
introduced footwear featuring interchangeable N-Logos, allowing
consumers to personalize their appearance. Illustratively, some of the
iterations are as follows:-
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4. It is stated that Plaintiff’s N-marks are today affixed on hundreds of
millions of pairs of footwear as also readymade clothing, bags and
backpacks, sold annually in many countries worldwide and the net revenue
has steadily increased from 2013 to 2024 as follows:-
5. It is stated that Plaintiff has expended enormous amount of money on
promoting and advertising its footwear, clothing, bags and backpacks
bearing one or more N-marks and the promotional expenditure for the period
2013 to 2020 is as follows:-
6. It is stated that the advertisements of the N-marks are accessible to
consumers worldwide, including India and Plaintiff incorporates the N-
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marks even in the ‘headline copy’ by replacing the ordinarily written letter
‘N’ with Plaintiff’s N-marks. The products under N-marks are also
promoted through product placement in various movies and television/OTT
shows. The extensive media coverage has left an indelible impression in the
minds of public that Plaintiff’s N-marks are associated with the Plaintiff and
none else. Plaintiff has expanded its reach on World Wide Web by
establishing official accounts on Facebook (9.4 million followers), X
(formerly, Twitter) (316.3 K followers) and Instagram (8.4 million
followers), three of the world’s most popular and trafficked social
networking sites, as also on YouTube (191 K subscribers), the highly
trafficked video sharing website and LinkedIn (641K followers), one of the
world’s most popular professional networking sites. These sites have been
enormously popular with consumers worldwide, including in India and
Plaintiff’s N-marks feature prominently on these sites. Plaintiff has
sponsored and continues to sponsor exclusive endorsement deals with many
sports teams, leagues and individuals and its footwear with N-marks are
often worn by many celebrities and personalities such as Kate Middleton,
Princess of Wales, Bill Clinton, Barak Obama, Vladmir Putin, Steve Jobs,
Taylor Swift, Jack Harlow, Rihanna, Seth Rogen, Pharrell Williams, Robert
Downey Jr., Ed Helms, Leonardo DiCaprio, Tom Holland, Steve Carell, Jim
Carrey, Kim Kardashian, Ranbir Kapoor, Vidyut Jammwal and Sonakshi
Sinha etc. Several awards including some of the prestigious awards received
by the Plaintiff find mentioned in the documents filed along with the plaint.
7. It is stated that in order to secure statutory rights in addition to
existing common law rights, Plaintiff has obtained registrations in the
N-marks covering inter alia footwear, clothing, bags and backpacks in
Classes 18 and 25 in various jurisdictions such as USA, Australia, Canada,
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Germany etc. including India. Registrations in the N-marks in India are as
follows:-
8. It is stated that in order to strengthen its relationship with Indian
consumers, Plaintiff incorporated subsidiary companies namely, New
Balance IT Services India Pvt. Ltd. (2007) and New Balance India Pvt. Ltd.
(2022). Way back in 2004 and 2005, Plaintiff organized various events in
India to launch its new models of footwear bearing N-marks and pertinently,
the famous Australian cricketer Mr. Brett Lee launched the product and the
events were widely covered and reported by various media houses in India.
In 2006, Plaintiff signed an agreement with Moja, an Indian manufacturer,
to outsource shoe production in India and later, in the same year Zee
Business, one of India’s popular Hindi business news channel telecasted a
talk show, showcasing and discussing various models of footwear with the
N-marks. In 2016, Plaintiff entered into a Franchisee Agreement with an
Indian party for opening retail stores and the same year, its flagship store
was opened in Noida, UP, which was widely covered by numerous media
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organizations and this was followed by many more stores in various cities
such as Delhi, Gurugram, Chandigarh, Ahmedabad etc. Plaintiff’s footwear
with N-marks featured in IPL as early as in 2016. The 2025 series of IPL
also saw many cricketers wearing footwear bearing the N-marks. The
matches were witnessed by hundreds of thousands of spectators at the
stadium and through television broadcast/OTT platforms and consequently,
the N-marks received immense attention and popularity. Since 2013,
Plaintiff has operated a cricket focused page by the name New Balance
Cricket on Facebook, which has attracted a global audience, including
followers from India.
9. It is stated that Plaintiff’s shaded logo as also NEW
BALANCE and NB marks have been declared as well-known trademarks
within the meaning of Section 2(l)(zg) of the Trade Marks Act, 1999 (‘1999
Act’) by this Court in New Balance Athletics Inc. v. Jitender Kumar and
Others, 2023 SCC OnLine Del 8061 and New Balance Athletics Inc. v.
New Balance Immigration Private Limited, 2023 SCC OnLine Del 7009,
respectively. Plaintiff’s distinct association with N-marks is also evidenced
by the fact that search engine queries on Google and other platforms in
respect of the words N-logo shoes, N-shoes, N-footwear, N-logo footwear,
consistently return results directing users to Plaintiff’s goods.
10. It is stated that Defendant No.1 is a company incorporated under
Laws of Switzerland and both Indian companies, Defendant No.2 and 3, as
per Plaintiff’s information are Indian subsidiaries of Defendant No.1 and are
engaged in manufacture, marketing and sale of footwear under the brand
name NUBEAT. Defendants are using nu:beat marks including logo mark
with a lower case ‘n’ in relation to sneakers, product packaging,
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corporate logo and as a favicon on their website http://www.nubeat.com/,
and products are being sold around the country, including to customers in
Delhi, through this website as also on third-party e-commerce websites such
as Myntra and advertised on Instagram, X, YouTube, Facebook and
Pinterest.
11. It is stated that Plaintiff first learnt of the Defendants in April, 2025,
when it found the listings for footwear with ‘n-marks’ on their website
http://www.nubeat.com/ and internet searches revealed that the offers for
sales were being made on Myntra. Further, research revealed that Defendant
No.1 has the following registrations in its favour:-
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12. It is stated that in response to Examination reports in respect of
registration nos. 5239238, 5666069 and 5666070, Defendant No.1 had stated
that ‘n:’ is a combination of letters ‘n’ and ‘B’ and B is represented as
colon (‘:’). The registrations bearing nos. 5239240, 5239238, 5666070, and
5666069 have been erroneously granted in favour of Defendant No.1 and are
liable to be revoked being in violation of Plaintiff’s statutory and common
law rights and Section 11 of 1999 Act, for which cancellation petitions have
been filed by the Plaintiff. Pertinently, even though the registrations are in
2021 and 2022, respectively, the actual user of the marks in India is
admittedly, only from April, 2024 and this is also reflected in media articles
covering the launch. Despite cease-and-desist notice, Defendants continued
their sale of footwear with the impugned n-marks, denying the allegations of
similarity in rival marks and likelihood of confusion and claiming that their
n-marks were distinctive and adopted honestly.
13. Learned counsel for the Plaintiff argued that Plaintiff is a registered
proprietor of the N-marks (logos) i.e., , ,
. The N-logo was used by the Plaintiff as a trademark on footwear
for the first time in USA in 1970s and registration in India for the trademark
in Class 25 goes back to 18.05.1987. On 10.09.1997, Plaintiff
obtained registrations for the N shaded logo in Classes 25 and 18,
followed by grant of protection in 2021 for the mark and therefore,
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by virtue of these registrations, Plaintiff has the exclusive right to use the
marks in respect of goods for which they are registered as also to restrain
third-parties from using the marks without authorization, in terms of Section
28 of 1999 Act. The rival marks of the Defendants are deceptively similar,
visually and phonetically and are used for identical products. The consumer
base being common and trade channels being the same, coupled with the
immense reputation of the N-marks, confusion is inevitable and there is no
gainsaying that the confusion gets further aggravated by the number of
variants of N-marks used by the Plaintiff over the years as also similarity in
brand names: ‘New Balance/NB and ‘NUBEAT/NU B’ and therefore, given
these glaring facts, Defendants’ footwear is likely to be considered as one of
the variants and new range of Plaintiff’s footwear. Thus, a clear case of
infringement is made out against the Defendants under Section 29 of 1999
Act.
14. It was urged that Plaintiff’s adoption and use of the N-marks precedes
Defendants’ use by decades and adoption of the alphabet ‘n’ from amongst
26 alphabets in English language, is a pointer to the dishonest adoption with
an intent to create confusion amongst members of public and trade and
potential consumers by misrepresentation. Identity of goods, similar trade
channels and common consumers enhances the likelihood of confusion.
Defendants’ adoption and use of deceptively similar marks and
is only to encash on the substantial goodwill and reputation
garnered by the Plaintiff in the N-marks, evident from sales turnover,
expenditure on promotion, sponsorship of sports events, brand endorsements
by celebrities, social media presence, media coverage, prestigious awards
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received, number of retail stores, sales through Plaintiff’s dedicated websites
as also on third-party e-commerce websites and most importantly,
declaration of the shaded logo mark , NEW BALANCE and NB as
well-known marks by this Court, albeit at the very early stage of the
proceedings, Defendants had given an undertaking not to use the standalone
mark as also not to use ‘nu’, separately as ‘n’ and ‘u’ on the same
pair of shoes, since at that stage, the defence was also that ‘nu’ together is
not deceptively similar. The intent of the Defendants is only to pass off their
identical goods as emanating from the house of the Plaintiff or having some
association or affiliation with it, which is damaging the goodwill and
reputation of the Plaintiff and hence, all three ingredients of passing off are
made out and Plaintiff has a prima facie case in its favour for grant of
temporary injunction.
15. It was argued that Plaintiff has been using the N-marks globally from
1970s and in India the products are being purchased since 1986 and are also
available on various e-commerce sites. In 2004 and 2005, Plaintiff organised
many events in India to launch its new models of footwear and in 2006,
Plaintiff appointed a distributor and tied up with Moja Footwear, a
manufacturer to outsource production in India. In 2016, Plaintiff entered into
a franchise agreement with an Indian party to open retail stores and also
granted license to use the marks. In the same year, Plaintiff opened its
flagship store in NOIDA, which was widely covered by media houses. In
contrast, Defendants launched the footwear under the impugned n-marks
only in April, 2024, in India and thus being a prior and substantial user, with
enviable goodwill and reputation, the balance of convenience lies in favour
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of the Plaintiff and against the Defendants. Defendants manufacture, market
and sell footwear under various brands such as Bugatti, Salamander and TT
Bagatt besides NUBEAT and even the footwear sold under NUBEAT brand
do not necssarily bear Defendants’ n-marks. Compared and contrasted,
majority of Plaintiff’s footwear, if not all, prominently bear one or other
variation of the N-marks. Therefore, if Defendants are permitted to continue
using the impugned n-marks and are not injuncted, it will cause irreparable
harm and injury to Plaintiff and dilute its N-marks including the well-known
declared marks , NEW BALANCE and NB. It was strenously urged
that since in the instant case all ingredients of passing off: goodwill;
misrepresentation; and irreparable harm and injury are satisfied, order of
interim injunction must follow applying the law laid down by the
Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah and Another,
(2002) 3 SCC 65 and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC
683.
