FAO(OS) (COMM) 7/2024 Page 1 of 21

$

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment Reserved on: 29.04.2026

Judgment delivered on: 26.05.2026

Judgment uploaded on: 26.05.2026

+ FAO(OS) (COMM) 7/2024 & CM APPL. 2820/2024, CM APPL.

14739/2026

M/S VAJIRAM AND RAVI ISA STUDY

CENTRE LLP ..... Appellant

versus

M/S VAJIRAO AND REDDY INSTITUTE

PVT LTD .....Respondent

Advocates who appeared in this case

For the Appellant : Mr. J. Sai Deepak Sr. Adv. with Mr.

B. Badrinath, Mr. Sumit Rajput and

Mr. Dhruv Bhardwaj, Advs.

For the Respondent : Mr. Yashraj Singh Deora, Sr. Adv.

with Mr. Sameer Abhyankar, Mr.

Rahul Kumar, Mr Aakash Thakur Mr.

Nalin Talwar, Mr. Chatinaiya Safaya

and Mr. Priyesh Mohan Srivastava,

Advs.

CORAM:

HON'BLE MR. JUSTICE V. KAMESWAR RAO

HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA

JUDGMENT

MANMEET PRITAM SINGH ARORA , J.

1. This is an appeal under Order 43 Rule 1 of the Code of Civil

FAO(OS) (COMM) 7/2024 Page 2 of 21

Procedure, 1908 [‘CPC’], read with Section 13(1) of the Commercial Courts

Act 2015, and Section 10 of the Delhi High Court Act, 1966, against the

order dated 14.09.2023 [‘impugned judgment’].

2. The present appeal pertains to a dispute inter-se two institutions,

‘VAJIRAM & RAVI’ and ‘VAJIRAO & REDDY’, both engaged in the

business of coaching candidates for the Indian Civil Services examination.

FACTUAL MATRIX

3. The Appellant was established by Professor P. Velayutham as a sole

proprietor under the trademark ‘VAJIRAM & RAO’. The usage of the said

mark continued till 1976, when Mr. P.S. Ravindram took over the

management of the institute and renamed it as ‘VAJIRAM & RAVI’

[‘Appellant’s mark’].

4. The Appellant holds wordmark registrations as well as device mark

registrations of ‘VAJIRAM & RAVI’ and ‘VAJIRAM & RAO’

1

.

5. The Respondent also engaged in the same business as the Appellant,

has been operating under the trademark ‘VAJIRAO & REDDY’ [‘impugned

mark’] at least since 2007. The Respondent has registration for the device

mark bearing TM no. 1859489.

6. The Appellant has no objection to the Respondent’s business of

coaching and training students; however, the Appellant has an objection to

the Respondent’s use of the trademark ‘VAJIRAO’, which is deceptively

similar to the Appellant’s trademark ‘VAIJRAM’ appearing in the name of

1

Details of the Appellant’s various registrations are set out at page 71 of the paper-book.

FAO(OS) (COMM) 7/2024 Page 3 of 21

the Appellant and is an abbreviated form of the name ‘VAJIRAM & RAO’.

7. The Appellant, being aggrieved and the prior adopter of the marks

‘VAJIRAM’, ‘VAJIRAM & RAO’ and ‘VAJIRAM & RAVI’, filed a suit

CS(COMM)43/2019 seeking an interim injunction restraining the

Respondent from using the impugned mark and passing off its impugned

mark as that of the Appellant’s mark.

8. The learned Single Judge, vide the impugned judgment dated

14.09.2023, denied interim injunction on the ground that there are notable

dissimilarities between the rival marks as a whole, and the Appellant lacked

compelling evidence to indicate the likelihood of confusion.

9. In these facts, the Appellant has filed the present appeal.

SUBMISSIONS BY THE PARTIES

Submissions by the Appellant

10. Mr. J. Sai Deepak, learned senior counsel for the Appellant, states that

the impugned mark cannot be said to be dissimilar. The Appellant’s name

was known as ‘VAJIRAO’, an abbreviation of the mark ‘VAJIRAM &

RAO’, which was popular amongst students in the 1980s and 1990s, and

hence the use of the impugned mark creates confusion in the minds of the

public.

