Bombay High Court
Nextech Sensors And Controls vs Omicron Sensing Private Limited on 25 July, 2025
2025:BHC-OS:11850
IAL-6056-2025.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (LODGING) NO. 6056 OF 2025
TALLE
SHUBHAM IN
ASHOKRAO
Digitally signed by
COMMERCIAL IP SUIT (LODGING) NO. 5877 OF 2025
TALLE SHUBHAM
ASHOKRAO
Date: 2025.07.25
15:23:32 +0530
Nextech Sensors & Controls, ... Applicant/
A partnership firm, having its office and principal Org Plaintiff.
place of business at, Block-A, Office No. 609, Girivar
Glean, Sardar Patel Ring Road, near Hotel Palm,
Odhav, Ahmedabad, Gujarat 382415
Versus
Omicron Sensing Private Limited, ... Defendant
a Company incorporated under the Companies Act,
1956, having its registered office at Industrial Unit
No.721/722 & 723, 7th Floor, Gold Crest, opp.
Shreyas Cinema, LBS Marg, Ghatkopar (W), Mumbai,
Maharashtra, 400086
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Adv. Hiren Kamod, Rahul Dhote, Shwetank Tripathi, Vidit Desai, Nipun
Krishnaraj, and Prem Khullar i/by ANM Global for the Plaintiff.
Adv. Atmaram Patade, Amey Parab, Pranav Manjrekar and Suraj Naik i/by
Atmaram Patade for the Defendant.
------------
Coram : Sharmila U. Deshmukh, J.
Reserved on: June 30, 2025.
Pronounced on : July 25, 2025.
ORDER:
1. This is an action for infringement of trademark, copyright and passing off.
2. The Plaintiff is a partnership firm constituted on 8 th July, 2020 as "M/s National Process Instruments", which was amended to Shubham 1 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc present name by Supplementary Deed of Partnership dated 10 th May, 2022. The Plaintiff is engaged in manufacturing/ sale of variety of electronic instruments and control systems (including process equipment such as pressure / temperature measurement equipment) and trades / supplies /sells various Heating, Ventilation and Air Conditioning (WAC), Building Management System (BMS) & Cleanroom Instrumentation including variety of pressure gauge, flow switch, etc.
3. It is the Plaintiff's case that in March-2019, the Plaintiff's pre-decessor, the proprietorship firm of one Mr. Pratikkumar Dhirubhai Sojitra coined and adopted the mark "NEXTECH SENSORS & CONTROLS". In May-2020, at the instance of the Plaintiff's- predecessor, an Ahmedabad based graphic designer agency created the label/device and immediately transferred the right, title and interest in the artwork to the Plaintiff's-predecessor, and to confirm the assignment has executed a Confirmatory Deed of Copyright Assignment dated 27th January, 2025 in Plaintiff's pre-decessor's favour. On 1st April, 2021, the Plaintiff's predecessor sold, transferred and assigned the trade mark and the copyright in the artistic work alongwith goodwill in favour of Plaintiff and executed Confirmatory Deed of Trade Mark and Copyright Assignment dated 27 th January, 2025.
4. It is stated that the Plaintiff has filed Form TM-C dated 4 th Shubham 2 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc December 2024, for obtaining no objection certificate from the Trade Mark Registry for copyright registration. It is submitted that from 1 st April, 2021, the Plaintiff is using the mark and in order to obtain statutory protection applied for registration of Label/Device mark in Class 9 and 35 which has been granted in Class 35 and is pending in Class 9 due to opposition.
5. The plaints pleads that the registration applications in Class 35 and Class 9 were inadvertently filed on 'proposed to be used' basis whereas the actual user of the Label/Device mark is atleast from May-2020 and for amendment of user details application on Form TM- M dated 1st February, 2025, was filed alongwith supporting evidence. It is submitted that two examination reports were issued in the application for registration under Class 9 citing the Defendant's mark and after accepting the Plaintiff's reply the application was advertised.
