FAO (COMM) 73/2025 and 75/2025 Page 1 of 52

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment reserved on: 12.03.2025

Judgment pronounced on: 12.06.2025

+ FAO (COMM) 73/2025

+ FAO (COMM) 75/2025

NEWGEN IT TECHNOLOGIES L IMITED .....Appellant

Through: Mr. Rajiv Nayar and Ms.

Malvika Trivedi, Sr. Advocates

with Mr. Anirudh Bakhru, Ms.

Vaishali Mittal, Mr. Siddhant

Chamola, Mr. Saurabh Seth,

Mr. Prabhav Bahuguna, Ms.

Pallavi Bhatnagar and Ms.

Saijal Arora, Advocates.

versus

NEWGEN SOFTWARE TECHNOLOGIES LIMITED ....Respo ndent

Through: Mr. Sandeep Sethi and Mr.

Ankit Jain, Senior Advocates

with Mr. J.V. Abhay, Mr.

Dhruv Grover, Mr. Abhineet

Kalia, Ms. Riya Kumar and Mr.

Rishabh Jain, Advocates.

CORAM:

HON'BLE MR. JUSTICE NAVIN CHAWLA

HON'BLE MR. JUSTICE HARISH VAIDYANAT HAN

SHANKAR

J U D G M E N T

HARISH VAIDYANATHAN SHANKAR , J.

FAO (COMM) 73/2025 & CM APPLs. 15151-52/2025, 15154/2025

FAO (COMM) 75/2025 & CM APPLs. 15161-62/2025, 15164/2025

1. The present appeals filed by the Appellant under Section

13(1A) of the Commercial Courts Act, 2015 read with Order XLIII

FAO (COMM) 73/2025 and 75/2025 Page 2 of 52

Rule (1)(r) of the Code of Civil Procedure, 1908 (in short, „CPC‟),

impugn the Orders dated 27.02.2025 and 05.03.2025 passed by the

learned District Judge (Commercial)-05, South District, Saket Courts,

New Delhi (hereinafter referred to as the „District Judge‟) in

C.S.(COMM) No. 102/2025 titled as Newgen Software Technologies

Limited v. Newgen IT Technologies Limited.

2. The learned District Judge, vide its Order dated 27.02.2025,

granted ex-parte ad-interim injunction in favour of the Respondent,

which forms the subject matter of FAO(COMM) 75/2025. Thereafter,

vide Order dated 05.03.2025, the said ex-parte ad-interim injunction

was made absolute and the Appellant‟s application under Order

XXXIX Rule 4 of the CPC was dismissed, which dismissal is

impugned in FAO(COMM) 73/2025.

Plaint:

3. The Respondent has filed the above-said suit before the learned

District Judge in February 2025, inter alia, seeking a decree of

permanent injunction, infringement and related claims, on the ground

that its trademarks, namely,

(hereinafter referred to as the

„Subject Marks’) were being infringed by the Appellant‟s use of

trademarks (hereinafter

referred to as the „Impugned Marks‟).

4. In the suit, the Respondent claims that it is a listed company,

which was incorporated on 05.06.1992, and has been engaged in the

FAO (COMM) 73/2025 and 75/2025 Page 3 of 52

business of software product development. Its products and services

cater to a wide spectrum of companies from various industries,

including, but not limited to, banking, insurance, and healthcare.

5. It is averred in the plaint that the Subject Marks were registered

by the Respondent in the year 1999, with a user claim from 1992, in

respect of goods/services covered in Classes 09, 16, 35 and 42. It is

the case of the Respondent that over the years it has invested

extensively in the promotion and advertisement of its business under

the Subject Marks through various forms of media, such as

newspapers, magazines, TV commercials, sponsorships, pamphlets

and hoardings. The Respondent has given the breakdown of revenue

and marketing expenses as under:

FAO (COMM) 73/2025 and 75/2025 Page 4 of 52

6. It is the case of the Respondent that in and around June 2023,

the Appellant approached the Respondent with a proposal to enter into

a partnership agreement for the purpose of mutual collaboration and

reciprocal support between the parties for the development of their

respective businesses. The Respondent, relying upon the

representations made by the Appellant and pursuant to several rounds

of discussion, entered into a Partnership Agreement with the

Appellant on 12.07.2023 (hereinafter referred to as the „Partnership

Agreement‟).

7. In the suit, it is averred that the Appellant entered into the

Partnership Agreement with the Respondent under its corporate name

“VCARE InfoTech Solutions and Services Pvt. Ltd.”, being fully

aware of the Respondent‟s exclusive right over the Subject Marks.

The same was also acknowledged in the Partnership Agreement by

way of Article 14 of the Partnership Agreement, and it was also

agreed that any use of the Subject Marks by the Appellant shall arise

only out of the said Agreement.

FAO (COMM) 73/2025 and 75/2025 Page 5 of 52

8. It is the case of the Respondent that on 16.07.2024, it received

an email from the Appellant by way of which the Appellant formally

stated that it has changed its name from “VCARE InfoTech Solutions

and Services Pvt. Ltd.” to “NewGen IT Technologies Limited”. The

Appellant also provided a copy of the new Certificate of Incorporation

dated 10.07.2024, along with an undated declaration letter titled

“Vcare Infotech” Rebrands as “Newgen IT Technologies Limited”,

which was an attachment to the said email.

9. It is averred that after subsequent research, the Respondent

discovered that the Appellant had applied for registration of the

Impugned Marks vide application No. 5139598 in Class 42 on

20.09.2021, with a user claim dating back to 21.10.2015. The said

application is currently pending owing to an objection raised by the

Trademark Registry that the Impugned Marks are similar to the

Subject Marks of the Respondent.

10. The Respondent, thereafter, issued a cease-and-desist letter

dated 15.09.2024 upon the Appellant, inter alia, terminating the

Partnership Agreement and calling upon the Appellant to cease to use

the Impugned Marks for its business and services in any form. The

Respondent also moved an application under Section 16(1) of the

Companies Act, 2013 before the Regional Director, Northern Region,

Ministry of Corporate Affairs, seeking rectification of the Appellant‟s

corporate name.

11. It is averred by the Respondent that the Respondent came across

the Draft Red Herring Prospectus (in short, „DRHP‟), as submitted by

the Appellant to the National Stock Exchange of India, applying for an

Initial Public Offering (in short, „IPO‟) under the Impugned

Mark/name. The Respondent addressed a letter dated 15.01.2025 to

FAO (COMM) 73/2025 and 75/2025 Page 6 of 52

the Securities and Exchange Board of India (in short, „SEBI‟),

informing that various material disclosures were not made by the

Appellant in its DRHR.

12. It is the case of the Respondent that the Appellant also sought to

register the Impugned Marks in Classes 16, 35, and 42 vide

application Nos. 6829503, 6829504, and 6829505 dated 29.01.2025.

The Respondent, thereafter, filed the said suit, inter alia, seeking a

decree of permanent injunction.

Impugned Ex-parte injunction order dated 27.02.2025:

13. By the Order dated 27.02.2025, the learned District Judge, after

examining the averments in the suit and after considering the

arguments, held that in view of the fact that the name as adopted by

the Appellant was exactly similar to that of the Respondent herein and

would be sufficient enough to cause confusion and suspicion in the

minds of the general public at large and would/might lead to the belief

that the said services were being provided by the Respondent herein,

granted an ex-parte ad-interim injunction.

14. The learned District Judge, while applying the triple test for

granting an ex-parte ad-interim injunction, held that the Respondent

had made out a prima facie case in its favour on the said basis, and

also the balance of convenience would lie in favour of the Respondent

since they were the prior registered user of the Subject Marks and

would therefore, suffer irreparable damage in terms of its reputation

and business in case injunction was not granted. The Appellant herein

was injuncted from using the marks, in the following terms: -

“Accordingly, till the next date of hearing,

defendant, its directors, partners, officers,

FAO (COMM) 73/2025 and 75/2025 Page 7 of 52

managers, assigns, successors-in-interest,

licensees, sister concerns, representatives,

servants, agents, employees, etc. and/or any

person or entity acting for or under it are

hereby restrained from using the marks

"NEWGEN", "NEWGEN IT”

and and the

corporate name "NEWGEN IT

TECHNOLOGIES LIMITED" or any other

mark similar to the Plaintiff's NEWGEN

Marks, singularly or in conjunction with any

other words or monogram/logo, as a trade

mark, corporate name, trade name, trading

style, domain name, website address,

electronic mail identity or in any other manner

whatsoever; on or in relation to its

services/business, including advertising,

business papers, etc.”

15. While granting the injunction, the learned District Judge also

directed that a Local Commissioner be appointed, who would carry

out the inspection of the premises of the Appellant and also any other

places, where she has reasons to believe that infringing material may

be stored, used or transferred.

Appellant‟s application under Order XXXIX Rule 4 of the CPC:

16. Aggrieved of the said order, the Appellant herein filed an

application under Order XXXIX Rule 4 of the CPC seeking

modification and vacation of the ex-parte ad-interim injunction Order

dated 27.02.2025.

17. The Appellant in the said application contended that the

Respondent has violated the settled Principles of Natural Justice and

FAO (COMM) 73/2025 and 75/2025 Page 8 of 52

the ex-parte ad-interim injunction Order was obtained without giving

any notice of the suit to the Appellant. It was further contended by the

Appellant that the ex-parte ad-interim injunction Order has been

obtained by the Respondent on various statements and submissions

made by the Respondent, which are riddled with inconsistencies and

contradictions.

18. The Appellant contended that Article 14 of the Partnership

Agreement relates to the acknowledgment of the rights of the

Impugned Marks, however, nowhere in the said Agreement the

Respondent has defined what are the marks belonging to the

Respondent. The Partnership Agreement fails to allude to any list,

document, annexure or details which define the ambit of the Subject

Marks belonging to the Respondent as per the Agreement.