10.1. He states that the cause of action arose in December 2018, when the

Respondent put up a hoarding opposite the institute of the Appellant whilst

advertising its institute; prior to that, the Appellant was not aware of the

Respondent.

10.2. He states that the learned Single Judge has disregarded the submission

that when the adoption of the impugned mark by the Respondent was

dishonest, the plea of delay and acquiescence is to be rejected. In this regard,

FAO(OS) (COMM) 7/2024 Page 4 of 21

he places reliance on the judgment of the Supreme Court in Midas Hygiene

Industries (P) Ltd v. Sudhir Bhatia Ltd

2

, wherein it has been categorically

held that delay in bringing the action is not sufficient to defeat the grant of

the injunction.

10.3. He states that the learned Single Judge has failed to consider that there

is phonetic, structural and visual similarity between the rival marks. He

states that the Appellant and the Respondent operate in the same industry

and that their customers are students who aspire to become civil servants.

The repeated use of the impugned mark in its study materials, domain,

advertisements, etc., creates confusion in the minds of the students who seek

admission before the beginning of the academic session.

10.4. He states that the learned Single Judge has failed to consider that the

Respondent used only the word ‘VAJIRAO’ in its domain name and not the

complete name, which evidences the dishonest intentions and deliberate

malafide action of the Respondent to ride upon the goodwill and reputation

of the Appellant’s mark.

10.5. He states that the Respondent only has rights, if any, on the device

mark and not in the words therein. He

states that it has rights only on the manner of representation of the said

device mark and has no rights in the elements therein.

Submissions by the Respondent

11. Mr. Yashraj Singh Deora, learned senior counsel for the Respondent,

2

(2004) 3 SCC 90

FAO(OS) (COMM) 7/2024 Page 5 of 21

states that the learned Single Judge, whilst dealing with the issue of the

similarity of the rival marks, has rightly held that since the present case

pertains to composite marks, the marks must be considered as a whole, and

that prima facie there is no likelihood of confusion inter se the rival marks.

The target audience of both parties comprises well-informed civil services

aspirants, who are able to distinguish the two marks, as can also be seen

from the interviews of some of the successful civil services candidates. Even

otherwise, the Appellant has failed to show that ‘VAJIRAM’ alone has

obtained enough goodwill and reputation for it to be considered a dominant

mark. In this regard, reliance is being placed upon the judgment of the

Supreme Court in Khoday Distilleries Limited v. Scotch Whisky

Association and Others

3

.

11.1. He states that the Appellant has been aware of the existence of the

Respondent at least since September 2009, if not before. The Appellant and

the Respondent have been advertising in the same magazine. The existence

of the said advertisement shows that the Appellant had constructive notice of

the impugned mark. Since the Respondent has been continuously using the

impugned mark since 2009, the Appellant has acquiesced to the

Respondent’s mark as per Section 33 of the Trademark Act, 1999.

11.2. He states that the learned Single Judge has rightly considered the

evidence provided by the Respondent to demonstrate active marketing by

both parties in the same magazines & newspapers as far back as 2009 at

least, to conclude that the Appellant had adequate notice of the

Respondent’s activities.

11.3. He states that the impugned mark is dissimilar and is easily

3

(2008) 10 SCC 723

FAO(OS) (COMM) 7/2024 Page 6 of 21

distinguishable from the various registered trademarks of the Appellant, i.e.,

‘VAJIRAM & RAO ’, ‘VAJIRAM & RAVI ’, and ‘VAJIRAM’. The

Respondent’s mark ‘VAJIRAO & REDDY INSTITUTE’ must be seen in its

entirety. Furthermore, the holistic comparison of the two marks conclusively

shows distinctiveness, both phonetically and visually. Furthermore, the

logos of both the institutes are unique from each other, which further

increases the distinctive features of the marks of both the Appellant and the

Respondent.

11.4. He states that the impugned judgment has rightly considered the facts

of the present case in light of the settled position of law to conclude that no

case for interim injunction is made out. He states that the impugned

judgment cannot be overturned merely because an alternate view is possible.

