Delhi District Court
Wet And Dry Personal Care Pvt Ltd vs Au Naturel Beauty Private Limited on 9 June, 2025
1
IN THE COURT OF MS. VINEETA GOYAL
DISTRICT JUDGE (COMMERCIAL-02)/WEST
TIS HAZARI COURTS/DELHI
CNR No. DLWT010044472025
CS(COMM)384/2025
IN THE MATTER OF:
WET AND DRY PERSONAL CARE PVT LTD
THROUGH ITS DIRECTOR
MR. SHARAD GUPTA
OFFICE AT 7/23-B, BLOCK-7,
KIRTI NAGAR INDUSTRIAL AREA
KIRTI NAGAR, NEW DELHI-15.
...PLAINTIFF
VERSUS
1. AU NATUREL BEAUTY PRIVATE LIMITED & ANR
OFFICE AT : 10/4, ALIPORE PARK PLACE
KOLKATA-700027, WEST BENGAL
EMAIL: [email protected]
2. M/S WUNDERRHOMMZ INC
OFFICE AT D-173, OKHLA INDUSTRIAL AREA
PHASE-1, NEW DELHI
.......DEFENDANTS
09.06.2025
Present : Sh. Satish Kumar and Rakesh Tiwari, learned counsels for
plaintiff
Sh. Abhishek Malhotra, learned Senior Advocate and Sh.
Mridul Yadav, learned counsel for defendant no.1 through
VC
Sh. Anand singh , Sh. Amer Vaid and Ms. Sonal Chabblani,
learned counsels for defendant no.1 in person
Ms. Shreya Jain, learned counsel for defendant no.2
ORDER
1. Vide this order, I shall dispose off application under Order XXXIX Rule 4 read with section 151 Code of Civil Procedure (in Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.1 of 19 2025.06.09 17:48:18 +0530 2 short CPC) filed by defendant no.1 for setting aside of the order dated 19.05.2025 vide which application of plaintiff under Order XXXIX Rule 1 and 2 CPC for grant of ex-parte ad interim injunction was allowed and the defendants, their associates, agents, officers, employees, franchisee, representatives and assignees were restrained from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark / copyright /packaging /label /trade dress "NEUDE" in relation to their impugned goods and business of Cosmetics or Hair Colour and allied /related goods or any other trademark or any other label /artistic feature /packaging /trade dress which is or which may be identical with and/or deceptively similar to the plaintiff's trademark and artistic feature/packaging/trade dress "NEUD" under the well-known trademark "NEUD" from doing any other acts or deeds amounting to or likely to cause confusion among general public till further order.
2. The Defendant no. 1 has impugned the aforesaid order dated 19.05.2025 before Hon'ble Delhi High Court in FAO (COMM) 158/2025 and vide order dated 02.06.2025 Hon'ble High Court, issued the following directions: -
3.The appellant is permitted to file its application under Order XXXIX Rule 4 CPC, 1908 within two days from today. The respondent/plaintiff undertakes to file its response/reply within two days thereafter. Rejoinder affidavit, if any, be filed one day thereafter.
4.With the consent of the parties, the matter may be taken up for consideration of the application under Order XXXIX Rule 4 CPC, 1908 on 9th June, 2025.
5.It is requested that the learned Trial Court may dispose of the Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.2 of 19 2025.06.09 17:48:19 +0530 3 said application on 9th June, 2025 itself or by 11th June, 2025 at the latest.
3. The parties to the suit in compliance to the directions above filed their respective applications and pleadings. At this juncture, it is relevant to mention here that the defendant no. 1 through the counsel stated that the application under Order XXXIX Rule 4 CPC may also be considered as reply to the application of the plaintiff filed under Order XXXIX Rule 1 & 2 CPC. The matter was heard and the arguments at length were advanced by learned counsels for both parties.
