FAO (COMM) 77/2025 Page 1 of 42

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on:16 October 2025

Pronounced on: 5 January 2026

+ FAO (COMM) 77/2025, CM APPL. 15229/2025

SANA HERBALS PRIVATE LIMITED .....Appellant

Through: Mr. J. Sai Deepak, Sr. Adv with

Mr. M.K. Miglani, Mr. R. Abhishek, Mr.

Amit Tomar and Mr. Hardik Gogia, Advs.

versus

MOHSIN DEHLVI & ANR. .....Respondents

Through: Ms. Swathi Sukumar, Sr. Adv.

with Ms. Tanzeela, Ms. Ritika Aggarwal,

Mr. Ritik Raghuwanshi, Ms. Shrudula

Murthy and Ms. Pratibha Singh, Advs.

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

JUDGMENT

% 05.01.2026

C. HARI SHANKAR, J.

1. This appeal assails order dated 21 December 2024, passed by

the learned District Judge, Commercial Court-03 (Central), Tis

Hazari

1

whereby the appellant’s application under Order XXXIX

Rules 1 and 2 of the Code of Civil Procedure, 1908

2

has been

dismissed. Respondent 1, in the appeal, is Mohsin Dehlvi, and

Respondent 2 is Dehlvi Remedies Pvt Ltd.

1

“the learned Commercial Court” hereinafter

2

“CPC” hereinafter.

FAO (COMM) 77/2025 Page 2 of 42

2. CS (Comm) 1776/2020

3

stands instituted by the appellant

against the respondents, alleging (i) infringement, by the respondents,

of the trade mark NOKUFSYRUP which stands registered in favour of

the appellant, under Section 23 of the Trade Marks Act, 1999, with

effect from 15 May 2015, and (ii) passing off, by the respondents, of

their product NOKUF/ KufNo Syrup as the product of the appellant,

by using the mark NOKUF.

3. No case of infringement can sustain

3.1 At the very outset, we deem it appropriate to clear the air by

observing that, as the trade mark NOKUF stands registered in favour

of Respondent 2 with effect from 3 June 1996, no allegation of

infringement can sustain against the respondents, in view of the law

declared by the Supreme Court in paras 27, 28 and 32.2 of S. Syed

Mohideen v. P. Sulochana Bai

4

which clearly hold that no

infringement action can lie against a registered trade mark, though an

action for passing off is maintainable:

“27. Sub-section (3) of Section 28 with which we are directly

concerned, contemplates a situation where two or more persons are

registered proprietors of the trade marks which are identical with

or nearly resemble each other. It, thus, postulates a situation where

same or similar trade mark can be registered in favour of more than

one person. On a plain stand-alone reading of this Section, it is

clear that the exclusive right to use of any of those trade marks

shall not be deemed to have been acquired by one registrant as

against other registered owner of the trade mark (though at the

same time they have the same rights as against third person). Thus,

between the two persons who are the registered owners of the trade

marks, there is no exclusive right to use the said trade mark against

each other, which means this provision gives concurrent right to

3

Sana Herbals Pvt Ltd v. Mohsin Dehlvi & Anr

4

(2016) 2 SCC 683

FAO (COMM) 77/2025 Page 3 of 42

both the persons to use the registered trade mark in their favour.

Otherwise also, it is a matter of common sense that the plaintiff

cannot say that its registered trade mark is infringed when the

defendant is also enjoying registration in the trade mark and such

registration gives the defendant as well right to use the same, as

provided in Section 28(1) of the Act.

28. However, what is stated above is the reflection of Section

28 of the Act when that provision is seen and examined without

reference to the other provisions of the Act. It is stated at the cost

of repetition that as per this Section owner of registered trade mark

cannot sue for infringement of his registered trade mark if the

appellant also has the trade mark which is registered. Having said

so, a very important question arises for consideration at this stage,

namely, whether such a respondent can bring an action against the

appellant for passing off invoking the provisions of Section 27(2)

of the Act. In other words, what would be the interplay of Section

27(2) and Section 28(3) of the Act is the issue that arises for

consideration in the instant case. As already noticed above, the trial

court as well as the High Court have granted the injunction in

favour of the respondent on the basis of prior user as well as on the

ground that the trade mark of the appellant, even if it is registered,

would cause deception in the mind of the public at large and the

appellant is trying to encash upon, exploit and ride upon on the

goodwill of the respondent herein. Therefore, the issue to be

determined is as to whether in such a scenario, the provisions of

Section 27(2) would still be available even when the appellant is

having registration of the trade mark of which he is using.

*****

32.2. From the reading of the aforementioned excerpts

from Kerly's Law of Trade Marks and Trade Names, it can be said

that not merely it is recognised in India but in other jurisdictions

also including England/UK (Provisions of the UK Trade Marks

Act, 1994 are analogous to the Indian Trade Marks Act, 1999) that

the registration is no defence to a passing off action and nor the

Trade Marks Act, 1999 affords any bar to a passing off action. In

such an event, the rights conferred by the Act under the provisions

of Section 28 have to be subject to the provisions of Section 27(2)

of the Act and thus the passing off action has to be considered

independent “Iruttukadai Halwa” under the provisions of the Trade

Marks Act, 1999.”

(Emphasis supplied)

FAO (COMM) 77/2025 Page 4 of 42

3.2 This Court has, following S. Syed Mohideen, held recently as

under, in Vaidya Rishi India Health (P) Ltd v. Suresh Dutt

Parashar

5

:

“19.9 Thus, the Supreme Court, in S. Syed Mohideen, has clearly

held that there can be no infringement action against the

proprietor of a registered trademark and that no injunction can be

granted against use, by the proprietor of a registered trademark, of

the mark in the class in which it is registered in his favour, on the

ground of infringement.

19.10 A passing off action, we may note, would lie even against

the proprietor of a registered trademark, as the right to sue against

passing off arises under common law, and is not a statutory

tort. Syed Mohideen, therefore, clarifies that the view that there

can be no injunction against the use of a registered trade mark is

the position as it emerges from Section 28(3) of the Trade Marks

Act. That would not, however, inhibit the Court from granting

injunction against the use of a registered trade mark, by its

proprietor, on the ground of passing off. Section 27(2) of the

Trademarks Act expressly saves passing off actions.”

(Emphasis in original)

3.3 In view of the enunciation of the law in S. Syed Mohideen, this

Court has, in Vaidya Rishi, expressed its inability to follow the earlier

decision of the Division Bench of this Court in Raj Kumar Prasad v.

Abbott Healthcare (P) Ltd

6

, which held that an infringement action

would lie even against a registered trade mark.

3.4 We, therefore, do not propose, in this judgement to enter into

the allegation of infringement as raised by the appellant against the

respondents in the suit, as it cannot lie.

5

2025 SCC OnLine Del 6147

6

(2014) 60 PTC 51 (Del-DB)

FAO (COMM) 77/2025 Page 5 of 42

3.5 We would only be examining whether a case for injunction, on

the ground of passing off is, or is not, made out.

Facts

4. Facts are of the essence in this case. A chronological list of

dates would facilitate matters:

Date

Event

20 October 1994

Date from which respondents claim to be using

NOKUF mark, selling products bearing the mark

through Respondent 2. (Disputed by appellant)

3 June 1996

Respondent 2 applied for registration of mark NOKUF

with user claim of 1994.

21 October 1997

Appellant incorporated

3 November 1997

Manufacturing Agreement whereunder Respondent 1

gave rights to appellant to manufacture Cough Syrup

under NOKUF trade mark for 3 years.

19 September 1999

Assignment Deed whereby Respondent 2 assigned

rights in respect of NOKUF trade mark to appellant.

(Asserted by appellant but denied by respondents)

2000 – 2009

Respondents purchased NOKUF Syrup from appellant.

2003

Manufacturing unit of respondents was destroyed in a

fire.