In this regard, reliance is being placed upon the judgment of the Supreme

Court in Wander Ltd. and Another v. Antox India P. Ltd.

4

COURT’S FINDINGS

12. This Court has heard the learned counsel for the parties and perused

the records.

13. The Appellant’s claims in the plaint are grounded in allegations of

passing off, dilution of its mark, and unfair competition. It seeks an interim

injunction on the grounds of passing off.

14. The Appellant is the registered proprietor of the word and device

marks ‘VAJIRAM & RAVI’ and ‘VAJIRAM & RAO’, and it also holds

registration for the word mark ‘VAJIRAM’.

So also, the Respondent’s impugned device mark ‘VAJIRAO &

REDDY INSTITUTE’ is a registered mark.

4

1999 (Supp) SCC 727 [Paragraph No. 14]

FAO(OS) (COMM) 7/2024 Page 7 of 21

15. The Respondent uses the composite mark ‘VAJIRAO & REDDY

INSTITUTE’ for its Institute. It also uses the word mark ‘VAJIRAO’, which

is a part of its device mark, on a standalone basis on its study material and as

its domain name.

16. In the suit, Appellant had sought an interim injunction restraining the

Respondent from using ‘VAJIRAO’ on a standalone basis or as a part of its

composite device mark ‘VAJIRAO & REDDY’ on the plea of its deceptive

similarity with the Appellant’s mark ‘VAJIRAM’, ‘VAJIRAM & RAVI’

and ‘VAJIRAM and RAO’.

It is undisputed by the Appellant that it has been using the composite

mark ‘VAJIRAM & RAVI INSTITUTE’ for its Institute since 1999, which

continues to be in use to date. It earlier used the composite mark ‘VAJIRAM

& RAO’ from 1976 to 1999 and not thereafter. It has demonstrated a

sporadic use of the standalone mark ‘VAJIRAM’ in its advertisements.

17. The Appellant contends that the word ‘VAJIRAO’ in the

Respondent’s mark is an abbreviation of the Appellant’s earlier mark

‘VAJIRAM & RAO’ and is therefore deceptively similar to the Appellant’s

mark and is capable of causing misrepresentation amongst the public. The

Appellant contends that the word ‘VAJIRAO’ in the Respondent’s mark is

also closely similar to the Appellant’s mark ‘VAJIRAM’.

18. The learned Single Judge has declined the interim injunction and

returned the following findings, which have been challenged in this appeal: -

i. The composite trademarks ‘VAJIRAM & RAVI’ and ‘VAJIRAO &

REDDY INSTITUTE’ have to be compared as a whole, and on this

comparison, the rival marks are distinct. The words ‘RAVI’ in case of

the Appellant and ‘REDDY’ for the Respondent, respectively, are

FAO(OS) (COMM) 7/2024 Page 8 of 21

distinct elements. In addition, the device marks include each

organisation’s logo, adding further to the distinctive element.

Furthermore, the inclusion of the word ‘INSTITUTE’ in the

Respondent’s device mark enhances the dissimilarity. The learned

Single Judge concluded that there is no immediate and obvious

connection between the two composite marks when viewed as a

whole.

The aforesaid findings have been returned based on a visual

comparison of the rival device marks as being used by the parties. For

convenience, the same is reproduced as under: -

Appellant’s Mark Respondent’s Mark

ii. In view thereof, the learned Single Judge concluded that the

Respondent’s mark ‘VAJIRAO & REDDY INSTITUTE’ was prima

facie not deceptively similar to ‘VAJIRAM & RAVI’.

iii. With respect to Respondent’s use of the word ‘VAJIRAO’ as a part of

its composite mark, the standalone use of the said word in its study

material and as its domain name, the Appellant alleged deceptive

similarity between ‘VAJIRAO’ and ‘VAJIRAM’. However, the

learned Single Judge observed that Appellant’s reliance on its mark

‘VAJIRAM’, which is also part of its composite mark ‘VAJIRAM &

RAVI’, to allege passing off due to misrepresentation is not

FAO(OS) (COMM) 7/2024 Page 9 of 21

persuasive, as the Appellant had failed to establish reputation and

goodwill in its standalone mark ‘VAJIRAM’. The learned Single

Judge observed that Appellant’s use of the mark ‘VAJIRAM’ was

almost always accompanied by its mark ‘VAJIRAM & RAVI’. The

learned Single Judge held that the Appellant would have to present

compelling evidence at trial to prove the distinctiveness of its

standalone mark ‘VAJIRAM’ as well as goodwill therein, and also

prove that the Respondent’s use of the mark ‘VAJIRAO’ is likely to

cause confusion amongst the target audience.