6. The plaint was amended to plead that preliminary examination report dated 7th June, 2022 was issued in respect of Plaintiff's device mark application in Class 35 citing third party mark "NEXTECH" as conflicting marks. The explanation tendered by the Plaintiff was that the online status of the conflicting trade mark is opposed and the conflicting trade marks are different in terms of shape, colour and design. The plaint pleads that an erroneous contention was taken inadvertently as the correct stand to be adopted Shubham 3 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc was that neither of the conflicting trade marks were registered trade marks and there cannot be estoppel against statute.
7. It is stated that the Plaintiff became aware upon issuance of examination report by Trade Mark Registry in respect of the Plaintiff's Label/Device mark under Class 9, that the Defendant had adopted and applied for registration of the impugned mark which is identical to the Plaintiff's mark. The examination report cited the Defendant's mark in Class 9 filed in the year 2022 as conflicting marks which had user claim of 1 st April, 2018 without filing any supporting evidence substantiating the same. On 22 nd August, 2024 the Defendant filed two more Trade Mark Application for the impugned mark "NEXTECH" and "NEXTECH SENSORS & CONTROLS" in class 9 claiming the user since 1 st April, 2018 along with user affidavit and sales invoice from April-2018 onwards which are ex- facie forged and fabricated. On 6th September, 2024 and 26th September, 2024, the Defendant filed two applications on Form TM-M to amend the user date from 1 st April, 2018 to 1st May, 2006 alongwith affidavit containing sales figures with sale invoices which are false and fabricated.
8. It is submitted that the adoption of the impugned mark and filing of trade mark registration applications by the Defendant in Shubham 4 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc 2022 as well as in 2024 is counterblast to ongoing dispute between the Plaintiff's partner and the Defendant as the Plaintiff was employed by the Defendant from August-2016 to February-2019 and January-2016 to February-2019 respectively. In 2019, the Defendant filed police complaint against the partners accusing them of conducting a parallel business and in consideration of not pursuing the police complaint the Plaintiff's forcibly signed indemnity bond dated 16th February, 2019.
9. The Defendant contends that the material fact of the Plaintiff having commenced similar business under the name "FILTERN INSTRUMENTS" in the year 2017 as evidenced by the partnership deed dated 19th January, 2017 and Supplementary Deed dated 15 th February, 2018 during their employment with the Defendant has been suppressed in order to obtain favourable injunction order against the Defendant who is the prior user of the mark since 2018. It is stated that the Defendant had applied for two trade mark Applications i.e. 5632175 and 5632176 in Class-9 for the registration of the device mark "NEXTECH" and the word mark "NEXTECH" with user date of 1 st April, 2018. In March-2025 the Defendant came to know about the Plaintiff's registration application as well as two applications purported to have been filed by the Defendant on 22 nd August, 2024 and 28th August, 2024. It is stated that the applications of 2024 including the invoices, power of attorney etc are forged and fabricated Shubham 5 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc documents and have been filed without any authorisation by the Defendant. It is stated that the Defendant's prior user mark "NEXTECH" is subsumed in the Plaintiff's mark "Nextech Sensors and Controls". It is stated that they are prior adopters and user of trade mark "NEXTECH" /"NEXTECH SENSORS & CONTROLS" from the year 2018 and continuously using the same regularly although sparingly. The sales turnover evidenced by the Chartered Accountant for products sold under Omicron marks is produced with the claim of Nextech being one of the essential components of transmitters sold by Defendant. It is stated that only few invoices bears the name Nextech and others bears the name Omicron, of which Nextech is essential part. It is submitted that the mark "NEXTECH" was coined and adopted by the Defendant in the year 2018. The artistic work of the label mark was designed by Hetal Agrawal for the Defendant and due to family relations there was no formal agreement executed, however the said Hetal Agrawal has issued a No Objection Certificate in favour of Defendant. It is stated that there is dishonest adoption by the Plaintiff of the mark "Nextech" as the partners of Plaintiff were employees of the Defendant.