4. The instant plaintiff (Wet and Dry Personal Care Pvt Ltd) is a company duly registered on 15.12.2013 and is engaged in the line of business of Bleaching preparations and other substances for Laundry Use Such As Cleaning, Polishing, Scouring And Abrasive Preparations; Soaps; Perfumery, Essential Oils, Cosmetics, Hair Lotions; Dentifrices, Oral Hygiene Preparations, Hair Removal And Shaving Preparations, Moustache Wax / Mustache Wax, Body Cleaning And Beauty Care Preparations, Douching Preparations For Personal Sanitary Or Deodorant Purposes [Toiletries], Hair Oil, Hair Shampoo, Hair Conditioner, Hair Mask, Hair Serum, Face Serum, Face Creams, Perfume, Body Wash, Hair Removal Creams, Deodorant, Face Cleanser, Toner, Moisturizer, Day Cream, Night Cream, Face Wash, Scrubs, Exfoliants , Face Mask, Sheet Mask, Undereye Cream, Lip Balm, Lipstic, Eyeliner, Mascara, Nail Polish, Lip Mask, Sunscreen, Concealer, Foundation, Blush, Eye Shadow, Primer, Kajal, Eye Pallete, Face Pallete, Haircare, Skincare, Bodycare, Makeup, Bath Preparations, Body Cleaning And Beauty Care Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.3 of 19 2025.06.09 17:48:16 +0530 4 Preparations allegedly since 2013. (Referred to as the "Said Business & Goods" respectively).
5. The plaintiff claims to be the prior user, prior adopter and a registered proprietor of trademarks "NEUDE" under the brand as per the provision of The Trade Marks Act, 1999 (hereinafter referred as The Act) read with The Trade Marks Rules 2017. The Plaintiff had applied for the registration of the Trademark/Label as under:-
TRADEMARK CLASS DATE OF STATUS APPLICATION NO.
APPLICATION NEUD XPOSE 3 31.05.2017 REGISTERED 3560611 YOURSELF WITH DEVICE NEUD XPOSE 5 26.12.2018 REGISTERED 4037947 YOURSELF NEUD XPOSE 5 11.04.2019 REGISTERED 4144265 YOURSELF 3 05.08.2019 REGISTERED 4256174 Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.4 of 19 2025.06.09 17:48:18 +0530 5 05.08.2019 REGISTERED 4256175 NEUD 3 14.06.2022 REGISTERED 5488990 NEUD 5 14.06.2022 REGISTERED 5488991
6. As it is seen from the above that the plaintiff's aforesaid registered trademarks are in the class 3 which broadly includes bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices etc. and class 5 which primarily covers pharmaceuticals, veterinary products, and sanitary preparations. It includes items like medicines, dietary supplements, disinfectants, and products for personal hygiene, including sanitary napkins, diapers, and deodorants.
7. The plaintiff claims to enjoy leadership in the goods and puts up the claim of using the trademark/ Label/ artistic work with Bonafide intent since 09.12.2016. The plaintiff has claimed its brand being fastest growing with the following details of its turnover and expenditure on advertisement: -
Financial Year Total /Turnover (In Lakhs) Total Advertisement Expenditure Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.5 of 19 2025.06.09 17:48:17 +0530 6 2016-17 49.75 0.50 2017-18 65.31 1.83 2018-19 920.69 70.63 2019-20 1,421.58 226.83 2020-21 1,726.60 133.25 2021-22 1,802.05 244.27 2022-23 2,996.10 373.33 2023-24 6,994.24 358.88
8. The plaintiff filed the present suit against the defendant alleging that since the plaintiff was Registered and prior user of the trademark which is now being adopted by the defendant for its gains. The Trademark in conflict are 'NEUD' with and without other words being used by the plaintiff and 'NEUDE' used by the defendants. The plaintiff in support of prior user of the trademark has attached invoices such as invoice no. 1020 dated 25.08.2017 about selling of product 'Neud, natural hair inhibitor' and invoice no. 1034 dated 23.09.2017, invoice no. 1100 dated 15.01.2018, invoice no. 1128 dated 22.02.2018 selling one of the items as 'Neud, natural hair inhibitor'. Further, invoices have also been attached with the plaint where the plaintiff has attempted to give the evidence of sale of items which contain the word 'Neud' for the years 2019, 2020, 2021 and so on.