iv. Since both parties run coaching institutes for UPSC aspirants, the

learned Single Judge has taken into consideration the fact that the

target customers are well-informed civil service aspirants, who are

discerning, capable of distinguishing between the two institutes and

therefore unlikely to be misled by the rival marks. This opinion was

formed by the Court, after perusing the content of the interviews of

the successful UPSC aspirants published in the newspapers. The text

of newspaper interviews showed that the aspirants/students

5

knowingly referred to having attended both the institutes for

preparation of mock interviews, evidencing that they did not confuse

or associate Respondent’s institute with that of the Appellant’s

institute; and were conscious that these are distinct institutes.

v. The learned Single Judge held that the Appellant had prima facie

failed to establish any likelihood of confusion amongst the concerned

members of the public [i.e., UPSC aspirants] with respect to the

Respondent’s institute ‘VAJIRAO & REDDY’ with the Appellant’s

5

Ms. Anu Kumari and Mr. Sagar Kumar

FAO(OS) (COMM) 7/2024 Page 10 of 21

institute ‘VAJIRAM & RAVI’.

vi. With respect to honesty and adoption of the impugned mark

‘VAJIRAO & REDDY’ by the Respondent, the learned Single Judge

observed that documents on record established that the Respondent

has been using the impugned mark at least since March 2005, whereas

the suit had been filed in 2019. The Respondent established a trust by

the name ‘VAJIRAO SHIKSHAN TRUST’ and ‘VAJIRAO

DEGREE COLLEGE’ in 2013-2014, which provided evidence of

continuous use of the mark by the Respondent and therefore, at a

prima facie stage, the Court held that the adoption of the mark was not

fraudulent. However, the learned Single Judge opined that this issue

of honest adoption would require investigation at trial, where both

parties will be obligated to present evidence substantiating their

respective positions.

vii. The learned Single Judge concluded that Appellant had failed to show

that the Respondent, by using the impugned mark ‘VAJIRAO &

REDDY’, had misrepresented to the public any association with the

Appellant’s mark ‘VAJIRAM & RAVI’; to the contrary, the

documents showed that the Respondent had been using its impugned

mark openly and coextensively with the Appellant for an extended

period of time, dating back to 2005.

viii. In view of the aforesaid findings, the learned Single Judge declined to

grant an interim injunction restraining the Respondent from using the

mark ‘VAJIRAO’ or ‘VAJIRAO & REDDY’.

19. Before we decide the Appellant’s claim for an interim injunction on

the grounds of passing off on the merits, we would like to take note of the

FAO(OS) (COMM) 7/2024 Page 11 of 21

wilful conduct of the Appellant in failing to prosecute its suit by leading

evidence.

The suit was instituted on 22

nd

January, 2019. After the completion of

pleadings, issues were framed on 31

st

January, 2020. The Plaintiff filed the

evidence affidavits of its eight witness(es) on 16

th

March, 2020. Thereafter,

the Local Commissioner was appointed on 1

st

April 2022, for the recording

of evidence. However, the recording of evidence of the witnesses did not

commence due to the wilful inaction of the Appellant. Instead, the Appellant

pressed the hearing of its injunction application, which was decided by the

learned Single Judge vide impugned judgment dated 14

th

September, 2023,

declining the injunction.