16. Arguing on behalf of the Defendants, Mr. Rohan Rohatgi, learned
counsel submitted that Plaintiff is not entitled to interim injunction and the
application is liable to be dismissed, being devoid of merit as no case of
infringement and/or passing off is made out. It was urged that Defendant
No.1 is a Corporation incorporated under Laws of Switzerland and
Defendants No.2 and 3 are subsidiary companies of Defendant No.1 in
India. Defendant No.1 is an internationally renowned company engaged in
the business of manufacturing and selling footwear amongst other products
and traces its roots to 1928, when Mr. Johann Muller, renowned song writer
and musician, established a bespoke shoe making workshop in Germany.
With heritage spanning generations, Defendant No.1 continuously redefines
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footwear standards, seamlessly blending tradition with contemporary
design and over 400 professionals work in the dynamic and high skilled
environment thriving with precision and innovation. Over the years,
Defendant No.1 has established itself as a leading European shoe maker
holding exclusive global licenses for brands like Bugatti since 2000
and Daniel Hechter since 2014 and acquired German heritage brand
Salamander in 2023, which are available at their official website
https://astormueller.com.
17. It is submitted that the footwear manufactured by Defendant No.1 is a
collection crafted by highest-grade material and supported by expert
European technical precision and there exists a solid distribution network at
the global market, where sales are expanding through online and retail stores
every day. Defendant No.1 also owns and retails popular footwear brands
like Bagatt, TT Bagatt and NUBEAT. In 2007, Defendant No.1 established
its direct presence in India with incorporation of Defendant No.2 in
Bengaluru and introduced advanced German footwear manufacturing
techniques into facilities located in Ambur in Tamil Nadu and Agra in Uttar
Pradesh and over the years, Defendants have built immense goodwill and
reputation by selling fashionable footwear with unique features and high
quality. It was submitted that around October, 2021, Defendants adopted the
mark nu:beat, which is the brain child of Johanna Muller as a sneaker line,
one that would be all about music, movement and community. The syllable
‘nu’ is a Greek symbol for frequency used in Physics and audio engineering
to represent the rate at which a sound wave oscillates and symbolizes
rhythm, energy and movement. The footwear is exclusively designed in
Europe and trademark nu:beat has many device mark variants.
18. It was submitted that as an extension of nu:beat range, Defendant
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No.1 adopted variants like , and
and secured registrations in India as also internationally, as follows:-
INDIAN REGISTRATIONS
INTERNATIONAL REGISTRATIONS
19. Learned counsel brought forth that in April, 2024, Defendants started
using the nu:beat marks in India with different series for different variants of
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the sneakers and in a short span of time, the nu:beat trademarks came to be
widely recognised and associated with the Defendants alone and from
01.04.2024 till 30.09.2025, Defendant No.2 earned a net revenue of Rs.
28,22,143/-, from the sale of footwear under nu:beat marks. Defendants
have made continuous and rigorous efforts in promoting their goods, both
online and offline and have invested substantial money in doing so. Several
third-party social media platforms like Facebook and Instagram are used to
promote the goods and the marks and in addition, Defendants sell the goods
through their website http://nubeat.com/ and the website Myntra. The details
of the series are as follows:-
20. It was argued that Defendant No.1 is the registered proprietor of the
trademarks , and in Classes 18 and 25 in India
and hence, Plaintiff cannot lay a claim of infringement qua the registered
trademarks under Section 29 of 1999 Act, which clearly provides that a
registered mark is infringed by a person who is neither a registered
proprietor nor a person using by way of permitted use. Reliance was placed
on the judgment of the Supreme Court in S. Syed Mohideen (supra), to
support this plea. It was further asserted that in any event, Plaintiff’s
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N-marks and Defendants’ impugned marks have no resemblance or
similarity due to difference in picturization of the small case letter ‘n’
accompanied by a fanciful colon (‘:’) device. Defendants’ impugned marks
are sufficiently distinct in typography, stylization and overall commercial
impression and there is no visual or structural similarity. The pronunciationof N-marks and nu:beat marks is also different in as much as mark
is not pronounced as ‘n’ but as ‘n-colon’ and nu:beat device mark is
pronounced as ‘nubeat’, thereby negating any argument of phonetic
similarity. Moreover, Plaintiff does not have and cannot have monopoly
and/or registration in the standalone letter ‘N’ and it is settled law that
registration of the device mark confers no right of exclusivity and monopoly
over the components/elements of the mark. Infringement is a mark to mark
comparison unlike a claim for passing off and hence, in the absence of any
similarity/deceptive similarity in the rival marks and in light of registration
of impugned marks, Plaintiff’s claim of infringement must fail. To buttress
the plea that there can be no monopoly in standalone letters, reliance was
placed on the judgment of this Court in Relaxo Footwears Limited v. XS
Brands Consultancy Private Limited and Others, 2024 SCC OnLine Del
3434, where the rival marks were ‘X’ device marks.
21. It was further argued that Plaintiff is unable to make out a case of
passing off and the present suit is only an attempt to destroy Defendants’
reputation and goodwill in the market. Defendants have honestly adoptedthe , and device marks, which are distict from
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reputation and in 2007, Defendant No.1 established its direct presence in
India with incorporation of Defendant No.2 in Bengaluru and introduced
advanced German footwear manufacturing techniques into facilities located
in Ambur, Tamil Nadu and Agra, Uttar Pradesh and over the years,
Defendants have built immense goodwill and reputation by selling
fashionable footwear with unique features and high quality. Around
October, 2021, Defendant No.1 adopted the mark nu:beat, where ‘nu’ is a
Greek symbol and the footwear is exclusively designed in Europe and is of
exceptional quality. The nu:beat range was expanded and variants, , and were introduced in
which Defendant No.1 has secured registrations in India and internationally.
Defendants started using nu:beat marks for their specially designed footwear
from April, 2024 and due to the existing reputation, both global and in India,
within a short span of time sales were to the tune of Rs.28,22,143/-. With
this historical background and goodwill, Defendants have no reason to
mispresent their goods as those of the Plaintiff by adopting Plaintiff’s marks
and/or encash on its reputation and sans an element of misrepresentation and
deceipt, allegations of passing off have no legs to stand on. Defendant No.1
has been in the business of shoes since 1928 and has manufactured and
licensed for many well known brands in the world and has its own goodwill
and reputation.
22. It was also contended that there is no similarity in the rival marks
inasmuch as Plaintiff’s N-marks: and have an upper-case
N, formed by two slanted vertical strokes connected by sharp, diagonal,
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angled and pointed ends that resemble a rigid zigzag and one of them has a
shading, whereas the impugned marks have a lower-case ,
featuring a short vertical stem and a rounded arch or hump extending from
its right side, resembling a horseshoe magnet followed by a distinct
punctuation i.e colon. Moreover, Defendants’ use various elements on the
actual product such as nu:beat, either on the side, back or near the lace area
or inner and outer soles and hence, purchasers of the goods of the rival
parties will be able to distinguish the source of the goods.
23. It was also argued that Plaintiff is comparing the impugned marks by
dissecting them into individual elements as ‘n’ and ‘:’, which is against the
anti-dissection rule and if the rival marks are compared as a whole on an
overall impression test, there is no similarity. [Ref: Super Cassettes
Industries Ltd. v. Union of India and Others, 2010 SCC OnLine Del
1652]. Plaintiff has not placed any material on record to show actual
confusion in the market and/or actual damage to its business or goodwill as a
result thereof and therefore, none of the three ingredients of the tort of
passing off are made out.
24. It was also vehemently urged that the letter ‘N’ is non-distinctive and
no exclusive right can be claimed over a single letter as that would stifle
competition and bar legitimate players from using common alphabets in
conjunction with other elements. Moreover, when Defendant No.1 had
applied for registration, many existing trademarks with letter N were cited in
the Examination Report by the Trade Marks Registry, but none of Plaintiff’s
marks were cited which in itself is evidence to the fact that Plaintiff’s N-
marks are not deceptively similar. Additionally, Plaintiff’s N-marks have co-
existed in India with several third-parties marks on the Register of Trade
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Marks, details of which have been placed on record and illustratively,
reference was made to a third-party Nicholas Shoes Pvt. Ltd., which adopted
and used the N-logo in India, which was subsequently registered and
products were sold at https://www.nicholasshoes.net. Reliance was placed
on the judgment in ARG Outlier Media Pvt. Limited v. Rayudu Vision
Media Limited, 2023 SCC OnLine Bom 1825 of the Bombay High Court,
where it was held that where a Plaintiff disclaims monopoly over a single
letter or alphabet per se or the colour combination, then these cannot be the
central or essential feature of the registered device mark and in such a
situation, Plaintiff’s case can be supported only if it prima facie shows that
the depiction of the single letter or alphabet in its device mark is in some
manner unique or stylized and hence, distinctive. Reliance was also placed
on the judgment of the Supreme Court in J.R. Kapoor v. Micronix India,
1994 Supp (3) SCC 215, where it was held that a descriptive prefix common
to a technology (‘micro’) attracts no monopoly and where the distinguishing
suffixes (‘tel’/’nix’) are phonetically and visually dissimilar, including in
their logos and cartons, there is no likelihood of confusion among users
familiar with such goods.
25. Arguing in rejoinder, learned counsel for the Plaintiff reiterated that
the rival marks are nearly identical/deceptively similar and used for identical
products and thus confusion is not only likely but is inevitable and is
aggravated by the number of variations of N-mark used by the Plaintiff over
the years. It was denied that registration of Defendants’ marks is a bar to
Plaintiff’s claim for infringement and reference was made to Section 28(1)
of 1999 Act, which stipulates that registration of a mark, if valid, gives to
the registered proprietor of the mark the exclusive right to use the same in
relation to goods/services in respect of which it is registered and obtain the
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relief of injunction. It was reiterated that the registration of Defendants’
marks is illegal and contrary to Section 11(1) of 1999 Act and it is not
understood why the Registrar of Trade Marks did not cite Plaintiff’s marks,
but for that Plaintiff cannot be faulted. In any event, assuming for the sake
of argument that no claim for infringement lies, relief of passing off is still
available to the Plaintiff, which is a common law right and this position is
explicitly clear from the judgement of the Supreme Court in S. Syed
Mohideen (supra) and the judgement of the Division Bench of this Court in
Vaidya Rishi India Health Private Limited and Another v. Suresh Dutt
Parashar and Others, 2025 SCC OnLine Del 6147.
26. It was also reiterated that all three ingredients of passing off are
satisfied in the present case. Defendants’ marks are likely to deceive
consumers and traders alike, into believing that goods sold or offered for
sale by them have an association with the Plaintiff or at least are an
extension of Plaintiff’s goods, since the N-marks are conceptually, visually
and phonetically identical to the impugned marks and there is identity of
goods. Letter N as a lower case version is the dominant element in the marks
and and addition of colon is not enough to distinguish
them from Plaintiff’s N-marks and even otherwise this does not take away
the phonetic similarity. It is clear that Defendants adopted the n-marks,
especially, the two logos and only to come close to the
Plaintiff and confuse the unwary purchaser.