9. It has been emphasized by the plaintiff that some of the application for trademark were filed in the year 2019 which contained word NEUD much prior to the defendant company coming into existence. It has been contended that the plaintiff company has given adequate foot prints to prima-facie show that it was using the word NEUD as part of its trademark associated with its products.Digitally signed by VINEETA
VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.6 of 19 2025.06.09 17:48:17 +0530 7
10. On the other hand, the defendant no.1 is a company incorporated on 13.09.2021 and engaged in selling and marketing of skincare, body care and cosmetic products developed by it and manufactured by the contract manufacturers. The defendant no.2 is engaged in manufacturing of bleaching and other substances for laundry, cleaning, polishing etc. The defendant no.1 has given figures of its monthly sales from October 2023 till May 2025 spread over two years at Rs. 11.92 Crores. It further shows that monthly sales of the defendant no.1 picked up from January 2024. The defendant no.1 has also attached sheet showing advertisement expenses of the corresponding period being above Rs. 9 Crores primarily with Amazon, Facebook, Google and Think9 consumers.
11. The defendant no.1 claims three trade mark registration of NEUDE viz. first being on 15.02.2022 in class 42 which encompasses scientific, technological, research and design, computer hardware and software development etc. The second being on 15.02.2022 in class 3 which covers Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices etc. The third being on 02.07.2023 in class 35 which covers advertising business management, rental and hiring of goods and services by e-services.
12. The setting aside of the aforesaid ex-parte order dated 19.05.2025 has been sought by the defendant no.1 on the ground that defendant no.1 is a prior register user of Trademark under Class 3 Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.7 of 19 2025.06.09 17:48:16 +0530 8 and the plaintiff's device marks under the same class are entirely distinct. It is also claimed by the defendant no.1 that plaintiff has no registered trademarks in Classes 42 and 35 in which defendant no.1 has registered trademark as early as on 15.02.2022 and 02.07.2023 respectively. It is also pleaded that plaintiff cannot claim protection on a common word of English use which is not descriptive of its Goods. It is also averred in the application that plaintiff has failed to comply with the mandatory requirement of Pre-Litigation Mediation as envisaged under Section 12 A of the Commercial Courts Act'2015 and that there is no similarity of the mark of the defendant no.1 to that of the plaintiff. It is alleged that ex-parte impugned order ought to vacated as the plaintiff has suppressed crucial, material and vital facts and documents from the Court intentionally to mislead the Court and to obtain ad-interim ex-parte relief.
13. As evident from the narration of the facts above and submissions made by learned counsels for the parties, the dispute erupted on use of NUEDE by the defendants. The plaintiff claims to be user of mark NUED for the goods falling under Classes 3 and 5 as per the Classification under the Schedule IV to the Trademark 2002, since 2016. The plaintiff further claims to be prior adopter and proprietor the said mark and further claims that it is holding registration with mark NUED and also holds copyrights registration thereto. The defendants, on the other hand, claim to be the registered proprietor of trademark NUEDE for its goods and holding registration in classes 3, 35 and 42. The defendant no. 1 claims that suit for infringement is not maintainable as per Section 31 of The Act which spells that registration is prima facie Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.8 of 19 2025.06.09 17:48:17 +0530 9 evidence of validity and took the plea that rights of two registered proprietors of identical or nearly resembling trademarks shall not be enforced against each other. Section 28 of The Act, which is material, as this provision conferred, certain rights for registration, is reproduced below in entirety;
Section 28 of Trade Marks Act '1999 (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 in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub- section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
14. A reading of Section 28 (3) provides that where two registered marks are identical or deceptively similar to each other, the registered proprietor will not have any exclusive right against each other, and both proprietors will have equal rights against each other. Meaning thereby, between the two persons, who are registered owners of trademarks, there is no exclusive right to use the said trademark against each other, thus, giving concurrent Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.9 of 19 2025.06.09 17:48:19 +0530 10 right to both to use the registered trademark in their favour. Thus, in the given facts, there can be no observation with regards to infringement against a registered trademark, unless there is a finding of the fact that the registration to be invalid.
