Delhi High Court
Kamal Raheja vs Hahnemann Pure Drug Co on 8 July, 2025
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~101
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (COMM) 105/2025, CM APPL. 25863/2025, CM APPL.
25864/2025 & CM APPL. 25865/2025
KAMAL RAHEJA .....Appellant
Through: Dr. Sarbjit Sharma, Adv.
versus
HAHNEMANN PURE DRUG CO. .....Respondent
Through: Mr. Peeyoosh Karla, Mr.
Shadman Ali, Mr. K. P. Singh, Mr. Vikrant,
Mr. Yashwant Singh Baghel, Mr. Rishabh
Thakur and Ms. Lehar, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
JUDGMENT (ORAL)
% 08.07.2025
C.HARI SHANKAR, J.
1. The learned District Judge (Commercial Court-02), Rohini1 has,
by the impugned order dated 7 March 2025, allowed an application
under Order XXXIX Rules 1 and 2 filed by the respondent and has
dismissed an application under Order XXXIX Rule 4 of the CPC2
filed by the appellant, as the plaintiff and defendant, respectively, in
CS (Comm) 346/20233. By the impugned order, the learned
Commercial Court has made the ex parte ad interim order dated 8
June 2023, passed by his learned predecessor, absolute. By the order
1
“the learned Commercial Court” hereinafter
2
Code of Civil Procedure, 1908
3
Hahneman Pure Drug Co. v. Kamal Raheja
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SHARMA
Signing Date:15.07.2025
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dated 8 June 2023, the appellant, and all others acting on his behalf,
were restrained from manufacturing, selling, exporting, displaying,
advertising or in any other manner dealing or using the trade mark
MARKS GO, or any other identical or deceptively similar trademark
in respect of skincare cream and components thereof.
2. Dr. Sarabjit Sharma, appearing for the appellant, raises only one
contention. The submission is that, as the Drug License issued to the
respondent stands suspended, the respondent is not in a position to
commercially exploit the asserted MARKS GO trademark and,
therefore, was not justified in seeking an injunction against the
appellant.
3. Though no other contention was raised, a brief reference to
facts is necessary. The trademark MARKS GO stands registered in
favour of the respondent, under the Trade Marks Act, 1999, with
effect from 14 September 2010 in Class 5 of the NICE Classification
applicable to trademark registration. The registrations are admittedly
valid and subsisting. Alleging that, by manufacturing and selling
similar products under an identical trademark MARKS GO, the
appellant was infringing the registered trademark of the respondent,
CS (Comm) 346/2023 stands instituted by the respondent against the
appellant before the learned Commercial Court, seeking a decree of
permanent injunction, restraining the appellant from using the
infringing MARKS GO mark for its products. The suit was
accompanied by an application under Order XXXIX Rules 1 and 2 of
the CPC, seeking interim injunction, restraining the appellant, pending
disposal of the suit, from using the MARKS GO mark. By order dated
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SHARMA
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8 June 2023, the learned Commercial Court granted an ex parte ad
interim injunction in favour of the respondent and against the
appellant, whereby the appellant was restrained, pending disposal of
the Order XXXIX application filed by the respondent, from using the
MARKS GO mark. The Appellant filed an application under Order
XXXIX Rule 4 of the CPC, seeking vacation of the said interim order.
By the impugned order dated 7 March 2025, the learned Commercial
Court has allowed the application of the respondent under Order
XXXIX Rules 1 and 2, making the ex parte ad interim order dated 8
June 2023 absolute, and has correspondingly dismissed the appellants
application under Order XXXIX Rule 4 of the CPC.
4. The learned Commercial Court has found that the rival marks
are identical, and used for similar products, and that the appellant had
not succeeded in pleading acquiescence, on the part of the respondent,
to the use of the MARKS GO mark by the appellant, who also enjoyed
priority of user of the mark.
5. As already noted, Dr. Sarabjit Sharma, appearing for the
appellant, advanced only one submission. He did not contest the
merits of the matter, insofar as the aspect of infringement is
concerned. The only submission advanced by Dr. Sharma is that,
consequent to a show cause notice dated 13 May 2024, issued by the
authorities under the Drugs and Cosmetics Act, 1940, and cancellation
of the licence whereunder the respondents were manufacturing and
selling the products under the mark ―MARKS GO‖, the respondent is
in no position to use the mark.
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SHARMA
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6. Accordingly, he submits that there was no question of granting
any injunction in favour of the respondent.
7. He also seeks to submit that the respondent has, consequent to
cancellation of the licence, adopted a new mark namely ―MARKS
OUT‖.
8. We have considered the submissions, but are constrained to
observe that they are completely foreign to the issue of infringement
of trademark under the Trade Marks Act.
9. The right to relief against infringement is provided, under
Section 28(1)4, consequent on the factum of registration of a mark.
Commercial user of the mark is not required in order for an
infringement action to lie.
10. The fact that the registration of the respondent’s ―MARKS GO‖
mark under the Trade Marks Act is subsisting is not in dispute.