2007

Respondent 2 struck off Register of Companies

FAO (COMM) 77/2025 Page 6 of 42

15 May 2015

Appellant applied for registration of trade mark

NOKUF SYRUP

13 February 2020

Trade mark NOKUF SYRUP registered in favour of

appellant w.e.f. 15 May 2015.

22 September 2020

Trade mark NOKUF registered in favour of

Respondent 2 w.e.f. 3 June 1996

2024

Respondent 2 obtained Drug Licence

5. The Plaint

5.1 The appellant alleged, in the plaint, that, in 1998, Respondent 1

gave the right to the appellant to manufacture cough syrup under the

mark NOKUF and that, subsequently, the respondents started

purchasing NOKUF branded goods from the appellant, to further sell

it in retail in the market. This purchase was alleged to have continued

till 2006-2007. In the interregnum, the appellant claimed to have

purchased all intellectual property rights in the mark NOKUF from the

respondents vide Assignment Deed dated 19 September 1999.

Following this, the appellant established and built up a reputation in

the trademark NOKUF for cough syrup for over two decades, during

which it amassed considerable goodwill. The appellant also obtained

registration, under the Trade Marks Act, of the trademark

NOKUFSYRUP. The registration was valid and subsisting. The

appellant annexed, with the plaint, invoices purporting to represent

continuous usage of the mark NOKUF, by the appellant, consequent to

FAO (COMM) 77/2025 Page 7 of 42

the Assignment Deed dated 19 September 1999. The appellant also

claimed to have widely advertised the trademark NOKUF for syrups

and that NOKUF had become a source identifier of the appellant.

Figures of the advertisement expenses incurred by the appellant were

also provided. The label of the appellant was also registered as an art

work in the appellant’s favour under the Copyright Act, 1957. Various

other assertions, to underscore the goodwill of the appellant, were also

made in the plaint.

5.2 Apropos the respondents, the plaint averred that Respondent 1

was a Director in Dehlvi Remedies Pvt Ltd.

7

, and was guiding,

promoting and controlling its affairs. It was specifically asserted, in

the plaint, that, post the Assignment Deed dated 1 September 1999,

Respondent 1 did not use the mark NOKUF. Instead, the respondents

used to purchase NOKUF branded products from the appellant and

sell them in the market to their customers.

5.3 Respondent 2 was struck off from the list of registered

companies by the Registrar of Companies

8

in 2007. It remained struck

off till 2019. For all these years, the respondents never used the mark

NOKUF. Respondent 2 was, however, reinstated by the ROC in 2019.

Thereafter, Respondent 2 fraudulently managed to revive its dormant

application filed on 3 June 1996 for registration of the trademark

NOKUF, and obtained registration on 22 September 2020. The

trademark NOKUF was deceptively similar to the appellant’s

registered trademark NOKUFSYRUP, and the use, by the respondents,

7

“Respondent 2” hereinafter

8

"ROC" hereinafter

FAO (COMM) 77/2025 Page 8 of 42

of the trademark NOKUF was bound to dilute the reputation which

the appellant had, over the years, built in the mark.

5.4 The appellant had opposed the registration of the trademark

NOKUF vide Notice of Opposition dated 29 September 2015. By

order dated 13 August 2019, however, the opposition was rejected by

the Registrar, and the NOKUF trademark proceeded to registration in

favour of Respondent 2. An appeal, against the said order of the

Registrar, has been preferred by the appellant which, on the date of

institution of the suit, was pending before the Intellectual Property

Appellate Board

9

.

5.5 As the respondents had revealed their intention to commence

manufacture and sale of cough syrup under the mark NOKUF, the

appellant was preferring the suit as a quia timet action.

5.6 In these circumstances, the appellant prayed, in the suit, for a

decree of permanent injunction, restraining the respondents from

dealing in the mark NOKUF, or in KufNo Syrup, under which brand

they had represented themselves as intending to manufacture the

cough syrup, apart from other ancillary reliefs.

6. Written Statement

6.1 In their written statement, the respondents pleaded that

Respondent 2 adopted the trademark NOKUF in 1994, and applied for

9

"IPAB" hereinafter

FAO (COMM) 77/2025 Page 9 of 42

its registration under the Trade Marks Act in Class 5 in 1996. The

mark was extensively used by Respondent 2, and was associated, in

the minds of the public, with the second Respondent. Shakeel Jamil

and Jamul ul Rehman, who had set up the appellant-Company, were

cousins of Respondent 1. When they incorporated the appellant-

Company, Respondent 1, out of love and affection, consented to

connect with the Company as a founding Director, from which post he

stepped down on 25 May 1998. The written statement emphasises the

fact that, prior to the incorporation of the appellant-Company on 21

October 1997, the respondents were prior authors and users of the

trade mark NOKUF.

6.2 On 3 November 1997, a Manufacturing Agreement was

executed between the appellant and Respondent 2, whereunder the

appellant was permitted to manufacture products for the respondents

on license basis for 3 years. The appellant commenced manufacturing

products for the respondents under the aegis of the said Manufacturing

Agreement. This continued till September 1999. Use of the NOKUF

trademark by the appellant, during the said period, was specifically for

and on behalf of Respondent 2.

6.3 Unfortunately, on 18 September 2003, a fire broke out in the

premises of Respondent 2, resulting in loss, to the respondents, of ₹ 1

crore.

6.4 On 26 February 2007, the Assistant ROC struck off the name of

Respondent 2 from the Register of Companies for failure to reply to a

notice issued under Section 560(1) of the Companies Act.

FAO (COMM) 77/2025 Page 10 of 42

6.5 Taking advantage of these unfortunate circumstances, the

written statement averred that the appellant applied in 2016, and

fraudulently got the trademark NOKUFSYRUP registered in its name.

The appellant claimed user of the mark NOKUFSYRUP, in the

application, with effect from 1 April 1998, which was after the

commencement of user, by the respondents, of the NOKUF mark.

6.6 By order dated 11 December 2018, the National Company Law

Tribunal

10

set aside the order dated 26 February 2007 of the Assistant

ROC, and directed restoration of the name of Respondent 2 to the

Register of Companies. This was done and, thereafter, Respondent 2

became an active Company.

6.7 The respondents categorically denied execution of the

Assignment Deed dated 19 September 1999. In any event, it was

submitted that the Assignment Deed was null and void, as it was not

registered within six months from the date when it was made or within

the extendable period of three months in terms of Section 42

11

of the

Trade Marks Act.

10

"NCLT" hereinafter

11

42. Conditions for assignment otherwise than in connection with the goodwill of a business.—

Where an assignment of a trade mark, whether registered or unregistered is made otherwise than in

connection with the goodwill of the business in which the mark has been or is used, the assignment

shall not take effect unless the assignee, not later than the expiration of six months from the date on

which the assignment is made or within such extended period, if any, not exceeding three months in

the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the

advertisement of the assignment, and advertises it in such form and manner and within such period

as the Registrar may direct.

Explanation. For the purposes of this section, an assignment of a trade mark of the following

description shall not be deemed to be an assignment made otherwise than in connection with the

goodwill of the business in which the mark is used, namely:—

(a) an assignment of a trade mark in respect only of some of the goods or services

for which the trade mark is registered accompanied by the transfer of the goodwill of the

business concerned in those goods or services only; or

FAO (COMM) 77/2025 Page 11 of 42

6.8 The written statement denied that the appellant enjoyed any

goodwill or reputation in the mark NOKUF. It was further asserted

that Respondent 1 is the registered proprietor of the mark NOKUF,

over which the appellant has no right to claim monopoly. The

respondents further averred that they had been continuously

promoting sale of their goods and business under their various

trademarks, including NOKUF.

6.9 The respondents, therefore, submitted that the suit of the

appellant was liable to be dismissed.

7. The impugned order

7.1 The learned Commercial Court has noted, at the outset, that the

suit was premised as a quia timet action, as Respondent 1 had posted

pictures of the pack of its NOKUF product on its WhatsApp handle.