20. We have been informed at this appeal’s hearing dated 29

th

April 2026,

that the Appellant has still not commenced recording of evidence. To date,

not a single witness has tendered evidence, and adjournments have been

sought by the Appellant before the Local Commissioner on one ground or

another. This conduct of the Appellant in wilfully not commencing the

recording of evidence from 2020 to 2026 is telling and shows a lack of

interest in prosecuting the suit. The learned Single Judge in the impugned

judgment has expressly noted that Appellant, at trial, has to lead relevant

evidence to show its reputation and goodwill in the standalone mark

‘VAJIRAM’, and establish likelihood of confusion amongst the target

audience due to the use of the word ‘VAJIRAO’ by the Respondent in the

impugned mark ‘VAJIRAO & REDDY’. The Appellant’s unwillingness to

lead evidence to establish reputation and goodwill leads to an inference that

the Appellant does not have any relevant evidence available to substantiate

the said facts and is therefore delaying the trial.

FAO(OS) (COMM) 7/2024 Page 12 of 21

21. It has been three years since the judgment of the learned Single Judge,

and yet the Appellant has failed to commence with the recording of evidence

in the suit. The Appellant’s unwillingness to proceed to trial would merit

dismissal of the suit for non-prosecution under Order XVII, Rules 2 and 3,

read with Order IX of CPC.

22. We shall now proceed to examine the Appellant’s claim of passing off

against the Respondent’s use of the impugned mark. It is trite law that in an

action for passing off, the plaintiff has to show goodwill associated with its

mark, misrepresentation by the defendant, likelihood of confusion amongst

the customers and consequent damages suffered by the plaintiff.

23. In this appeal, we are called upon to examine whether the

Respondent’s device mark ‘VAJIRAO & REDDY INSTITUTE’ is

deceptively similar to Appellant’s marks ‘VAJIRAM & RAVI’,

‘VAJIRAM’, as well as its earlier mark ‘VAJIRAM & RAO’.

24. In addition, we have been called upon to examine whether the

standalone word ‘VAJIRAO’ in the Respondent’s mark is deceptively

similar to Appellant’s marks, more specifically ‘VAJIRAM’, and is an

attempt to ride upon the goodwill and reputation of the Appellant’s marks.

In summary, the Appellant’s challenge is to the Respondent’s use of

the word ‘VAJIRAO’.

25. The Appellant has sought to contend that ‘VAJIRAO’ in the

Respondent’s mark is a colourable imitation of the word ‘VAJIRAM’ as it

appears in the present mark ‘VAJIRAM & RAVI’, and it is an abbreviated

form of its discontinued mark ‘VAJIRAM &

RAO/ ’.

FAO(OS) (COMM) 7/2024 Page 13 of 21

The learned Single Judge has, however, not found favour with the

said submission, as it has concluded that the Respondent uses its composite

device mark ‘VAJIRAO & REDDY INSTITUTE’ for carrying on its

business, and it is the composite mark which has to be considered as a whole

and compared to the Appellant’s composite mark ‘VAJIRAM & RAVI’ to

determine if there is any misrepresentation or likelihood of confusion.

26. The Appellant has not seriously contested the learned Single Judges’

finding that the Appellant’s device mark ‘VAJIRAM & RAVI’ is not

deceptively similar to the Respondent’s device mark ‘VAJIRAO & REDDY

INSTITUTE’, as is evident from ground no. ‘12’ of this appeal.

27. The consideration and deliberation of the learned Single Judge with

respect to the lack of similarity between the composite marks is set out at

paragraph nos. ‘7’, ‘7.1’ and ‘7.2’ of the impugned judgment, and the

Appellant has been unable to point out any error in the findings returned.

We also concur with the said findings of the learned Single Judge that the

composite marks ‘VAJIRAM & RAVI’ vis-à-vis ‘VAJIRAO & REDDY

INSTITUTE’, compared as a whole, are not deceptively similar.