10. In the affidavit-in-rejoinder, it is pleaded that the 2024 applications were filed alongwith duly notarised affidavit of Defendant's Director under duly notarised power of attorney and Shubham 6 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc invoices. To the opposition filed by Plaintiff, the counter statement has been filed which is verified and signed by the Defendant's Director and even the fees for expedited examination is paid. It is stated that the stand of the Defendant's products being sold under the brand Omicron and certain components being transmitters in the said Defendant's product uses impugned mark/device is completely contradictory to the user affidavit filed along with 2022 Application. It is stated that out of four invoices annexed to the reply to show sales since 2018, two invoices pertain to products sold to Defendant's family business and one of the invoices is in respect of product supplied to Alpha Agro which exact model number is available at Defendant's website as an "OMICRON" mark product. It is stated that similarly other invoice at page 335 mentions the Nextech make product and at Page 417 the same model is shown "OMICRON" make product which shows that the documents are false and fabricated and have no evidentiary value. SUBMISSIONS:
11. Mr. Kamod, Learned Counsel appearing for the Applicant would submit that inadvertently the registration application was filed on "proposed to be used" basis for which application is filed for correcting the user detail to 25th May, 2020. He submits that it is specifically pleaded that in March, 2019 trade mark was coined and adopted by the Plaintiff's predecessor, who was also the owner of Shubham 7 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc copyright in the artistic work. He points out the extract from the e- commerce portal evidencing the sale of Plaintiff's products bearing the trade mark as well as the Chartered Accountant's Certificate showing the sales turnover and the various invoices. He submits that upon an application being filed for registration of the mark under Class-9, the defendants mark was cited bearing trade mark No. 5632176 for the mark "Nextech" and 5632175 for the mark "NEXTECH SENSORS & CONTROLS" in class 9 as conflicting marks without accompanying documents to show user since 2018. He submits that Application No. 6596716 was filed on 28th August, 2024 by the Defendant for registration of the word mark "NEXTECH" to which the invoices bearing "NEXTECH" device from 2018 were annexed. He submits that subsequently there were two applications filed being TM-M dated 6 th September, 2024 and 26th September, 2024 amending the user date to 1st April, 2006 along with user affidavit and invoices bearing Nextech mark. He has tendered a comparative chart to demonstrate the discrepancy in the invoices accompanying the applications dated 6 th September, 2024 and 26th September, 2024 and would point out that same invoices are filed with the applications and in some invoices, the mark is missing. He submits that the same invoices showing the embossed mark are filed with Application dated 28 th August, 2024,which is missing in the invoices filed with the two applications Shubham 8 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc dated 6th September, 2024 and 26th September, 2024. He submits that even the sales figures filed along with 2022 Application do not match with the figures filed along with user affidavit to claim user since the year 2006. He submits that the Defendant has completely disowned these Applications by saying that the applications of 2024 were not authorized and the falsity is demonstrated from the fact that the user Affidavits and counter statement to the opposition filed by the Plaintiff has been signed by the Defendant's Director.
12. Per contra, Mr. Patade, learned Counsel appearing for the Defendant would submit that the Defendant's case is of user from 2018 and not from 2006. He draws attention of this Court to the invoices which are annexed at page nos. 319 & 320 to show the use of the mark since the year 2018. He submits that the partners of the Plaintiff were ex-employees of the Defendant. He points out that the Plaintiff's registration of the mark is from 4th August, 2023 which was applied on 4th April, 2022 whereas Defendant is using the mark since the year 2018. He draws attention of this Court to the NOC issued by the author of the artistic work in favour of the Defendant. He would further submit that the Plaintiff's application for registration of device mark was opposed on the ground of conflicting mark, which objection was overcome by the Plaintiff by stating that the mark is not identical and proceeded to registration. He submits that the Plaintiff is now Shubham 9 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc taking contrary stand that the mark "NEXTECH" is identical to that of the Plaintiff's mark. He submits that by way of amendment to the plaint, the plea taken is that the response to the objection raised was erroneous and taken inadvertently, which cannot be accepted. He would further submit that in the plaint a false and incorrect statement is made that the Plaintiff were employees of the Defendant before they started the business whereas Partnership Deed will show that the Plaintiff has started business in the year 2017 during the subsistence of the employment. He submits that the