The appellant was contending that, till then, there had been no use of

the mark NOKUF by the respondents. The belated use of the mark

NOKUF, in which the appellant had painstakingly built a reputation

over 24 years would, contended the appellant, be irreparably damaged

if the respondents were to be permitted to use the same mark.

7.2 The respondents contended, per contra, that Respondent 1 had

through Respondent 2, been manufacturing and selling goods bearing

the NOKUF mark and that the user of the NOKUF mark by the

(b) an assignment of a trade mark which is used in relation to goods exported from

India or in relation to services for use outside India if the assignment is accompanied by

the transfer of the goodwill of the export business only.

FAO (COMM) 77/2025 Page 12 of 42

respondents, therefore, was of 1994 vintage. On 3 June 1996,

Respondent 2 applied for registration of the mark NOKUF. The

Appellant-company was incorporated only thereafter on 21 October

1997.

7.3 The respondents further submitted that, in view of the

devastating fire which had destroyed the manufacturing facility of

respondent 2 in 2003, Respondent 1 granted manufacturing rights to

Dehlvi Amber Herbal Pvt Ltd

12

to manufacture and sell goods under

the NOKUF mark. Through DAHPL, the user of the NOKUF mark,

by the respondents, therefore, continued.

7.4 The execution of the Assignment Deed dated 19 September

1999 was denied.

7.5 As against this, the appellant contended that mere registration of

the trademark NOKUF in favour of the respondents, without any use

of the mark, did not entitle the respondents to protection. It was an

admitted position that the factory of Respondent 2 was destroyed in a

fire in 2003 and that, from 2007 to 2018, the name of Respondent 2

was struck off the Register of Companies. In fact, till 2018, the

respondents did not have any manufacturing license to carry out

manufacture of drugs. During this entire period, the appellant had

been using the NOKUF trademark and, from 2000 till 2004, the

respondent in fact used to purchase NOKUF from the appellant to

further sell it in the retail market.

12

"DAHPL" hereinafter

FAO (COMM) 77/2025 Page 13 of 42

7.6 The appellant pointed out, before the learned Single Judge, that,

despite the appellant using the NOKUF mark, no cease and desist

notice was ever issued to be appellant by the respondents. There was

no record of any use of the mark NOKUF by the respondents between

2000 and 2024. Not a single invoice had been placed on record.

7.7 In these circumstances, it was submitted, by the appellant

before the learned Single Judge, that, applying the principles of

acquiescence and abandonment, the respondents were no longer

entitled to claim exclusivity over the NOKUF mark. Reliance was

placed, by the appellant, on the judgement of the Supreme Court in

Corn Products Refining Co. v. Shangrila Food Products Ltd

13

and

the judgments of Division Bench is of this Court in Virumal Praveen

Kumar v. Gokul Chand Hari Chand

14

and Rajveer Food Marketing

(I) Pvt Ltd v. Amrit Banaspati Co. Ltd

15

.

7.8 The respondent contended, per contra, that the appellant had

admitted prior user of the NOKUF trademark by the respondent. The

appellant’s contention was that, in 1997, Respondent 1 had given the

right to be appellant to manufacture cough syrup under the mark

NOKUF and that, till 2006-2007, the respondents were purchasing

NOKUF of syrup from the appellant for further sale in retail in the

market.

13

AIR 1960 SC 142

14

2002 (25) PTC 672 (Del)

15

2010 (42) PTC 147 (Del)

FAO (COMM) 77/2025 Page 14 of 42

7.9 As against this, the respondent asserted that it was the prior

author and user of the NOKUF trade mark even before the Appellant-

Company was incorporated. By Manufacturing Agreement dated 3

November 1997, Respondent 2 had permitted the appellant to

manufacture goods for the respondents for three years. Respondent 1

step down from Directorship of the appellant on 25 May 1998.

Between June 1998 and September 1999, the appellant was continuing

to manufacture pharmaceutical preparations for and on behalf of all of

Respondent 2 on license basis.

7.10 The execution of the Assignment Deed dated 19 September

1999 was denied by the respondents. Additionally, the respondents

contended that the Agreement, even if it were to be assumed to have

been executed, was null and void in law, as it was never registered by

the appellant within six months of the alleged assignment or within

the extended period of three months available in Section 42 of the

Trade Marks Act.

7.11 In rejoinder before the learned Commercial Court, the appellant

contended that, having transferred all rights in the trademark NOKUF

to the appellant vide the assignment Deed dated 19 September 1999,

the respondents had no right to seek registration of the NOKUF

trademark in their favour thereafter. The registration was, therefore,

obtained by fraud.

7.12 Dealing with the aforesaid submissions, the learned

Commercial Court has noted, at the outset, that the appellant did not

deny the fact that Respondent 2 had adopted the NOKUF trademark

FAO (COMM) 77/2025 Page 15 of 42

prior to 1999. The Assignment Deed dated 19 September 1999 was

challenged by the respondents. It was admittedly not registered. The

NOKUF trademark stood registered in favour of Respondent 2, and

the registration was continuing to subsist. The registration held by the

appellant was of the trademark NOKUFSYRUP, not NOKUF. In these

circumstances, the learned Commercial Court held that the appellant

had failed to establish a prima facie case in its favour.

7.13 Insofar as the aspect of user was concerned, the learned

Commercial Court noted that rival claims were being made by the

parties. The appellant was contending that the invoices placed on

record by the respondents did not evidence continuous use, by the

respondents, of the trademark NOKUF over a long period. On the

other hand, the appellant claimed to have popularised his business

under the NOKUF SYRUP brand, having invested a considerable

amount, over an extended period of time. Parallel claims were made

by Respondent 2. Adjudication on these rival claims, opined the

learned Commercial Court, would require detailed examination of

documents, which was not possible at the stay stage. In any event, in

these circumstances, the learned Commercial Court held that the

considerations of balance of convenience and irreparable loss were not

in favour of the appellant.

7.14 Insofar as the judgment in Virumal Pradeep Kumar was

concerned, the learned Commercial Court observed that, in that case,

there was 40 years’ non-use of the mark. As against that, in the present

case, the respondents were asserting continuous user of the NOKUF

FAO (COMM) 77/2025 Page 16 of 42

trade mark, albeit through DAHPL. This aspect could not be decided

without a trial.

7.15 Further noting the fact that the respondents’ stand was that it

had granted limited permissive user to the appellant to manufacture

pharmaceutical products for it for a limited period, and that it was

disputing the Assignment Deed dated 19 September 1999 and

asserting that it had never relinquished the right to use the NOKUF

trademark, the learned Commercial Court held that the merits of the

case did not justify grant of interim relief.

7.16 Accordingly, the application of the appellant under Order

XXXIX Rules 1 and 2 was dismissed.

Rival Contentions before this Court

8. Submissions of Mr. Sai Deepak on behalf of the appellant

8.1 Mr. Sai Deepak submits that the appellant is the registered

proprietor of the NOKUFSYRUP trade mark, which stands registered

in the appellant’s favour with effect from 15 May 2015, vide

Certificate of Registration dated 13 February 2020. The appellant has

been using the NOKUF trade mark continuously since 15 October

1999, after being granted licence in that regard by Respondent 2 vide

Assignment Deed dated 19 September 1999. Thereafter, the

respondents themselves had, in fact, purchased NOKUF Syrup from

the appellant during the period 2000 to 2004 for further retail. This

fact was admitted.