19. The Appellant averred that the Appellant has been using the

Impugned Marks since 2017 in several countries of the world. The

Appellant started using the Impugned Marks in the year 2017 with the

incorporation of a company named "Newgen IT Solutions and

Services Pte. Ltd" in Singapore. In fact, the Appellant uses

“NEWGEN IT” as part of its corporate name in several companies

across the world, such as Singapore, UAE, UK, and Australia.

20. It is the case of the Appellant that the Appellant has been

operating the domain name www.newgenit.com since 2017. The

correspondence that was exchanged with the Respondent by the

Appellant, before the execution of the Partnership Agreement, was

done from the domain name and email address @newgenit.com. In

fact, even the contact address for notices under the said Agreement

was @newgenit.com. Therefore, the Partnership Agreement was

signed with the full knowledge and consent of the Respondent, that

FAO (COMM) 73/2025 and 75/2025 Page 9 of 52

the Appellant has the rights to use the domain name

www.newgenit.com, the name-bearing the mark „Newgen‟ and also

the Impugned Marks. The Appellant alleged that therefore, the

Respondent has acquiesced to the use of the Impugned Marks by the

Appellant.

Impugned Order dated 05.03.2025:

21. The learned District Judge, vide impugned Order dated

05.03.2025, dismissed the said application of the Appellant by holding

as under:

“…., I have no hesitation in holding that

although the Plaintiff could not have claimed

any exclusive domain over the user of word

“NEWGEN”, however as per Section 17 of the

Trademark Registration Act, it is the

composite trademark, which has to be looked

into by the court without further bisecting it

into pieces.

Hence, in case, if the names of two

entities are visibly compared, then except for

the word “Software” appearing in the name of

Plaintiff and word “IT” appearing in the name

of defendant, the entire remaining terms and

words are same.

It is also a well known fact of which this

court is also not precluded from taking a

judicial notice that a consumer of software

could easily be driven and get carried away

with the words “IT” and “Software” because

he/she has no in-depth knowledge about the

intricacies and functioning of business model

of both the entities present before the court in

the present suit.

Admittedly, as apparent from the

record, the defendant had started its business

activities in India under the name of “VCARE

INFOTECH SOLUTIONS & SERVICES

PRIVATE LIMITED” and had also entered

into the partnership agreement with the

Plaintiff herein with the said name and even at

that time Plaintiff had never objected to any of

FAO (COMM) 73/2025 and 75/2025 Page 10 of 52

its correspondences including the email dated

23.06.2023 as appearing at page no. 951 of

the paper book of the documents placed on

record by the defendant, wherein an email sent

to Plaintiff‟s representative by one Sh.

Samardeep Kar, he had used the domain name

of newgenit.com, which was never so objected

to by the Plaintiff herein.

However, it shall be further pertinent to

point out here itself that even in the said mail,

the person, who had authored the same had

mentioned about the defendant‟s Indian entity

under the name of “VCARE INFOTECH

SOLUTIONS & SERVICES PRIVATE

LIMITED” and not “NEWGEN IT

TECHNOLOGIES LIMITED”.

Furthermore, from the document placed

by the Plaintiff on record at page no. 155 of

the paper book of the documents filed by it, it

is a declaration made by the present defendant

herein regarding its rebranding from “VCARE

INFOTECH SOLUTIONS & SERVICES

PRIVATE LIMITED” as “NEWGEN IT

TECHNOLOGIES LIMITED” addressed to its

customers and business partners.

It has also been stated and argued by

Ld. Senior Advocate for Plaintiff that this was

done by the defendant while its partnership

agreement with the Plaintiff was still in

existence, in which it had also admitted the

exclusive domain or right of the Plaintiffs over

all its registered and unregistered

trademarks/trade names, trade dress, symbols

and hence, once the Plaintiff had noticed that

the defendant had backed out from its earlier

commitment given in respect of the registered

or unregistered trademarks and trade names

and marks etc. of the Plaintiff itself, then

Plaintiff was constrained to terminate the said

agreement.

So far as, the non-exclusive domain

clause appearing in the certificate of

registration granted in favour of the Plaintiff

as highlighted by the Ld. Counsel for

Defendant is concerned, those pertain to the

products registered under class 9 and 16,

whereas the issue in controversy in the present

FAO (COMM) 73/2025 and 75/2025 Page 11 of 52

case revolves around class 42, thus is of no

use and avail to the defendant.

From the aforesaid lengthy discussion

of the rival contentions and submissions of

both the sides, I have no hesitation in holding

that the defendant herein has miserably failed

to make out a prima facie case in its favour

warranting the setting aside of the ex-parte ad

interim injunction order granted against him

and in favour of the Plaintiff till the next date

of hearing and accordingly the order as

passed on 27.02.2025 is now made absolute

till disposal of the present suit and application

under disposal is dismissed with no order as to

costs.”

SUBMISSIONS ON BEHALF OF THE APPELLANT/

DEFENDANT:

22. In the present appeals, the Appellant has primarily challenged

the impugned orders passed by the learned District Judge, contending

that there was suppression of material facts and misleading statements

by the Respondent.

23. The learned senior counsels for the Appellant submit that the

Appellant has used the mark „NEWGEN IT‟ in India and

internationally since 2017 and was in formal partnership with the

Respondent between July 2023 and September 2024, as evidenced by

their Partnership Agreement. The Respondent was already engaged in

related disputes, namely, the Respondent sent a legal notice in

September 2024, initiated name-change proceedings before the

Ministry of Corporate Affairs in October 2024, and raised objections

to the Appellant‟s IPO before SEBI in January 2025, and moreover,

the parties even participated in mediation proceedings in February

2025. Given this background, the learned senior counsels submit that

where both parties were actively contesting multiple connected

FAO (COMM) 73/2025 and 75/2025 Page 12 of 52

matters, the exemption from advance service deprived the Appellant

of a fair hearing and allowed the Respondent to secure an injunction

without the Appellant‟s knowledge. In support, they place reliance on

the Judgment of the Supreme Court in Wander Ltd. & Anr. v. Antox

India (P) Ltd., 1990 Supp SCC 727.

24. The learned senior counsels for the Appellant further contend

that the ex-parte ad-interim injunction was obtained in violation of

natural justice, as no advance notice was provided to the Appellant,

which only became aware of the order during a hearing on 28.02.2025

before the Regional Director, Registrar of Companies. The Appellant

further contends that the injunction causes severe hardship, as it has

effectively brought the Appellant‟s business to a standstill by

preventing it from pursuing ongoing tenders, participating in future

projects, or operating not only in India but also globally, thereby

causing substantial commercial harm.

25. The learned senior counsels for the Appellant submit that the

injunction was granted despite the Respondent‟s delay and without

properly evaluating the balance of convenience, as in the present case

the balance of convenience clearly favoured the Appellant, which has

operated under its corporate name, “Vcare Infotech Solutions and

Services Pvt. Ltd.” together with the “Newgen IT” brand since 2017,

as evidenced by records including the domain www.newgenit.com.

The Appellant further asserts that the Impugned Order dated

05.03.2025 contains no discussion or assessment of the balance of

convenience or irreparable harm. In support, they place reliance on the

Judgment of this Court in Natco Pharma Ltd. v. Bayer Healthcare

LLC, 2019 SCC OnLine Del 9124.

FAO (COMM) 73/2025 and 75/2025 Page 13 of 52

26. The learned senior counsels for the Appellant further submit

that the learned District Judge failed to consider the Respondent‟s

suppression and acquiescence, as the Appellant submitted over 90

emails showing the Respondent‟s active cooperation under the

“Newgen IT” name for over 1.5 years, including mutual references to

the Appellant as “the Newgen IT Team” and explicit recognition in

the Partnership Agreement of www.newgenit.com as the Appellant‟s

lawful business address in India, yet the Respondent‟s plaint remained

silent on this long history of cooperation, shared events, and social

media acknowledgments. In support, they place reliance on the

Judgment of this Court in SK Sachdeva & Anr. v. Shri Educare

Limited & Anr., 2016 SCC OnLine Del 473, and of the Bombay High

Court in PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd., 2023

SCC OnLine Bom 764.

27. The learned senior counsels for the Appellant further contend

that the Respondent deliberately suppressed material facts by failing

to disclose that the Respondent holds no exclusive statutory rights

over the word "Newgen", as its registration No. 840846 pertains solely

to a label mark and the Trade Marks Office recognizing "NEWGEN"

as a descriptive term, has granted registration with a disclaimer.

Furthermore, the Appellant also asserts that the Respondent, having

previously argued before the Trade Marks Office that similar marks

could co-exist if sufficiently differentiated, has now adopted a

contradictory stance for tactical gain, amounting to intentional

suppression rather than mere omission.

28. The learned senior counsels for the Appellant would further

submit that the Respondent cannot claim prior use or invention of the

mark “Newgen”, as the Appellant has placed on record evidence of

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prior trademark registrations such as “New Generation” (dating back

to 1988) and longstanding third-party use, including “New Gen

Pharma” (incorporated in 1992) and “Newzen Logistics Private

Limited” (incorporated in 1991), alongside evidence that at least 20

companies have used the name „Newgen‟ within the IT sector since

1993 and over 150 companies are registered under this name across

India, all of which, along with multiple third-party trademark

registrations, establish that the term cannot be monopolized, a reality

underscored by the Respondent‟s own statements during the Ministry

of Corporate Affairs proceedings, where it declared its intent to act

against all companies using “NEWGEN”, thereby, revealing its

attempt to overreach despite having no exclusive rights over this

widely used descriptive term. The learned senior counsels submit that

both parties should be allowed to co-exist under their respective

NEWGEN marks and names, as they have been doing in India since

2017 and in several other countries of the world. In support, they place

reliance on the Judgment of the Supreme Court in Parakh Vanijya (P)

Ltd. v. Baroma Agro Product & Ors., (2018) 16 SCC 632, and of the

Single Judge of this court in Havells India Limited & Anr. v. Vivek

Kumar & Ors., 2016 SCC OnLine Del 2518.

