1. Dispute over trademark license termination — Licensee continued using mark post-expiry — Application under Section 9, Arbitration Act. (Para 1 , 2 )
Back
Next 
2026 Supreme(Online)(Bom) 1095
HIGH COURT OF BOMBAY
HON'BLE SHRI JUSTICE SANDEEP V. MARNE
DE BEERS INDIA PRIVATE LIMITED – Appellant
Versus
FORTOFINO LIFESTYLE PRIVATE LIMITED – Respondent
CARBPL/31759/2025
Important Points
A licensee cannot operate stores using a trademark after the license expires or terminates. However, courts may allow the sale of existing inscribed inventory as a balanced interim measure under Section 9 of the Arbitration Act, especially if the licensor delayed seeking relief.
Subject
Commercial Law - Arbitration & Intellectual Property
Act Referred
Arbitration and Conciliation Act, 1996: S.9, S.17, S.11(8), S.12(1)
Code of Civil Procedure, 1908: O.XL R.1, O.XXXIX R.7
Bombay High Court (Fee Payable to Arbitrators) Rules, 2018
Code of Civil Procedure, 1908: O.XL R.1, O.XXXIX R.7
Bombay High Court (Fee Payable to Arbitrators) Rules, 2018
Headnote
(A) Arbitration and Conciliation Act, 1996 - Section 9 and Section 17 - Interim measures - Use of trademark after expiry and termination of license agreement - Petitioner seeking to restrain Respondent from using brand name and operating stores - Balance of convenience - Court restrained Respondent from operating stores using the trademark but permitted sale of existing inscribed inventory pending Section 17 application before Arbitral Tribunal. (Paras 8, 9)
(B) Arbitration and Conciliation Act, 1996 - Appointment of Arbitrator - Agreement between parties to substitute a three-member tribunal with a sole arbitrator - Permissible and acted upon by Court. (Paras 11-12)
Facts of the case:
The petitioner granted the respondent a license to operate stores using its trademark. The tenure of these agreements expired, and discontinuation notices were subsequently served. Despite the termination, the respondent continued to operate stores and sell products using the trademark. The petitioner filed a petition under Section 9 of the Arbitration Act seeking a mandatory injunction to cease business under the brand, remove all brand materials, and recover unpaid dues. The respondent contended that the termination was sudden and that they held significant inventory of products inscribed with the trademark.
Findings of Court:
The court found that the tenure of the agreements had expired and termination notices were served. While the respondent cannot operate stores under the trademark indefinitely, the petitioner's delay in seeking interim measures (over one and a half years) and the existence of inscribed inventory necessitated a balanced approach.
Issues: Whether the respondent should be completely restrained from using the trademark, including the sale of inscribed inventory, following the termination of the license agreement.
Ratio Decidendi: Where a license agreement has expired and been terminated, the licensee cannot continue to represent itself as an authorized agent by operating stores under the trademark. However, to balance the equities, especially when the licensor has delayed in approaching the court, the licensee may be permitted to sell existing inscribed inventory without claiming authorized status, while being restrained from using the brand for store operations and signage. Such measures are interim until the Arbitral Tribunal decides a Section 17 application.
Result: Petition partly allowed and disposed of.
(B) Arbitration and Conciliation Act, 1996 - Appointment of Arbitrator - Agreement between parties to substitute a three-member tribunal with a sole arbitrator - Permissible and acted upon by Court. (Paras 11-12)
Facts of the case:
The petitioner granted the respondent a license to operate stores using its trademark. The tenure of these agreements expired, and discontinuation notices were subsequently served. Despite the termination, the respondent continued to operate stores and sell products using the trademark. The petitioner filed a petition under Section 9 of the Arbitration Act seeking a mandatory injunction to cease business under the brand, remove all brand materials, and recover unpaid dues. The respondent contended that the termination was sudden and that they held significant inventory of products inscribed with the trademark.
Findings of Court:
The court found that the tenure of the agreements had expired and termination notices were served. While the respondent cannot operate stores under the trademark indefinitely, the petitioner's delay in seeking interim measures (over one and a half years) and the existence of inscribed inventory necessitated a balanced approach.
Issues: Whether the respondent should be completely restrained from using the trademark, including the sale of inscribed inventory, following the termination of the license agreement.
Ratio Decidendi: Where a license agreement has expired and been terminated, the licensee cannot continue to represent itself as an authorized agent by operating stores under the trademark. However, to balance the equities, especially when the licensor has delayed in approaching the court, the licensee may be permitted to sell existing inscribed inventory without claiming authorized status, while being restrained from using the brand for store operations and signage. Such measures are interim until the Arbitral Tribunal decides a Section 17 application.