27. It was further argued that there is no merit in the contention of the
Defendants that the N-mark is common to Register and trade. To support the
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proposition, Defendants have relied upon a search report produced by Mike
Legal, however, the platform neither constitutes an official source of
trademark records nor guarantees the accuracy or current status of the listed
marks. Moreover, search reports are not enough to evidence that the marks
are used and therefore in light of the judgement in Novartis AG v. Crest
Pharma Pvt. Ltd. and Another, 2009 SCC OnLine Del 4390, this
contention merits rejection. Reliance on the mark of an entity called
Nicholas Shoes Pvt. Ltd. is equally misplaced as the N-mark of the Plaintiff
herein has been used since 1970s in USA and since 09.10.1986 in India for
the trademark , which is evident from the Registration Certificate
showing registration of the mark from 18.05.1987 and any subsequent user
cannot dent this position. In Pankaj Goel v. Dabur India Ltd., 2008 SCC
OnLine Del 1744, Division Bench of this Court held that the defence of
marks being common to trade/register is not enough and it must be shown
that the said third-parties were actually using the marks and had significant
business or turnover. To the same effect is the judgment of Calcutta High
Court in Express Bottlers Services Private Ltd. v. Pepsico Inc. & Ors., 1988
SCC OnLine Cal 62, where it was observed that in the absence of evidence
of substantial use of the mark by a third party and the extent of its trade and
business, a proprietor of a mark is not expected to sue and run after each and
every infringer, no matter how small it is.
28. Heard learned counsels for the parties and examined their rival
submissions.
29. The factual narrative in the plaint and documents filed therewith,
shows that Plaintiff is the registered proprietor of N-marks: ,
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, and in Classes 18 and 25. Plaintiff as
successor-in-interest of New Balance Arch Support Company, founded in
USA in 1906, used letter N for the first time as a trademark in USA in
1970s on footwear. On 18.05.1987, mark was registered in
favour of the Plaintiff in Class 25, followed by registration of mark
in Classes 18 and 25 on 10.09.1997 and registration of mark in
Class 25 on 06.03.2007. Plaintiff asserts that in India, Plaintiff’s products
have been purchased by Indian consumers since 1986 and are also available
on various e-commerce platforms. This position is untraversed by the
Defendants herein and importantly, this is also recorded by the Court in both
the judgments Jitender Kumar (supra) and New Balance Immigration
(supra), declaring three N-marks as well-known marks. In 2004 and 2005,
Plaintiff organised many events in India to launch its new models of
footwear and the launch was by the famous cricketer Mr. Brett Lee and was
widely covered by the media. In 2006, Plaintiff appointed a distributor, who
in turn tied up with Moja Footwear, a manufacturer, to outsource production
in India. In the same year, the products and the N-marks were showcased in
a renowned news channel Zee Business and their popularity spread across
the length and breadth of the country. Year 2016 saw the opening of retail
stores in India and pertinently, the flagship store of the Plaintiff in Noida,
which too was widely covered by many media houses. The retail stores
thereafter expanded to many cities such as Gurugram, Chandigarh, Lucknow
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etc. As averred, Plaintiff’s footwear bearing the N-marks featured
prominently in 2016 IPL and in 2025 series, many cricketers wore the
footwear with N-marks and resultantly, owing to the matches being watched
by lakhs of people in the stadium, on television/OTT platforms, the marks
received immense attention and the sales increased.
30. On the other hand, Defendant No.1’s marks and
were registered in India in Classes 18 and 25 on 08.12.2021 and the mark
was registered in the same class on 01.11.2022 albeit Defendants
lay much stress on Defendant No.1’s roots in footwear industry dating back
to 1928. Admittedly, around October, 2021, Defendant No.1 adopted the
mark nu:beat and later as an extension of the nu:beat range, Defendant No.1
adopted variants like , , and .
It is categorically stated in paragraph 14 of the written statement jointly filed
by the Defendants that Defendant No.1 started using the nu:beat marks in
India in April, 2024, with different series launched by it for different
variants of the sneakers.
31. Plaintiff seeks injunction against the Defendants inter alia for
infringement and passing off. The common thread that runs in Section 29(1)
and (2) of 1999 Act is that a registered trademark is infringed by a person
who, not being a registered proprietor or a permissive user, uses the mark of
the registered proprietor, without authorisation. Defendants refute the claim
of infringement on the ground that Defendant No.1’s nu:beat marks are
registered in India also and one registered proprietor cannot sue the other
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registered proprietor for infringement. Plaintiff, on the other hand, asserts
that even if this argument is accepted without prejudice, registration cannot
be a defence to an action for passing off and I agree. In S. Syed Mohideen
(supra), the Supreme Court held that answer to the question whether an
owner of registered trademark can bring an action against the other party for
passing off, invoking Section 27(2) of 1999 Act, if the other party is also the
registered proprietor, is in the affirmative. In other words, the Supreme
Court was deciding an interplay between Section 27(2) and Section 28(3) of
1999 Act and rendered four reasons to come to this conclusion. Relevant
paragraphs of the judgments are as follows:-
“28. However, what is stated above is the reflection of Section 28 of the
Act when that provision is seen and examined without reference to the
other provisions of the Act. It is stated at the cost of repetition that as per
this Section owner of registered trade mark cannot sue for infringement of
his registered trade mark if the appellant also has the trade mark which is
registered. Having said so, a very important question arises for
consideration at this stage, namely, whether such a respondent can bring
an action against the appellant for passing off invoking the provisions of
Section 27(2) of the Act. In other words, what would be the interplay of
Section 27(2) and Section 28(3) of the Act is the issue that arises for
consideration in the instant case. As already noticed above, the trial court
as well as the High Court have granted the injunction in favour of the
respondent on the basis of prior user as well as on the ground that the
trade mark of the appellant, even if it is registered, would cause deception
in the mind of the public at large and the appellant is trying to encash
upon, exploit and ride upon on the goodwill of the respondent herein.
Therefore, the issue to be determined is as to whether in such a scenario,
the provisions of Section 27(2) would still be available even when the
appellant is having registration of the trade mark of which he is using.
29. After considering the entire matter in the light of the various
provisions of the Act and the scheme, our answer to the aforesaid question
would be in the affirmative. Our reasons for arriving at this conclusion
are the following.
30. Firstly, the answer to this proposition can be seen by carefully looking
at the provisions of the Trade Marks Act, 1999 (the Act). Collective
reading of the provisions especially Sections 27, 28, 29 and 34 of the
Trade Marks Act, 1999 would show that the rights conferred by
registration are subject to the rights of the prior user of the trade mark.
We have already reproduced Section 27 and Section 29 of the Act.
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30.1. From the reading of Section 27(2) of the Act, it is clear that the right
of action of any person for passing off the goods/services of another
person and remedies thereof are not affected by the provisions of the Act.
Thus, the rights in passing off are emanating from the common law and
not from the provisions of the Act and they are independent from the rights
conferred by the Act. This is evident from the reading of the opening
words of Section 27(2) which are “Nothing in this Act shall be deemed to
affect rights….”
30.2. Likewise, the registration of the mark shall give exclusive rights to
the use of the trade mark subject to the other provisions of this Act. Thus,
the rights granted by the registration in the form of exclusivity are not
absolute but are subject to the provisions of the Act.
30.3. Section 28(3) of the Act provides that the rights of two registered
proprietors of identical or nearly resembling trade marks shall not be
enforced against each other. However, they shall be same against the
third parties. Section 28(3) merely provides that there shall be no rights of
one registered proprietor vis-Ã -vis another but only for the purpose of
registration. The said provision 28(3) nowhere comments about the rights
of passing off which shall remain unaffected due to overriding effect of
Section 27(2) of the Act and thus the rights emanating from the common
law shall remain undisturbed by the enactment of Section 28(3) which
clearly states that the rights of one registered proprietor shall not be
enforced against the another person.
30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in
this Act shall entitle the registered proprietor or registered user to
interfere with the rights of prior user. Conjoint reading of Sections 34, 27
and 28 would show that the rights of registration are subject to Section 34
which can be seen from the opening words of Section 28 of the Act which
states “Subject to the other provisions of this Act, the registration of a
trade mark shall, if valid, give to the registered proprietor….” and also
the opening words of Section 34 which states “Nothing in this Act shall
entitle the proprietor or a registered user of registered trade mark to
interfere….” Thus, the scheme of the Act is such where rights of prior user
are recognised superior than that of the registration and even the
registered proprietor cannot disturb/interfere with the rights of prior user.
The overall effect of collective reading of the provisions of the Act is that
the action for passing off which is premised on the rights of prior user
generating a goodwill shall be unaffected by any registration provided
under the Act. This proposition has been discussed in extenso in N.R.
Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., 1995 SCC
OnLine Del 310 : AIR 1995 Del 300] wherein the Division Bench of the
Delhi High Court recognised that the registration is not an indefeasible
right and the same is subject to rights of prior user. The said decision
of Whirlpool [N.R. Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del
310 : AIR 1995 Del 300] was further affirmed by the Supreme Court of
India in N.R. Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool
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Corpn., (1996) 5 SCC 714]
30.5. The above were the reasonings from the provisions arising from the
plain reading of the Act which gives clear indication that the rights of
prior user are superior than that of registration and are unaffected by the
registration rights under the Act.
31. Secondly, there are other additional reasonings as to why the passing
off rights are considered to be superior than that of registration rights.
31.1. Traditionally, passing off in common law is considered to be a right
for protection of goodwill in the business against misrepresentation
caused in the course of trade and for prevention of resultant damage on
account of the said misrepresentation. The three ingredients of passing off
are goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as per the
speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc.,
(1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)] which is more popularly
known as “Jif Lemon” case wherein Lord Oliver reduced the five
guidelines laid out by Lord Diplock in Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd. [Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731 at p. 742 :
(1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] (“the Advocaat case”) to
three elements : (1) goodwill owned by a trader, (2) misrepresentation,
and (3) damage to goodwill. Thus, the passing off action is essentially an
action in deceit where the common law rule is that no person is entitled to
carry on his or her business on pretext that the said business is of that of
another. This Court has given its imprimatur to the above
principle in Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V.
Patel v. Chetanbhai Shah, (2002) 3 SCC 65].
31.2. The applicability of the said principle can be seen as to which
proprietor has generated the goodwill by way of use of the mark/name in
the business. The use of the mark/carrying on business under the name
confers the rights in favour of the person and generates goodwill in the
market. Accordingly, the latter user of the mark/name or in the business
cannot misrepresent his business as that of business of the prior right
holder. That is the reason why essentially the prior user is considered to
be superior than that of any other rights. Consequently, the examination of
rights in common law which are based on goodwill, misrepresentation and
damage are independent to that of registered rights. The mere fact that
both prior user and subsequent user are registered proprietors are
irrelevant for the purposes of examining who generated the goodwill first
in the market and whether the latter user is causing misrepresentation in
the course of trade and damaging the goodwill and reputation of the prior
right holder/former user. That is the additional reasoning that the
statutory rights must pave the way for common law rights of passing off.