29. The learned senior counsels for the Appellant submit that this

case does not concern any exclusive right to the word “Newgen”,

which is merely a common abbreviation for “New Generation” and

widely used across industries, as even the learned District Judge

acknowledged that the dispute does not revolve around the standalone

use of “Newgen” and given the absence of wordmark rights and the

clear differences between the parties‟ logos and services, namely, the

Appellant‟s data center operations versus the Respondent‟s software

FAO (COMM) 73/2025 and 75/2025 Page 15 of 52

products, the restraint imposed on the Appellant is unjust and

excessive. In support, they place reliance on the Judgment of the

Supreme Court in Skyline Education Institute (India) (P) Ltd. v. S.L.

Vaswani & Anr., (2010) 2 SCC 142, and of the Single Judge of this

Court in Vasundhra Jewellers (P) Ltd. v. Vasundhara Fashion

Jewelry LLP & Anr., (2023) 3 HCC (Del) 626, and Delhivery (P) Ltd.

v. Treasure Vase Ventures (P) Ltd., 2020 SCC OnLine Del 2766.

30. The learned senior counsels for the Appellant further submit

that this conclusion is further reinforced by the existence of numerous

similarly named companies listed on stock exchanges under unique

trading symbols, which demonstrates that there is no real risk of

market confusion, particularly since modern investors routinely

conduct due diligence by reviewing DRHP before investing, and the

Appellant has independently built substantial goodwill over eight

years through bonafide global operations under the “Newgen IT”

brand.

SUBMISSIONS ON BEHALF OF THE RESPONDENT/

PLAINTIFF:

31. Per Contra, the learned senior counsels for the Respondent

support the Impugned Orders and refute all the allegations made by

the Appellant herein. The learned senior counsels for the Respondent

state that the Appellant company was carrying on the business in India

under the name “VCare InfoTech Solutions and Services Pvt. Ltd.”

and the adoption of the name “NEWGEN IT Technologies Limited”

by the Appellant is of recent vintage.

32. The learned senior counsels for the Respondent also contend

that the trademark registration in respect of the Subject Marks was

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sought as early as in the year 1992 till the year 2014, and these predate

the existence of the Appellant company, which, as per the Appellant‟s

admitted case, was only in the year 2017. In support, they place

reliance on the Judgment of the Supreme Court in Laxmikant V. Patel

v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, and Power Control

Appliances & Ors. v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448.

33. The further case of the Respondent is that the Class under

which the Appellant is seeking registration of its trademark includes

the development of new software, which is already being carried out

by the Respondent. The learned senior counsels for the Respondent

also contend that there is no question of the Appellant being taken by

surprise, with respect to the filing of the suit, as they had already filed

a Caveat on the same date as the suit, that is, 27.02.2025.

34. The learned senior counsels also contend, based on the

pleadings, that the application filed under Order XXXIX Rule 4 of the

CPC fails to specify the material facts that are alleged to have been

suppressed or concealed while obtaining the ex-parte ad-interim

injunction. In support, they place reliance on the Judgment of this

Court in Ganesh Plastic v. Lajpat Rai Sobti & Ors., 2001 SCC

OnLine Del 819.

35. On the plea of the Appellant qua multiple third-party users of

the Subject Marks, the learned senior counsels for the Respondent

submit that the Respondent is also not bound to take action against all

such companies and can choose companies against which it wishes to

take action based on its business requirements. In support, they place

reliance on the Judgments of the learned Single Judge of this Court in

Prakash Roadline Ltd. v. Prakash Parcel Service, 1992 SCC OnLine

FAO (COMM) 73/2025 and 75/2025 Page 17 of 52

Del 138, and, The Tata Iron & Steel Co. Ltd. v. Mahavir Steels &

Ors., 1992 SCC OnLine Del 122.

36. On the plea of the Appellant that the Respondent has concealed

that the Trade Marks Registry has imposed a disclaimer on the mark

“NEWGEN” under No. 840846, the learned senior counsels for the

Respondent submit that the Respondent has secured several

subsequent registrations for NEWGEN formative word marks which

do not carry any disclaimer. In any case, it is a settled principle of law

that a disclaimer does not go to the market and is irrelevant to a

passing-off action. In support, they place reliance on the Judgment of

the Supreme Court in Registrar of Trade Marks v. Ashok Chandra

Rakhit Ltd., 1955 SCC OnLine SC 12.

37. The learned senior counsels for the Respondent also claim that

the e-mails that are being referred to, in support of the allegation of

acquiescence, are completely misplaced as the very e-mails which

have been relied upon state that the Appellant admits that, in India, it

was known by the name “VCare InfoTech Solutions and Services Pvt.

Ltd.” and not by the name “Newgen”. They further submit that the

defence of acquiescence cannot be availed by the Appellant as the

Appellant has acted with mala fide. In support, they place reliance on

the Judgment of this Court in BCH Electric Limited v. Eaton

Corporation & Anr., 2016 SCC OnLine Del 3639.

38. The learned senior counsels for the Respondent submit that

Trade Mark prosecution history estoppel does not apply where the

Impugned mark is not cited in the Examination Report, as is the case

herein. In support, they place reliance on the Judgments of this Court

in Raman Kwatra & Anr. v. KEI Industries Ltd., 2023 SCC OnLine

Del 38, and of the learned Single Judge of this Court in Under

FAO (COMM) 73/2025 and 75/2025 Page 18 of 52

Armour v. Aditya Birla Fashion & Retail Ltd., 2023 SCC OnLine

Del 2269, Teleecare Network (India) (P) Ltd. v. Asus Technology (P)

Ltd. & Ors., 2019 SCC OnLine Del 8739, and Insecticides (India)

Ltd. v. Parijat Industries (India) (P) Ltd., 2018 SCC OnLine Del

9748.

ANALYSIS & FINDING:

39. We heard the parties at length and also have gone through the

pleadings and the Impugned Orders dated 27.02.2025 and 05.03.2025.

40. At the outset, we would note that the present appeals challenge

the Impugned Order which is passed in the exercise of the

discretionary jurisdiction vested in the learned District Judge by way

of Order XXXIX of the CPC. The Courts have time and again

cautioned that in appeals challenging the orders passed by the learned

Trial Court in the exercise of its discretionary jurisdiction, the

Appellate Court will not interfere with, except where the discretion

has been shown to have been exercised arbitrarily or capriciously or

perversely or where the court has ignored the settled principles of law

regulating grant or refusal of interlocutory injunctions. The Appellate

Court will not reassess the material and seek to reach a conclusion if it

would have exercised its discretion differently, but will only interfere

if the discretion has been exercised in a perverse manner by the Trial

Court. Recently, this principle has been reiterated and explained by

the Supreme Court in Ramakant Ambalal Choksi v. Harish Ambalal

Choksi & Ors., 2024 SCC OnLine SC 3538, by holding as under: -

“20. Order 43 of the CPC specifies the orders

against which an appeal lies. Sub-Rule (r) of

Rule 1 of the said order provides that an

appeal would lie against an order made under

FAO (COMM) 73/2025 and 75/2025 Page 19 of 52

Rules 1, 2, 2A, 4 and 10 of Order 39 of

the CPC respectively.

21. The law in relation to the scope of an

appeal against grant or non-grant of interim

injunction was laid down by this Court

in Wander Ltd. v. Antox India P. Ltd., 1990

Supp SCC 727. Antox brought an action of

passing off against Wander with respect to the

mark Cal-De-Ce. The trial court declined

Antox's plea for an interim injunction,

however, on appeal the High Court reversed

the findings of the trial judge. This Court,

upon due consideration of the matter, took

notice of two egregious errors said to have

been committed by the High Court:

a. First, as regards the 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; and

b. Secondly, the weakness in ratiocination

as to the quality of Antox's alleged user

of the trademark on which the passing

off action is founded.

22. With regards to (a), this Court held thus:

“In such appeals, the appellate court will

not interfere with the exercise of discretion

of the court of the 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

… the appellate court will not reassess the

material and seek to reach a conclusion

different from the one reached by the court

below … 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.”

23. This Court, while arriving at the above

findings, relied on its earlier judgment

FAO (COMM) 73/2025 and 75/2025 Page 20 of 52

in Printers (Mysore) v. Pothan Joseph, 1960

SCC OnLine SC 62 where it was held thus:

“[…] as has been observed by Viscount

Simon LC in Charles Osenton &

Co v. Johnston - the law as to reversal by a

court of appeal of an order made by a judge

below in the exercise of his/her discretion is

well established, and any difficulty that

arises is due only to the application of well-

settled principles in an individual case.”

24. It is pertinent to note that

in Printers (supra) this Court had held that

ignoring relevant facts is also a ground for

interfering with the discretion exercised by the

trial court. Furthermore, Viscount Simon LC

in Charles Osenton & Co v. Johnston, [1942]

A.C. 130, after stating the above, went on to

quote Lord Wright's decision

in Evans v. Bartlam, [1937] A.C. 473:

“It is clear that the court of appeal should

not interfere with the discretion of a judge

acting within his jurisdiction unless the

court is clearly satisfied that he was wrong.

But the court is not entitled simply to say

that if the judge had jurisdiction and had

all the facts before him, the court of appeal

cannot review his order unless he is shown

to have applied a wrong principle. The

court must, if necessary, examine anew the

relevant facts and circumstances in order to

exercise a discretion by way of review

which may reverse or vary the order.”

25. In Evans (supra) case, Lord Wright made

it clear that while adjudicating upon the

discretion exercised by the trial court, the

appellate court is obliged to consider the case

put forward by the appellant in favour of its

argument that the trial court exercised its

discretion arbitrarily or incorrectly in the

circumstances.