15. After having observed as above, now another question arises for consideration that mere registration of trademark immunize the plaintiff for claiming 'passing off'. In catena of judgments, it has been acknowledged that the common law remedy of passing off is available for a registered proprietor against another registered proprietor of similar and identical mark. The law of passing off in common law is considered to be a right of protection of goodwill and thus permit action between a registered proprietor of trademark against misrepresentation for misleading the customer into thinking that his goods are the goods or connected with the goods of the other party, who is prior user of trademark.
16. It is also recognized principle in common law jurisprudence that right of passing off is not a remedy than that of infringement. In case of Micolube India Ltd. vs Maggon Auto Centre and Anr 2008(36)PTC231(DEL), the following has been observed:-
"A reading of Section 28(3) with Section 30(1)(d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.10 of 19 2025.06.09 17:48:18 +0530 11 new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill and reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33."
17. It is well settled principle of law that in the field of trademark, the registration merely recognizes the rights which are already pre- existing in common law and in case of conflict between two registered proprietors, the valuation of better right in common law is essential as common law right would enable the Court to determine whether the rights between two registered proprietors are better and superior in common law. While considering Section 27(2) and Section 106 of The Act, the Hon'ble Division Bench in case of Century Traders Vs. Roshan Lal Duggar and Co. 1978-Del 1250, laid emphasis on the use by observing that:
"xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx First is the question of use of the trade mark. Use plays an all- important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout The State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected."
18. From a reading of the above the provisions, it is clear that Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.11 of 19 2025.06.09 17:48:17 +0530 12 registration of mark in the trade mark registry would be irrelevant in an action for passing off. Furthermore, it will be clear that in deciding whether a particular mark is common to the trade use of that mark would be extremely relevant. Mere registration would not be enough. The legal position that follows is that even if plaintiff cannot claim infringement of trademark under Section 28(3) and Section 30 (2) (c) of The Act, an action of passing off is maintainable. It is well settled that it is not necessary for the plaintiff to demonstrate to use its trademark for a considerable length of time to succeed, a single actual use will intent to use conferred trademark right. In case of Century Traders (supra), the Hon'ble Court observed as under:
"For the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use eo instanti confers a right to such mark as a trademark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade- mark is the test rather than the extent or duration of the use. "
19. The instant controversy has to be seen that even if the plaintiff does not have registration of word mark NUED which though it has along with the words "Xpose yourself with device" but it is important to appreciate that NUED form an essential dominant part of the items traded by the plaintiff thus such mark NUED is essential for determining balance of the convenient. Further in case of Cadina Healthcare Limited Vs. Cadina Pharmaceuticals 2001 (5) SCC 73, while laying down the criteria of dictating the deceptively similarities, Hon'ble Apex Court observed that Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.12 of 19 2025.06.09 17:48:19 +0530 13 various factors should be taken into account to determine whether the mark is deceptive which includes (a) the nature of goods; or the services to which mark relates to; (b) resemblance between the two marks (c) the type of marks whether it is a word or a symbol or a phrase; (d) target audience/customers.
20. In case of Amrit Dhara Pharmacy Vs Satya Dev Gupta 1962 SCC Online SC 13, it was held that:
7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before use that the two names 'Amritdhara' and 'Lakahmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments, Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of ;their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd (1); the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the ,two names 'Amritdhara' and 'Lakshmandbara' is, in our, opinion likely. to deceive or ; cause confusion. We must consider, the overall similarity of the two composite words 'Amritdhara' and 'Lakshman- dhara'. We do not think that the learned Judges of the High Court were right in Paying that no Indian would mistake one 'for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meanings of the composite words as 'current of nectar' or current of Lakshman'. He. would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has other vise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the entymological or ideological meaning and, see the difference between 'current of nectar' and current of Lakshman'. 'Current of Lakshman in a literal Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.13 of 19 2025.06.09 17:48:18 +0530 14 sense has no meaning to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsmen will perhaps know Lakshman, the story of the Ramayana being familiar to him but we doubt if he would etymologine to the extent of seeing the so called ideological difference between 'Amritdhara'and 'Lakshmandhara'..
He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.