FAO (COMM) 77/2025 Page 17 of 42

8.2 Mr. Sai Deepak further submits that, as the name of Respondent

2 was struck off from the Register of Companies by the ROC between

2007 and 2018, the respondents could not have used the mark

NOKUF till 2018. In the interregnum, he submits that, by practising

fraud, the respondents had their Registration Application, filed on 3

June 1996, revived and had obtained registration of the NOKUF trade

mark in their favour. He points out that the respondents have not

placed, on record, any license or approval from the Drug Controller,

enabling them to manufacture NOKUF cough syrup even after 2018,

till 2024. Thus, he submits that, after 2009, there is, in fact, no user, by

the respondents, of the NOKUF trade mark and, after the appellant

had established and built up a reputation in the said mark, the

respondents are, in 2024, now seeking to capitalise on the said

reputation. He points out that, in response to an application filed by

the appellant under Order XI Rule 14 of the CPC, in which the

respondents were directed to produce the license issued to them by the

Drug Controller, the respondents placed, on record, a licence issued to

a third party. Moreover, this Court had, in its order dated 13

September 2024 in CM(M)-IPD 18/2024, specifically directed that the

learned Commercial Court would not take into consideration the

additional documents filed by the respondents. The fact that the

respondents have now obtained a license from the Drug Controller

indicates that they did not have any license prior to 2024.

8.3 Thus, submits Mr. Sai Deepak, after 1999, the only person or

entity using the NOKUF trade mark is the appellant. There is no user,

FAO (COMM) 77/2025 Page 18 of 42

by the respondents, of the NOKUF trade mark between 1999 and

2024.

8.4 In this backdrop, Mr. Sai Deepak places reliance on para 8 of

the judgment of the Supreme Court in Neon Laboratories v. Medical

Technologies Ltd

16

which, he submits, holds that a prior user would

have a superior right over a subsequent user even if the subsequent

user is the proprietor of a registered trade mark.

8.5 Mr. Sai Deepak further submits that, even with respect to the

period 1994 to 1999, the claim of user of the NOKUF trade mark by

Respondent 2 is sketchy. He submits that the Respondents have, by

way of evidence regarding the said user, placed on record only five

invoices. These five invoices, he submits, cannot make out a case of

user, or of accumulation of goodwill on that basis. User, he submits,

has to be continuous.

8.6 After the execution of the Assignment Deed on 19 September

1999, Mr. Sai Deepak submits that the respondents entirely

discontinued use of the NOKUF trade mark. He took us through the

provisions of the said Assignment Deed. The fact that the right to use

the NOKUF trade mark had in fact been assigned to the appellant, he

submits, is apparent from the fact that, during the period 2000 to 2004,

the respondents themselves purchased NOKUF cough syrup from the

appellant. Insofar as the extensive and continuous user, by the

appellant, of the NOKUF trademark, after having been assigned the

16

(2016) 2 SCC 672

FAO (COMM) 77/2025 Page 19 of 42

right to do so by the Assignment Deed dated 19 September 1999 is

concerned, Mr. Sai Deepak points out that several invoices have been

placed on record.

8.7 Mr. Sai Deepak places reliance on § 18.17 from Mc Carthy on

Trademarks and Unfair Competition (4

th

ed.), which reads as under:

Ҥ 18:17. Effect of invalid trademark assignment РAn

assignment in gross is invalid

West's Key Number Digest

West's Key Number Digest, Trademarks 1199

A sale of trademark rights apart from good will symbolized

by the trademark is known as an "assignment in gross."[1] The

general rule is that an "assignment in gross" of a trademark is

invalid, and operates to pass no rights to the purported assignee.[2]

In most cases, the most significant impact of an assignment in

gross is that the purported assignee does not succeed to the

assignor's priority of use of the mark.

Since in most cases the assignor permanently stops use of

the mark, no rights will remain in the assignor. [3] If the assignor

ceases use with no intent to continue, it could be deemed to have

"abandoned" the mark under the rules governing abandonment.

Because the assignor legally assigned no rights to the purported

assignee, the "assignee" does not own any transferred rights.

If an assignment is invalid as being in gross, the purported

"assignee" acquires no title in the mark, and hence has no standing

to sue a third party for infringement.[4]

As between the contracting parties, an assignment is

binding so as to prevent the assignor from asserting an

infringement claim against the assignee's use of the mark even if

the transaction is invalid because it is an as-signment in gross. [5]

Since after an assignment in gross the mark may for a time retain

its trademark meaning, a later assignment back to the original

assignor, or a later sale of the relevant good will and business to the

assignee, can avoid any implications of abandonment of rights and

FAO (COMM) 77/2025 Page 20 of 42

can even operate to patch up the transaction so as to preserve the

original priority rights in the assignee.[6]

(Emphasis supplied)

Mr. Sai Deepak points out that the learned Commercial Court has not

addressed the aspects of acquiescence and abandonment at all.

8.8 In support of his submissions, Mr. Sai Deepak finally places

reliance on paras 35, 46 to 48 and 58 of Hardie Trading Ltd v.

Addisons Paint & Chemicals Ltd

17

to submit that having (i) assigned

user of the NOKUF trademark to the appellant by the Assignment

Deed dated 19 September 1999, (ii) never used the NOKUF

trademark after 1999, till 2024, (iii) never objected to the use, by the

appellant, of the NOKUF trademark during the said period and (iv)

purchased, from the appellant, the products bearing the NOKUF

trademark, the appellant cannot now seek to injunct the respondent

from using the mark, thereby wiping away the entire goodwill and

reputation amassed by the appellant during a quarter of a century, to

the knowledge of the appellant. Mr. Sai Deepak submits that, even if,

for the sake of argument, one were to discount the Assignment Deed

dated 19 September 1999, the fact of the matter is that, between 1999

and 2024, the only user of the NOKUF trademark has been the

appellant, and there was no subsisting registration of the NOKUF

trademark in favour of the respondent during this entire period.

Without prejudice to any other factor, therefore, he submits that the

appellant has to be treated as having abandoned the NOKUF

trademark and having acquiesced to the use of the trademark by the

appellant during the entire period between 1999 and 2024.

17

(2003) 11 SCC 92

FAO (COMM) 77/2025 Page 21 of 42

8.9 In these circumstances, Mr. Sai Deepak submits that it would be

a travesty to allow the appellant to injunct the respondent from further

using the NOKUF trademark and, thereby, capitalise on the goodwill

and reputation that the appellant has, by its own sweat and tears, so to

speak, built up.

8.10 Mr. Sai Deepak, therefore, exhorts this Court to set aside the

impugned order and to grant interim injunction as sought before the

learned Commercial Court.

9. Submissions of Ms. Swathi Sukumar, for the respondents

9.1 Ms. Sukumar submits, by way of response, that Respondent 1

had, through Respondent 2, commenced manufacturing and selling

medicines under the NOKUF trade mark with effect from 1994.

Respondent 2 applied for registration of NOKUF as a trademark under

Section 23 of the Trade Marks Act on 3 June 1996, claiming user of

1994, much before the appellant was even incorporated on 21 October

1997. Owing to the unfortunate fire which broke out in the premises

of Respondent 2, third-party manufacturing rights were granted to

DAHPL, though proprietorial rights in the trademarks remained with

the respondents. DAHPL applied for a license to manufacture and sell

pharmaceutical products and, thereafter, sold the products under the

respondents’ trade marks. She points out that there is no pleading or

document to indicate that Respondent 2 had assigned the trademark

NOKUF to anyone else. In that view of the matter, she submits that

Respondent 2 is the prior user and adopter of the NOKUF trademark,

FAO (COMM) 77/2025 Page 22 of 42

and has, to its credit, continuous user of the trademark, through itself

and, later, through DAHPL.

9.2 Ms. Sukumar categorically denied the execution of the

Assignment Deed dated 19 September 1999. She also submits that

there has, in the present case, been neither acquiescence nor

abandonment, by the respondents, of the NOKUF trademark.

9.3 Ms. Sukumar points out that, the present case being one of

passing off, it was incumbent on the appellant to establish goodwill in

the NOKUF trade mark, to succeed in obtaining any injunctive orders.

She submits that there is no material on the basis of which such

accumulation of goodwill can be said to have been made out. She

points out that a total of 32 invoices have been filed by the appellant,

of which six represented sales to the respondents and 12 represented

sales to the common distributor DAHPL. There were only 14

independent invoices to third parties. Insofar as advertisement

expenses are concerned, Ms. Sukumar points out that there is only one

undated advertisement on record, during the period 2012 to 2014. No

evidence of promotional expenses have been placed on record. She

submits that, in these circumstances, evidence of goodwill and

reputation, as has mandatorily to be led by a plaintiff in order to

sustain a claim of passing off, is woefully lacking in the present case.