26. What flows from a plain reading of the

decisions in Evans (supra) and Charles

Osenton (supra) is that an appellate court,

even while deciding an appeal against a

discretionary order granting an interim

injunction, has to:

a. Examine whether the discretion has been

properly exercised, i.e. examine whether

FAO (COMM) 73/2025 and 75/2025 Page 21 of 52

the discretion exercised is not arbitrary,

capricious or contrary to the principles of

law; and

b. In addition to the above, an appellate

court may in a given case have to

adjudicate on facts even in such

discretionary orders.

27. The principles of law explained by this

Court in Wander's (supra) have been

reiterated in a number of subsequent decisions

of this Court. However, over a period of time

the test laid down by this Court as regards the

scope of interference has been made more

stringent. The emphasis is now more on

perversity rather than a mere error of fact or

law in the order granting injunction pending

the final adjudication of the suit.

28. In Neon Laboratories Ltd. v. Medical

Technologies Ltd., (2016) 2 SCC 672 this

Court held that the Appellate Court should not

flimsily, whimsically or lightly interfere in the

exercise of discretion by a subordinate court

unless such exercise is palpably perverse.

Perversity can pertain to the understanding of

law or the appreciation of pleadings or

evidence. In other words, the Court took the

view that to interfere against an order

granting or declining to grant a temporary

injunction, perversity has to be demonstrated

in the finding of the trial court.

29. In Mohd. Mehtab Khan v. Khushnuma

Ibrahim Khan, (2013) 9 SCC 221 this Court

emphasised on the principles laid down

in Wander (supra) and observed that while the

view taken by the appellate court may be an

equally possible view, the mere possibility of

taking such a view must not form the basis for

setting aside the decision arrived at by the

trial court in exercise of its discretion under

Order 39 of the CPC. The basis for

substituting the view of the trial court should

be malafides, capriciousness, arbitrariness or

perversity in the order of the trial court. The

relevant observations are extracted below:

“20. In a situation where the learned trial

court on a consideration of the respective

cases of the parties and the documents laid

before it was of the view that the

FAO (COMM) 73/2025 and 75/2025 Page 22 of 52

entitlement of the plaintiffs to an order of

interim mandatory injunction was in

serious doubt, the Appellate Court could

not have interfered with the exercise of

discretion by the learned Trial Judge unless

such exercise was found to be palpably

incorrect or untenable. The reasons that

weighed with the learned Trial Judge, as

already noticed, according to us, do not

indicate that the view taken is not a

possible view. The Appellate Court,

therefore, should not have substituted its

views in the matter merely on the ground

that in its opinion the facts of the case call

for a different conclusion. Such an exercise

is not the correct parameter for exercise of

jurisdiction while hearing an appeal

against a discretionary order. While we

must not be understood to have said that

the Appellate Court was wrong in its

conclusions what is sought to be

emphasized is that as long as the view of

the trial court was a possible view the

Appellate Court should not have interfered

with the same following the virtually settled

principles of law in this regard as laid

down by this Court in Wander Ltd. v. Antox

India (P) Ltd.”

(Emphasis supplied)

30. This Court in Shyam Sel & Power

Ltd. v. Shyam Steel Industries Ltd., (2023) 1

SCC 634 observed that the hierarchy of the

trial court and the appellate court exists so

that the trial court exercises its discretion

upon the settled principles of law. An appellate

court, after the findings of the trial court are

recorded, has an advantage of appreciating

the view taken by the trial judge and

examining the correctness or otherwise thereof

within the limited area available. It further

observed that if the appellate court itself

decides the matters required to be decided by

the trial court, there would be no necessity to

have the hierarchy of courts.

31. This Court in Monsanto Technology

LLC v. Nuziveedu Seeds Ltd., (2019) 3 SCC

381, observed that the appellate court should

not usurp the jurisdiction of the Single Judge

FAO (COMM) 73/2025 and 75/2025 Page 23 of 52

to decide as to whether the tests of prima facie

case, balance of convenience and irreparable

injury are made out in the case or not.

32. The appellate court in an appeal from an

interlocutory order granting or declining to

grant interim injunction is only required to

adjudicate the validity of such order applying

the well settled principles governing the scope

of jurisdiction of appellate court under Order

43 of the CPC which have been reiterated in

various other decisions of this Court. The

appellate court should not assume unlimited

jurisdiction and should guide its powers within

the contours laid down in the Wander (supra)

case.

41. The Supreme Court in Ramakant (supra), also explained the

meaning of the term „perverse‟, as under:

“35. Any order made in conscious violation of

pleading and law is a perverse order. In

Moffett v. Gough, (1878) 1 LR 1r 331, the

Court observed that a perverse verdict may

probably be defined as one that is not only

against the weight of evidence but is

altogether against the evidence. In Godfrey v.

Godfrey, 106 NW 814, the Court defined

“perverse” as “turned the wrong way”; not

right; distorted from the right; turned away or

deviating from what is right, proper, correct,

etc.

36. The expression “perverse” has been

defined by various dictionaries in the

following manner:

a. Oxford Advanced Learner's Dictionary of

Current English, 6th Ed.

Perverse - Showing deliberate

determination to behave in a way that most

people think is wrong, unacceptable or

unreasonable.

b. Longman Dictionary of Contemporary

English - International Edition

Perverse - Deliberately departing from

what is normal and reasonable.

c. The New Oxford Dictionary of English -

1998 Edition

FAO (COMM) 73/2025 and 75/2025 Page 24 of 52

Perverse - Law (of a verdict) against the

weight of evidence or the direction of the

judge on a point of law.

d. New Webster's Dictionary of the English

Language (Deluxe Encyclopedic Edition)

Perverse - Purposely deviating from

accepted or expected behavior or opinion;

wicked or wayward; stubborn; cross or

petulant.

e. Stroud's Judicial Dictionary of Words &

Phrases, 4th Ed.

Perverse - A perverse verdict may probably

be defined as one that is not only against

the weight of evidence but is altogether

against the evidence.

37. The wrong finding should stem out on a

complete misreading of evidence or it should

be based only on conjectures and surmises.

Safest approach on perversity is the classic

approach on the reasonable man's inference

on the facts. To him, if the conclusion on the

facts in evidence made by the court below is

possible, there is no perversity. If not, the

finding is perverse. Inadequacy of evidence

or a different reading of evidence is not

perversity. (See : Damodar Lal v. Sohan Devi,

(2016) 3 SCC 78)”

(Emphasis Supplied)

42. Keeping in view the above-said contour of the appellate

jurisdiction of this Court, we may now proceed to test the contentions

of the parties on their merits.

43. Firstly, the Appellant contends that, since both parties were

actively involved in multiple connected matters/disputes, the

exemption from advance notice deprived them of a fair hearing. The

Appellant further asserts that this exemption allowed the Respondent

to secure an injunction without the Appellant‟s knowledge, thereby

violating the Principles of Natural Justice.

44. We firmly reject the Appellant‟s argument. First, it is an

indisputable fact that the Appellant was fully aware that a suit seeking

FAO (COMM) 73/2025 and 75/2025 Page 25 of 52

an interim injunction could be filed, as in anticipation of this, the

Appellant proactively filed a caveat. However, the Appellant itself,

rather than serving the caveat on the respondent, as required,

mistakenly served it on themselves as evident from the letter dated

25.02.2025 appended with the said caveat petition. This error

undermines the Appellant's claim that the exemption from advance

notice was somehow unfair or unjust.

45. Even otherwise, the Appellant had applied for an IPO, giving

rise to an urgency for the respondent to approach the Court to seek

interim relief.

46. The Appellant‟s claim that it was improper for the Respondent

to file the suit and obtain an ex-parte ad-interim injunction is

unfounded. Order XXXIX of the CPC expressly permits such orders

in appropriate cases, and further, Rule 4 of Order XXXIX of the CPC

specifically provides remedy to the Defendant seeking the setting

aside of such injunction. This provision exists precisely to address

such grievances, ensuring that affected parties can be heard. However,

in the present case, the Appellant failed to make a persuasive case

before the learned District Judge. This inability does not amount to a

denial of natural justice.

47. In light of these facts, the allegation that the Appellant was

denied a fair hearing or that the Principles of Natural Justice were

violated is legally unfounded.

48. Coming to other aspects, at the stage of granting an ad-interim

injunction, it is well settled in law that a party is required to meet the

triple test, i.e. (a) whether a prima facie case exists in favour of the

Applicant, (b) whether the balance of convenience lies in their favour

and (c) whether irreparable harm would result if the injunction were

FAO (COMM) 73/2025 and 75/2025 Page 26 of 52

denied. In Ramakant (supra), the Supreme Court also reiterated these

guiding principles governing the grant of the temporary injunction, as

under:

“33. In the case of Anand Prasad Agarwal v.

Tarkeshwar Prasad, (2001) 5 SCC 568, it was

held by this Court that it would not be

appropriate for any court to hold a mini-trial

at the stage of grant of temporary injunction.

34. The burden is on the plaintiff, by evidence

aliunde by affidavit or otherwise, to prove that

there is “a prima facie case” in his favour

which needs adjudication at the trial. The

existence of the prima facie right and

infraction of the enjoyment of his property or

the right is a condition precedent for the

grant of temporary injunction. Prima facie

case is not to be confused with prima facie

title which has to be established on evidence

at the trial. Only prima facie case is a

substantial question raised, bona fide, which

needs investigation and a decision on merits.

Satisfaction that there is a prima facie case

by itself is not sufficient to grant injunction.

The Court further has to satisfy that

noninterference by the court would result in

“irreparable injury” to the party seeking

relief and that there is no other remedy

available to the party except one to grant

injunction and he needs protection from the

consequences of apprehended injury or

dispossession. Irreparable injury, however,

does not mean that there must be no physical

possibility of repairing the injury, but means

only that the injury must be a material one,

namely one that cannot be adequately

compensated by way of damages. The third

condition also is that “the balance of

convenience” must be in favour of granting

injunction. The Court while granting or

refusing to grant injunction should exercise

sound judicial discretion to find the amount

of substantial mischief or injury which is

likely to be caused to the parties, if the

injunction is refused and compare it with that

which is likely to be caused to the other side if

the injunction is granted. If on weighing

FAO (COMM) 73/2025 and 75/2025 Page 27 of 52

competing possibilities or probabilities of

likelihood of injury and if the Court

considers that pending the suit, the subject

matter should be maintained in status quo,

an injunction would be issued. Thus, the

Court has to exercise its sound judicial

discretion in granting or refusing the relief of

ad interim injunction pending the suit. (See:

Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC

719.)”