8. We agree that the use of the word 'dhara' which literally means 'Current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicina l preparations of the same description. We are aware that the admission of a mar is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference. but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with. a similar name. The trade mark is the whole thing the whole word has to be considered a the case of the application to register 'Erectiks' (opposed by the proprietors of the trade mark 'Erector') Farwell, J. said in William Bailey (Bir- mingham) Ltd.8 Application (1) "I do not think it is right to take a part of the word and compare it with a part of the- other Word; one word must 'be considered as a whole and compared with the other word as a whole................ I think it is a danger- ous method to adopt to divide the word up, and seek to distinguish a portion of it from a portion of the other word".
Xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of s. 10(1) of the Act and Registrar was right in the view he expressed. The High Court was in error taking a contrary view.
Digitally signed by VINEETAVINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.14 of 19 2025.06.09 17:48:17 +0530 15
21. Another aspect is the comparative analysis of the trademarks 'NEUD' and 'NEUDE' would entail examination of the overall impression these marks are likely to create on the consumers and the general public. Judicial precedents consistently highlight that the dominant element of a mark plays a critical role in the likelihood of confusion analysis. The decisions in the case of South India Beverages Pvt Ltd v. General Mills Marketing Inc, 2014 SCC On Line Del 1953 and Bennet, Coleman and Company vs Fashion One Television LLC and Anr. 2023: DHC: 9170 are relevant in this regard. In the present case, both the words are phonetically and apparently so identical that it would create confusion in the minds of the customer. The dominant part of the word NEUD is so strong that by suffixing extra 'E' in it will not make it different. A person of ordinary prudence would not be convincingly able to distinguish these two trademarks because of the impression created.
22. It has been held that a mark is deemed to be deceptively similar to another, if it bears such a resemblance to the other mark that it could likely deceive or cause confusion among potential consumers. Important judicial principles have been laid down by Hon'ble Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. 1960 (1) SCR 968. In Cadila Healthcare v. Cadila Pharmaceuticals, 2001 (5) SCC 73, while laying down the criteria for detecting deceptive similarity, it was held that "Various factors should be taken into account to determine whether a mark is deceptive, which includes:
a) the nature of goods or the services to which the marks relate to; b) the degree of resemblance between the two marks; c) the type of the mark, whether it is a word, symbol, or phrase and d) the target audience.
These principles posit that even if the marks are not identical but bear close resemblance, the test for trade connection can still be relevant."
Digitally signed by VINEETAVINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.15 of 19 2025.06.09 17:48:19 +0530 16 In the present case, the products and the field in which both the plaintiff and the defendant operate is the same. In the present case, both the plaintiff and defendant are into cosmetics, there is high degree of resemblance between NEUD and NEUDE and the target audience is the same.
23. Further, in the present case, the plaintiff has prima-facie demonstrated that it was prior user of the trademark. With the risk of repetition, it is noted that the plaintiff submitted invoices of the year 2017 and 2018 about selling of product Neud, natural hair inhibitor. Further, invoices have also been attached where the plaintiff has attached evidence of sale of items which contain the word 'Neud' for the years 2019, 2020, 2021 and so on. Further, in the year 2019, the plaintiff filed the application for registration of trademark containing word Neud which is much prior to the defendant company coming into existence. The defendant has vociferously argued that all the invoices are related to single product Neud, natural hair inhibitor therefore no benefit can be granted to the plaintiff. However, it is judicially (in Centuary traders' case) settled that a single use of a trademark can be actionable under the concept of "passing off" if it deceives consumers into believing the goods or services come from the trademark owner, causing damage to their goodwill.
24. Hon'ble Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 6834 affirmed the principle by which it was held that the right to a passing off action remains unaffected by the registration status under the Trade Marks Act. Therefore, regardless of the defendant No. 1's registration, a passing off action is still maintainable. It is a well settled principle of law that the rights of a prior adopter are superior, even to that of a Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.16 of 19 2025.06.09 17:48:16 +0530 17 registered proprietor. The passing off, inherently a common law tort, rests on the premise that no individual or entity is entitled to sell their goods or services under the pretense that they are the goods or services of another. This principle was comprehensively articulated in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd. (Supra), where Hon'ble Supreme Court delineated the essential elements required to establish a case of passing off. These elements emphasize the need to protect the public from confusion, and the original manufacturer's goodwill from dilution, which are fundamental to maintaining integrity in marketplace. In the present case, the plaintiff has been in existence since the year 2013 and the plaintiff filed on record invoices as mentioned above for the years 2017 onwards which are prior user.
