Can a registered trademark owner sue another one for infringement? If no, then how will the provision in Section 124 (5) of the Trademarks Act (“the Act”) function, allowing courts to pass interim reliefs against a proprietor of a registered trademark? A Division Bench (“DB”) of the Delhi High Court (“DHC”) has recently encountered a Pandora’s box of a case, throwing up these important issues concerning trademark infringement cases. In Abros Sports International Pvt. Ltd. v. Ashish Bansal & Ors, on 13 May 2025, the DB, comprising Justice C. Hari Shankar and Justice Ajay Digpaul, heard an appeal filed by Abros Sports International Pvt. Ltd. (“ASIP”) challenging the judgment of a Single Bench (“SB”) of the DHC. The dispute revolved around the use of the mark NEBROS, registered in the name of the respondents (Ashish Bansal and others), which was alleged to infringe the appellant’s registered mark ABROS, both used in relation to footwear.
In its ruling, the DB encountered the inconsistent approaches taken by the Court in terms of the scope of infringement action against a registered proprietor and posed the following legal questions to a larger bench:
Firstly, whether a suit for infringement can be filed against the registered proprietor of a trademark for using their own trademark.
Secondly, whether the Court can grant an interim injunction restraining such use for a registered trademark.
Thirdly, whether the grant of such an injunction should be subject to specific procedural requirements such as the defendant raising a defence under Section 30(2)(e), plaintiff challenging the validity of the defendant’s mark, the court finding the challenge prima facie tenable, allowing the defendant three months to initiate rectification proceedings, and proceeding with the suit only after the rectification outcome.
Alternatively, whether a mere allegation of invalidity by the plaintiff is sufficient to seek such interim relief.
This post will examine the extent to which this divergence is reflected in the judgment and what may lie ahead for the larger bench. But first, let us take a closer look at the scheme of key provisions and the history of the case, from the SB to the DB.
An Overview of Relevant Sections for Further Discussion
Section 28 of the Act grants the exclusive right to use a registered trademark for the goods/services it covers and to seek relief for infringement (sub-section 1), subject to any conditions or limitations attached to the registration (sub-section 2). Where two or more identical or similar marks are registered, none of the proprietors can claim exclusivity against the other merely by virtue of registration, but each retains full rights against third parties (sub-section 3).
Section 29 lays down what constitutes infringement of a registered trademark. It is infringed when someone, without authorisation, uses an identical or deceptively similar mark in the course of trade (sub-section 1); such use causes likelihood of confusion between the marks and/or the goods/services (sub-section 2); with a presumption of confusion in cases of identical marks and identical goods/services (sub-section 3); and even for dissimilar goods/services if the registered mark has a reputation in India whose unfair advantage is taken (sub-section 4).
Section 30(2)(e) of the Act gives an exception from infringement for a registered trademark being identical or similar to another registered mark, whose use was done under the rights granted by its registration.
Section 124 of the Act deals with the stay of proceedings where the validity of registration of the trade mark is questioned. Specifically, the case refers to section 124(1), and more narrowly 24(1)(b) (if in a trademark infringement suit the defendant claims protection under Section 30(2)(e) and the plaintiff challenges the validity of the defendant’s mark, the court must assess the plea and may adjourn for rectification proceedings) and Section 124(1)(ii) (if a prima facie valid plea of trademark invalidity is raised, the court must frame an issue and adjourn the suit for three months to allow rectification proceedings). It also refers to section 124(2) (if the party proves they’ve filed a rectification application within the prescribed or extended time, the suit shall be stayed until the rectification is finally decided) and 124(5) (the stay of the infringement suit does not bar the court from passing interim orders such as injunctions, appointment of a receiver, or attachment of property)
Section 57(1) of the Act pertains to rectification of a mark wherein any aggrieved person may apply to the Appellate Board or Registrar to cancel or vary a trademark registration for breach of any condition recorded in the register. Section 57(2) deals with an aggrieved person who may seek rectification for wrongful entries, omissions, or errors in the register, and the tribunal may order correction as deemed fit.
What had the SB held in May 2024?
On 2 May 2024, the SB of the DHC, presided over by Justice Anish Dayal, refused to grant an injunction against Ashish Bansal & others (defendant) and others. The SB dealt not with infringement, but with whether the defendants had attempted to pass off their products as those of the plaintiff. Based on the documentary evidence of the Defendants’ being more credible in establishing prior use and the SB not finding any phonetic, visual, or structural similarity between the marks that could cause consumer confusion, the request for an injunction was dismissed.
What Did the DB Hold in May 2025?
‘Two roads diverged in a wood’: What was the DB’s Opinion?