(Emphasis Supplied)

49. While examining these parameters for the grant or refusal of

interim relief, the court must satisfy itself that each element has been

properly considered, but this satisfaction need not occur in a rigid or

mechanical fashion where each element is separately discussed in

isolation; rather, the court‟s application of mind must be assessed

holistically, taking into account that in the process of examining one

parameter, related aspects may also be inherently addressed. Thus, the

appellate court, particularly at the interim stage, is not called upon to

re-examine or re-appreciate every aspect or evidence afresh, as long

as, upon reading the impugned order as a whole, it is apparent that the

court below has applied its mind and reached a conclusion that is

sound and reasonable on the facts and circumstances before it.

50. In this regard, the observations made by this Court in Natco

Pharma Ltd (supra), a decision on which the Appellant itself has

relied upon, are particularly relevant, as the judgment clarifies that it

is not necessary for the trial court‟s order granting or refusing an

interim injunction to explicitly record findings on each of the three

elements; rather, what is essential is that a reading of the order as a

whole reflects that the court has formed an opinion on these aspects.

The relevant paragraphs of the said judgment state as follows:

FAO (COMM) 73/2025 and 75/2025 Page 28 of 52

“24. Although, there are special features in

litigation involving infringement of patents,

that still would not obviate the Court dealing

with the question of grant of interim injunction

to record the three important elements as have

been stressed in a large number of decisions of

the Supreme Court. While the Court agrees

with Dr. Singhvi that it is not necessary that

the order granting or refusing interim

injunction should expressly state about the

above elements but a reading of the order

should indicate the forming of an opinion by

the Court on the said aspects. A reading of the

impugned order does not reflect that the Court

has formed such an opinion on the three

elements.

25. Again, each case of alleged infringement

of patent, particularly a pharmaceutical

patent, would turn on its own facts. It is not

possible to conceive an „across-the-board‟

blanket approach that would apply to all such

cases, where as a matter of routine at the first

hearing there would be a grant of injunction

in favour of the Plaintiff. The decision in the

application of interim injunction has to

necessarily indicate the view of the Court on

the three elements mentioned herein before

and the additional features when it involves a

case of alleged infringement of a patent, and

in particular, a pharmaceutical patent. It is

not the length of the order or its precise

wording that matters. It is necessary,

however, that the factors mentioned

hereinbefore must be discernible from the

order which comes to a conclusion one way

or the other regarding grant of an interim

injunction.

26. The Court would also like to add here that

the impugned order which restrains the

Defendant from infringing the suit patent does

not lend itself to sufficient clarity. Although the

Appellant/Defendant has understood it to

mean that the Defendant is restrained from

manufacturing, selling its product in the

market, it would have helped if the order

specified what the Defendant can or cannot

do. There is a possibility, given the wording of

the impugned order that it might lead to

FAO (COMM) 73/2025 and 75/2025 Page 29 of 52

further litigation on whether in fact there has

been compliance or not with the said order.”

(Emphasis supplied)

51. Applying this principle to the present case, we find that the

reading of the Impugned Order dated 27.02.2025 convincingly shows

that the learned District Judge adequately considered or formed an

opinion on the three essential parameters for the grant of interim

relief. The relevant portion of the order dated 27.02.2025 is

reproduced below:

“After hearing the Ld. Counsel for Plaintiff at

length and going through the record, I am

satisfied that the name adopted by defendant

is exactly similar to that of the Plaintiff,

which is sufficient enough to cause a

confusion and suspicion in the mind of the

general public at large that under the garb of

using the services of defendant, they

would/might be lead to believe as if using the

services provided to them by the Plaintiff,

therefore, not ruling out the possibility of the

person availing the services of the defendant

forming a bad impression about the

reputation and image of Plaintiff, in case, if

they are provided with the services of an

inferior or sub-standard quality, hence, it is

therefore obvious that plaintiff has been

successful in making out a prima facie case

in its favour.

Balance of convenience is also lying in

favour of the Plaintiff and against the

defendant being the prior and registered user

of the trade name and marks and Plaintiff

shall also suffer irreparably in terms of its

reputation and business, in case if defendant

is not injuncted immediately.”

(Emphasis supplied)

52. From the above analyses, it is evident that the learned District

Judge has duly considered the requisite factors while granting the ex-

parte ad-interim injunction in favour of the Respondent.

FAO (COMM) 73/2025 and 75/2025 Page 30 of 52

53. We are also of the considered view that the two marks, namely,

the Subject Marks of the Respondent and the Impugned Mark adopted

by the Appellant, are strikingly similar, and both entities operate

within the same business domain. Coupled with this is their

association as partners under the Partnership Agreement. This

similarity is capable of causing confusion in the minds of an average

consumer, thereby justifying the grant of an ex-parte ad-interim

injunction in favour of the Respondent/Plaintiff. The non-grant of

such injunction would have allowed the Appellant to continue and

further expand its use of the Impugned Mark in various ways as it has

already been doing, resulting in substantial injury and irreparable loss

to the Respondent.

54. It is an undisputed fact that the Respondent has been the prior

user of the mark since 1992, whereas the Appellant only commenced

operations in 2017 under a distinct identity, later entering into a

Partnership Agreement with the Respondent. During the subsistence

of that partnership, which was executed on 12.07.2023, the Appellant

began expanding its business under names closely resembling the

Respondent‟s, transitioning from “VCARE Infotech Solutions and

Services Private Limited” to “NEWGEN IT Technologies Private

Limited” in May-2024. Due to certain differences between the parties,

they dissolved their partnership in September-2024. Immediately

thereafter, the Appellant began rapidly expanding its operations,

including initiating steps toward an IPO with this new name. All these

circumstances collectively indicate that the test of balance of

convenience and inconvenience also clearly tilts in favour of the

Respondent, as non-grant of the injunction would have caused

significant inconvenience and harm to the Respondent.

FAO (COMM) 73/2025 and 75/2025 Page 31 of 52

55. Moreover, upon consideration of the Appellant‟s application

under Order XXXIX Rule 4 of the CPC, filed within a week of the

initial order, the learned District Court carefully examined the detailed

averments made by the Appellant on each aspect. The learned District

Court found that the Appellant failed to establish a prima facie case

warranting variation, modification, or vacation of the ex-parte ad-

interim injunction granted on 27.02.2025. Consequently, the learned

District Court made the interim order absolute, to remain in force until

the final disposal of the suit.

56. In the present case, while the Appellant has strenuously

contended that the injunction has brought its business operations to a

standstill and jeopardized its IPO plans, we are not persuaded by this

line of argument. The Appellant cannot be permitted to continue

deriving commercial benefit from a mark that, in our considered view,

is similar to that of the Respondent and clearly warrants restraint

through injunctive relief. A comparative table of the marks is as

follows: -

FAO (COMM) 73/2025 and 75/2025 Page 32 of 52

FAO (COMM) 73/2025 and 75/2025 Page 33 of 52

57. It is well established that the assessment of similarity between

trademarks and the likelihood of confusion arising from them is made

from the perspective of the average consumer having an imperfect

recollection. Reliance in this regard may be placed on the Judgments

of the Supreme Court in Corn Products Refining Co. v. Shangrila

Food Products Ltd., 1959 SCC OnLine SC 11, Amritdhara Pharmacy

v. Satya Deo Gupta, 1962 SCC OnLine SC 13, and Cadila Health

Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.

58. In the present case, the dominant element in both, the

Appellant‟s and Respondent‟s marks is the word ‘Newgen‟, and the

distinction between their respective goods or services, namely,

software versus IT technologies, is subtle and not readily apparent to

the general public. The technical distinctions between the parties‟

offerings are of limited relevance when determining the potential for

public confusion.

59. We also view this matter in the context of the parties‟ prior

commercial relationship, noting that the Appellant operated in India

under the name “VCare Infotech Solutions and Services Private

Limited” and in Singapore under “NEWGEN IT” and that the parties

had voluntarily entered into a Partnership Agreement formalizing their

collaboration. Although the Agreement was later terminated by the

Respondent on 15.09.2024, it is significant that Article 14 of the

Partnership Agreement explicitly acknowledged the Respondent as the

owner of the “Newgen” mark; thus, we do not find it necessary to

dissect the specific scope or detailed coverage of the marks

encompassed by the clause, as the central fact remains that the

Respondent was operating under the name and style of NEWGEN

Software, while the Appellant was known domestically as VCare

FAO (COMM) 73/2025 and 75/2025 Page 34 of 52

Infotech Solutions, making the Respondent‟s knowledge of the

Appellant‟s operations in foreign jurisdictions immaterial to the

present dispute. Article 14 of the Partnership Agreement reads as

under:

“ARTICLE 14 - Trademarks

(a) Newgen 'Trademarks' means those

trademarks, trade names, slogans, tables, and

other identifying symbols as are or have been

developed and used by Newgen and/or any of

its subsidiaries or affiliate companies

anywhere in the world.

(b) Newgen authorizes VCARE INFOTECH

SOLUTIONS AND SERVICES PVT LTD to

use only the trademarks as approved by

Newgen during the term of this agreement

for the purpose of the sale and distribution

Newgen Products. VCARE INFOTECH

SOLUTIONS AND SERVICES PVT LTD

shall use these trademarks only in such a

manner as to preserve all right of Newgen.

VCARE INFOTECH SOLUTIONS AND

SERVICES PVT LTD acquires no right to

any Newgen trademark by its use or by the

marketing, sale or servicing of products

bearing such trademarks and may

consequently only use the specified

trademarks for the duration of this agreement

and to the extent specified therein.