criminal complaint was filed against the partners of Plaintiff in which C-Summary Report was filed as against which Protest Petition is filed and awaiting adjudication. He submits that the partners of Plaintiff has further executed indemnity bond accepting that they have committed criminal breach of trust and have cheated the Company by diverting orders of the Defendant Company to their own firm for monetary gains. He submits that the Plaintiff has not annexed the indemnity bond of one of the partner Nilesh and has instead annexed the indemnity bond of the other partner which is also suppression. He submits that though it is pleaded in the plaint that the bonds were executed forcibly, no steps have been taken by the partners of Plaintiff. He submits that the signatures of the Defendant's Director on the user affidavits and the Applications are false, forged and fabricated. In support he relies upon following Shubham 10 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc decision:
1. Prestige Lights Ltd vs. State Bank of India1
13. In rejoinder, Mr. Kamod would submit that there is no answer to the contention that the counter statement was signed by the Defendant's Director in response to the opposition proceedings. He submits that the defence of Section 34 is not available to the Defendant as Defendant has admitted that the mark was not used continuously but sparingly. He submits that the Defendant cannot derive benefit of the stand taken by the Plaintiff in respect of the objection raised under Section 11 of Trade Marks Act, 1999 as it is not the Defendant's mark which was cited, but some other third party mark. He submits that as far as the third party is concerned the logo was different and therefore the response stated that the logos are not identical whereas in the present case the device marks are identical. He submits that the Plaintiff has not suppressed any information and has informed the Court that the Plaintiff's were employees of the Defendant and had executed the bonds though forcibly. He submits that the criminal complaint has been closed by the police by filing C- summary and therefore no help can be taken from the same. REASONS AND ANALYSIS:
14. There is no doubt about the rival marks being identical and 1 (2007) 8 SCC 449 Shubham 11 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc used in respect of identical goods. The important aspect as regards deceptive similarity therefore stands answered and the question is therefore of prior user. The Plaintiff is registered proprietor of the device mark "Nextech Sensors and Controls". The certificate of registration has been issued on 4 th August, 2023 which relates back to the date of application i.e. 4th April, 2022. The application for registration was on "proposed to be used" basis and the contention of Mr. Kamod is that the same was erroneously mentioned and application on Form TM-M was filed on 1 st February, 2025 for amendment. The Defendant claims to be prior user of the mark "Nextech" since the year 2018 which has been subsumed in the Plaintiff's mark and thus takes a defence of Section 34 of Trade Marks Act, 1999.
15. As far as the copyright in the artistic work is concerned, both claim that the artistic work was designed at their instance and Deeds of Confirmation are produced, which in respect of Plaintiff is dated 27th January, 2025, and executed just prior to the filing of the suit on 11th February, 2025 and in respect of Defendant is dated 4 th April, 2025, which is post filing of the suit. At this stage, it is difficult to arrive at prima facie finding as regards ownership of artistic work which will require evidence to be led. The fact remains that the Plaintiff has obtained registration of the device mark which will protect the artistic Shubham 12 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc work in the device mark.
16. The Plaintiff claims prior user since atleast May, 2020 through its pre-decessor and to demonstrate the assignment of trade mark and copyright, the Confirmatory Deed of Assignment of trade mark and copyright dated 27th January, 2025 is annexed to the plaint. Annexed to the plaint are invoices raised by the Plaintiff's pre-decessor which bears the mark "Nextech Sensors and Controls". The first invoice bearing the mark is dated 25th May, 2020. There are no submissions canvassed by Mr. Patade on the invoices produced by the Plaintiff which would prima facie raise a doubt about the authenticy and genuineness of the invoices. The invoices shows that the marks are being used continuously, extensively and regularly by the Plaintiff's pre-decessor since the year 2020 and thereafter by the Plaintiff. Prima facie from the invoice of 25th May, 2020, it appears that the mark was being used by the Plaintiff's pre-decessor atleast since May, 2020 and from April, 2021 by the Plaintiff and in the application for registration the user claim as "proposed to be used" was inadvertent error.
17. To avail the benefit of Section 34 of Trade Marks Act, 1999, the Defendant is required to demonstrate prior user. Section 34 of the Trade Marks Act, 1999 reads as under:
"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 Shubham 13 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc 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 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 by 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."