32. Thirdly, it is also recognised principle in common law jurisdiction that
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passing off right is broader remedy than that of infringement. This is due
to the reason that the passing off doctrine operates on the general
principle that no person is entitled to represent his or her business as
business of other person. The said action in deceit is maintainable for
diverse reasons other than that of registered rights which are allocated
rights under the Act. The authorities of other common law jurisdictions
like England more specifically Kerly’s Law of Trade Marks and Trade
Names, 14th Edn., Thomson, Sweet & Maxwell South Asian Edition
recognises the principle that where trade mark action fails, passing off
action may still succeed on the same evidence. This has been explained by
the learned author by observing the following:
“15-033. A claimant may fail to make out a case of infringement of a
trade mark for various reasons and may yet show that by imitating the
mark claimed as a trade mark, or otherwise, the defendant has done
what is calculated to pass off his goods as those of the claimant. A
claim in ‘passing off’ has generally been added as a second string to
actions for infringement, and has on occasion succeeded where the
claim for infringement has failed.”
32.1. The same author also recognises the principle that the Trade Marks
Act affords no bar to the passing off action. This has been explained by the
learned author as under:
“15-034. Subject to possibly one qualification, nothing in the Trade
Marks Act, 1994 affects a trader’s right against another in an action
for passing off. It is, therefore, no bar to an action for passing off that
the trade name, get up or any other of the badges identified with the
claimant’s business, which are alleged to have been copies or imitated
by the defendant, might have been, but are not registered as, trade
marks, even though the evidence is wholly addressed to what may be a
mark capable of registration. Again, it is no defence to passing off that
the defendant’s mark is registered. The Act offers advantages to those
who register their trade marks, but imposes no penalty upon those who
do not. It is equally no bar to an action for passing off that the false
representation relied upon is an imitation of a trade mark that is
incapable of registration. A passing off action can even lie against a
registered proprietor of the mark sued upon. The fact that a claimant
is using a mark registered by another party (or even the defendant)
does not of itself prevent goodwill being generated by the use of the
mark, or prevent such a claimant from relying on such goodwill in an
action against the registered proprietor. Such unregistered marks are
frequently referred to as ‘common law trade marks’.”
32.2. From the reading of the aforementioned excerpts from Kerly’s Law
of Trade Marks and Trade Names, it can be said that not merely it is
recognised in India but in other jurisdictions also including England/UK
(Provisions of the UK Trade Marks Act, 1994 are analogous to the Indian
Trade Marks Act, 1999) that the registration is no defence to a passing off
action and nor the Trade Marks Act, 1999 affords any bar to a passing off
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action. In such an event, the rights conferred by the Act under the
provisions of Section 28 have to be subject to the provisions of Section
27(2) of the Act and thus the passing off action has to be considered
independent “Iruttukadai Halwa” under the provisions of the Trade
Marks Act, 1999.
33. Fourthly, it is also a well-settled principle of law in the field of the
trade marks that the registration merely recognises the rights which are
already pre-existing in common law and does not create any rights. This
has been explained by the Division Bench of the Delhi High Court
in Century Traders v. Roshan Lal Duggar & Co. [Century
Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50 : AIR
1978 Del 250] in the following words : (SCC OnLine Del para 10)
“10. ’16. … First is the question of use of the trade mark. Use plays an
all-important part. A trader acquires a right of property in a
distinctive mark merely by using it upon or in connection with his
goods irrespective of the length of such user and the extent of his
trade. The trader who adopts such a mark is entitled to protection
directly the article having assumed a vendible character is launched
upon the market. Registration under the statute does not confer any
new right to the mark claimed or any greater rights than what already
existed at common law and at equity without registration. It does,
however, facilitate a remedy which may be enforced and obtained
throughout ‘the State and it established the record of facts affecting
the right to the mark. Registration itself does not create a trade mark.
The trade mark exists independently of the registration which merely
affords further protection under the statute. Common law rights are
left wholly unaffected.’ [Ed. : As observed in L.D. Malhotra
Industries v. Ropi Industries, 1975 SCC OnLine Del 172, para 16.] “
(emphasis supplied)
33.1. The same view is expressed by the Bombay High Court in Sunder
Parmanand Lalwani v. Caltex (India) Ltd. [Sunder Parmanand
Lalwani v. Caltex (India) Ltd., 1965 SCC OnLine Bom 151 : AIR 1969
Bom 24] in which it has been held vide AIR para 32 as follows : (SCC
OnLine Bom paras 1 & 2)
“1. A proprietary right in a mark can be [‘Iruttukadai Halwa’]
obtained in a number of ways. The mark can be originated by a
person, or it can be subsequently acquired by him from somebody
else. Our Trade Marks law is based on the English Trade Marks law
and the English Acts. The first Trade Marks Act in England was
passed in 1875. Even prior thereto, it was firmly established in
England that a trader acquired a right of property in a distinctive
mark merely by using it upon or in connection with goods irrespective
of the length of such user and the extent of his trade, and that he was
entitled to protect such right of property by appropriate proceedings
by way of injunction in a court of law. Then came the English Trade
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Marks Act of 1875, which was substituted later by later Acts. The
English Acts enabled registration of a new mark not till then used with
the like consequences which a distinctive mark had prior to the
passing of the Acts. The effect of the relevant provision of the English
Acts was that registration of a trade mark would be deemed to be
equivalent to public user of such mark. Prior to the Acts, one could
become a proprietor of a trade mark only by user, but after the
passing of the Act of 1875, one could become a proprietor either by
user or by registering the mark even prior to its user. He could do the
latter after complying with the other requirements of the Act, including
the filing of a declaration of his intention to use such mark. See
observations of Llyod Jacob, J. in Vitamins Ltd.’s Application, In
re [Vitamins Ltd.’s Application, In re, (1956) 1 WLR 1 : (1955) 3 All
ER 827 : 1956 RPC 1] at RPC p. 12, and particularly the following :
(WLR p. 10)
‘… A proprietary right in a mark sought to be registered can be
obtained in a number of ways. The mark can be originated by a
person or can be acquired, but in all cases it is necessary that the
person putting forward the application should be in possession of
some proprietary right which, if questioned, can be substantiated.’
2. Law in India under our present Act is similar.”
(emphasis supplied)
33.2. We uphold the said view which has been followed and relied upon by
the courts in India over a long time. The said views emanating from the
courts in India clearly speak in one voice, which is, that the rights in
common law can be acquired by way of use and the registration rights
were introduced later which made the rights granted under the law
equivalent to the public user of such mark. Thus, we hold that registration
is merely a recognition of the rights pre-existing in common law and in
case of conflict between the two registered proprietors, the evaluation of
the better rights in common law is essential as the common law rights
would enable the court to determine whose rights between the two
registered proprietors are better and superior in common law which have
been recognised in the form of the registration by the Act.”
32. In Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine
Del 50, Division Bench of this Court had earlier held that registration is
merely a recognition of pre-existing rights in common law and in case of
conflict between two registered proprietors, evaluation of better rights
should be under the common law. Recently, in Vaidya Rishi (supra), the
Division Bench re-affirmed that passing off action would lie against a
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registered proprietor of a trademark as the right to sue for passing off arises
under common law and is not a statutory tort, relying on S. Syed Mohideen
(supra). Therefore, Plaintiff is right in contending that de hors the
registration of the nu:beat marks in favour of Defendant No.1, including the
logo marks and , Plaintiff can bring an action for passing
off against the Defendants.
33. The three ingredients that are required to be satisfied by a party
bringing an action for passing off have been laid down and reiterated and
reaffirmed in many judgments and are: goodwill; misrepresentation in the
course of trade; and damage caused. The three ingredients are considered to
be the classical trinity and in this context, I may allude to one passage from
S. Syed Mohideen (supra) as follows:-
“31.1. Traditionally, passing off in common law is considered to be a right
for protection of goodwill in the business against misrepresentation
caused in the course of trade and for prevention of resultant damage on
account of the said misrepresentation. The three ingredients of passing off
are goodwill, misrepresentation and damage. These ingredients are
considered to be classical trinity under the law of passing off as per the
speech of Lord Oliver laid down in Reckitt & Colman Products
Ltd. v. Borden Inc. [Reckitt & Colman Products Ltd. v. Borden Inc.,
(1990) 1 WLR 491 : (1990) 1 All ER 873 (HL)] which is more popularly
known as “Jif Lemon” case wherein Lord Oliver reduced the five
guidelines laid out by Lord Diplock in Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd. [Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd., 1979 AC 731 at p. 742 :
(1979) 3 WLR 68 : (1979) 2 All ER 927 (HL)] (“the Advocaat case”) to
three elements : (1) goodwill owned by a trader, (2) misrepresentation,
and (3) damage to goodwill. Thus, the passing off action is essentially an
action in deceit where the common law rule is that no person is entitled to
carry on his or her business on pretext that the said business is of that of
another. This Court has given its imprimatur to the above
principle in Laxmikant V. Patel v. Chetanbhai Shah [Laxmikant V.
Patel v. Chetanbhai Shah, (2002) 3 SCC 65] .”
34. It would be useful to refer to few passages from a recent judgment of
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the Division Bench of this Court in Western Digital Technologies Inc. and
Another v. Geonix International Private Limited, Through its Directors,
Gaurav Jain Saurabh Jain and Another, 2026 SCC OnLine Del 901,
against which Special Leave to Appeal (C) No. 17783/2026 has been
dismissed on 26.05.2026. In the said judgment, Court has once again
highlighted the three essential ingredients as also the principle of initial
interest confusion i.e., the likelihood of confusion by a consumer is to be
assessed at the point of ‘initial interest’ i.e., when the consumer first sees the
goods of the Defendant and reiterated that requirement of likelihood of
confusion permeates both the tort of infringement as well as that of passing
off. Relevant paragraphs are as follows:-
“85. Trade mark rights, in our country, are cabined and confined within
the Trade Marks Act. The “saving clause” with reference to passing off is
contained in Section 27(2), which clarifies that nothing in the Act would
affect the rights of action against “any person for passing off goods or
services as the goods of another person or services provided by another
person, or the remedies in respect thereof”. It is true that the provision
does not read “any person for passing off his goods or services as the
goods of another person or services provided by another person…”
However, we regarded it as implicit, in Section 27(2), that passing off
must be of one’s goods or services as those of another. In other words, if
Mr X were to represent the goods of Mr Y as those of Mr Z, it would not,
to our mind, constitute “passing off” as envisaged in Section 27(2).
86. This is also clear from various judicial pronouncements of the
Supreme Court which identify the ingredients of “passing off”.
87. In Kaviraj Pt Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, the Supreme Court observed that “an action for passing off
is a Common Law remedy being in substance an action for deceit, that is,
a passing off by a person of his own goods as those of another”. Similarly,
in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., the Supreme Court
held that “an action for passing off, as the phrase “passing off” itself
suggests, is to restrain the defendant from passing off its goods or services
to the public as that of the plaintiff’s”. We may reproduce, to advantage,
paras 13 to 15 of Satyam Infoway thus:
“13. The next question is, would the principles of trade mark law and
in particular those relating to passing off apply? An action for passing
off, as the phrase “passing off” itself suggests, is to restrain the
defendant from passing off its goods or services to the public as that of
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the plaintiff’s. It is an action not only to preserve the reputation of the
plaintiff but also to safeguard the public. The defendant must have
sold its goods or offered its services in a manner which has deceived
or would be likely to deceive the public into thinking that the
defendant’s goods or services are the plaintiff’s. The action is normally
available to the owner of a distinctive trade mark and the person who,
if the word or name is an invented one, invents and uses it. If two trade
rivals claim to have individually invented the same mark, then the
trader who is able to establish prior user will succeed. The question is,
as has been aptly put, who gets these first? It is not essential for the
plaintiff to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a plaintiff in a
passing off action is misrepresentation by the defendant to the public.