(c) VCARE INFOTECH SOLUTIONS AND

SERVICES PVT LTD shall not, without

Newgen's prior written consent, remove, alter,

or modify serial No. or identifying symbols

from Newgen Products.

(d) VCARE INFOTECH SOLUTIONS AND

SERVICES PVT LTD recognizes and

concedes for all purposes that Newgen

trademarks, whether or not registered, are

valid and are the exclusive property of

Newgen and that VCARE INFO TECH

SOLUTIONS AND SERVICES PVT LTD's

right to use any such trademarks arises only

out of this agreement.

(e) Newgen shall have the sole and exclusive

right in its sole discretion to bring legal action

for trademark infringement with respect to any

FAO (COMM) 73/2025 and 75/2025 Page 35 of 52

of the Newgen tra demarks. VCARE

INFOTECH SOLUTIONS AND SERVICES

PVT LTD shall inform Newgen too promptly of

any such trademark infringements of which it

has knowledge and assist Newgen to bring

charge against such infringements. Newgen

shall bear the cost of any legal action if

required against trademark infringements.”

60. The learned senior counsels for the Appellant have also placed

reliance on emails showing the Respondent‟s active cooperation under

the “Newgen IT” name for over 1.5 years, including mutual references

to the Appellant as “the Newgen IT Team” to take the plea of

acquiescence.

61. The submission of the learned senior counsels for the Appellant

that the Respondent has acquiesced in the use of the word „Newgen‟

by the Appellant, also cannot be accepted. The Supreme Court in M/s

Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448,

has held that acquiescence is sitting by, when another is invading the

rights and spending money on it. It is a course of conduct inconsistent

with the claim for exclusive rights in a trademark, trade name etc. It

has to be a positive act. We quote from the judgment as under: -

“26. Acquiescence is sitting by, when another

is invading the rights and spending money on

it. It is a course of conduct inconsistent with

the claim for exclusive rights in a trade mark,

trade name etc. It implies positive acts; not

merely silence or inaction such as is involved

in laches. In Harcourt v. White [(1860) 28

Beav 303 : 54 ER 382] Sr. John Romilly said:

“It is important to distinguish mere negligence

and acquiescence.” Therefore, acquiescence is

one facet of delay. If the plaintiff stood by

knowingly and let the defendants build up an

important trade until it had become necessary

to crush it, then the plaintiffs would be stopped

by their acquiescence. If the acquiescence in

the infringement amounts to consent, it will be

FAO (COMM) 73/2025 and 75/2025 Page 36 of 52

a complete defence as was laid down

in Mouson (J.G.) & Co. v. Boehm [(1884) 26

Ch D 406] . The acquiescence must be such as

to lead to the inference of a licence sufficient

to create a new right in the defendant as was

laid down in Rodgers v. Nowill [(1847) 2 De

GM&G 614 : 22 LJ KCH 404] .

27. The law of acquiescence is stated by

Cotton, L.J. in Proctor v. Bannis [(1887) 36

Ch D 740] as under:

“It is necessary that the person who alleges

this lying by should have been acting in

ignorance of the title of the other man, and

that the other man should have known that

ignorance and not mentioned his own title.”

In the same case Bowen, L.J. said:

“In order to make out such acquiescence it

is necessary to establish that the plaintiff

stood by and knowingly allowed the

defendants to proceed and to expend money

in ignorance of the fact that he had rights

and means to assert such rights.”

28. In Devidoss and Co. [AIR 1941 Mad 31 :

(1940) 2 MLJ 793 : ILR 1941 Mad 300] at

pages 33 and 34 the law is stated thus:

“To support a plea of acquiescence in a

trade mark case it must be shown that the

plaintiff has stood by for a substantial

period and thus encouraged the defendant

to expend money in building up a business

associated with the mark.

In Rowland v. Michell [(1896) 13 RPC

464] Romer J. observed:

„If the plaintiff really does stand by and

allow a man to carry on business in the

manner complained of to acquire a

reputation and to expend money he cannot

then after a long lapse of time, turn round

and say that the business ought to be

stopped.‟”

In the same case, but on appeal Lord Russel,

C.J. said [Rowland v. Michell, (1897) 14 RPC

37, 43] at p. 43:

“Is the plaintiff disentitled to relief under

that head by injunction because of

acquiescence? Of course it is involved in

the consideration of that that the plaintiff

has a right against the defendant and that

FAO (COMM) 73/2025 and 75/2025 Page 37 of 52

the defendant has done him a wrong and

the question is whether the plaintiff has so

acted as to disentitle him from asserting his

right and from seeking redress from the

wrong which has been done to him. Cases

may occasionally lay down principles and

so forth which are a guide to the court, but

each case depends upon its own

circumstances.

Dealing with the question of standing by

in Codes v. Addis and Son [(1923) 40 RPC

130, 142] at p. 142, Eve, J. said:

„For the purpose of determining this issue I

must assume that the plaintiffs are traders

who have started in this more or less small

way in this country, and have been

continuously carrying on this business. But

I must assume also that they have not,

during that period, been adopting a sort of

Rip Van Winkle policy of going to sleep and

not watching what their rivals and

competitors in the same line of business

were doing. I accept the evidence of any

gentleman who comes into the box and

gives his evidence in a way which satisfies

me that he is speaking the truth when he

says that he individually did not know of the

existence of a particular element or a

particular factor in the goods marketed by

his opponents. But the question is a wider

question than that : ought not he to have

known : is he entitled to shut his eyes to

everything that is going on around him, and

then when his rivals have perhaps built a

very important trade by the user of indicia

which he might have prevented their using

had he moved in time, come to the Court

and say : “Now stop them from doing it

further, because a moment of time has

arrived when I have awakened to the fact

that this is calculated to infringe my

rights.” Certainly not. He is bound, like

everybody else who wishes to stop that

which he says is an invasion of his rights, to

adopt a position of aggression at once, and

insist, as soon as the matter is brought to

Court, it ought to have come to his

attention, to take steps to prevent its

FAO (COMM) 73/2025 and 75/2025 Page 38 of 52

continuance; it would be an insufferable

injustice were the Court to allow a man to

lie by while his competitors are building up

an important industry and then to come

forward, so soon as the importance of the

industry has been brought home to his

mind, and endeavour to take from them that

of which they had legitimately made use;

every day when they used it satisfying them

more and more that there was no one who

either could or would complain of their so

doing. The position might be altogether

altered had the user of the factor or the

element in question been of a secretive or

surreptitious nature; but when a man is

openly using, as part of his business, names

and phrases, or other elements, which

persons in the same trade would be entitled,

if they took steps, to stop him from using, he

gets in time a right to sue them which

prevents those who could have stopped him

at one time from asserting at a later stage

their right to an injunction.‟

In Mc. Caw Stevenson & Orr Ltd. v. Lee

Bros. [(1960) 23 RPC 1] acquiescence for four

years was held to be sufficient to preclude the

plaintiff from succeeding. In 1897 the plaintiffs

in that case registered the word „glacier‟ as a

trade mark in respect of transparent paper as

a substitute for stained glass. As the result of

user the word had become identified with the

plaintiffs' goods. In 1900 the defendants

commenced to sell similar goods under the

name „glazine.‟ In 1905 the plaintiffs

commenced an action for infringement. The

defendants denied that the use of the word

„glazine‟ was calculated to deceive and also

pleaded acquiescence. A director of the

plaintiff company admitted that he had known

of the use of the word „glazine‟ by the

defendants for four years — he would not say

it was not five years. It was held that the

plaintiffs failed on the merits and by reason of

their delay in bringing the action.

Delay simpliciter may be no defence to a suit

for infringement of a trade mark, but the

decisions to which I have referred to clearly

indicate that where a trader allows a rival

FAO (COMM) 73/2025 and 75/2025 Page 39 of 52

trader to expend money over a considerable

period in the building up of a business with the

aid of a mark similar to his own he will not be

allowed to stop his rival's business. If he were

permitted to do so great loss would be caused

not only to the rival trader but to those who

depend on his business for their livelihood. A

village may develop into a large town as the

result of the building up of a business and

most of the inhabitants may be dependent on

the business. No hard and fast rule can be laid

down for deciding when a person has, as the

result of inaction, lost the right of stopping

another using his mark. As pointed out in

Rowland v. Michell [Rowland v. Michell,

(1897) 14 RPC 37, 43] each case must depend

on its own circumstances, but obviously a

person cannot be allowed to stand by

indefinitely without suffering the

consequence.”

29. This is the legal position. Again

in Halsbury's Laws of England, Fourth Edn.,

Vol. 24 at paragraph 943 it is stated thus:

“943. Acquiescence.— An injunction may

be refused on the ground of the plaintiff's

acquiescence in the defendant's

infringement of his right. The principles on

which the court will refuse interlocutory or

final relief on this ground are the same, but

a stronger case is required to support a

refusal to grant final relief at the hearing.

[Patching v. Dubbins [(1853) Kay 1 : 69

ER 1] ; Child v. Douglas [(1854) 5 De

GM&G 739 : 43 ER 1057]

; Johnson v. Wyatt [(1863) 2 De GJ&Sm 18

: 46 ER 281] ; Turner v. Mirfield [(1865)

34 Beav 390 : 55 ER 685]

; Hogg v. Scott [(1874) LR 18 Eq 444]

; Price v. Bala and Festiniog Rly.

Co. [(1884) 50 LT 787] ] The reason is that

at the hearing of the cause it is the court's

duty to decide upon the rights of the parties,

and the dismissal of the action on the

ground of acquiescence amounts to a

decision that a right which once existed is

absolutely and for ever

lost: Johnson v. Wyatt [(1863) 2 De

GJ&Sm 18 : 46 ER 281] at 25; and

FAO (COMM) 73/2025 and 75/2025 Page 40 of 52

see Gordon v. Cheltenham and Great

Western Union Rly. Co. [(1842) 5 Beav

229, 233 : 49 ER 565] per Lord Langdale

MR.”