She relies, for this purpose, on Brihan Karan Sugar Syndicate Pvt

Ltd v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana

18

and Vishal Gupta v. Rahul Bansal

19

.

18

(2024) 2 SCC 577

19

2025 SCC OnLine Del 4389 (DB)

FAO (COMM) 77/2025 Page 23 of 42

9.4 Insofar as the Assignment Deed dated 19 September 1999 is

concerned, without prejudice to her contention that the document is

itself disputed, she submits that the Deed, if read, purports to transfer

only the rights in the trademark without transfer of the accompanying

goodwill. At the time when the Assignment Deed was executed, it is

submitted that the Trade and Merchandise Marks Act, 1958

20

was in

force and, under Section 38(1)

21

thereof, transfer of rights in a

trademark, without accompanying transfer of goodwill, was not

permissible, unlike Section 39

22

of the present Trade Marks Act. As

such, the Assignment Deed was unenforceable in law.

9.5 Ms. Sukumar further submits that, as a licensee of the

respondents under the Manufacturing Agreement dated 3 November

1997, the appellant cannot dispute the user of the respondents. She

invites attention, in this context, to Clauses 8 and 9 of the said

Agreement, which read thus:

“8. The Manufacturer acknowledges that the trademarks,

designs, copyright and get-ups (hereinafter referred to as the

“Marks”) used on or in connection with the product is and will

ever remain the exclusive property of the Principal. The

Manufacturer shall not acquire nor shall it ever claim to have

acquired any rights or interests in and to the Marks whether by

virtue of its performance under this Agreement or otherwise ought

to have used any such property rights in any manner inconsistent

with the rights of its Proprietor.

20

"the 1958 Act" hereinafter

21

38. Assignability and transmissibility of unregistered trade marks. —

(1) An unregistered trade mark shall not be assignable or transmissible except along with the

goodwill of the business concerned.

22

39. Assignability and transmissibility of unregistered trade marks. — An unregistered trade mark

may be assigned or transmitted with or without the goodwill of the business concerned.

FAO (COMM) 77/2025 Page 24 of 42

The Manufacturer agrees that it shall execute such

undertakings or documents as the Principal may require from the

Manufacturer in relation to this Clause.

9. The Manufacturer may at its discretion disclose such

confidential information received from the Principal only to those

who are directly connected or involved with the use of such

information for the purpose of manufacturing of the Products”

9.6 Ms. Sukumar also places reliance on para 47 of the judgment of

the Supreme Court in Hardie Trading. She submits that, as the

rectification proceedings under Section 57, instituted by the appellant,

are pending, there can be no question of abandonment. In any event,

she submits that the issue of whether there exists, or does not exist,

abandonment, has to be decided in the said Section 57 proceedings.

9.7 Ms. Sukumar concludes her submissions by pointing out that

the appellant has not sought specific performance of the Assignment

Deed dated 19 September 1999.

9.8 Accordingly, submits Ms. Sukumar, the appeal, being bereft of

merits, deserves to be dismissed.

Analysis

10. We must observe that Mr. Sai Deepak, with his characteristic

persuasive skills, did give us occasion, on the conclusion of

proceedings, to cogitate as to whether he had not made out a case. It is

for this reason that, instead of dictating the order in court, we reserved

judgment.

FAO (COMM) 77/2025 Page 25 of 42

11. Look at the facts, says Mr. Sai Deepak. The respondents can

claim, at the highest, to user of the NOKUF trademark or a period of

five years between 1994 and 1999. Thereafter, there is not a fragment

of material to indicate any user, by the respondents, of the NOKUF

trademark till date. In the meanwhile, on 19 September 1999, the

respondents themselves, through Respondent 2, assigned user of the

NOKUF trademark to the appellant. Even if the said Assignment Deed

were to be treated as disputed, the fact remains that, after 1999, till

date, there is no user of the NOKUF trademark by the respondents.

The plea of user through DAHPL has no legs to stand in law. Over

this period of a quarter of a century, from 1999 to 2024, it is the

appellant who has, by continuous and uninterrupted user of the

NOKUF trademark, established enduring goodwill and reputation. In

fact, during this period, the respondents themselves purchased

NOKUF cough syrup from the appellant. It was only when the

appellant amassed goodwill in the market that, in 2020, Respondent 2

managed, by fraud, to obtain registration of the NOKUF trademark in

its favour, against an application made as far back as on 3 June 1996.

To allow the respondents, now, to capitalise on this registration and to

injunct the appellant from any further use of the NOKUF trademark

for cough syrup, after the appellant has built up a reputation in full

knowledge of the respondents, he submits, would be no less than

complete injustice. If this is not a classic case of abandonment and

acquiescence, he questions, what is? The learned Commercial Court,

he points out, has not adverted to any of these considerations.

FAO (COMM) 77/2025 Page 26 of 42

12. The case, as we have pointed out, in equity, leans strongly in

favour of the appellant.

13. But what about the law? This is commercial litigation. Equity,

in matters of commerce, has to yield place to the dictates of the law.

14. We propose to commence our consideration of the law with an

examination of the judgment of the Supreme Court in Neon

Laboratories, as we feel that the decision is of considerable

significance in the facts before us.

15. Neon Laboratories, and its impact on the case

15.1 Medical Technologies Ltd

23

was the original plaintiff in the

suits which travelled up to the Supreme Court. MTL claimed to have

been using the mark PROFOL since April 1998. On coming to learn

that Neon Laboratories

24

was introducing a drug, in the market, with

the same constituents, under the mark ROFOL, MTL instituted the

suit, claiming that the marks ROFOL and PROFOL were deceptively

similar and, therefore, seeking an injunction, restraining Neon from

using the mark ROFOL.

15.2 Neon pleaded, in defence, that the trademark ROFOL stood

registered, in its favour, under Section 23 of the Trade Marks Act, on

14 September 2001, with effect from 19 October 1992, though it

23

"MTL" hereinafter

24

"Neon" hereinafter

FAO (COMM) 77/2025 Page 27 of 42

conceded that it had commenced user of the mark ROFOL only from

16 October 2004.

15.3 The High Court of Bombay granted an injunction in favour of

MTL and against Neon, against which Neon appealed to the Supreme

Court.

15.4 Paras 8 to 11 of the report, to the extent they are relevant, read

thus:

“8. It may be reiterated that the respondent-plaintiffs assert that

their predecessor-in-interest had initiated user of the trade

mark Profol in 1998, when it commenced production thereof and

the respondent-plaintiffs succeeded to the user of the mark upon

amalgamation with their predecessor-in-title in the year 2000. The

position that emerges is that whilst the appellant-defendant had

applied for registration of its trade mark several years prior to the

respondent-plaintiffs (1992 as against 26-5-1998 at the earliest),

the user thereof had remained dormant for twelve years. We can

appreciate that this passivity may be the result of research of the

product or the market, but the appellant-defendant will have to

explain its supineness through evidence. In this interregnum, the

respondent-plaintiffs had not only applied for registration but had

also commenced production and marketing of the similar drug and

had allegedly built up a substantial goodwill in the market

for Profol. The legal nodus is whether the prior registration would

have the effect of obliterating the significance of the goodwill that

had meanwhile been established by the respondent-plaintiffs.

Would a deeming provision i.e. relating registration retrospectively

prevail on actuality—competing equities oscillate around prior

registration and prior user.