The word “misrepresentation” does not mean that the plaintiff has to
prove any mala fide intention on the part of the defendant. Of course,
if the misrepresentation is intentional, it might lead to an inference
that the reputation of the plaintiff is such that it is worth the
defendant’s while to cash in on it. An innocent misrepresentation
would be relevant only on the question of the ultimate relief which
would be granted to the plaintiff [Cadbury-Schweppes (Pty)
Ltd. v. PUB Squash Co. (Pty) Ltd.; Erven Warnink Besloten
Vennootschap v. J. Townend & Sons (Hull) Ltd.]. What has to be
established is the likelihood of confusion in the minds of the public
(the word “public” being understood to mean actual or potential
customers or users) that the goods or services offered by the defendant
are the goods or the services of the plaintiff. In assessing the
likelihood of such confusion the courts must allow for the “imperfect
recollection of a person of ordinary memory” [Aristoc Ltd. v. Rysta
Ltd.].
15. The third element of a passing off action is loss or the likelihood of
it.”
(Emphasis supplied)
These passages stand approvingly cited by the Supreme Court in its
somewhat recent decision in Brihan Karan Sugar Syndicate Pvt.
Ltd. v. Yashwantrao Moyhite Krushna Sahakari Sakhar Karkhana.
88. Inasmuch as Section 27(2) saves the “rights of action against any
person” for passing off, the right of action which is saved is, clearly, the
right of action against a defendant for passing off its goods as those of the
plaintiff.
xxx xxx xxx
98. The requirement of likelihood of confusion permeates both the tort of
infringement as well as that of passing off. The principle of “initial
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interest confusion” requires the aspect of likelihood of confusion by the
consumer to be assessed at the point of “initial interest” i.e. when the
consumer first sees the goods of the defendant. This principle applies as
much to passing off as to infringement, as there is no qualitative difference
between confusion in one case and confusion in the other.”
35. I may profitably refer to the principles elucidated in respect of passing
off by the Supreme Court in Laxmikant (supra), including a very important
observation that a refusal to grant injunction in spite of availability of facts,
which are prima facie established by overwhelming evidence and material
available on record justifying the grant thereof, occasions failure of justice
and such injury to the Plaintiff would not be capable of being undone at a
later stage. Relevant passages are as follows:-
“8. It is common in trade and business for a trader or a businessman to
adopt a name and/or mark under which he would carry on his trade or
business. According to Kerly (Law of Trade Marks and Trade Names, 12th
Edn., para 16.49), the name under which a business trades will almost
always be a trade mark (or if the business provides services, a service
mark, or both). Independently of questions of trade or service mark,
however, the name of a business (a trading business or any other) will
normally have attached to it a goodwill that the courts will protect. An
action for passing-off will then lie wherever the defendant company’s
name, or its intended name, is calculated to deceive, and so to divert
business from the plaintiff, or to occasion a confusion between the two
businesses. If this is not made out there is no case. The ground is not to be
limited to the date of the proceedings; the court will have regard to the
way in which the business may be carried on in the future, and to its not
being carried on precisely as carried on at the date of the proceedings.
Where there is probability of confusion in business, an injunction will be
granted even though the defendants adopted the name innocently.
9. It will be useful to have a general view of certain statutory definitions
as incorporated in the Trade Marks Act, 1999. The definition of trade
mark is very wide and means, inter alia, a mark capable of being
represented graphically and which is capable of distinguishing the goods
or services of one person from those of others. Mark includes amongst
other things name or word also. Name includes any abbreviation of a
name.
10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such
business or services associated with a person acquire a reputation or
goodwill which becomes a property which is protected by courts. A
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competitor initiating sale of goods or services in the same name or by
imitating that name results in injury to the business of one who has the
property in that name. The law does not permit any one to carry on his
business in such a way as would persuade the customers or clients in
believing that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter person does
so fraudulently or otherwise. The reasons are two. Firstly, honesty and
fair play are, and ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name in connection
with his business or services which already belongs to someone else it
results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby resulting in injury.
11.Salmond & Heuston in Law of Torts (20th Edn., at p. 395) call this
form of injury as “injurious falsehood” and observe the same having been
“awkwardly termed” as “passing-off” and state:
“The legal and economic basis of this tort is to provide protection for
the right of property which exists not in a particular name, mark or
style but in an established business, commercial or professional
reputation or goodwill. So to sell merchandise or carry on business
under such a name, mark, description, or otherwise in such a manner
as to mislead the public into believing that the merchandise or
business is that of another person is a wrong actionable at the suit of
that other person. This form of injury is commonly, though awkwardly,
termed that of passing-off one’s goods or business as the goods or
business of another and is the most important example of the wrong of
injurious falsehood. The gist of the conception of passing-off is that
the goods are in effect telling a falsehood about themselves, are saying
something about themselves which is calculated to mislead. The law
on this matter is designed to protect traders against that form of unfair
competition which consists in acquiring for oneself, by means of false
or misleading devices, the benefit of the reputation already achieved
by rival traders.”
12. In Oertli v. Bowman [1957 RPC 388 (CA)] (at p. 397) the gist of
passing-off action was defined by stating that it was essential to the
success of any claim to passing-off based on the use of given mark or get-
up that the plaintiff should be able to show that the disputed mark or get-
up has become by user in the country distinctive of the plaintiff’s goods so
that the use in relation to any goods of the kind dealt in by the plaintiff of
that mark or get-up will be understood by the trade and the public in that
country as meaning that the goods are the plaintiff’s goods. It is in the
nature of acquisition of a quasi-proprietary right to the exclusive use of
the mark or get-up in relation to goods of that kind because of the plaintiff
having used or made it known that the mark or get-up has relation to his
goods. Such right is invaded by anyone using the same or some
deceptively similar mark, get-up or name in relation to goods not of
plaintiff. The three elements of passing-off action are the reputation of
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goods, possibility of deception and likelihood of damages to the plaintiff.
In our opinion, the same principle, which applies to trade mark, is
applicable to trade name.
13. In an action for passing-off it is usual, rather essential, to seek an
injunction, temporary or ad interim. The principles for the grant of such
injunction are the same as in the case of any other action against injury
complained of. The plaintiff must prove a prima facie case, availability of
balance of convenience in his favour and his suffering an irreparable
injury in the absence of grant of injunction. According to Kerly (ibid, para
16.16) passing-off cases are often cases of deliberate and intentional
misrepresentation, but it is well settled that fraud is not a necessary
element of the right of action, and the absence of an intention to deceive is
not a defence, though proof of fraudulent intention may materially assist a
plaintiff in establishing probability of deception. Christopher Wadlow
in Law of Passing-Off (1995 Edn., at p. 3.06) states that the plaintiff does
not have to prove actual damage in order to succeed in an action for
passing-off. Likelihood of damage is sufficient. The same learned author
states that the defendant’s state of mind is wholly irrelevant to the
existence of the cause of action for passing-off (ibid, paras 4.20 and 7.15).
As to how the injunction granted by the court would shape depends on the
facts and circumstances of each case. Where a defendant has imitated or
adopted the plaintiff’s distinctive trade mark or business name, the order
may be an absolute injunction that he would not use or carry on business
under that name (Kerly, ibid, para 16.97).
14. In the present case the plaintiff claims to have been running his
business in the name and style of Muktajivan Colour Lab and Studio since
1982. He has produced material enabling a finding being arrived at in
that regard. However, the trial court has found him using Muktajivan as
part of his business name at least since 1995. The plaintiff is expanding
his business and exploiting the reputation and goodwill associated with
Muktajivan in the business of colour lab and photo by expanding the
business through his wife and brother-in-law. On or about the date of the
institution of the suit the defendant was about to commence or had just
commenced an identical business by adopting the word Muktajivan as a
part of his business name although till then his business was being run in
the name and style of Gokul Studio. The intention of the defendant to make
use of the business name of the plaintiff so as to divert his business or
customers to himself is apparent. It is not the case of the defendant that he
was not aware of the word Muktajivan being the property of the plaintiff
or the plaintiff running his business in that name, though such a plea
could only have indicated the innocence of the defendant and yet no
difference would have resulted in the matter of grant of relief to the
plaintiff because the likelihood of injury to the plaintiff was writ large. It
is difficult to subscribe to the logic adopted by the trial court, as also the
High Court, behind reasoning that the defendants’ business was situated
at a distance of 4 or 5 km from the plaintiff’s business and therefore the
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plaintiff could not have sought for an injunction. In a city a difference of 4
or 5 km does not matter much. In the event of the plaintiff having acquired
a goodwill as to the quality of services being rendered by him, a resident
of Ahmedabad city would not mind travelling a distance of a few
kilometres for the purpose of availing a better quality of services. Once a
case of passing-off is made out the practice is generally to grant a prompt
ex parte injunction followed by appointment of Local Commissioner, if
necessary. In our opinion the trial court was fully justified in granting the
ex parte injunction to the plaintiff based on the material made available by
him to the court. The trial court fell in error in vacating the injunction and
similar error has crept in the order of the High Court. The reasons
assigned by the trial court as also by the High Court for refusing the relief
of injunction to the plaintiff are wholly unsustainable.
xxx xxx xxx
16. There was no delay in filing the suit by the plaintiff. The plaintiff filed
the suit with an averment that the defendants were about to commit an
injury to the plaintiff. The defendants took a plea that they had already
commenced the business with the offending trade name without specifying
actually since when they had commenced such business. This has to be
seen in the background that the defendants’ business earlier was
admittedly being carried on in the name and style of Gokul Studio. The
commencement of such business by the defendants could therefore have
been subsequent to the institution of the suit by the plaintiff and before the
filing of the written statement by the defendants. In such a situation, on the
plaintiff succeeding in making out a prima facie case, the court shall have
to concentrate on the likelihood of injury which would be caused to the
plaintiff in future and simply because the business under the offending
name had already commenced before the filing of the written statement or
even shortly before the institution of the suit would not make any
difference and certainly not disentitle the plaintiff to the grant of ad
interim injunction.
17. We are conscious of the law that this Court would not ordinarily
interfere with the exercise of discretion in the matter of grant of temporary
injunction by the High Court and the trial court and substitute its own
discretion therefor except where the discretion has been shown to have
been exercised arbitrarily or capriciously or perversely or where the
order of the courts under scrutiny ignores the settled principles of law
regulating grant or refusal of interlocutory injunction. An appeal against
exercise of discretion is said to be an appeal on principle. The appellate
court will not reassess the material and seek to reach a conclusion
different from the one reached by the court below solely on the ground
that if it had considered the matter at the trial stage it would have come to
a contrary conclusion. If the discretion has been exercised by the trial
court reasonably and in a judicial manner the fact that the appellate court
would have taken a different view may not justify interference with the
trial court’s exercise of discretion (see Wander Ltd. v. Antox India (P)
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Ltd. [1990 Supp SCC 727 : 1991 SCC (Cri) 145] and N.R.