30. In Aktiebolaget Manus v. R.J. Fullwood &

Bland, LD. [(1948) 55 RPC 329, 338] at pp.

338-39 it was held thus:

“Apart from this point the case

of Fullwood v. Fullwood [(1878) 9 Ch D

176 : 47 LJ Ch 459] shows that the

injunction in a passing-off case is an

injunction sought in aid of a legal right,

and that the Court is bound to grant it if the

legal right be established unless the delay

be such that the Statute of Limitations

would be a bar. That case apparently

concerned some predecessors of the

defendants. The delay was one of rather

under two years and the relief sought was

an injunction to restrain the use by the

defendants of cards and wrappers

calculated to induce the belief that his

business was connected with the plaintiff.

Fry, J., in the course of his judgment said

this:

„Now, assuming, as I will, for the purpose

“of my decision, that in the early part of

1875 the plaintiff knew of all the material

facts” which have been brought before me

today, he commenced his action in

November 1876. “In my opinion that

delay, and it is simply delay, is not

sufficient to deprive the plaintiff of” his

rights. The right asserted by the plaintiff

in this action is a legal right. He is, in

“effect, asserting that the defendants are

liable to an action for deceit”. It is not

suggested in the defence that the delay

here involves a question under or

analogous to the period under the Statute.

The defendants did suggest that there had

been something more than mere delay on

the part of the plaintiffs, and that the

plaintiffs had lain by and allowed the

goodwill which the plaintiffs now propose

to acquire, but this point was not seriously

pressed. It was suggested that Mr Evans

Bajker, the plaintiffs‟ solicitor, knew from

FAO (COMM) 73/2025 and 75/2025 Page 41 of 52

1941 onwards what the defendants were

doing, but it is impossible to impute to a

busy solicitor a knowledge which he could

only acquire by seeing advertisements in

local or farming papers advertising the

defendants' activities. No direct

information was afforded to him; on the

contrary it will be remembered that when

in 1942 he made enquiries on behalf of his

clients information was studiously

withheld from him. I conclude therefore

that there has been no acquiescence to

disentitle the plaintiff to relief.'”

31. In Electrolux LD. v. Electrix [1954 RPC

23, 34] at pp. 32 and 33 it was held thus:

“I now pass to the second question, that of

acquiescence, and I confess at once that

upon this matter I have felt no little

sympathy for the defendants, and have been

not a little envious of the good fortune

which has attended the plaintiffs, though no

doubt they may justly attribute it to the

astuteness of their advisers; but, as has

already been said, the defendants have

traded openly and (as the Judge found)

honestly, beyond any question, in the

ordinary course and substantially under

this name „Electrix‟ for a very long period

of time, since early 1930's. During that

time, they have built up (I doubt not) a

valuable goodwill associated with that

name. If the possibility that the mark

„Electrolux‟ was infringed is out of the way,

and if I disregard for the moment (as I do)

the point taken by Mr Kenneth Johnstone

that in any event for use of „Electrolux‟ was

a sufficient use for the purpose of Section

26(1) of „Electrux‟ (seeing that the two

marks were associated). I have no doubt

that if the plaintiff had challenged in the

courts the right of the defendants to use

„Electrix‟ before they have effect to their

decision to apply the word „Electrux‟ to

their cheaper model in lieu of „Electrolux‟,

they would in all probability have failed,

because the defendants' motion to strike the

word „Electrux‟ off the Register would have

succeeded, but the fact is that when the

FAO (COMM) 73/2025 and 75/2025 Page 42 of 52

battle was joined, „Electrux‟ was no longer

vulnerable on that account, unless the

defendants can establish that the use was

not bona fide, a matter to which I shall

come presently. It is, however, said that by

the defendants that the plaintiffs have

deprived themselves of their legal right or,

at least, of any right to the equitable

remedy of injunction.

Upon this matter, a great deal of

learning has been referred to, and we have

also had our attention drawn to a number

of cases. The latter include the well-known

statement in Willmott v. Barber [(1880) 15

Ch D 96 : 43 LT 95] by Fry, J. (as he then

was) at p. 105. He said this: „It has been

said that the acquiescence which‟ will

deprive a man of his legal rights must

amount to fraud, and in my view that is an

abbreviated statement of a very true

proposition. A man is not to be deprived of

his legal rights unless he has acted in such

a way as would „make it fraudulent for him

to set up those rights‟. Let me pause here to

say that I do not understand that, by the

word „fraudulent‟, the learned Judge was

thereby indicating conduct which would

amount to a common law tort of deceit.

„What, then, are the elements or requisites

necessary to constitute fraud of that

description?‟ In the first place „the plaintiff

must have made a mistake as to his legal

rights‟. Secondly, the plaintiff must „have

expended some money or must have done

some act (not necessarily upon the

defendant's land) on the faith of his

mistaken belief‟. Thirdly, the defendant, the

possessor of „the legal right, must know of

the existence of his own right which is

inconsistent with „the legal right, must

know of the existence of his own right

which is inconsistent with‟ the right

claimed by the plaintiff. If he does not know

of it he is in the same position „as the

plaintiff, and the doctrine of acquiescence

is founded upon conduct with a knowledge‟

of your legal rights. Fourthly, the

defendant, the possessor of the legal right,

FAO (COMM) 73/2025 and 75/2025 Page 43 of 52

must know „of the plaintiff's mistaken belief

of his rights. If he does not, there is nothing

which‟ calls upon him to assert his own

rights. Lastly, the defendant, the possessor

of the legal „right, must have encouraged

the plaintiff in his expenditure of money or

in the other acts which he has done, either

directly or by abstaining from asserting his

legal right‟. In reading that passage, it is

perhaps necessary to note (because it

makes it at first sight a little more difficult

to follow) that the positions of plaintiff and

defendant as they are usually met with are

there transposed, and that one of the

parties who is there spoken of as the

plaintiff corresponds with the present case

with the defendants, and vice versa.”

32.Amritdhara Pharmacy v. Satyadeo Gupta

[(1963) 2 SCR 484 : AIR 1963 SC 449] is a

case where Halsbury was quoted with

approval. However, on the facts of that case it

was held that the plea of acquiescence had not

been made out.”

62. While judging the plea of acquiescence, this Court must also

consider whether the adoption of the mark by the Appellant was bona

fide. As noted herein above, in India, the Appellant adopted branding

containing the term “NEWGEN”, which closely resembles the

Respondent‟s Mark immediately after or around when the Partnership

Agreement was terminated by the Respondent. Therefore, prima facie,

the said adoption cannot be considered as a bona fide adoption.

Moreover, immediately after the termination of the Partnership

Agreement itself, the Respondent took various steps to protect its

rights in the Subject Marks, including filing a rectification application

before the Ministry of Corporate Affairs and even notifying SEBI

about the said developments. In view thereof, the Respondent cannot

be said to be sitting by, when the Appellant was invading its rights in

FAO (COMM) 73/2025 and 75/2025 Page 44 of 52

the Subject Marks. Therefore, the plea of acquiescence taken by the

Appellant is liable to be rejected.

63. With respect to the Appellant‟s allegations of suppression, the

Supreme Court in Arunima Baruah v. Union of India & Ors., (2007)

6 SCC 120, clarified that suppression of a material fact must relate to

something material for determining the lis, meaning that it must be

relevant to the court‟s decision to grant or deny the relief sought, and

if the suppressed fact does not materially affect that determination, the

court is not necessarily obliged to withhold discretionary relief. The

Supreme Court observed as follows:

“12. It is trite law that so as to enable the

court to refuse to exercise its discretionary

jurisdiction suppression must be of material

fact. What would be a material fact,

suppression whereof would disentitle the

appellant to obtain a discretionary relief,

would depend upon the facts and

circumstances of each case. Material fact

would mean material for the purpose of

determination of the lis, the logical corollary

whereof would be that whether the same was

material for grant or denial of the relief. If the

fact suppressed is not material for

determination of the lis between the parties,

the court may not refuse to exercise its

discretionary jurisdiction. It is also trite that a

person invoking the discretionary jurisdiction

of the court cannot be allowed to approach it

with a pair of dirty hands. But even if the said

dirt is removed and the hands become clean,

whether the relief would still be denied is the

question.”

(Emphasis supplied)

64. This Court also, in Deen Dayal Anand Kumar Saraf v. Paras

Agarwal, 2024 SCC OnLine Del 6299, held that it is necessary for the

Court to consider whether disclosure of the facts, which a party has

failed to disclose, could possibly result in an unfavourable decision for

FAO (COMM) 73/2025 and 75/2025 Page 45 of 52

the party and if the answer is in the affirmative, the non-disclosure of

such facts may amount to suppression of facts. The relevant

paragraphs state as follows:

“14. The principal question to be addressed is

whether non-disclosure of the C&D notice is

fatal to the appellant's claim for discretionary

relief.

15. Undisputedly, the C&D notice and the

respondents' reply to the C&D notice are

relevant documents and ought to have been

disclosed. It is the appellant's case that it

derived no benefit from not disclosing the said

documents and the appellant had inadvertently

overlooked to refer to them in the

pleadings and to place them on record. The

appellant has explained that this was because

of the change of the counsel prior to the filing

of the suit.

16. There is no cavil that the party

approaching the Court must fully disclose all

the material facts and any party approaching

the Court with unclean hands would

not be entitled to any discretionary relief. The

decision whether a party should be denied

discretionary relief solely on account of non-

disclosure of any fact(s) must be informed by

addressing the following questions: (a)

whether the fact(s) supressed are

vital and material to the relief sought for by

the party; and (b) whether the fact has been

supressed deliberately.