9. Section 34 of the Trade Marks Act, 1999 (the Act) deserves

reproduction herein:

“34. Saving for vested rights.—Nothing in this Act

shall entitle the proprietor or a registered user of registered

trade mark to interfere with or restrain the use by any

person of a trade mark identical with or nearly resembling

it in relation to goods or services in relation to which that

FAO (COMM) 77/2025 Page 28 of 42

person or a predecessor-in-title of his has continuously used

that trade mark from a date prior—

(a) to the use of the first-mentioned trade mark

in relation to those goods or services be the

proprietor or a predecessor-in-title of his; or

(b) to the date of registration of the first-

mentioned trade mark in respect of those goods or

services in the name of the proprietor of a

predecessor-in-title of his;

whichever is the earlier, and the Registrar shall not refuse

(on such use being proved), to register the second-

mentioned trade mark by reason only of the registration of

the first-mentioned trade mark.”

This section palpably holds that a proprietor of a trade mark does

not have the right to prevent the use by another party of an

identical or similar mark where that user commenced prior to the

user or date of registration of the proprietor. This “first user” rule is

a seminal part of the Act. While the case of the respondent-

plaintiffs is furthered by the fact that their user commenced prior to

that of the appellant-defendant, the entirety of the section needs to

be taken into consideration, in that it gives rights to a subsequent

user when its user is prior to the user of the proprietor and prior to

the date of registration of the proprietor, whichever is earlier. In

the facts of the case at hand, the appellant-defendant filed for

registration in 1992, six years prior to the commencement of user

by the respondent-plaintiffs. The appellant-defendant was, thus, not

prevented from restraining the respondent-plaintiffs' use of the

similar mark Profol, but the intention of the section, which is to

protect the prior user from the proprietor who is not exercising the

user of its mark prima facie appears to be in favour of the

respondent-plaintiffs.

10. Section 47 of the Act is in the same vein and statutory

strain inasmuch as it postulates the possibility of a registered mark

being taken off the register on an application being made by any

aggrieved person, inter alia, on the ground that for a continuous

period of five years and three months from the date on which the

trade mark was registered, there was no bona fide use thereof. In

the case in hand, prima facie, it appears that for over five years

after a registration application was made by the appellant-

defendant, the mark was not used. Facially, the Act does not permit

the hoarding of or appropriation without utilisation of a trade mark;

nay the appellant-defendant has allowed or acquiesced in the user

of the respondent-plaintiffs for several years. The legislative intent

behind this section was to ordain that an applicant of a trade mark

does not have a permanent right by virtue of its application alone.

Such a right is lost if it is not exercised within a reasonable time.

FAO (COMM) 77/2025 Page 29 of 42

11. We must hasten to clarify that had the appellant-defendant

commenced user of its trade mark Rofol prior to or even

simultaneous with or even shortly after the respondent-plaintiffs'

marketing of their products under the trade mark Profol, on the

appellant-defendant being accorded registration in respect

of Rofol which registration would retrospectively have efficacy

from 19-10-1992, the situation would have been unassailably

favourable to it. What has actually transpired is that after applying

for registration of its trade mark Rofol in 1992, the appellant-

defendant took no steps whatsoever in placing its product in the

market till 2004. It also was legally lethargic in not seeking a curial

restraint against the respondent-plaintiffs. This reluctance to

protect its mark could well be interpreted as an indication that the

appellant-defendant had abandoned its mark at some point during

the twelve-year interregnum between its application and the

commencement of its user, and that in 2004 it sought to exercise its

rights afresh. It would not be unfair or fanciful to favour the view

that the appellant-defendant's delayed user was to exploit the niche

already created and built-up by the respondent-plaintiffs for

themselves in the market. The “first in the market” test has always

enjoyed pre-eminence.”

15.5 The opening sentence in paragraph 11 of the report, to our

mind, is fatal to the case that Mr. Sai Deepak seeks to set up.

15.6 The fatally distinguishing feature, between the case before us

and the facts which were before the Supreme Court in Neon

Laboratories, is the fact that there was no user, by the plaintiff MTL,

prior to the registration of the ROFOL mark in favour of Neon.

Neon’s a registration dated back to 19 October 1992, whereas MTL’s

user commenced in April 1998.

15.7 In the present case, however, the user of the NOKUF mark, by

the respondents, as the defendants in the suit, pre-dated the user of the

NOKUF mark by the appellant, as well as the registration of the

NOKUF mark in favour of the appellant.

FAO (COMM) 77/2025 Page 30 of 42

15.8 The appellant has not seriously been able to question the fact

that the NOKUF mark was in fact used by Respondent 2 between

1994 and 1999. We also agree with Ms. Sukumar that, in view of

Clauses 8 and 9 of the Manufacturing Agreement dated 3 November

1997, which is not disputed, the appellants cannot dispute the fact of

user, by the respondents, of the NOKUF mark prior to 1999.

15.9 Though Mr. Sai Deepak sought to contend that such user had to

be continuous, in order for it to generate goodwill, and that sporadic

user of the mark would not suffice, we cannot agree. What is relevant,

for the purposes of Section 34, or for the purposes of ensuring

whether the mark of the defendant can be injuncted in a passing off

action, is user by the defendant, irrespective of whether it is sporadic

or continuous. Goodwill, if at all, becomes a factor which has to be

considered in assessing the plaintiff the right to an injunction in a

passing off suit.

15.10 This position is, in fact, apparent even from the opening

sentence in para 11 of Neon Laboratories, which states that, had the

defendant commenced user of the ROFOL trademark prior to the user

of the PROFOL mark by the plaintiffs, once the defendant had

obtained registration of the PROFOL mark, which would have

retrospective applicability, the situation would have been unassailably

favourable to it. All that is required, therefore, is commencement of

user by the defendant, and not continuous user.

FAO (COMM) 77/2025 Page 31 of 42

15.11 In the present case, commencement of user of the NOKUF

trademark, by the respondents, was in 1994. In any case, even prior to

the incorporation of the appellant, the respondents commenced user of

the mark. The registration of the NOKUF trademark in favour of the

respondents, though granted on 22 September 2020, dated back to 3

June 1996. It continues to remain valid till date. The case is, therefore,

squarely covered by the opening sentences in para 11 of Neon

Laboratories. To employ the felicitous phrase used by the Supreme

Court, the situation is, therefore, unassailably favourable to the

respondents.

15.12 The use of the word “unassailably” is obviously deliberate. It

forecloses the right of the plaintiff.

15.13 Neon Laboratories, therefore, is clearly in favour of the

respondents. Inasmuch as their user of the NOKUF trademark was

prior to the user of the mark by the appellant, and the registration of

the NOKUF trademark in favour of the respondents dates back to 3

June 1996, the appellant would not be in a position to injunct the

respondents from using the mark.

16. Re. Assignment Deed dated 19 September 1999

16.1 Much, to our mind, turns on this Assignment Deed.

16.2 The Assignment Deed was purportedly executed on 19

September 1999, prior to the coming into force of the present Trade

FAO (COMM) 77/2025 Page 32 of 42

Marks Act on 15 September 2003

25

. Its validity has, therefore, to be

tested in terms of the erstwhile 1958 Act.

16.3 We deem it appropriate to reproduce the Assignment Deed

dated 19 September 1999, in its entirety, thus:

“THIS DEED OF ASSIGNMENT made on 14

th

Sept 1999 between

DEHLVI REMEDIES PVT LTD, AT B-10, SECTOR-IX, NOIDA-

201 301, hereinafter called the Assignor of the one part and SANA

HERBALS PVT LTD AT 238, FIE PATPARGANJ, DELHI -110

092, hereinafter called the Assignee of the other part.

WHEREAS the said, DEHLVI REMEDIES PVT LTD, the owner

and the proprietor of a Trade Mark NOKUF SYRUP for

PHARMACEUTICALS number 717010 duly registered in the

Registrar of Trade Marks maintained by the Trade Mark

Registration office at INDIA for PHARMACEUTICALS.

AND WHEREAS the said DEHLVI REMEDIES PVT LTD has

made actual and bona fide use of the said Trade Mark in INDIA in

relation to the NOKUF SYRUP for PHARMACEUTICALS,

manufactured by them at their factory in INDIA.