25. Furthermore, the plaintiff's reputation in the trademark "NEUD"
is well-documented, supported by substantial revenue from the sales of goods under this trademark, which amounted to INR 6994 lakhs for the fiscal year 2023-24. Additionally, the Plaintiff has invested significantly in publicity and advertisement to promote the trademark, with expenditures totaling INR 358.88 lakhs for the same period. These financial details, as outlined in paragraph 26 of the plaint, underscore the established goodwill and market presence of the "NEUD" trademark consistently over a period of at least six years. As oppose to this, the defendant no.1 has sales of Rs. 11.92 Crores for 19 months from October 2023 till May 2025. Thus, the palpable conclusion is irresistible that all three elements of the classic trinity test for passing off i.e. reputation, misrepresentation, and potential harm in this case are satisfactorily met in favor of the plaintiff. The defendants' use of the impugned mark prima facie would constitute misrepresentation that could deceive consumers and dilute the Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.17 of 19 2025.06.09 17:48:18 +0530 18 plaintiff's established brand.
26. So far as the plea of the defendant no.1 that there is delay in filing of the suit is concerned, in rebuttal it is the stand of the plaintiff that it has diligently filed the present suit and there has been no delay as the plaintiff filed notice of opposition against the trademark of the defendant. Further, the plaintiff could find product of the defendant in the market in first week of March 2025 only. It is settled preposition of law that any person who uses or adopts someone else mark must be aware of the consequences which may follow. The defendant no. 1 always run the risk of consequences using the mark which is deceptively similar to the mark being previously used by the plaintiff. The plaintiff has already opposed the trademark application of the defendant no. 1 of the mark NEUDE being application no. 5976983, 6199511, 6199513 on 22.12.2023, 2.2.2024, 2.2.2024 respectively and thus any goods after such opposition are at the risk and peril of the defendant.
27. In view of the discussion above, it transpires that the plaintiff is the prior user of the trademark "NEUD" and prior registrant of the trademark " NEUD "; they have been continuously using and promoting the trademark " NEUD " since 2016 and has garnered significant goodwill and reputation in the said trademark. It is undisputed that the defendant no. 1 use of the trademark "NEUDE" is subsequent and therefore, the competing marks being deceptively similar to each other is bound to create confusion amongst the general public and hence the Defendant no. 1 adoption of the Impugned mark prima facie violates the Plaintiff's common law rights in the trademark "NEUD".
28. For the foregoing reasons, defendants and anybody acting on Digitally signed by VINEETA VINEETA GOYAL CS(COMM)384/2025 GOYAL Date: Page no.18 of 19 2025.06.09 17:48:19 +0530 19 their behalf, are restrained from selling, offering for sale, advertising, marketing, directly or indirectly, dealing in products of cosmectics, hair colour and other allied / related goods bearing the marks "NEUDE " or any other mark which is deceptively similar to Plaintiff's registered trademark "NEUD" and would amount to an action of passing off .
29. However, considering the fact that defendant no.1's mark was registered since 2022 and the goods manufactured/ traded are perishable in nature therefore in the interest of justice the defendants are permitted to deplete their existing stock of goods bearing the mark "NEUDE " within two months from the date of this order. Further, the defendants are directed to file an affidavit giving complete details of stock, including batch numbers of the goods manufactured, within four weeks from today. It is clarified that no further manufacturing shall be undertaken under the Impugned mark.
30. Applications are disposed off accordingly. However, it is clarified that observation made herein shall have no bearing on the merits of the case.
31. Put up on date already date fixed.
Digitally signed by VINEETA VINEETA GOYAL
ANNOUNCED AND DICTATED GOYAL Date:
2025.06.09
IN OPEN COUT ON 09.06.2025 17:48:39 +0530
( VINEETA GOYAL)
DISTRICT JUDGE (COMM)-02/WEST
THC/DELHI /09.06.2025@
CS(COMM)384/2025 Page no.19 of 19