17. The question whether the fact(s) supressed

are material to the relief sought,

must be determined by examining whether the

disclosure of such fact(s) could possibly lead

to an adverse decision. It is only the non-

disclosure those facts, which are adverse to

the case of the party, that warrant denial of

discretionary relief. It is necessary for the

Court to consider whether disclosure of the

facts, which a party has failed to disclose,

could possibly result in an unfavourable

decision for the party. Clearly, non-disclosure

of facts that are favourable to the case of the

party, would not warrant denial of

discretionary relief to that party.

FAO (COMM) 73/2025 and 75/2025 Page 46 of 52

18. The substratal principle of denying

equitable relief to a party, which approaches

the Court with unclean hands rests on the

principle that a person whose conduct is

inequitious is not entitled to any equity. The

said principle has been explained in

Halsbury's Laws of England as under:

“1305. He who comes into equity must

come with clean hands. —A court of equity

refuses relief to a plaintiff whose conduct in

regard to the subject-matter of the litigation

has been improper. This was formerly

expressed by the maxim „he who has

committed iniquity shall not have

equity‟, and relief was refused where a

transaction was based on the plaintiff's

fraud or misrepresentation, or where the

plaintiff sought to enforce a security

improperly obtained, or where he claimed a

remedy for a breach of trust which he had

himself procured and whereby he had

obtained money. Later it was said that the

plaintiff in equity must come with perfect

propriety of conduct, or with clean hands.

In application of the principle a person will

not be allowed to assert his title to property

which he has dealt with so as to defeat his

creditors or evade tax, for he may not

maintain an action by setting up his own

fraudulent design.

The maxim does not, however, mean that

equity strikes at depravity in a general way;

the cleanliness required is to be judged in

relation to the relief sought, and the

conduct complained of must have an

immediate and necessary relation to the

equity sued for; it must be depravity in a

legal as well as in a moral sense. Thus,

fraud on the part of a minor deprives him of

his right to equitable relief notwithstanding

his disability. Where the transaction is itself

unlawful it is not necessary to have

recourse to this principle. In equity, just as

at law, no suit lies in general in respect of

an illegal transaction, but this is on the

ground of its illegality, not by reason of the

plaintiff's demerits.”

FAO (COMM) 73/2025 and 75/2025 Page 47 of 52

19. The above passage was also referred to by

the Supreme Court in Arunima

Baruah v. Union of India, (2007) 6 SCC 120.

20. In Spry on Equitable Remedies, the author

had referred to the decisions

in Moody v. Cox : [[1917] 2 Ch. 71 : [1916-

17] All ER 548 (CA)] and Meyers v. Casey :

[(1913) 17 CLR 90] and had explained “…

that the absence of clean hands is of no

account „unless the depravity, the dirt in

question on the hand, has an

immediate and necessary relation to the equity

sued for”.

21. In the present case, neither the C&D

notice nor the respondents' reply to the C&D

Notice provides a cause for denying the

interim relief to the appellant. Viewed in this

perspective, non-disclosure of the said

documents does not present any

reason for denying interim relief to the

appellant.”

(Emphasis supplied)

65. Be that as it may, even on merits, the Appellant has alleged

suppression by the Respondent based on the following:

(a) that the Respondent engaged in business communications for

nearly two years when the Appellant was using emails and

domains having the element of “Newgen”;

(b) that the Respondent‟s trademark registration pertains only to

a label and does not confer statutory rights over the term

“Newgen”;

(c) that the Respondent previously argued before the Trade

Marks Office in favour of the co-existence of similar marks if

sufficiently distinguishable and is now taking a contradictory

stand; and,

(d) that several other entities, some predating the Respondent,

also use trade names having “NEWGEN”

FAO (COMM) 73/2025 and 75/2025 Page 48 of 52

66. In support of its contentions, the Appellant has relied on several

emails exchanged with the Respondent. A closer scrutiny reveals that

many of these emails, which either predate or coincide with the

existence of a partnership between the parties, reflect the Appellant‟s

operations under the name "VCARE InfoTech Solutions and Services

Pvt. Ltd.", which is its former name. Notably, an email dated

28.11.2023 explicitly states: “In India, we are VCARE InfoTech

Solutions and Services Pvt. Ltd”. This clearly demonstrates that,

notwithstanding the appearance of the term “NEWGEN” in the

communications, the Appellant was, in fact, operating in India under

the VCARE name. Accordingly, even if this fact had been before the

learned District Judge, it would not have influenced the outcome. It

must be remembered that trademark protection is territorial in nature;

the use of the mark in one jurisdiction does not ipso facto lead to the

generation of goodwill or protection in the other jurisdiction. The

protection of the trademark in the other jurisdiction can be obtained

only if it is shown that the trademark has been used in the other

jurisdiction or there is a transborder reputation of the subject mark. In

the present case, the Appellant has failed to meet this test. In Toyota

Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Ltd. & Ors.

(2018) 2 SCC 1, this concept has been explained as under:

“33. The overwhelming judicial and academic

opinion all over the globe, therefore, seems to

be in favour of the territoriality principle. We

do not see why the same should not apply to

this Country.

34. To give effect to the territoriality principle,

the courts must necessarily have to determine

if there has been a spillover of the reputation

and goodwill of the mark used by the claimant

who has brought the passing off action. In the

course of such determination it may be

FAO (COMM) 73/2025 and 75/2025 Page 49 of 52

necessary to seek and ascertain the existence

of not necessarily a real market but the

presence of the claimant through its mark

within a particular territorial jurisdiction in a

more subtle form which can best be manifested

by the following illustrations, though they

arise from decisions of Courts which may not

be final in that particular jurisdiction.”

67. The Appellant would also claim that the Respondent attended

events organized by the Appellant under the name "Newgen IT" in

June 2024, and that this fact was suppressed. However, this period

corresponds with the time when the partnership between the parties

was active. Such participation would be consistent with the existing

arrangement, and if it had not been, it would likely have constituted a

breach of partnership. Therefore, these facts, even if not disclosed in

the Respondent‟s plaint, do not materially impact the case and may

even undermine the Appellant‟s position.

68. We also reject the Appellant‟s contention that the Respondent‟s

trademark registration relates solely to a label, and therefore, does not

confer statutory rights over the word “NEWGEN”. As reproduced in

the Impugned Order, the Respondent currently holds more than 18

valid and subsisting trademark registrations prominently featuring

“Newgen” as the dominant and distinctive element. Many of these

marks date back decades. The Appellant‟s selective focus on a single

label mark, in an attempt to undermine the Respondent‟s broader

trademark rights, and its accompanying allegation of suppression, are

legally unfounded and without merit. Even otherwise, „NEWGEN‟ is

the predominant mark of the label. It is a settled principle of law that

though the trademark should ideally be considered as a whole, there

can be a predominant mark of the same which would attract the

FAO (COMM) 73/2025 and 75/2025 Page 50 of 52

attention of the customer and have a recall value. The said

predominant part of the trademark would, therefore, be entitled to an

equivalent protection from misuse and violation.

69. The Appellant has also argued that the Respondent had

previously submitted, before the Trade Marks Office, that similar

marks could co-exist if sufficiently distinguishable, but now adopts a

contrary stance. In our view, this too does not amount to suppression.

The specific context in which such representations were made,

including the identity of the marks involved, the goods or services

concerned, and the territorial scope of operation, must be examined.

Generalized past statements cannot serve to estop a party from

asserting its legal rights in a new factual context. For this purpose, the

Appellant‟s reliance on the judgment of SK Sachdeva (supra) is also

misplaced. That case involved the term “Shri Ram”, a religious and

commonly used expression in the public domain. The present case is

distinguishable. Even if, arguendo, “Newgen” were considered

generic or descriptive, an assumption made in the Appellant‟s favour,

longstanding and consistent use can endow it with acquired

distinctiveness, thereby justifying protection. Even otherwise, the

Appellant, having acknowledged the right of the Respondent in the

said mark, is now estopped from challenging the same.

70. The Appellant also contends that the Respondent suppressed the

existence of other entities using “Newgen” in their trade names.

However, the mere existence of third-party use would not, by itself,

amount to suppression. Trademark rights are assessed contextually,

based on various factors including the industry, market presence,

geographic reach, and consumer perception. Such third-party usage

cannot be generalized to undermine the Respondent‟s claims,

FAO (COMM) 73/2025 and 75/2025 Page 51 of 52

particularly when the parties in question, Appellant and Respondent,

have been in a formal business relationship and operate in the same

industry.

71. In this case, it is undisputed that the Appellant initially entered

the Indian market under the name “Vcare InfoTech Solutions and

Services Pvt. Ltd.” and after having formal business relations with the

Respondent, the Appellant adopted branding containing the term

“Newgen”, which closely resembles the Respondent‟s mark. Given

the similarity in business activities between the parties, references to

unrelated third-party use of “Newgen” are not analogous.

72. The present case would necessarily have to be viewed in the

context of the prior relationship between the parties. When viewed

through that lens, the Appellant‟s adoption of the mark "Newgen"

does not appear to be either innocent or entirely bona fide at this stage.

73. While the Appellant is entitled to raise all these arguments as

part of its defence before the learned District Judge, they do not

constitute suppression of material facts, sufficient to justify setting

aside the injunction granted in favour of the Respondent. These

matters are more appropriately examined in the course of a full trial,

with the benefit of the complete evidentiary record and a thorough

analysis of all relevant facts.

74. Accordingly, we are of the considered opinion that the learned

District Judge committed no error in rejecting the Appellant‟s

application under Order XXXIX Rule 4 of the CPC and confirming

the ex-parte ad-interim order, and we therefore, find no merit in these

appeals.

75. The appeals are accordingly dismissed.

FAO (COMM) 73/2025 and 75/2025 Page 52 of 52

76. It is, however, made clear that the findings set out herein are

only prima facie observations, which shall not bind or prejudice the

court at the final stage when the matter is decided on merits after the

parties have led evidence.

NAVIN CHAWLA , J.

HARISH VAIDYANATHA N SHANKAR, J.

JUNE 12, 2025/AK/sm/er/VS