Delhi High Court - Orders
Ashok Kumar Bhatia Trading As Kanika ... vs Kamal Raheja Trading As Amaira Herbals on 7 May, 2025
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~56
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (COMM) 114/2025, CM APPL. 27685/2025, CM APPL.
27686/2025 & CM APPL. 27687/2025
ASHOK KUMAR BHATIA TRADING
AS KANIKA IMPETUS .....Appellant
Through: Mr. Shailen Bhatia, Mr. Amit
Jain, Ms. Deeksha Gulati and Mr. Varun
Kajla, Advs.
versus
KAMAL RAHEJA TRADING
AS AMAIRA HERBALS .....Respondent
Through: Mr. Amit Joshi, Mr. B.M.
Jyotishi, Ms. Prabhjot Kaur and Ms. Vineeta
Sharma, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
HON'BLE MR. JUSTICE AJAY DIGPAUL
ORDER
% 07.05.2025 CM APPL. 27686/2025 (Exemption)
1. Exemption allowed, subject to all just exceptions.
2. The application is disposed of.
CM APPL. 27687/2025 (seeking condonation of delay)
3. This is an application seeking condonation of delay of 15 days in refiling the appeal.
FAO (COMM) 114/2025 Page 1 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58
4. For the reasons stated in the application, the delay is condoned.
5. The application is allowed.
FAO (COMM) 114/2025 & CM APPL. 27685/2025 (stay)
6. This appeal assails order dated 17 January 2025 passed by the learned District Judge (Commercial Court-02)1, North District, Rohini, on an application filed by the respondent under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 19082 in CS (Comm) 6687/20243, whereby the learned Commercial Court has allowed the application and has made the ad interim order dated 29 August 2024, passed earlier in the suit, absolute, pending disposal of the suit.
7. The respondent Kamal Raheja was the plaintiff in CS (Comm) 6687/2024. He asserted that, while trading as Amaira Herbals, he had adopted the trademark MARKS GO, under which mark he was manufacturing and selling skin products since 30 September 2011, when he had allegedly adopted the said mark. He claimed that, by dint of continuous user, the public had begun to associate the mark with him.
8. The respondent alleged that, on 9 August 2024, he came to know that the appellant was using an identical mark MARKS GO, on an identical packaging, for similar goods. Alleging that the appellant 1 "learned Commercial Court" hereinafter 2 "CPC" hereinafter 3 Kamal Raheja Trading as Amaira Herbals v Ashok Kumar Bhatia Trading as Kanika Impetus FAO (COMM) 114/2025 Page 2 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58 was, thereby, seeking to capitalise on the goodwill and popularity of the mark adopted by the respondent, the respondent instituted CS (Comm) 6687/2024, seeking a decree of permanent injunction, restraining the appellant from using the mark MARKS GO.
9. The suit was accompanied by an application under Order XXXIX Rules 1 and 2 of the CPC, seeking interim injunction.
10. During the course of proceedings, an ad interim order, in favour of the respondent and against the appellant, was passed on 29 August 2024. By the order impugned in the present appeal, the learned Commercial Court has made the ad interim order absolute pending disposal of the appeal.
11. We deem it appropriate to reproduce paras 3 to 8 of the impugned order, thus:
"3. Plaintiff is in the business of manufacturing, marketing and selling cosmetic and face cream etc. under the trade mark MARKS GO which was adopted on 30.09.2011 and since then he is using that trade mark openly, continuously and extensively not only in this country but in Sri Lanka and Zimbabwe also. He is the proprietor of that trade mark and hence he has exclusive right to use the same on his products. Due to supreme quality of goods, the mark has acquired tremendous goodwill and reputation amongst traders and general public. The goods bearing trade mark MARKS GO are always associated with him. His turnover has grown exponentially during these years.
Counsel for plaintiff argued that his client came to know first time on 09.08.2024 that the defendant was using the identical trade mark on identical packaging containing same kind of goods which are manufactured by plaintiff. By doing so, he is trying to ride upon the popularity and goodwill of plaintiff's trade mark by making uneducated population to believe that his goods have been manufactured and sold by plaintiff and in this way, he is reaping FAO (COMM) 114/2025 Page 3 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58 unfair advantage and he should be stopped.
4. Ld. counsel for defendant argued that his client is in the business of manufacturing and wholesale of skincare cream, hair oil, shampoo and lip-guard etc. and got registered trade mark POFIE PLANT in 2012 claiming user since 1987. He has been using that trade mark extensively and uninterruptedly since 1987. The word MARKS GO only denotes the result if defendant's cream was applied on the face. After its application, the mark on the face are removed. Those words were neither invented nor coined by the plaintiff. It is a generic term having no distinction and that's why the application moved by plaintiff for registration of the trade mark MARKS GO was not allowed by the Trade Mark Registrar and at the end, the plaintiff had to abandon it.
It is next argued that there are various players who manufacture, market and sell identical goods under the trade mark MARKS GO. The plaintiff is not the original proprietor or adopter of it. Rather, he himself has been restrained by the Ld. Predecessor Judge of this Court in a case titled "Hahnemann Pure Drug Co. Azamgarh Vs. Kamal Raheja4, from using the trade mark MARKS GO. Moreover, the defendant's mark significantly differs from plaintiff's mark in style and format.
5. Counsel for plaintiff relied upon M/s Anshul Industries Vs. Shri Vineet & Ors.5, CS No.1166/2008, decided by Hon'ble High Court on 16.12.2008 and admitted that restraint order has been passed against the plaintiff in another case from using the trade mark MARKS GO. But the said case has yet not been finally decided and hence the finding of that Court is interim one which is yet to be finalized.