Dongre v. Whirlpool Corpn. [(1996) 5 SCC 714] ). However, the present
one is a case falling within the well-accepted exceptions. Neither the trial
court nor the High Court have kept in view and applied their mind to the
relevant settled principles of law governing the grant or refusal of
interlocutory injunction in trade mark and trade name disputes. A refusal
to grant an injunction in spite of the availability of facts, which are prima
facie established by overwhelming evidence and material available on
record justifying the grant thereof, occasion a failure of justice and such
injury to the plaintiff as would not be capable of being undone at a later
stage. The discretion exercised by the trial court and the High Court
against the plaintiff, is neither reasonable nor judicious. The grant of
interlocutory injunction to the plaintiff could not have been refused,
therefore, it becomes obligatory on the part of this Court to interfere.”
36. The above position of law is reaffirmed by the Supreme Court in a
recent decision in Pernod Ricard India Private Limited and Another v.
Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701, holding that
passing off action is a common law remedy designed to protect the goodwill
and reputation of a trader against misrepresentation by another, which
causes or is likely to cause confusion among consumers, referring to an
observation in Singer Manufacturing Co. v. Loog, 1880 18 Ch.D. 395, that
no man is entitled to represent his goods as being the goods of another man.
It was also held that action of passing off is rooted in the principle that one
trader should not unfairly benefit from the reputation built by another and
the Supreme Court also culled out the distinctions and commonalities in an
action for infringement and passing off as follows:-
“29. Before delving further, it is important to note that a passing off action
is a common law remedy designed to protect the goodwill and reputation
of a trader against misrepresentation by another, which causes or is likely
to cause confusion among consumers. As observed by James L.J, in Singer
Manufacturing Co v. loog, “no man is entitled to represent his goods as
being the goods of another man”. A passing off action applies to both
registered and unregistered marks, and is rooted in the principle that one
trader should not unfairly benefit from the reputation built by another. In
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trademarks. It is intended to safeguard the exclusive proprietary rights
that registration confers.
29.1. A key distinction between the two lies in the requirements of proof.
In an infringement action, the plaintiff is not required to establish the
distinctiveness or goodwill of the mark – registration, by itself, affords the
right to seek protection. If the impugned mark is shown to be identical or
deceptively similar to the registered mark, no further evidence of
confusion or deception is necessary. However, in a passing off action, the
plaintiff must prove: (i) the existence of goodwill or reputation in the
mark, (ii) a misrepresentation made by the defendant, and (iii) a
likelihood of damage to the plaintiff’s goodwill.
29.2. While an intent to deceive is not a necessary element in either action,
passing off requires proof of a likelihood of confusion or deception. It is
well settled that actual deception or damage need not be proved – the test
is whether confusion is probable in the mind of the average consumer due
to the similarity in the marks or the overall get-up of the goods.
29.3. Another key distinction is that in a passing off action, the defendant’s
goods need not be identical to those of the plaintiff – they may be allied or
even unrelated, provided the misrepresentation is such that it affects or is
likely to affect the plaintiff’s business reputation. In contrast, infringement
requires that the unauthorised use relate to the same or similar goods or
services for which the trademark is registered.
29.4. Additionally, in an infringement suit, it is not necessary for the
plaintiff to establish use of the mark; even a registered proprietor who has
not commenced use can sue for infringement. However, in a passing off
action, the plaintiff must demonstrate prior and continuous use, and that
the mark has acquired distinctiveness in the minds of the public.
29.5. Thus, while both actions seek to prevent unfair competition and
protect against consumer confusion, an action for infringement offers
broader statutory protection based solely on registration and ownership.
In contrast, passing off is grounded in equitable principles and imposes a
higher evidentiary burden to safeguard commercial goodwill under
common law.”
37. Going back, in Cadila Health Care Ltd. v. Cadila Pharmaceuticals
Ltd., (2001) 5 SCC 73, the Supreme Court laid down the parameters/factors
to be applied by the Court testing an action of passing off for deciding the
question of deceptive similarity of competing marks and I quote:-
“35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of deceptive
similarity the following factors are to be considered:
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(a) The nature of the marks i.e. whether the marks are word marks or
label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade
marks.
(d) The similarity in the nature, character and performance of the
goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree
of care they are likely to exercise in purchasing and/or using the
goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks.
36. Weightage to be given to each of the aforesaid factors depending upon
facts of each case and the same weightage cannot be given to each factor
in every case.”
38. Coming back to the instant case, the first issue that needs examination
is whether the N-marks of the Plaintiff and nu:beat marks of the Defendants
are deceptively similar. For ready reference, the comparative chart of the
competing marks is as follows:-
39. It is trite that while comparing the rival marks, in order to determine
whether they are deceptively similar, the marks have to be seen as a whole.
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In Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959
SCC OnLine SC 11, the Supreme Court held that the two marks
GLUCOVITA and GLUVITA were phonetically and visually similar and
likely to mislead or confuse an average consumer of imperfect recollection
and granted injunction, observing that the difference of ‘CO’ was not
enough to distinguish the two marks. In Amritdhara Pharmacy v. Satya
Deo Gupta, 1962 SCC OnLine SC 13, the marks ‘Amritdhara’ and
‘Lakshmandhara’ were held to be deceptively similar, owing to structural
and phonetic resemblance, testing the marks on the touchstone of anti-
dissection rule and emphasizing that class of consumers was a relevant
factor in comparing the trademarks. In Kaviraj Pandit Durga Dutt Sharma
v. Navaratna Pharmaceuticals Laboratories, 1964 SCC OnLine SC 14, the
Supreme Court underscored the anti-dissection rule and cautioned against
isolating individual parts of a composite mark and this position stands
reaffirmed recently in Pernod Ricard (supra), where the Supreme Court
observed that Courts are not expected to adopt a mechanical, side-by-side
comparison of the marks. Earlier judgments in Khoday Distilleries Limited
(now known as Khoday India Limited) v. Scotch Whisky Association and
Others, (2008) 10 SCC 723 and Parle Products (P) Ltd. v. J.P. and Co.,
Mysore, (1972) 1 SCC 618, also highlight the same test for mark to mark
comparison of the rival marks.
40. Testing the marks on these principles, I am of the prima facie view
that while the logo marks and are not
deceptively similar and there is enough added matter to the alphabet ‘n’ to
distinguish Plaintiff’s N-marks, the other two impugned logo marks
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and are deceptively similar to the N-marks ,
, and of the Plaintiff. As can be seen, on an overall
comparison, taking the marks as a whole, letter ‘n’ is the dominant part of
the marks and and is identical to the N-marks and the
defence of the Defendants that the added colon is sufficient to distinguish, is
wholly untenable. To any average consumer with imperfect recollection, the
prominent and memorable component of the two marks will be the letter ‘n’
and the colon, which constitutes an additional element will be inconspicuous
for being retained in an imperfect memory. The distinction sought to be
brought out by the Defendants that ‘n:’ marks use a lower case ‘n’ while
Plaintiff’s ‘N’ is an upper case, does not aid the Defendants as this does not
materially diminsh the likelihood of deception. The distinction between the
upper-case and lower-case lettering, particularly, in the given facts to which
I shall advert later, is one of typography rather than substance. In the market
place, where decisions to purchase are often made on fleeting visual
impressions or phonetic similarity, consumers are unlikely to attach
significance to such a fine distinction of a colon punctuation or font size and
it is evident that the broad and overall visual impression conveyed by
Defendants’ ‘n:’ marks will be one of letter ‘n’ and will be associated with
the ‘N’ of the Plaintiff, as a source identifier. It is also pertinent to note one
other submission of the Plaintiff that the colon is in fact not intended to be a
punctuation mark but is a stylized representation of the letter ‘B’ and while
this argument may not appeal at the first blush but a closer look of the
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mark, does not allow brushing aside of this argument lightly and
more particularly, in light of Defendant No.1’s own response to the
Examination Reports issued by the Registrar of Trade Marks at the time of
registration under Nos. 5239238, 5666070 and 5666069 that is a
combination of letter ‘n’ and letter ‘B’, where ‘B’ is represented in the style
of a colon. If this position is accepted then prima facie there is no scope of
contest on the deceptive similarity by the Defendants as in this event the
mark will be read phonetically as ‘NB’, which is Plaintiff’s mark declared as
a well-known mark by this Court. It may also be noted that at the threshold
stage of the proceedings in the suit, Defendants have given up the use of
mark as a standalone mark, realising the close resemblance to
Plaintiff’s N-marks.
41. Coming to misrepresentation, which is the next ingredient of passing
off, the Court has to see the similarity in the rival marks keeping in mind the
aspect of resultant confusion and the classical test is whether an average
consumer of imperfect recollection who comes across one mark at one point
of time and the other later, is likely to be placed in a state of confusion. In
Under Armour Inc v. Anish Agarwal and Another, 2025 SCC OnLine Del
3784, the Division Bench of this Court underscored the ‘initial interest
confusion’ test which recognises that confusion in the minds of customers
arises only at the stage prior to consummating the purchase albeit at the time
of completing the transaction, there may not be doubt in consumer’s mind
regarding the origin of the goods, however, this is sufficient to satisfy the
condition of deceptive similarity. Division Bench found deceptive similarity
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between the marks UNDER ARMOUR and AERO ARMOUR and observed
that given the degree of similarity between the competing marks, nature of
goods and use of similar trade channels, there was a likelihood of confusion
and even if it was to be accepted, for the sake of argument, that there was no
likelihood of confusion at the stage of purchase, there remained a possibility
of confusion at the initial stage. The fact that the consumer is confused even
if for a moment, would be sufficient and the fact that on closer examination
of products and on making further enquiries, he may find that the impugned
trademark is not associated with the mark pertaining to goods which he
intended to buy, will not take away the fact that the impugned mark had a
similarity.
42. In Madan Lal Purushottam Das Foods Private Limited v. B.L. Agro
Industries Limited, 2025 SCC OnLine Del 6811, the Division Bench of this
Court reaffirmed that likelihood of confusion has to be assessed from the
initial interest stand point and does not require the consumer to be
completely befuddled and all that is required is that he is placed in a state of
‘wonderment’. In this context, I may refer to the following passages:-
“23.3 The “likelihood of confusion”, moreover, has to be assessed from
an “initial interest” standpoint. In other words, it is the initial
impression that the defendant’s mark conveys to the average consumer of
imperfect recollection, which is relevant. Further, all that is required
is likelihood of confusion, not actual confusion. In other words, if an
average consumer of imperfect recollection comes across the plaintiff’s
mark at one point of time, and the defendant’s mark at another, later,
point, it has to be assessed whether such a consumer would, on initially
viewing the respondent’s mark, be placed in a state of confusion as to
whether the defendant’s mark was the same as that of the plaintiff which
he had seen earlier – or was associated with it (to which aspect we would
allude immediately).