18. What Section 34 of Trade Marks Act, 1999 protects is the continuous prior user of the identical/similar mark as that of registered mark, which user is required to be prior to the use of the first mentioned mark or date of registration of the first mentioned trade mark whichever is earlier, which in this case would be from May, 2020. The pleading in paragraph 7(z) of the Affidavit in reply of the Defendant is that the Defendant is prior adopter and user of trademark Nextech/Nextech Sensors and Controls from the year 2018 and are continuously using the same regularly although sparingly. The pleading taken by itself would take away the benefit of Section 34 of Trade Marks Act, 1999 as there cannot be any continuous regular use if the use is sparingly. Two completely contrary expressions conveying different meaning is used in the same sentence. Assuming an error in Shubham 14 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc drafting by use of contrary expressions in same sentence, I have proceeded to examine the documents produced by the Defendant to ascertain whether the Defendant has been able to prima facie establish user prior to May, 2020.
19. To prove prior user since the year 2018, the Defendant's stand is that the components under the mark "Nextech" are sensors and controllers which are essential and prominent part of Omicron products and therefore only few of the invoices bears the mark Nextech. In all four invoices have been produced by the Defendant to show user since the year 2018.
20. As far as the contention about Nextech being used as mark in respect of only sensors and controllers is concerned, the contention is contrary to the user affidavit filed alongwith the application of the year 2022 for registration of the mark, which user Affidavit and Application are not disputed. The User Affidavit states that the mark "Nextech" is adopted as early as in 1/4/2018 and since then the mark is used continuously, openly, extensively with respect to the various products detailed therein and the people and trade associate the trademark in respect of the Defendant. That being the stand adopted in the User Affidavit either the stand in the User Affidavit is incorrect or the pleading in the Affidavit in reply is incorrect. In either case, prima facie no reliance can be placed on the pleading of continuous prior user Shubham 15 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc since the year 2018. The production of a single photograph of the product with the mark "Nextech" is of no assistance as neither the date of manufacturing can be discerned nor date of use of mark.
21. Coming to the invoices of Defendant produced, on record are two sets of invoices: one which are produced by the Defendant alongwith his Affidavit in reply and second which are produced by the Plaintiff stating the same to have been annexed to the applications for registrations filed by the Defendants in the year 2024 for registration of the mark with user claim of the year 2018. Dealing first with the invoices annexed to the Affidavit in reply, the invoices annexed are from the year 2009 though the purpose is not clear as the Defendant claims to have adopted the mark in the year 2018. For the relevant year of 2018, there are four invoices produced dated 2nd April, 2018, 13th April, 2018, 18th May, 2018 and 6th January, 2020. Mr. Kamod would assail the authenticity of the invoices by submitting that the product mentioned in the invoice dated 2 nd April, 2018 is listed on the Defendant's website as Omicron make product and the invoices dated 13th April, 2018 and 18th May, 2018 is raised upon the Defendant's sister concern, which contention has not been disputed by Mr. Patade. As regards the invoice of 6th January, 2020, the model number of product mentioned at Serial No. 2 therein as Nextech make is mentioned in the invoice at Page 417 as Omicron make product.
Shubham 16 of 24
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IAL-6056-2025.doc
22. The production of four invoices out of which two are raised on the Defendant's sister concern and two refers to products which are prima facie Omicron make products, which have remained unexplained, casts a doubt about the authenticity of the invoices. Going a step further even if these four invoices are accepted as genuine, there are three invoices of the year 2018 and one of the year 2020 which do not satisfy the mandate of continuous user to avail the benefit of Section 34 of Trade Marks Act, 1999.
23. Apart from the fact that the production of sparse invoices of the year 2018 would not prima facie establish a continuous user, in order to demonstrate falsity and dishonest conduct of the Defendant, Mr. Kamod has drawn attention of this Court to the invoices annexed alongwith Application No. 6596716 and 6586940 and the 1 st TM-M and 2nd TM-M filed. There are several invoices of the year 2018 filed alongwith applications, however, the same are without any details of buyers, consignee etc.
