Trademark Rights of Prior User Prevail Over Subsequent Registration: High Court of Delhi Rules on 'NEHA' Dispute - 2025-05-19

Common Name, Uncommon Battle: Delhi High Court Settles 'NEHA' Trademark Dispute

In a significant ruling for trademark law in India, the High Court of Delhi has addressed the limitations of statutory registration when pitted against the doctrine of prior use. Justice Sanjeev Narula presided over a consolidated set of proceedings involving the trademarked name "NEHA," a common Indian forename that became the center of a decade-long commercial struggle between Neha Herbals Pvt. Ltd. and Sahni Cosmetics .

A Tale of Two Businesses

The conflict arose from competing claims of ownership over "NEHA." The Plaintiffs, led by Vikas Gupta, asserted they had used the mark since 1992 for henna and herbal products. The Defendant, Inder Raj Sahni of Sahni Cosmetics , countered that they began using the same mark for face creams as early as 1990.

The legal battle saw multiple procedural turns, including cancelled trademark applications, vacated interim injunctions, and interventions by the Supreme Court , which ultimately directed the High Court to dispose of the matter.

Prior Use: The Statutory Shield

The court focused heavily on Section 34 of the Trade Marks Act, 1999 . Justice Narula reiterated the settled legal principle that: > "Under the scheme of the Trade Marks Act, the rights of a prior user are accorded precedence over those of a subsequent registrant. Even a registered proprietor cannot interfere with or disturb the rights of a person who has continuously used the mark from an earlier date."

While the Plaintiffs held valid registrations, the court emphasized that registration does not grant an absolute monopoly if a rival can prove prior, continuous, and bona fide commercial use.

The Evidence Gap

A pivotal takeaway from the judgment is the Court's insistence on tangible evidence. Both parties struggled to produce contemporaneous documentation from their respective claimed start dates.

The Court noted:

* For the Plaintiffs: While they lacked invoices from 1992, they provided tax returns, trademark applications, and consistent witness testimony that established a "credible narrative of commercial identity."

* For the Defendant: Their reliance on a 1990 manufacturing license was found insufficient. As the judgment pointed out, "a license to manufacture is no evidence of actual manufacturing, much less user of a mark."

The Verdict: No Monopoly in a Vacuum

Ultimately, the Court dismissed the infringement suit. Justice Narula concluded that while the Plaintiffs had established their prior use and registration for herbal products, their monopoly did not extend to the Defendant’s segment (face creams). Furthermore, the Plaintiffs failed to prove that the mark "NEHA"—given its common usage—had acquired a secondary meaning that would cause consumer confusion across these distinct product lines.

"So long as the registration remains valid and subsisting on the Register, the rights... are enforceable and binding against third parties," the court observed, yet it ultimately ruled that the Plaintiffs had failed to demonstrate the necessary elements of passing off or infringement against the Defendant’s specific, albeit distinct, use of the name.

Key Observations

• On Trademark Sense: "Trademark rights do not arise in abstract or as we say, the law does not confer proprietary rights in a vacuum; rather, those rights accrue through tangible trading and commercial activities that identify origin of products or services to the consumers."
• On Regulatory Compliance: "Regulatory non-compliance of the D&C Act alone would not vitiate the rights flowing from honest and continuous use."
• On Common Names: "In trademark jurisprudence it is well settled that marks comprising everyday/common names or generic expressions do not, by themselves, command the highest level of legal protection."

This ruling serves as a vital reminder to businesses that trademark protection is not merely a document held on file; it is a right forged in the marketplace, requiring sustained, proven commercial presence.