23.4 Further, “confusion” does not require the consumer to be completely
befuddled. All that is required is that he is placed in a state of
“wonderment”. This is best expressed in the following passage from Shree
Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd.13,
by a Division Bench of this Court:
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“6. When a person knows that the mark in question does not originate
from the senior user but the senior user is called to mind, then it’s a
step before confusion. If on the other hand, the consumer is in a state
of wonderment if there’s a connection, this is confusion. Further, if this
consumer then purchases the junior users product, this is then
deception.”
Thus, if the consumer, of average intelligence and imperfect recollection,
on coming across the defendant’s mark, is placed in a state of wonderment
if there is a connection between the said mark and the mark of the
plaintiff, it amounts to “likelihood of confusion”.
xxx xxx xxx
23.6 In the present case, when viewed overall as whole marks, we are of
the opinion that such an average consumer of imperfect recollection
would, if he has first seen the respondent’s mark and, sometime later,
comes across the appellant’s mark, at the least wonder whether the two
marks are not associated, inter alia because of the common ox tethered to
the grinder motif and the similarity between the marks (“BAIL
KOLHU”) and (“AAROHAL KOLHU”).
xxx xxx xxx
23.7.3 Having thus held that a consumer would not bisect the marks into
“Amrit” and “Dhara” in one case and “Lakshman” and “Dhara” in the
other case, and ascribe, to them, the meanings “stream of nectar” and
“current of Lakshman”, the Supreme Court nonetheless held that, owing
to the overall phonetic similarity between the marks, there was a
likelihood of confusion.
23.7.4 This decision is, in our view, squarely applicable to the facts at
hand. We are conscious that the respondent has, in its plaint, specifically
stated that it did not object to the use, by the appellant, of the mark
“AROHUL KOHLU” per se. We are citing Amrit Dhara Pharmacy only
to point out that, when viewed as whole marks, there is every likelihood of
the average consumer, at the very least, presuming an association between
the marks, given the fact that both the marks employ the ox tethered to the
grinder logo accompanied by words which are similar, i.e. BAIL KOLHU
and AROHUL KOHLU. The average consumer is, therefore, likely to
presume that the appellant’s AROHUL KOHLU product is either from the
same stable as the respondent’s BAIL KOLHU product, especially as both
marks use the common ox-grinder motif, or that there is an association
between the marks.”
43. If one looks at the rival marks in the instant case, there is every
likelihood of confusion applying the test of a man of average intelligence
with imperfect recollection and the identitiy of rival goods materially
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enhances the confusion. Both parties deal in footwear, which are directed to
the same segment of consumers through similar or overlapping channels of
trade. There is no gainsaying that where goods are identical even a lesser
degree of similarity in the marks may suffice to generate confusion. Looking
at the impugned marks and , there is a high probability that
consumers may believe that these marks are yet another variant of Plaintiff’s
N-marks, considering that Plaintiff has been coming up with several variants
or that Defendants’ goods constitute a new range of footwear launched in
association or affiliation with the Plaintiff or under a collaboration
arrangement and in either case an unwarranted and unlawful association will
be established with the Plaintiff, causing confusion, owing to blatant
misrepresentation amongst the public.
44. Coming to next and the third ingredient of passing off i.e., goodwill,
Plaintiff has asseverated and placed on record overwhelming material to
show the immense goodwill and reputation earned from sale of its products
under the N-marks, globally and in India. This includes revenues earned
from 2013-2024 under the N-marks; substantial expenses incurred for the
same period; wide presence on social media platforms; immense coverage
by media over the years; brand endorsements by international political
leaders, celebrities in the field of music, sports and cinema as also
entrepreneurs; receipt of numerous awards including some highly
prestigious ones; large number of retail brick and morter stores; and
substantial sales through its own dedicated websites and third-party e-
commerce websites. Significantly, the goodwill and reputation of the
Plaintiff garnered over decades by sale of products under N-marks as also
distinctiveness of the marks, was judicially recognised by this Court in
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Jitender Kumar (supra), when the shaded logo was declared as a
well-known mark. As noted above, Plaintiff’s NEW BALANCE and NB
marks have also been declared as well-known in New Balance Immigration
(supra).
45. Defendants attempted to justify the adoption of the nu:beat marks
including the marks and on the ground that the mark
nu:beat is the brain child of Johanna Muller, a famous songwriter and
musician and the letters ‘nu’ come from the Greek symbol used for
frequency in Physics and audio engineering to represent the rate at which the
sound wave oscillates. Be that as it may, it does not explain adoption of the
logo marks and where the dominant part is ‘n’ and ‘u’ and
‘beat’ are missing. The adoption of these marks is only to sail as close as
possible to Plaintiff’s N-marks, conscious of the goodwill and reputation
generated by the use of the marks and their distinctiveness, so as to encash
on the formidable goodwill of the Plaintiff and be it noted, at the cost of
repetition the identity of goods enhances the likelihood of confusion. In
Cadila (supra), the Supreme Court held that in testing a claim of passing
off, nature of marks, degree of resemblance, nature of goods, class of
purchasers and overall probability and likelihood of deception have to be
seen holistically and prima facie in the present case, taking into account the
goodwill of the Plaintiff, deceptive similarity of N-marks of the Plaintiff and
and marks of the Defendants, the element of
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misrepresentation and likelihood of confusion, Plaintiff has made out a
prima facie case for grant of interim injunction.
46. There is another crucial factor which weighs heavily in favour of the
Plaintiff and that is the prior use of the N-marks. From the narrative of facts,
it clearly emerges that Plaintiff is the prior user of the N-marks in India. In
fact, in the written statement the stand of the Defendants is that the nu:beat
marks were used only from April, 2024. By the test of prior user also,
Plaintiff is entitled to succeed in its claim for passing off. The superior right
of a prior user has been judicially recognised right from the judgment in S.
Syed Mohideen (supra) to the judgment in N.R. Dongre and Others v.
Whirlpool Corporation and Another, (1996) 5 SCC 714 and now the recent
judgment of the Supreme Court in Pernod Ricard (supra). In Neon
Laboratories Limited v. Medical Technologies Limited and Others, (2016)
2 SCC 672, the Supreme Court observed that ‘first in the market’ test has
always enjoyed pre-eminence and relevant passages are as follows:-
“11. We must hasten to clarify that had the appellant-defendant
commenced user of its trade mark ROFOL prior to or even simultaneous
with or even shortly after the respondent-plaintiffs’ marketing of their
products under the trade mark PROFOL, on the appellant-defendant being
accorded registration in respect of ROFOL which registration would
retrospectively have efficacy from 19-10-1992, the situation would have
been unassailably favourable to it. What has actually transpired is that
after applying for registration of its trade mark ROFOL in 1992, the
appellant-defendant took no steps whatsoever in placing its product in the
market till 2004. It also was legally lethargic in not seeking a curial
restraint against the respondent-plaintiffs. This reluctance to protect its
mark could well be interpreted as an indication that the appellant-
defendant had abandoned its mark at some point during the twelve-year
interregnum between its application and the commencement of its user,
and that in 2004 it sought to exercise its rights afresh. It would not be
unfair or fanciful to favour the view that the appellant-defendant’s delayed
user was to exploit the niche already created and built-up by the
respondent-plaintiffs for themselves in the market. The “first in the
market” test has always enjoyed pre-eminence. We shall not burden this
judgment by referring to the several precedents that can be found apposite
to the subject. In the interest of prolixity we may mention only N.R.
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Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5
SCC 714] and Milmet Oftho Industries v. Allergan Inc. [Milmet Oftho
Industries v. Allergan Inc., (2004) 12 SCC 624] In Whirlpool [N.R.
Dongre v. Whirlpool Corpn., (1996) 5 SCC 714] , the worldwide prior
user was given preference nay predominance over the registered trade
mark in India of the defendant. In Milmet [Milmet Oftho
Industries v. Allergan Inc., (2004) 12 SCC 624] , the marks of
pharmaceutical preparation were similar but the prior user worldwide
had not registered its mark in India whereas its adversary had done so.
This Court approved the grant of an injunction in favour of the prior user.
Additionally, in the recent decision in S. Syed Mohiden v. P. Sulochana
Bai [S. Syed Mohiden v. P. Sulochana Bai, (2016) 2 SCC 683 : (2015) 7
Scale 136] this Court has pithily underscored that the rights in a passing-
off action emanate from common law and not from statutory provisions,
nevertheless the prior user’s rights will override those of a subsequent
user even though it had been accorded registration of its trade mark. The
learned counsel for the appellant-defendant has endeavoured to minimise
the relevance of Whirlpool [N.R. Dongre v. Whirlpool Corpn., (1996) 5
SCC 714] as well as Milmet [Milmet Oftho Industries v. Allergan Inc.,
(2004) 12 SCC 624] by drawing the distinction that those trade marks had
attained worldwide reputation. However, we think that as world shrinks
almost to a global village, the relevance of the transnational nature of a
trade mark will progressively diminish into insignificance. In other words,
the attainment of valuable goodwill will have ever increasing importance.
At the present stage, the argument in favour of the appellant-defendant
that we find holds more water is that in both Milmet [Milmet Oftho
Industries v. Allergan Inc., (2004) 12 SCC 624] and Whirlpool [N.R.
Dongre v. Whirlpool Corpn., (1996) 5 SCC 714] , as distinct from the case
before us, the prior user of the successful party predated the date of
application for registration of the competing party. The question to
examine, then, would be whether prior user would have to be anterior to
the date of application or prior to the user by the appellant-defendant. In
other words, the question before the Court would remain whether the
situation on the date of application for registration alone would be
relevant, or whether the developments in the period between this date and
the date of grant of registration would have any bearing on the rights of
the parties. All these considerations will be cast into a curial cauldron to
be appreciated by the Court before which the suit is being contested. In
these premises, we cannot conclude that a prima facie case has not been
disclosed by the respondent-plaintiffs.
12. Since we are confronted with the legal propriety of a temporary
injunction, we must abjure from going into minute details and refrain from
discussing the case threadbare, in order to preclude rendering the suit
itself an exercise in futility and the decision therein a foregone conclusion.
All that we would say in the present appeal is that since the respondent-
plaintiffs have alleged, and have prima facie supported with proof, that
they had already been using their trade mark well before the attempted
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user of an identical or closely similar trade mark by the appellant-
defendant, the former would be entitled to a temporary injunction, in light
of the abovementioned “first in the market” test. We find that the
respondent-plaintiffs have made out a prima facie case. The two other
factors in an interim injunction, namely, the balance of convenience and
an irreparable loss, are both in favour of the respondent-plaintiffs, given
the potential loss of goodwill and business they could suffer should an
injunction be denied. The appellant-defendant has been injuncted from
using the mark ROFOL since 2005, after having launched products bearing
the mark only in the previous year, so the balance of convenience is in
favour of allowing the injunction to continue. In Milmet [Milmet Oftho
Industries v. Allergan Inc., (2004) 12 SCC 624] , this Court had taken
note of the fact that the unsuccessful litigating party had in the duration of
the litigation started using another mark, and found that this would prima
facie assume significance in assessing “irreparable loss”.”