24. The Defendant disowns the applications No. 6586940 and 6596716 filed on 22nd August, 2024 and 28th August, 2024, the invoices , the User Affidavit and the power of attorney and claims that the same are false and fabricated. Perusal of the said invoices would prima facie disclose that to show user since 2006, the invoices filed with Form TM- M dated 6th September, 2024 and 26th September, 2024 are two Shubham 17 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc different versions of the same invoices and one version shows user date of 2006 whereas the other shows user date of 2018. The same invoices in one version shows the mark "Nextech" embossed on the invoice, whereas in the other version of same invoice, the mark is missing. Mr. Kamod is right in submitting that as the Defendant has been incorporated in the year 2011, the user cannot be since the year 2006. The Defendant has a very simple answer to the applications of the year 2024, the invoices and Affidavits that the same are forged and fabricated. The registration of the Defendant's marks was opposed by the Plaintiff and the counter statement to the opposition is filed on 17th February, 2025 which bears the signature of the Defendant's Director on each page and also on the verification page. Upon prima facie comparison of the Defendant's Directors signature on the Affidavit in reply filed in the present proceeding with the signature on the counter statement, both signatures appear to be identical. The counter statement makes specific reference to the application no. 6596716 in Class 9 for registration of the trade mark "NEXTECH" in the name of the Defendant Company and the opposition to the said mark by the Plaintiff. It is therefore difficult to digest that the Defendant was unaware of the filing of the application along with invoices and that the same are forged and fabricated.
25. The conduct of the Defendant speaks volumes as not only Shubham 18 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc the applications, invoices under a notarised power of attorney, counter statement has been filed in the Trade Mark Registry, excess fees has been paid for expedited examination. It is too far fetched to accept that all these steps would be taken in the name of the Defendant by Trade Mark Attorney's without the knowledge of the Defendant. The Defendant is private limited company and obviously manned with senior officers at its helm. It cannot be fathomed that since the year 2024 steps were taken on behalf of the Defendant Company, company seal was used, signatures of the Director were forged without the knowledge of the Defendant. Upon acquiring the knowledge of the fraudulent documents and signatures, if the immediate step of lodging of criminal complaint would have been taken, the bonafide of the Defendant would be demonstrated. Instead the Defendant has chosen to remain passive and has remained content with addressing communication with its trade mark attorney. Prima facie the conduct of the Defendant is dishonest which would disentitle the Defendant to any discretion in its favour. Upon overall assessment of the material on record, prima facie the adoption of the mark by the Defendant in the year 2018 cannot be accepted. The decision in Prestige Lights Ltd vs State Bank of India(supra) relied upon by the Defendant would in fact assist the case of the Plaintiff.
26. The next defence taken is suppression of material fact by Shubham 19 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc the Plaintiff that the Plaintiff had already constituted a partnership firm in the year 2017 during the tenure of their employment with the Defendant. A fact is said to be material fact if the same has any bearing on the issue in controversy and suppression would lead to a favourable order being passed in favour of such party. In the present case, the Plaintiff comes with a case of use of the mark by the Plaintiff's pre- decessor since the year 2020 and subsequent assignment in Plaintiff's favour in 2021 and registration of the year 2022. Even if the constitution of the partnership firm in the year 2017 would have been disclosed, the same would have been immaterial for the purpose of deciding the proprietary rights of the Plaintiff. The Plaintiff in its plaint has specifically pleaded about the partners of the Plaintiff being employed by the Defendant, the execution of indemnity bonds dated 16th February, 2019, the lodging of criminal complaint and FIR. There is thus no suppression of material facts. The issue as regards the dishonest conduct alleged by the Defendant in as much as the partners of the Plaintiff being the employees of the Defendant and starting their identical business using the mark would have been relevant if prima facie the Defendant would have been able to demonstrate prior user of the mark since the year 2018.
