The Delhi High Court considered an appeal arising out of a trademark dispute between two pharmaceutical entities concerning the use of the mark “NOKUF” in relation to cough syrup products. The dispute originated when Sana Herbals Private Limited approached the Commercial Court seeking interim relief against Dehlvi Remedies Private Limited, alleging that the latter’s use of the mark “NOKUF” amounted to infringement and passing off in light of Sana Herbals’ claimed rights over the mark “NOKUFSYRUP”. Sana Herbals asserted that it was the lawful proprietor of the trademark and that the continued use of “NOKUF” by Dehlvi Remedies was likely to cause confusion in the market, thereby harming its business interests. The Commercial Court declined to grant interim injunctive relief, leading Sana Herbals to challenge that order before a Division Bench of the Delhi High Court.
The Division Bench, while examining the appeal, focused on the factual background relating to the adoption and use of the competing trademarks by the parties. It emerged from the record that Dehlvi Remedies claimed to have adopted and used the mark “NOKUF” as early as 1994 for its cough syrup products. In contrast, Sana Herbals relied on a later trademark registration and an assignment deed to support its claim of ownership and exclusive rights. The High Court observed that the question of prior use was central to determining whether the plaintiff was entitled to interim relief. The Bench noted that under trademark law, particularly in cases of passing off, prior and continuous use of a mark carries significant weight, often overriding subsequent registration.
The Court examined the legal position relating to trademark infringement and passing off and clarified that the present case could not be treated as a straightforward infringement action. Since Dehlvi Remedies held a registration for the mark “NOKUF”, the Court relied on the settled legal principle that no action for infringement lies against the registered proprietor of a trademark. Reference was made to binding precedent which establishes that when a defendant is the registered owner of a trademark, a plaintiff cannot seek an injunction on the ground of infringement alone. However, the Court reiterated that a claim for passing off remains maintainable even against a registered proprietor, provided the necessary ingredients are established.
While evaluating the passing off claim, the High Court assessed whether Sana Herbals had demonstrated the existence of goodwill and reputation in the mark prior to the defendant’s use. The Court emphasized that for a passing off action to succeed, the plaintiff must show that it had acquired goodwill in the mark before the defendant adopted or used a similar mark, and that the defendant’s use was calculated to exploit that goodwill. In the present case, the Court found that Dehlvi Remedies’ use of “NOKUF” predated the plaintiff’s asserted rights. The Bench noted that Sana Herbals had not objected to the defendant’s use of the mark during the initial years of its use, which undermined the plaintiff’s claim that its goodwill was being misappropriated.
The argument advanced by Sana Herbals that Dehlvi Remedies had not used the mark continuously and had therefore lost its rights was also considered by the Court. The Bench held that even sporadic or intermittent use of a mark, if it predates the plaintiff’s adoption, is sufficient to establish prior user rights for the purpose of resisting an interim injunction. The Court observed that what matters in such cases is not the volume or continuity of use, but the fact that the defendant’s use commenced earlier in time. As long as the defendant can demonstrate prior adoption and use, the plaintiff cannot claim superiority merely on the basis of subsequent registration.
The High Court also addressed the reliance placed by Sana Herbals on an assignment deed executed in 1999, through which it claimed to have acquired rights in the mark. Upon scrutiny, the Court noted that the assignment deed did not explicitly transfer the goodwill associated with the trademark. The Bench observed that at the time when the assignment deed was executed, the governing law did not permit assignment of a trademark without goodwill. In the absence of a clear transfer of goodwill, the Court held that the assignment deed could not, at the interim stage, be treated as conferring enforceable rights superior to those of the defendant. This finding further weakened the plaintiff’s claim to injunctive relief.
Another contention raised by Sana Herbals was that Dehlvi Remedies had abandoned the mark due to non-use for a certain period. The High Court rejected this argument, holding that issues relating to non-use and abandonment of a registered trademark fall within the domain of rectification proceedings before the trademark registry. The Bench clarified that an allegation of abandonment cannot, by itself, justify the grant of an interim injunction in a passing off action. The appropriate remedy for challenging the validity or continued existence of a trademark registration on the ground of non-use lies in seeking rectification, not in seeking interlocutory relief from a civil court.
The Court further observed that Dehlvi Remedies had demonstrated a consistent assertion of its rights in the mark “NOKUF” and had secured trademark registration in its favour at an earlier point in time. This fact reinforced the defendant’s claim of legitimacy and prior entitlement. The High Court noted that the presence of a registered trademark in favour of the defendant, coupled with evidence of earlier use, substantially diminished the plaintiff’s chances of establishing a prima facie case for interim relief.
In assessing whether the requirements for granting an interim injunction were satisfied, the High Court considered the standard principles of prima facie case, balance of convenience, and irreparable harm. The Bench concluded that Sana Herbals had failed to establish a prima facie case, as its claim was overshadowed by the defendant’s prior use and registration. The balance of convenience was also found to be in favour of Dehlvi Remedies, as restraining a long-standing user from continuing its business would cause greater hardship than allowing the plaintiff to pursue its claims through trial. The Court also found no material to suggest that Sana Herbals would suffer irreparable injury that could not be compensated if interim relief was denied.
On the basis of these findings, the Division Bench upheld the order of the Commercial Court and dismissed the appeal filed by Sana Herbals. The High Court affirmed that no grounds were made out to interfere with the refusal to grant an interim injunction. As a result, Dehlvi Remedies was permitted to continue using the mark “NOKUF” for its cough syrup products pending the final adjudication of the dispute. The judgment reaffirmed the importance of prior use in trademark law and underscored the limitations of relying solely on subsequent registration or assignment documents when seeking urgent injunctive relief.
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