47. In Sana Herbals Private Limited v. Mohsin Dehlvi and Another,
2026 SCC OnLine Del 21, the Division Bench was examining a claim of
infringement and passing off in an appeal against an order of the learned
District Judge, dismissing Appellant’s application for interim injunction.
Holding that no case of infringement would lie as the Respondents’ mark
NOKUF was also registered, the Court proceeded to examine the claim for
passing off. Noting that Respondents had commenced user of NOKUF
trademark in 1994, which was even prior to incorporation of the Appellant
albeit the registration was granted on 22.09.2020 dating back to 03.06.1996,
it was held that the case was clearly in favour of the Respondents being the
prior user of the mark. Applying the principles elucidated in the aforesaid
judgements to the instant case, Plaintiff scores higher even on this count
being the prior user in India.
48. The argument of the Defendants that by placing special elements on
the sides of the shoes such as nu:beat on the tongue, the confusion is
completely ruled out, cannot be accepted. It is common knowledge that
shoes, more particularly, running shoes/sneakers are often bought from the
visual impression one gets by looking at the footwear from the outside and
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the mark of the brand prominently displayed there and therefore, the initial
interest confusion test will apply in all fours to the present case and this is
substantiated by one look at the manner in which the mark is
displayed on the footwear . What enhances the belief that
there is dishonest adoption is the placement of the mark, which is identical
to the manner in which the Plaintiff displays its N-marks and for ready
reference, one screenshot is extracted hereunder:-
49. There is also no merit in the argument of the Defendants that no
monopoly can be claimed on the letter ‘N’, in the facts of the present case,
where as noted above, the N-marks have acquired secondary meaning owing
to extensive use over decades and in fact many that letters stylized as logos
have been registered on acquiring secondary meaning such as
(McDonalds) and (Hermes).
50. There is also no merit in the argument that ‘N’ is common to Register
and trade. Defendants have relied on a search report by Mike Legal. As
rightly flagged by the Plaintiff, no reliance can be placed on this report for
two reasons. Firstly, the platform does not constitute an official source of
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trademark record and secondly, in Novartis AG (supra), this Court has held
that a mere filing of search report from Trade Marks Office does not prove
actual user and hence, in the absence of valid and cogent evidence of use of
the said mark, this submission cannot be accepted. It is trite that common to
Register is qualitatively different from common to trade inasmuch as one
may register a mark but leave it unused. In Glaxosmithkline
Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt. Ltd. and Another, 2023
SCC OnLine Del 2065, this Court held that mere registrations by third-
parties cannot divest Plaintiff’s mark of distinctiveness or disentitle the
Plaintiff to injunction. If Defendant pleads that the mark is common to trade
or publici juris, the onus is on him to establish the assertion by showing
substantial use by the proprietors of that mark, extent of trade in products
bearing the said mark and how the mark poses a threat to the distinctiveness
of the mark asserted by the Plaintiff, else, the Court cannot return a finding
on this aspect. To the same effect are the decisions in Pankaj Goel (supra)
and Express Bottlers (supra). To avoid prolixity in this context, I may refer
to the judgment of the Division Bench of this Court in Madan Lal (supra),
where the Court held as follows:-
“26.3 Re. plea that the mark is common to the trade
26.3.1 The attempt of Ms. Trehan to contend that the ox-with-grinder logo
is common to the trade, by placing on record a plenitude of marks having
similar features is legally unsound, for more than one reason.
26.3.2 In the first place, the proscription envisaged in Section 17(2)(b) is
to any matter, forming part of a mark, which is common to the trade. The
use of the article “the” is often overlooked. In order to successfully invoke
the defence based on this proscription, therefore, the defendant would
have to show that the mark asserted by the plaintiff, or the feature of the
mark over which the plaintiff claims exclusivity, is common to the trade in
which the rival marks are used. In other words, the defendant cannot
successfully invoke this clause by merely citing a plenitude of marks. The
defendant would also have to establish that the marks are used in the same
trade in which the plaintiff and defendant are engaged, and with which the
dispute is concerned.
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26.3.3 In the present case, the usage to which the marks reflected in the
screenshot provided by Ms. Trehan, and extracted in para 20(iii) supra, is
put, is unknown. It is not known, therefore, whether these marks are
common to the trade of mustard oil extraction, with which the dispute is
concerned. Even for this reason, therefore, the screenshot provided by Ms.
Trehan would not suffice to make out a defence to the allocation of
infringement, predicated on Section 17(2)(b) of the Trade Marks Act.
26.3.4 The second reason why this plea cannot sustain is relatable to the
law declared by the Division Bench of this Court in Pankaj Goel v. Dabur
India Ltd.. The rival marks before the Court, in that case, were HAJMOLA
and RASMOLA. The defendant sought to urge that the common suffix
‘MOLA’ was publici juris and common to the trade and, inasmuch as the
only similarity between the rival marks was this common MOLA suffix, no
case of deceptive similarity could be said to exist. Addressing this
submission, the Division Bench held thus:
“21. As far as the appellant’s argument that the word MOLA is
common to the trade and that variants of MOLA are available in the
market, we find that the appellant has not been able to prima facie
prove that the said ‘infringers’ had significant business turnover or
they posed a threat to Plaintiff’s distinctiveness. In fact, we are of the
view that the respondent/Plaintiff is not expected to sue all small type
infringers who may not be affecting Respondent/Plaintiff business. The
Supreme Court in National Bell v. Metal Goods, has held that a
proprietor of a trademark need not take action against infringement
which do not cause prejudice to its distinctiveness. In Express Bottlers
Services Pvt. Ltd. v. Pepsi Inc., it has been held as under:–
“….To establish the plea of common use, the use by other persons
should be shown to be substantial. In the present case, there is no
evidence regarding the extent of the trade carried on by the
alleged infringers or their respective position in the trade. If the
proprietor of the mark is expected to pursue each and every
insignificant infringer to save his mark, the business will come to a
standstill. Because there may be occasion when the malicious
persons, just to harass the proprietor may use his mark by way of
pinpricks…. The mere use of the name is irrelevant because a
registered proprietor is not expected to go on filing suits or
proceedings against infringers who are of no consequence… Mere
delay in taking action against the infringers is not sufficient to hold
that the registered proprietor has lost the mark intentionally unless
it is positively proved that delay was due to intentional
abandonment of the right over the registered mark. This Court is
inclined to accept the submissions of the respondent No. 1 on this
point… The respondent No. 1 did not lose its mark by not
proceeding against insignificant infringers…”
22. In fact, in Dr. Reddy Laboratories v. Reddy Paharmaceuticals, a
Single Judge of this Court has held as under:–
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“…the owners of trade marks or copy rights are not expected to
run after every infringer and thereby remain involved in litigation
at the cost of their business time. If the impugned infringement is
too trivial or insignificant and is not capable of banning their
business interests, they may overlook and ignore petty violations
till they assume alanning proportions. If a road side Dhaba puts
up a board of “Taj Hotel”, the owners of Taj Group are not
expected to swing into action and raise objections forthwith. They
can wait till the time the user of their name starts harming their
business interest and starts misleading and confusing their
customers.””
26.3.5 Two legal postulates emerge from these passages.
26.3.6 The first is that the mere fact that the plaintiff’s asserted mark may
have been infringed by others as well is no ground to deny an injunction
against the defendant, where the defendant is also found to be an
infringer. This is for the simple reason that it is for the plaintiff to choose
his defendant, and there is no legal obligation on a plaintiff to sue every
infringer. The plaintiff is not answerable as to why it has not proceeded
against another infringer. There may be several reasons. It is, for
example, quite possible that the other infringer is too small a player as to
pose any threat to the plaintiff or its trademark and that, therefore, it
makes no commercial sense to proceed against it. Thus, a defendant
cannot escape the consequences of infringement merely by pleading that
there are other infringers in the market.
26.3.7 The second legal postulate which emerges from the decision
in Pankaj Goel is that a mark or a part of a mark, cannot be pleaded to be
common to the trade by merely providing examples of registrations
existing on the Register of the Registrar of Trade Marks, which may be
identical or similar to the plaintiff mark. The expression contained in
Section 17(2)(b) is “common to the trade”. The defendant, in order to seek
sanctuary behind this clause, would have to establish that the mark being
used by him, and which is alleged by the plaintiff to be infringing in
nature, has become common to the trade in which that mark is used by the
defendant. In other words, it would have to be shown, by the defendant,
that the examples of usage of the same mark, by others, is because, in the
trade – and not merely on the Register of Trade Marks – the user of that
mark has become common. Pankaj Goel makes it clear that, for this, the
defendant would have to establish that the other infringers had significant
business turnover or posed a threat to the distinctiveness of the plaintiff’s
asserted trade mark. Mere reference to registrations, present on the
Register of the Registrar of Trade Marks, are entirely insufficient in this
regard. These registrations do not even indicate actual user of the
registered marks. The defendant would have to show not only that the
registered marks are being used, but that the user is significant and poses
a business threat to the plaintiff’s asserted registered trademark.
Empirical data in this regard has to be produced by the defendant, failing
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which the plea that the mark, or the part of the mark which, according to
the defendant, has become common to the trade, must fail.
26.3.8 No such material has been cited or placed on record by Ms.
Trehan. The submission, by her, that there are a number of registered
trade marks reflecting an ox tethered to a grinding wheel cannot,
therefore, advance her case.”
51. The judgments relied upon by the Defendants are also distinguishable.
In Relaxo Footwears (supra), Plaintiff had clearly stated that it was not
claiming monopoly over the letter ‘X’ but only in its stylization and the rival
parties were actually not using the X device mark as an isolated
identification but were selling goods under the principal brand names and in
this context, the Court held that there was no confusion. In Super Cassettes
(supra), the legal proposition is that marks have to be seen as a whole and
under Section 17 of 1999 Act, registration of a composite mark confers no
exclusive right over a single letter forming part of it and no monopoly can
be claimed. There can be no quarrel with the proposition of law, however, in
the present case the N-marks of the Plaintiff as stated above, have acquired a
secondary meaning with extensive use over the decades. In J.R. Kapoor
(supra), the comparison was between prefixes and suffixes on the
touchstone of phonetic and visual similarity, which is not the case here.
52. For all the aforesaid reasons, I am of the prima facie view that
Plaintiff has made out a prima facie case for injunction. Balance of
convenience also lies in favour of the Plaintiff and against the Defendants
owing to the prior and extensive use of the N-marks, which have become
distinctive of Plaintiff’s products and Defendants started using the marks
and only recently in April, 2024 in India. Irreparable
injury and harm shall be caused to the Plaintiff and the distinctiveness of its
marks shall be eroded and diluted, if interim injuction is not granted.
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53. Accordingly, the present application is allowed, restraining the
Defendants and all others acting on their behalf from manufacturing, selling,
offering for sale, advertising and/or marketing the impugned goods under
the impugned marks and and/or any other mark
deceptively similar to Plaintiff’s marks , , and
, amounting to passing off, during the pendency of the suit with
the usual mantra that the observations in the present judgment are only
tentative and prima facie and will have no bearing on the final adjudication
of the suit.
54. Application stands disposed of.
JYOTI SINGH, J.
JULY 13 , 2026/YA
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