In an appeal, the DB took the firm view that the use of a registered trademark by its proprietor does not amount to infringement. Consequently, it held that no relief can be granted in such a case. However, this stance taken by the DB in Abros appears to conflict with earlier decisions of two other DBs of the DHC. Notably, in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014) and Corza International v. Future Bath Products Pvt. Ltd. (2023), the courts had clearly observed that an infringement suit can indeed lie against a defendant using their own registered mark, as per the interpretation of Section 124(5). These rulings affirmed that even the proprietor of a registered trademark can be injuncted from using it in certain circumstances. In fact, this position was subsequently relied upon by Justice C. Hari Shankar in Jaquar & Co. Pvt. Ltd. v. Ashirvad Pipes Pvt. Ltd., where he granted an injunction in favour of the plaintiff by following the reasoning in Raj Kumar Prasad and Corza.
‘And I took the one less travelled by’: How Did the DB Differ from the Earlier Cases?
However, in the present case, the DB took a different view than the cases mentioned in the previous part (para 16.2): “There can be no infringement by a registered trademark. An unregistered trademark alone can infringe. Use of a registered trademark, for the goods or services in respect of which it is registered, can never be infringing in nature.”
Further, in para 17.2, the DB noted that granting a right to seek relief against another registered proprietor under Section 28(1) would contradict Sections 29(1) to (4), 28(1), 28(3), and 30(2)(e).
While analysing Raj Kumar, the DB acknowledged that Section 28 grants exclusive rights over a registered mark, but under Section 28(3), bars one registered proprietor from suing another. It accepted that Section 124 permits an infringement suit if the plaintiff pleads invalidity, requiring a stay under Section 124(2) for rectification. However, interim relief, including injunctions, may still be granted under Section 124(5).
Moreover, the DB noted that while Raj Kumar allowed relief against a registered proprietor where invalidity is pleaded, it failed to address whether infringement can arise at all when the defendant’s mark is registered. It focused on Sections 28(1) and 28(3) without considering Section 29, which defines infringement only in relation to unregistered users, or Section 30(2)(e), which exempts a registered proprietor’s use from being infringing. On Section 124, the DB disagreed with Raj Kumar’s reading that interlocutory relief under Section 124(5) can precede the stay under Section 124(2), holding instead that such relief is permissible only after the entire process under Sections 124(1)(b), 124(1)(ii), and 124(2) is followed.
The DB interpreted Section 124(1)(b) as applying only when the plaintiff does not treat the defendant’s mark as registered, but the defendant invokes Section 30(2)(e) as a defence. It held that Section 124 does not contemplate infringement by a registered trademark at all. Instead, the proper remedy is to seek rectification under Sections 57(1) and (2), with Section 124(1)(ii) merely allowing the suit to remain pending during that process.
Given the conflicting views, the DB has referred the matter to a larger bench with a set of framed questions to resolve the divergence in interpretation (mentioned before).
‘And that has made all the difference’: Is the DB on the Right Road?
Justice C. Hari Shankar has significantly contributed to trademark jurisprudence, particularly in clarifying the interplay between trademark validity and infringement. In Nadeem Majid Oomerbhoy v. Gautam Tank & Ors., he held that a court cannot return a finding of infringement against the holder of a registered trademark without first invalidating that registration.
In the present case, while the DB has tried to clarify these pending questions. However, while it has held that Raj Kumar stands in conflict with the relevant subsections of Sections 28, 29, and 30, the DB has not elaborated on the rationale behind J Hari Shankar relying on Raj Kumar in Jaquar, but not in Abros.
It is also to be noted that the primary question of law revolves around infringement and not passing off. From a comparative perspective, Section 11 of the UK Trade Marks Act, 1994 limits the effect of a registered trademark in infringement actions by stating that the use of a later registered trademark does not infringe an earlier one, as long as the later mark wouldn’t be declared invalid under other provisions (subsection 1). Moreover, if this protection applies, the earlier mark also cannot be said to infringe the later one, even if it can no longer be enforced against it (subsection 3).
Also, there’s a clear legal position in the UK that registration grants a degree of protection against infringement claims, even where confusion may exist. However, this protection does not extend to passing off. As Cornish, Llewelyn, and Aplin note in Intellectual Property (8th ed., para 18.110), using a registered mark in its registered form may not amount to infringement, but it could still give rise to a passing off action. This principle was also reflected in Reuter v. Mulhens (1953), the court clarified that trademark law does not override the common law remedy of passing off, especially in cases involving the look or packaging of products.
Indian law takes a similar view. Section 27(2) of the Act preserves the right to bring an action for passing off, regardless of whether a trademark is registered. Similarly, Section 134(c) explicitly allows passing off actions against the use of even a registered trademark. Similarly, in Cheddi Lal v. Shakuram Bibi (para 7), the Allahabad High Court observed that: “…when no suit for the infringement of an unregistered trade mark is possible, suits for passing off action could be instituted in spite of the provisions of this Act.” Hence, even for India, while the law on passing off is fairly settled, the real legal complexity arises with infringement actions involving coexisting registered marks.
How the higher bench will reconcile this significant divergence between DBs and establish a uniform interpretative regime remains to be seen, for remedies under claim for infringement.
(A big thanks to Srikanthan S. for sharing this development and his valuable inputs in the post.)