28. Next, the Appellant has contended that the Respondent uses the

standalone word ‘VAJIRAO’ as a part of its domain name and on its study

material, which is deceptively similar to the Appellant’s mark ‘VAJIRAM’

and is likely to be confused by the customers as associated marks. Learned

Single Judge, however, opined that Appellant has failed to prima facie show

reputation and goodwill in the standalone mark ‘VAJIRAM’ so as to

persuade the Court to hold that the customers are likely to associate use of

the word ‘VAJIRAO’ with ‘VAJIRAM’. Learned Single Judge at paragraph

nos. ‘9’ to ‘12’ of the impugned judgment observed that the Appellant

FAO(OS) (COMM) 7/2024 Page 14 of 21

invariably uses the mark ‘VAJIRAM’ along with its composite mark

‘VAJIRAM & RAVI’ and therefore the Court was of the prima facie

opinion that the Appellant would have to at trial prove the reputation and

goodwill of the standalone mark ‘VAJIRAM’ as well as the likelihood of the

association of the said mark in the minds of the public with the word

‘VAJIRAO’.

In this appeal, the Appellant has been unable to draw our attention to

any evidence to show that the said finding of the learned Single Judge was

incorrect. The Appellant had not placed on record any sales figures or

advertisement and promotion expenditure, which would establish its

reputation and goodwill in the mark ‘VAJIRAM’ on a standalone basis.

29. This Court finds it apposite to refer to the dicta of the Supreme Court

in Brihan Karan Sugar Syndicate Private Limited v. Yashwantrao

Mohite Krushna Sahakari Sakhar Karkhana

6

, wherein the Court has

reiterated the settled position of law that in a suit for passing off, the plaintiff

[i.e., the Appellant herein] has to place on record its sales figures and

advertisement expenditure to assist the Court in assessing the reputation and

goodwill of the plaintiff’s mark.

30. Furthermore, the learned Single Judge also opined that there is no

material on record to form an opinion that the use of the word ‘VAJIRAO’

by the Respondent has caused any misrepresentation amongst the customers.

While forming an opinion that there is prima facie no

misrepresentation amongst the students by the use of impugned mark

‘VAJIRAO & REDDY’, as noted above, the learned Single Judge has

referred to interviews of successful UPSC aspirants who had studied with

6

2023 SCC OnLine SC 1163

FAO(OS) (COMM) 7/2024 Page 15 of 21

both Appellant and the Respondent’s Institute to form a prima facie view

that the target audiences recognise both the Institutes as separate entities and

do not confuse one for the other. During arguments, Appellant has been

unable to show us any material so as to persuade us to take a contrary view

on the issue of absence of misrepresentation.

In fact, considering the niche market segment that the Appellant and

the Respondent cater to and considering that these students were successful

in qualifying for UPSC, it seems improbable that the Appellant would not be

aware of these interviews, which referred to the Appellant’s institute. We

may note that in this market segment, interviews of the successful UPSC

candidates are promoted, recorded and broadcasted at the behest of the

institute(s) since it enhances the reputation of the concerned institute.

We therefore find that the reliance placed by the learned Single Judge

on these interviews was merited for forming the prima facie view on the

issue of lack of misrepresentation.

31. In addition to the aforesaid findings, the learned Single Judge has

opined that in the given facts where the Respondent is an established

Institute from at least 2007, the grant of an interim injunction in 2019 was

not desirable. The Respondent has prima facie demonstrated from the

documents on record that it has been using the impugned mark at least since

2007 and has had a registration for the device mark since 2009, with user

claim since 2007. As noted above, given the niche market segment and

overlapping geographical operations in Delhi, we concur with the learned

Single Judge’s finding that it is unconvincing that the Appellant learnt about

the Respondent’s Institute only in 2018 has merit and would require an

appreciation of the evidence led at trial. The submission of the Respondent

FAO(OS) (COMM) 7/2024 Page 16 of 21

that advertisements of both the institutes simultaneously appeared in

relevant magazines as early as September 2009, also militates against

Appellant’s submission that it learnt about the Respondent institute only in

2018.

32. The Appellant has no real explanation for the concurrent

advertisements in the relevant magazines. It sought to dismiss this fact by

relying upon the judgment of Automatic Electric Limited v. R.K. Dhawan

and Another

7

. We are not persuaded by this argument, as in the said

judgment, it was a case of a solitary concurrent advertisement, and therefore,

the Court gave the plaintiff therein the benefit of doubt. However, in the

present case, the Respondent has placed on record editions of the Civil

Service Chronicle magazine [amongst others], and the ratio of Automatic

(supra) would not be applicable. The Appellant would therefore have to

explain at trial how, despite advertising in the same magazines, it had no

knowledge of the existence of the Respondent’s Institute for the period from

at least 2007 to 2018.