27. As regards the invalidity of the trade mark, reliance is placed on the Plaintiff's reply to the opposition of its mark in Class 35 Shubham 20 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc that the cited mark was not identical to the Plaintiff's mark, which was brought in by way of amendment. The objection was on relative ground of refusal and the conflicting mark was not the Defendant's mark. The doctrine of estoppel is rule of evidence and operates against the person who makes the representation provided the representation was acted upon to the detriment of the person. There is no such contention raised in the present case. It is specifically submitted that the cited mark was unregistered mark and interim injunction cannot be refused on this ground. At this stage there cannot be any prima facie conclusions drawn on the basis of the examination report. There is no defence taken in the Affidavit in reply to the validity of the registered mark and for the first time during the arguments, the registration is assailed as being ex-facie illegal. Section 31 of the Trade Marks Act, 1999 confers validity on the registration and the test for infringement is use of the identical or deceptively similar registered mark by other party. For challenging the validity of the registered mark, a small window has been left open by the Hon'ble Full Bench of this Court in the case of Lupin Ltd. vs. Johnson and Johnson 2. At the interim stage, I do not find that the Defendant has made out a case of invalidity which will shock the conscience of the Court to fall within Lupin principles.
28. As regards the interim relief in respect of passing off, the 2 [2015(1) Mh.L.J. 501) Shubham 21 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc submissions canvassed do not make out a case of passing off. The tort lies in the misrepresentation by the Defendant to the prospective customers that the Defendant's goods are that of the Plaintiff. What the Plaintiff is required to establish is goodwill and reputation on the date of the Defendant commencing its activity and that the Plaintiff's mark has acquired such distinctiveness amongst the consumers that the consumers identify the mark exclusively with the Plaintiff's product. It is not sufficient to merely quote the sales figure to establish the mark's distinctiveness and association of the mark with the Plaintiff's goods. It is well settled that passing off action is common law remedy aimed at arresting the invasion of right of property in the goodwill and reputation which is apprehended to be injured by the mis- representation made by Defendant. The main consideration is likelihood of confusion which is not prima facie demonstrated in the present case. The Plaintiff has commenced its business in the year 2021 and even if the sales figure on record are considered, the same are not sufficient to prima facie come to a finding of the Plaintiff's mark having acquired the distinctiveness as required to maintain a passing off action.
29. As the Plaintiff has made out a prima facie case of being the registered proprietor of the mark "Nextech Sensors and Controls"
and the Defendant failing to have established prior user since the year Shubham 22 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc 2018, the adoption of the identical mark by the Defendant in respect of identical goods amounts to infringement. The Plaintiff being the registered proprietor of the mark, the infringement of the mark would cause irreparable loss and prejudice and thereby the balance of convenience is in favour of the Plaintiff. The Plaintiff is therefore entitled to interim relief of injunction restraining the Defendant from use of the Device mark "Nextech Sensors and Controls". Needless to clarify that the observations made herein are prima facie observations.
30. In view of the above, the Plaintiff is entitled to interim relief in terms of prayer clause (a) and (b) which reads as under:
"(a) that pending the hearing and final disposal of the suit, the Defendant by itself, its proprietors, partners, servants, agents, stockists, dealers, retailers, distributors, franchisees, licensees, assigns, predecessors and all persons claiming through and/or under it or acting on its behalf be restrained, by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiff's registered said Label/ Device bearing TM No. 5395279 in class 35 by adopting, using, promoting, selling, advertising, distributing, marketing, exhibiting for sale or otherwise dealing in Impugned Goods/ Services bearing the Impugned Mark/ Work and / or any other trade mark identical with and / or deceptively similar to the Plaintiff's said Mark/ Work in respect of the goods covered by the Plaintiff's registration or similar or like goods or associated services or in any other manner, whatsoever;
(b) that pending the hearing and final disposal of the suit, the Defendant by itself, its proprietors, partners, servants, agents, stockists, dealers, retailers, distributors, franchisees, licensees, assigns, predecessors and all persons claiming through and/or under it or acting on its behalf be restrained, by a Shubham 23 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 ::: IAL-6056-2025.doc temporary order and injunction of this Hon'ble Court from infringing the Plaintiff's copyright in the Plaintiff's said Label / Device by the use of the Impugned Mark/ Work or any other label / device identical with and/or substantial reproduction of the Plaintiff's said Label / Device."
[Sharmila U. Deshmukh, J.] Shubham 24 of 24 ::: Uploaded on - 25/07/2025 ::: Downloaded on - 02/08/2025 08:37:22 :::