AND WHEREAS the SAID ASSIGNEE wants to Purchase the

said brand NOKUF SYRUP for PHARMACEUTICALS in INDIA

and rest of the worlds. The Assignor agrees for the same and an

consideration of Rs.10000/- is fixed for Assigning of the said Trade

Mark, Assignee agrees to pay the said amount to Assignor.

NOW THIS DEED OF ASSIGNMENT WITNESSES that in

pursuance of the said agreement both the parties are agreed on the

following:

1. That Assignee can use the brand of the Assignor – NOKUF

SYRUP for PHARMACEUTICALS.

2. That Assignee shall make pupular the said barnd at his own

cost.

3. That Assignee can file application for registration of the

said brand for any other product in India or any where in India. In

25

Vide S.I. 1048(E) dated 15 September 2003 read with Section 2(3) of the Trade Marks Act, under which the

Act would come into force on the date to be notified by the Central Government in the Official Gazette.

FAO (COMM) 77/2025 Page 33 of 42

the name of assignee or their company’s name Assignor has no

objection for the same.

4. That assignee will be the absolute owner of the said brand

in India for PHARMACEUTICALS.

5. That the said Assignor hereby admits, acknowledges and

confirms, he the Assignor of NOKUF SYRUP does hereby grant,

transfer and assign upon the terms hereinafter mentioned, the

exclusive use and all benefits of the aforesaid Trade Mark in

relation to the goods of PHARMACEUTICALS, manufactured by

him at his address at Corp. Office B-18, SECTOR-IX, NOIDA-201

301, in India.

AND the said assignor hereby covenatns with the assignee that he

will not infringe nor use a mark identical with the Trade Mark

hereby assigned nor use another Trade Mark nearly resembling it

as to be likey to deceive or cause confusion, in the course of trade,

in relation to the goods in respect of which it is registered and in a

manner as to render the use of this mark likely to be taken either as

being a use of the said Trade Mark or to import a reference to the

assignor.

AND the assignor further covenants that he, the assignor, shall at

the cost of Rs.10000/- or any person claiming through him do or

cuase to be done any other act, deed or thing as may be required for

more perfectly assuring the aforesaid assignment.

Sd/-

IN WITNESS ASSIGNOR

1.

Sd/-

ASSIGNEE”

16.4 A comparison of Section 38(1) of the 1958 Act with Section 39

of the 1999 Trade Marks Act makes the distinction between the

provisions stark. Clearly, the transfer of goodwill along with the right

to use the trade mark was mandatory under the 1958 Act, for the

Assignment Deed to be valid.

FAO (COMM) 77/2025 Page 34 of 42

16.5 Inasmuch as the Assignment Deed dated 19 September 1999

does not expressly transfer goodwill in the trade mark, and only

transfers the right to use the mark, it is prima facie not a valid

Assignment Deed. As to whether the transfer of goodwill can be read

into the Deed, read with surrounding cirucmstances, would, at best, be

a triable issue. At the Order XXXIX stage, therefore, the Assignment

Deed dated 19 September 1999 would be unenforceable at law. We are

in agreement with this contention of Ms. Sukumar.

17. De hors the Assignment Deed, does the appellant have a right

to an injunction?

17.1 The aspect of goodwill

17.1.1 Passing off, as a common law tort, has three ingredients, viz. (i)

goodwill of the plaintiff in the mark, (ii) misrepresentation, by the

defendant, of his goods as those of the plaintiff, by using an identical

or deceptively similar mark and (iii) damage to the plaintiff as a

consequence.

26

17.1.2 In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industris

Ltd

27

, the Supreme Court has clarified that this accumulation of

goodwill, by the plaintiff, had to be prior to commencement of user of

the mark by the defendant. This position stands reiterated in, inter

alia, Pernod Ricard India (P) Ltd v. Karanveer Singh Chhabra

28

.

26

Refer Brihan Karan Sugar Syndicate (supra)

27

(2018) 2 SCC 1

28

2025 SCC OnLine SC 1701

FAO (COMM) 77/2025 Page 35 of 42

17.1.3 Where the user of the mark by the defendant is prior to

commencement of user of the mark by the plaintiff, therefore, the

possibility of passing off stands ipso facto ruled out.

17.1.4 In the present case, the respondents were admittedly using the

NOKUF trade mark from 1994 to 1997, by which time the appellant

had not even been incorporated. There can, therefore, be no question

of any accumulation of goodwill by the appellant prior to

commencement of user by the respondents. Ex facie, therefore, the

appellants cannot, even on this ground, seek an injunction against the

respondents on the ground of passing off.

17.2 Abandonment

17.2.1 Mr Sai Deepak, however, submits that, by long disuse from

1999 till 2024 – in fact, till date – the respondents must be taken to

have abandoned the NOKUF trade mark. The respondents, on the

other hand, submitted, in their pleadings, that, consequent to the fire

which engulfed the factory of Respondent 2 in 2003, they were getting

goods using their trade marks manufactured from DAHPL and that,

therefore, there was no discontinuance of user. Mr. Sai Deepak

submits that DAHPL is a third party, and that user by a third party is

not user by the respondents.

17.2.2 To support his case of abandonment, Mr. Sai Deepak places

reliance on Hardie Trading. In fact, learned Senior Counsel for both

sides have relied on Hardie Trading, quoting passages from the

decision which, in their submission, support their respective stands.

FAO (COMM) 77/2025 Page 36 of 42

17.2.3 To our mind, Hardie Trading is being relied upon, entirely out

of context. It is axiomatic that judgements of the Supreme Court are

not to be likened to Euclid’s theorems, and are to be understood and

applied keeping in mind the issue before the Court and the facts with

which the Court was seized.

17.2.4 The facts in Hardie Trading, and the litigative back-and-forth

among the parties in that case, were extremely involved, and we do

not propose to advert thereto. Suffice it, however, to state that Hardie

Trading was concerned with an application under Section 46

29

of the

1958 Act, which permitted a party to apply to the Registrar for

removal, from the Register of Trade Marks, of the registered trade

mark of another, on the ground of continuous non-use. The provision,

which parallels, in a sense, Section 47

30

of the present Trade Marks

29

46. Power to cancel or vary registration and to rectify the register.—

(1) On application in the prescribed manner by any person aggrieved to a High Court or to

the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the

registration of a trade mark on the ground of any contravention, or failure to observe a condition

entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by

any entry made in the register without sufficient cause, or by any entry wrongly remaining on the

register, or by any error or defect in any entry in the register, may apply in the prescribed manner to

a High Court or to the Registrar, and the tribunal may make such order for making, expunging or

varying the entry as it may think fit.

30

47. Removal from register and imposition of limitations on ground of non-use.—

(1) A registered trade mark may be taken off the register in respect of the goods or services in

respect of which it is registered on application made in the prescribed manner to the Registrar or the

[High Court] by any person aggrieved on the ground either—

(a) that the trade mark was registered without any bona fide intention on the part

of the applicant for registration that it should be used in relation to those goods or services

by him or, in a case to which the provisions of Section 46 apply, by the company

concerned or the registered user, as the case may be, and that there has, in fact, been no

bona fide use of the trade mark in relation to those goods or services by any proprietor

thereof for the time being up to a date three months before the date of the application; or

(b) that up to a date three months before the date of the application, a continuous

period of five years from the date on which the trade mark is actually entered in the

register or longer had elapsed during which the trade mark was registered and during

which there was no bona fide use thereof in relation to those goods or services by any

proprietor thereof for the time being:

Provided that except where the applicant has been permitted under Section 12 to register an

identical or nearly resembling trade mark in respect of the goods or services in question, or where

the [Registrar or the High Court, as the case may be,] is of opinion that he might properly be

FAO (COMM) 77/2025 Page 37 of 42

Act, required an intention to abandon the mark as a pre-requisite to

make out a case of non-use within the meaning of Section 46(1), as

per para 46 of Hardie Trading.