33. The Appellant has also relied upon the judgment of the Supreme

Court in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia Ltd, wherein

the Court had held that mere delay in instituting a suit is not sufficient to

defeat the grant of an injunction if it prima facie appears that the adoption of

the mark by the defendant itself is dishonest.

In the considered opinion of this Court, the said judgment does not

apply to the facts of this case, as the submission of the Appellant that the

Respondent is passing off its services for the services of the Appellant has

not been established at this prima facie stage on the tests of passing off.

7

1999 SCC OnLine Del 27

FAO(OS) (COMM) 7/2024 Page 17 of 21

Appellant has failed to prima facie establish that the Respondent’s impugned

mark ‘VAJIRAO & REDDY’ is a dishonest adoption, as the Appellant has

been unable to establish its reputation and goodwill in the mark

‘VAJIRAM’, so also the Respondent itself has garnered its own reputation

and goodwill for its services, as opined by the learned Single Judge.

34. The interviews of the students, who attended both the institutes and

the concurrent advertisements from 2007 to 2018 in the relevant magazines,

show that for over a decade, no objection or concern was raised by the

Appellant, thereby allowing the Respondent to continue their business under

the impugned mark and build their own reputation and goodwill. The

inaction of the Appellant permitted the Respondent to continuously use the

mark from 2007 till 2019 without any objections or interference.

Respondent’s action of having its device mark registered in 2009 evidences

its honest intention to use the mark legitimately. The inaction of the

Appellant tilts the balance of convenience in favour of the Respondent, and

therefore, at an interim stage, denial of the injunction in these facts does not

merit interference. In this regard, this Court deems it apposite to refer to the

dicta of the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius

Auto Industries Limited and Others,

8

wherein the Court had held that the

plaintiff’s delay in instituting a suit cannot be permitted to prejudice the

defendant, who used its registered mark continuously and extensively during

the period that the plaintiff maintained silence. The relevant paragraph reads

as follows: -

“40. If goodwill or reputation in the particular jurisdiction (in India)

is not established by the plaintiff, no other issue really would need

any further examination to determine the extent of the plaintiff’s

8

(2018) 2 SCC 1

FAO(OS) (COMM) 7/2024 Page 18 of 21

right in the action of passing off that it had brought against the

defendants in the Delhi High Court. Consequently, even if we are to

disagree with the view of the Division Bench of the High Court in

accepting the defendant’s version of the origin of the mark ‘Prius’,

the eventual conclusion of the Division Bench will, nonetheless,

have to be sustained. We cannot help but also to observe that in the

present case the plaintiff’s delayed approach to the Courts has

remained unexplained. Such delay cannot be allowed to work to the

prejudice of the defendants who had kept on using its registered

mark to market its goods during the inordinately long period of

silence maintained by the plaintiff.”

[Emphasis Supplied]

35. We note that the Appellant has not even addressed arguments on any

alleged damage suffered by the Appellant due to the Respondent’s use of the

impugned mark, which is the third essential ingredient in the claim of

passing off.

36. In the facts of this case, the learned Single Judge has opined that the

rival composite marks are not deceptively similar and the Appellant has

been unable to prove any reputation and goodwill in the standalone use of its

mark ‘VAJIRAM’. For all these reasons, we find no ground to interfere with

the refusal of the interim injunction.

37. In any event, the scope of interference, while hearing an appeal

against the order passed by a Commercial Court, in Intellectual Property

matters, under Order XXXIX Rule 1 and 2 CPC, stands settled by the

judgment of the Supreme Court in Wander Ltd. v. Antox India (P) Ltd.

(supra). The relevant paragraph reads as follows: -

“13. On a consideration of the matter, we are afraid, the appellate

bench fell into error on two important propositions. The first is a

misdirection in regard to the very scope and nature of the appeals

before it and the limitations on the powers of the appellate court to

substitute its own discretion in an appeal preferred against a

discretionary order. The second pertains to the infirmities in the

ratiocination as to the quality of Antox's alleged user of the

FAO(OS) (COMM) 7/2024 Page 19 of 21

trademark on which the passing-off action is founded. We shall

deal with these two separately.

