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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. HARI SHANKAR, OM PRAKASH SHUKLA, JJ.
Deepak Kumar Khemka – Appellant
Versus
Yogesh Kumar Jaiswal & Ors. – Respondents
RFA(Comm) 381 of 2025, CM Appl. 42135 of 2025
Decided On : 28-07-2025
| Table of Content |
|---|
| 1. cause of action is based on trademark application. (Para 4 , 5) |
| 2. court's reasoning on sustaining a cause of action. (Para 8 , 11 , 12 , 13 , 14) |
| 3. no cause of action based on mere trademark application. (Para 15 , 16 , 17 , 21) |
| 4. infringement requires actual use of trademark. (Para 20 , 22 , 24) |
| 5. appeal dismissed summarily. (Para 27) |
JUDGMENT :
C. HARI SHANKAR, J.
1. This appeal assails order dated 4/5 June 2025, passed by the learned District Judge (Commercial Court-02), [“the learned Commercial Court” hereinafter] in CS (Comm) 391/2024.
2. By the impugned order, the learned Commercial Court has dismissed CS (Comm) 391/2024, instituted by the appellant, under Order VII Rule 11 of the CPC, [Code of Civil Procedure, 1908] on the ground that it did not disclose any sustainable cause of action, on the basis of which the suit could be maintained.
3. The facts are not in dispute.
4. The appellant claimed to be manufacturing and selling articles of tobacco, matchboxes, supari, pan masala, mouth freshener, aerated water and non-alcoholic drinks, among other goods, under the trade marks “SHUDH, SHUDH PLUS and SHUDH PLUS ULTRA LABEL”. The plaint refers to these marks, collectively, as the “SHUDH formative trademarks/labels”.
5. The cause of action for instituting the plaint, as per the recitals therein, was an application filed by the defendant for registration of the trade mark/label ATS SHUDH in Class 34 of the Nice Classification, [The international index of classification of goods and services for the purposes of trade mark registration, adopted by the Nice Agreement in 1957]. The appellant claimed to have learnt of the filing of the said application by the respondent in the third week of March 2024. The application was filed for tobacco, chewing tobacco, zarda, khaini and other smokers articles, on proposed to be used basis. The trade mark application of the respondent was published in the Trade Mark Journal on 12 February 2024. It is not in dispute that the appellant has filed an opposition against the said application on 19 March 2024.
. However, it was a conceded position that no goods bearing the said trade mark/label were prevalent in the market. Nonetheless, on the ground that the appellant had “a strong and credible apprehension that the impugned goods bearing the impugned trade marks (were) going to be infused into the markets” within the jurisdiction of the Commercial Court at Saket, the suit was instituted by the appellant as a quia timet action, [“Quia timet” literally meaning “before he fears”, representing an action to injunct an act which is reasonably apprehended but has not yet happened.] praying as under:
or soliciting/using it through any online medium or online websites or through any online platforms or through any social medias or any other identical with and/or deceptively similar word/mark/label to the plaintiffs Trademarks/labels which is identical/deceptively similar to the plaintiff's trademark/label SHUDH and other formative marks in relation to their impugned goods and business and related/cognate/allied goods and from doing any other acts or deeds amounting to or likely to:-i. Infringement of the Plaintiffs registered Trademarks/labels.
ii. Passing off and violation of the Plaintiffs common law rights in the plaintiffs said Trademarks/labels & dilution of the
A cause of action for trademark infringement requires actual use of the mark, not merely an application for registration.
To establish trademark infringement, the plaint must demonstrate use 'in the course of trade'; mere display of a mark without commercial activity does not satisfy this requirement.
Each act of trademark infringement constitutes a fresh cause of action, allowing the aggrieved party to file a new suit for ongoing violations.
Point of Law : Trial Court would be justified in putting an end to vexatious, frivolous, meaningless and sham litigation. But this power may be exercised only where the plaint clearly discloses no ca....
In trademark infringement actions, a presumption of confusion arises if the defendant's mark is identical to that of the registered trademark, fostering the entitlement to interim injunction.
A plaint can be rejected under Order 7 Rule 11 of the C.P.C if it does not disclose a cause of action, and the absence of trademark registration at the time of filing negates claims of infringement.
The court upheld the plaintiff's rights as the prior user and registered owner of the trademark, granting an injunction against the defendant's use of a similar mark due to the likelihood of consumer....
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