17.2.5 Non-use, with an intention to abandon the mark, can be a

ground to seek removal of a registered trade mark from the Register,

even under Section 47 of the 1999 Trade Marks Act. Till that is done,

however, the mark continues to remain on the Register, and remains

valid. As in the case of Section 46 of the 1958 Act, Section 47(3) of

the 1999 Trade Marks Act also entitles the registrant of the mark, of

which removal is sought, to plead special circumstances, or lack of

any intention to abandon, as a defence against the rectification action.

That would involve an examination of facts, which would have to be

undertaken by the Court, or authority, seized with the Section 47

proceedings, and not by the Commercial Court hearing the Order

XXXIX application. Ms. Sukumar specifically so submits, and we

agree with her.

permitted so to register such a trade mark, the [Registrar or the High Court, as the case may be,]

may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is

shown that there has been, before the relevant date or during the relevant period, as the case may

be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to—

(i) goods or services of the same description; or

(ii) goods or services associated with those goods or services of that description

being goods or services, as the case may be, in respect of which the trade mark is

registered.

*****

(3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1)

or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been

due to special circumstances in the trade, which includes restrictions on the use of the trade mark in

India imposed by any law or regulation and not to any intention to abandon or not to use the trade

mark in relation to the goods or services to which the application relates.

FAO (COMM) 77/2025 Page 38 of 42

17.2.6 The plea of abandonment, as advanced by Mr. Sai Deepak,

therefore, to our mind, is prima facie devoid of substance, at least as a

basis to seek injunction against the respondents.

17.3 The plea of non-use as a defence to passing off

17.3.1 Mr. Sai Deepak has also cited Veerumal Praveen Kumar v.

Needle Industries (India) Ltd

31

. Veerumal dealt with the issue of

whether a plea of non-use, by the plaintiff, of the asserted mark, could

be used as a defence by the defendant in an infringement proceeding.

This Court has, in its judgement in Oxygun Health Pvt Ltd v.

Pneumo Health Care Pvt Ltd

32

, dealt with Veerumal in detail. The

present case does not call for any such exercise, as we are concerned

with a passing off action by the appellant against the respondents.

Veerumal has no application in such circumstances.

17.3.2 We may express it otherwise as well. The respondents had been

using the NOKUF trade mark between 1994 and 1999. Once this fact

was prima facie established, the appellant cannot seek to injunct the

respondents from later reviving the said user on the ground that, in 25

years in the interregnum, the respondents had not used the mark and

the appellant had garnered considerable goodwill therein. The law of

passing off does not recognize any such ground for injunction.

17.3.3 At the cost of repetition, we emphasize that, to succeed in an

action for passing off, the plaintiff has to establish that, prior to

31

93 (2001) DLT 600

32

2025 SCC OnLine Del 4401 (DB)

FAO (COMM) 77/2025 Page 39 of 42

adoption of the mark by the defendant, it had accumulated goodwill

and reputation, on which the defendant was seeking to ride.

17.3.4 This position stands settled by the judgment of the Supreme

Court in Toyota. In that case, the defendant Prius Auto Industries

33

commenced using the mark “Prius”, which formed subject matter of

the dispute, in 2001. Toyota sought to injunct said user, on the ground

that it breached the goodwill of Toyota in the mark “Prius”. In para

38 of the report, the Supreme Court held as under:

“38. The next exercise would now be the application of the

above principles to the facts of the present case for determination

of the correctness of either of the views arrived at in the two-tier

adjudication performed by the High Court of Delhi. Indeed, the

trade mark “Prius” had undoubtedly acquired a great deal of

goodwill in several other jurisdictions in the world and that too

much earlier to the use and registration of the same by the

defendants in India. But if the territoriality principle is to govern

the matter, and we have already held it should, there must be

adequate evidence to show that the plaintiff had acquired a

substantial goodwill for its car under the brand name “Prius” in the

Indian market also. The car itself was introduced in the Indian

market in the year 2009-2010. The advertisements in automobile

magazines, international business magazines; availability of data in

information-disseminating portals like Wikipedia and online

Britannica Dictionary and the information on the internet, even if

accepted, will not be a safe basis to hold the existence of the

necessary goodwill and reputation of the product in the Indian

market at the relevant point of time, particularly having regard to

the limited online exposure at that point of time i.e. in the year

2001. The news items relating to the launching of the product in

Japan isolatedly and singularly in The Economic Times (issues

dated 27-3-1997 and 15-12-1997) also do not firmly establish the

acquisition and existence of goodwill and reputation of the brand

name in the Indian market. Coupled with the above, the evidence

of the plaintiff's witnesses themselves would be suggestive of a

very limited sale of the product in the Indian market and virtually

the absence of any advertisement of the product in India prior to

April 2001. This, in turn, would show either lack of goodwill in the

33

“PIA” hereinafter

FAO (COMM) 77/2025 Page 40 of 42

domestic market or lack of knowledge and information of the

product amongst a significant section of the Indian population.

While it may be correct that the population to whom such

knowledge or information of the product should be available

would be the section of the public dealing with the product as

distinguished from the general population, even proof of such

knowledge and information within the limited segment of the

population is not prominent.”

(Emphasis supplied)

17.3.5 Even more direct, on the point, is the following enunciation, in

para 7 of Laxmikant V. Patel v. Chetanbhai Shah

34

, often regarded as

authority on the law of passing off:

“7. Though there is overwhelming documentary evidence filed

by the plaintiff in support of his plea that he has been carrying on

his business in the name and style of Muktajivan Colour Lab since

long we would, for the purpose of this appeal, proceed on the

finding of fact arrived at by the trial court and not dislodged by the

High Court, also not seriously disputed before this Court that the

plaintiff has been doing so at least since 1995. Without entering

into controversy whether the defendants had already started using

the word “Muktajivan” as a part of their trade name on the date of

the institution of the suit we would assume that such business of

the defendants had come into existence on or a little before the

institution of the suit as contended by the defendants. The principal

issue determinative of the grant of temporary injunction would be

whether the business of the plaintiff run in a trade name of which

“Muktajivan” is a part had come into existence prior to

commencement of its user by the defendants and whether it had

acquired a goodwill creating a property in the plaintiff so as to

restrain the use of the word Muktajivan in the business name of a

similar trade by a competitor i.e. the defendants.”

(Emphasis supplied)

17.3.6 Goodwill in the plaintiff’s mark has, therefore, to be shown to

exist prior to commencement of user of the mark by the defendant. In

its recent decision in Pernod Ricard, the Supreme Court has reiterated

that, to succeed in a passing off action, “the plaintiff must demonstrate

34

(2002) 3 SCC 65

FAO (COMM) 77/2025 Page 41 of 42

prior and continuous use, and that the mark has acquired

distinctiveness in the minds of the public”.

17.3.7 There is no question, in the present case, of this requirement

being fulfilled, as the respondents used the NOKUF trade mark from

1994 to 1997, and the appellant had not even been incorporated till

then.

17.3.8 Law does not envisage subsequent disuse of the mark, by the

respondents, for any length of time, as entitling the appellant to

injunction on the ground of passing off. The submission of the

appellant is that, though the respondents had used the NOKUF trade

mark from 1994 to 1997, they discontinued use for the next 25 years

and that, as the appellant had used the mark during that period and

amassed goodwill and reputation, the respondent should now be

injuncted from again using the mark. The plea is sound on equity, but

unsound in law.

18. No other aspect, in our view, remains to be addressed. The

appellant is clearly not entitled to injunct the respondents from using

the mark NOKUF, for which they hold a subsisting registration.

Conclusion

19. We, therefore, see no reason to interfere with the ultimate

conclusion of the learned Commercial Court to deny injunction to the

appellant.

FAO (COMM) 77/2025 Page 42 of 42

20. The appeal is therefore dismissed with no orders as to costs.

C. HARI SHANKAR, J.

OM PRAKASH SHUKLA, J.

JANUARY 5, 2026

AR