14. The appeals before the Division Bench were against the

exercise of discretion by the Single Judge. In such appeals, the

appellate court will not interfere with the exercise of discretion of

the court of first instance and substitute its own discretion except

where the discretion has been shown to have been exercised

arbitrarily, or capriciously or perversely or where the court had

ignored the settled principles of law regulating grant or refusal of

interlocutory injunctions. An appeal against exercise of discretion is

said to be an appeal on principle. Appellate court will not reassess

the material and seek to reach a conclusion different from the one

reached by the court below if the one reached by that court was

reasonably possible on the material. The appellate court would

normally not be justified in interfering with the exercise of

discretion under appeal 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. After

referring to these principles Gajendragadkar, J. in Printers

(Mysore) Private Ltd. v. Pothan Joseph

9

:

“... These principles are well established, but as has been

observed by Viscount Simon in Charles Osenton & Co. v.

Jhanaton

10

‘...the law as to the reversal by a court of appeal of an

order made by a judge below in the exercise of his discretion is well

established, and any difficulty that arises is due only to the

application of well settled principles in an individual case’.

The appellate judgment does not seem to defer to this

principle. ….”

[Emphasis Supplied]

38. In its recent decision in Pernod Ricard India (P) Ltd. v. Karanveer

Singh Chhabra

11

, the Supreme Court has reiterated the aforesaid principles

9

AIR 1960 SC 1156

10

1942 AC 130

11

2025 SCC OnLine SC 1701

FAO(OS) (COMM) 7/2024 Page 20 of 21

at paragraph ‘19.8’, which reads as under: -

“19.8. In Wander Ltd., this Court elaborated the principles

governing the grant or refusal of interim injunctions in trademark

infringement and passing off actions. It was underscored that

appellate courts ought to be circumspect in interfering with the

discretionary orders of lower courts in such matters. Interference is

warranted only where the discretion has been exercised arbitrarily,

capriciously, perversely, or in disregard of settled legal principles.

[Emphasis Supplied]

39. Thus, as summarized by the Division Bench of this Court in Sanjay

Gupta and Vinay Gupta v. Vineet Jain, Proprietor of Vijaypal Vineet

Kumar and Co.,

12

an appeal against an interlocutory order passed by the

Commercial Court, the Appellate Court would not substitute its subjective

view for the view adopted by the Commercial Court. It is only if the

Commercial Court errs on principle that the Court would interfere;

otherwise, factual and discretionary evidence and findings of the

Commercial Court are ordinarily immune from interference in an appeal.

40. As noted in the judgment, the Appellant/plaintiff has failed to proceed

with the trial, though issues were framed on 31

st

January, 2020. The matter

is still pending before the Local Commissioner. The state of affairs arising

from the wilful inaction of the Appellant/plaintiff in leading evidence shows

that parties file suits only to agitate the relief of an interim injunction and are

not interested in the adjudication of their final claims. This conduct of the

Appellant clearly reflects its lack of bona fides in prosecuting the suit

proceedings.

41. Accordingly, the Appellant is directed to commence recording of the

evidence of its witnesses in July 2026 and conclude the recording of

12

2026 SCC OnLine Del 1862

FAO(OS) (COMM) 7/2024 Page 21 of 21

evidence within three months thereafter. Similarly, Respondent is directed to

conclude recording of its evidence within three months of the conclusion of

the Appellant’s evidence. It is directed that in case the Appellant fails to

commence and conclude its evidence, the learned Single Judge shall pass an

appropriate order against the Appellant under Order XVII Rules 2 and 3

CPC, read with Order IX CPC, which includes dismissal of the suit for non-

prosecution.

42. In view thereof, this Court does not deem it fit to interfere with the

impugned judgment. The appeal is dismissed. Pending application[s], if any,

are disposed of.

MANMEET PRITAM SINGH ARORA , J

V. KAMESWAR RAO , J

MAY 26, 2026/mt/hp/aa