11. Once the registration of the mark is subsisting, Section 28(1)
grants, to the registrant, the right to seek relief against infringement.
12. Infringement, as defined in the various sub-sections of Section
29 of the Trade Marks Act, is not dependent on user, but on
registration. Each sub-section of Section 29 commences with the
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28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
Signature Not Verified in respect of infringement of the trade mark in the manner provided by this Act.
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SHARMA
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words ―a registered trade mark‖. Thus, the plaintiff’s trade mark is
required to be registered, and the registration subsisting; nothing
more.
13. As such, commercial user of the registered mark is not a sine
qua non for an infringement action to lie.
14. Lack of commercial user of a registered trade mark does
constitute a ground, under Section 47(1)5 of the Trade Marks Act, to
remove the trademark from the register of trademarks, but that is
subject to (i) an application being moved by an aggrieved person
seeking removal of the mark and (ii) continuous non-user of the mark,
by its registered proprietor, for a period of 5 years, up to 3 months
prior to the date of the application. In any event, there is no provision
which enables the Registrar suo motu to remove a mark from the
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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
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.
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SHARMA
Signing Date:15.07.2025
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register of trade marks. It has to be on application by an aggrieved
person.
15. There is no provision, in the Trade Marks Act, which can deem
a registered trademark not to be registered, or divest the proprietor of a
registered trade mark from the rights conferred by Section 28(1) as a
consequence of such registration, merely because the mark is not in
commercial use. We, therefore, are of the firm view that it is not open
to an infringing defendant to escape the consequences of infringement
of a registered trade mark on the ground that the proprietor of the
registered trade is not subjecting it to commercial use. The defendant
would, in that case, have to apply under Section 47(1) to have the
registered trade mark removed from the register of trademarks and can
only, thereafter, defend the case.
16. Section 28(1) commences with the words ―Subject to the other
provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive
right…‖ No doubt, therefore, the right to relief against infringement
enures only in favour of the proprietor of a registered trademark,
which is valid. At the interlocutory injunction stage, however, the
plaintiff is only required to establish a prima facie case. Section 31(1)
of the Trade Marks Act unequivocally provides that the very
registration of a trade mark shall be prima facie evidence of its
validity in all legal proceedings relating to the registered trade mark.
Thus, at the interlocutory stage, mere registration of the trade mark of
the Plaintiff would suffice to constitute prima facie evidence of its
validity. It is not open, therefore, to the defendant, at the interlocutory
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SHARMA
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stage, to ordinarily contend that the plaintiff is not entitled to any
injunction against the defendant, even where infringement is found to
exist, as the registration of the Plaintiff trade mark is invalid. The
Trade Marks Act itself contains provisions6 in which, even if the
ingredients of Section 29 are found to exist, no infringement can be set
to take place. It also contains provisions which insulate an infringing
defendant from injunction7. Short of these provisions, an infringing
defendant must suffer the consequences of infringement as envisaged
by Section 135(1)8 of the Trade Marks Act.
17. We may also refer, in this context, to the definition of use of a
mark as contained in Section 2(2)(b) and 2(2)(c)9 of the Trade Marks
Act, which make it apparent that the concept of ―use of a mark‖ under
the Trade Marks Act is much wider than mere affixation of the mark
on products which may be bought and sold in the market.
18. Besides, the cancellation of licence of the respondent has taken
place under the Drugs and Cosmetics Act. The respondent may have
his remedies against such cancellation and we cannot, at this stage,
6
Refer Sections 30(1) and 30(2)(a)
7
Refer Sections 30(1), 33, 34 and 35
8
135. Relief in suits for infringement or for passing off. –
(1) The relief which a court may grant in any suit for infringement or for passing off referred
to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the
option of the plaintiff, either damages or an account of profits, together with or without any order
for the delivery-up of the infringing labels and marks for destruction or erasure.
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(2) In this Act, unless the context otherwise requires, any reference–
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(b) to the use of a mark shall be construed as a reference to the use of printed or other visual
representation of the mark;
(c) to the use of a mark,--
(i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as
or as part of any statement about the availability, provision or performance of such
services;
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SHARMA
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predict as to whether that cancellation would persist forever.
19. The right to seek relief against infringement, under Section
28(1) read with Section 135(1) of the Trade Marks Act cannot, in any
event, be sacrificed at the altar of user.
20. The fact that the respondent may, consequent to the decision of
the authority under the Drugs and Cosmetics Act, have adopted
another mark is also no embargo on the respondent asserting his right
against infringement consequent to the registration of the mark
‗MARKS GO’.
21. No other argument has been advanced by Mr. Sharma.
22. We accordingly find no reason to interfere with the impugned
order.
23. The appeal is accordingly dismissed.
C. HARI SHANKAR, J.
AJAY DIGPAUL, J.
JULY 8, 2025/an
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SHARMA
Signing Date:15.07.2025
17:16:12