6. In the cited case, the plaintiff's trade mark was PANCHHI and defendant's trade mark was UDTA PANCHHI. The plaintiff of that case was restrained on interim application from using the trade mark PANCHHI which was of a third party. The Hon'ble Delhi High Court made the interim order absolute holding that restraint order against the plaintiff in some other case was on interim application and that case had yet not been decided. But the facts of the present case are slightly different from that case. In the case in hand, the third party Hahnemann Pure Drug Co. Azamgarh is the registered proprietor of trade mark MARKS GO since 14.09.2010. In the cited case, perhaps, the third party was not registered proprietor of the trade mark. Neither plaintiff nor defendant are the registered proprietor. They are merely users.
4 Order dated 8 June 2023 in CS (Comm) 346/2023 5 Order dated 16 December 2008 in CS(OS) 1166/2008 FAO (COMM) 114/2025 Page 4 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58
7. In written statement, it is mentioned at one place that the defendant is the registered proprietor of trade mark POFIE PLANT HERBALS MARK GO. But it is mentioned at other place that he is the registered proprietor of only POFIE PLANT. The defendant has claimed that he is using the registered trade mark POFIE PLANT HERBALS MARK GO since 1987. But when he filed application for registration he mentioned that was using only POFIE PLANT. Had defendant been using the words MARK GO in trade mark since 1987, he would have mentioned so in the registration application moved on 18.12.2012. Moreover, the defendant did not file any document to show that he is using the words MARKS GO in his trade mark since 18.12.2012. On the other hand, the claim of the plaintiff is that he using the trade mark MARKS GO since 2011. Even if it is presumed that defendant is using the words MARKS GO in his trade mark since 18.12.2012, it is the plaintiff who is prior user.
8. In view of above discussion, the application is allowed and the interim order dated 29.08.2024 is made absolute as it will be in the benefit of not only plaintiff but also in the benefit of registered proprietor i.e. third party."
12. Admittedly, neither the appellant nor the respondent had any registration of the mark MARKS GO under the Trademarks Act, 1999. As such, the suit was not one of infringement, but of passing off.
13. For passing off, it is well-settled that the plaintiff has to establish the existence of goodwill and reputation earned over a period of time, and that, capitalising on the said goodwill and reputation, the defendant was seeking to pass off its products as those of the plaintiff.
14. Before the learned Commercial Court, moreover, one of the contentions which was advanced by the appellant, as the defendant, was that the respondent-plaintiff had itself been injuncted against use of the mark MARKS GO by the order passed by the predecessor of FAO (COMM) 114/2025 Page 5 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58 the learned Judge who has passed the impugned order, in Hahnemann Pure Drug Co. Azamgarh v Kamal Raheja in CS (Comm) 346/2023 on 8 June 2023.
15. The appeal against that order, preferred by the respondent, is presently pending before this Court.
16. Thus, it was sought to be contended, before the learned Commercial Court, that the respondent having been itself injuncted from using the mark MARKS GO, could not maintain an action for passing off against the appellant.
17. The impugned order discloses that the learned Commercial Court has not considered any of these submissions. All that is stated is that the appellant had not filed any document to indicate that it was using the mark MARKS GO since 18 December 2012, whereas the respondent, as the plaintiff, was alleging that it was using the mark since 2011. Thus, solely on the ground that the respondent-plaintiff had priority of user, the learned Commercial Court has passed the impugned order of injunction pending disposal of the suit.
18. Prima facie, the manner in which the impugned order has been passed is foreign to the principles governing passing off, and the considerations that prevail while granting an injunction on that ground. Moreover, the learned Commercial Court has also not considered the contention of the appellant that the respondent having been itself injuncted from using the mark MARKS GO by the order FAO (COMM) 114/2025 Page 6 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58 dated 8 June 2023 in Hahnemann Pure Drug Co. Azamgarh, could not maintain an action for passing off against the appellant. There is also no finding, by the learned Commercial Court, on the aspect of goodwill and reputation of the respondent-plaintiff. None of the considerations which, in fact, would be required to be satisfied by a plaintiff seeking an injunction on the ground of passing off, however, find place in the impugned order passed by the learned Commercial Court.
19. In these circumstances, we had initially queried of learned Counsel for the respondent as to whether he was agreeable to the order being set aside and the matter being remanded to the learned Commercial Court for de novo consideration of the respondent's prayer for interim injunction.
20. Learned Counsel for the respondent, on instructions, submits that his client desires to contest the appeal.
21. In that view of the matter, given the nature of the impugned order and in view of the above considerations, we have no option but to stay the operation of the impugned order pending disposal of the present appeal.
22. As such, issue notice on the appeal and the stay application.
23. Notice is accepted on behalf of the respondent by Mr. Amit Joshi.
FAO (COMM) 114/2025 Page 7 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58
24. We dispense with the requirement of exchange of pleadings in this matter.
25. Both sides are directed to place on record short notes of their respective submissions not exceeding five pages each after exchanging copies with each other at least a week in advance of the next date of hearing.
26. Till the next date of hearing, there shall be a stay of operation of the impugned order dated 17 January 2025 passed by the learned Commercial Court in CS (Comm) 6687/2024 as well as the earlier ad interim order, which was made absolute thereby.
27. Re-notify on 13 October 2025.
C.HARI SHANKAR, J.
AJAY DIGPAUL, J.
MAY 7, 2025 ar Click here to check corrigendum, if any FAO (COMM) 114/2025 Page 8 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 20:37:58