Result: Petition partly allowed and disposed of.
Legal Category Hierarchy
- practice and procedure
- intellectual property
Advocates:
For the Appellants/Petitioners: Ankit Lohia, Pranav Sampat, Yash Kataria, Pratish Khata
For the Respondents: Archit Jaykar, Trupti Khadse
For the Appellants/Petitioners: Ankit Lohia, Pranav Sampat, Yash Kataria, Pratish Khata
For the Respondents: Archit Jaykar, Trupti Khadse
Table of Contents
2. Petitioner: License expired and terminated; Respondent must cease use. Respondent: Abrupt termination; large inventory of inscribed diamonds remains unsold. (Para 5 , 7 )
3. License tenure expired and agreement terminated. Discussions for continuation did not fructify. Petitioner delayed filing for over one year. (Para 6 , 7 , 8 )
4. Post-termination and expiry, continued use of trademark without license constitutes irreparable harm warranting interim restraint. (Para 9 )
5. Respondent restrained from operating stores using petitioner's trademark. Respondent may sell existing inscribed diamond inventory pending Section 17 application. (Para 13 )
6. What is the standard for granting interim relief under Section 9 of the Arbitration Act?
The court must find a prima facie case, balance of convenience in favor of the applicant, and irreparable harm if relief is not granted. (Para 9 )
7. Can a trademark licensee continue using the mark after the license agreement has expired and been terminated?
No. Continued use after expiry and termination is unauthorized and constitutes irreparable harm to the licensor, justifying a restraint order. (Para 6 , 8 , 9 )
8. Does delay in filing a Section 9 petition affect the grant of interim relief?
Yes. Unreasonable delay without filing an arbitration petition may cause the court to relegate the applicant to seek remedies under Section 17 before the arbitral tribunal. (Para 8 )
9. May a court grant a limited interim measure permitting sale of existing inventory bearing the disputed mark?
Yes. To balance interests, the court may permit sale of existing inscribed inventory while restraining use of the trademark for new operations. (Para 8 , 13 )
P.C.:
1. Since Respondent was once granted license to operate stores in India by using Petitioner's brand/trademark 'Forevermark', the Respondent apparently believes that the license is 'forever'. Petitioner has filed the present proceedings to restrain Respondent from using its brand/trademark for sale of diamonds in Respondent's stores in India.
2. In paragraph 8 of the Arbitration Petition, the Petitioner has indicated following details in respect of the tenure of the Forevermark Jeweller Agreement (FMJA) in respect of different stores across India:
| Sr. No. | Location | Date of offer letter | Date of commencement | Date of expiry |
|---|---|---|---|---|
| 1 | Ludhiana | 12 February 2021 | 1 October 2020 | 14 December 2023 |
| 2 | Ambala/ Jammu Channi | 12 February 2021 | 1 October 2020 | 30 September 2023 |
| 3 | Gurgaon | 12 February 2021 | 15 December 2020 | 14 December 2023 |
| 4 | Chandigarh | 15 September 2021 | 01 September 2021 | 31 August 2024 |
| 5 | Jammu GN | 15 September 2021 | 01 September 2021 | 31 August 2024 |
| 6 | Lucknow | 31 October 2021 | 1 November 2021 | 31 October 2024 |
| 7 | Jammu (Talah Tillo) | 30 March 2023 | 1 October 2020 | 30 September 2023 |
3. In addition to expiry of tenure of FMJA, the Petitioner has separately issued discontinuation notices dated 22 August 2024 to the Respondent. However, since Respondent continues to operate stores in India under the trade/brand name 'Forevermark' and continues to sell diamonds with the inscribed mark 'Forevermark' thereon, the Petitioner has filed the present Petition in September 2025 under Section 9 of the Arbitration and Conciliation Act, 1996 (the Arbitration Act) seeking following prayers:
(a) pending the constitution of the Arbitral Tribunal, hearing and disposal of the Arbitration Proceedings, making of the Award, and until execution of the Award, Respondent by itself or through its directors, key managerial personnel, agents, servants, representatives, employees or any person claiming through or under it, be directed by this Hon'ble Court by an order of temporary mandatory injunction to-
i. cease carrying on the business as the Authorised Forevermark Jewellery Stores, including but not limited to identified Unauthorised Forevermark Jewellery Stores details of which have been provided in "Exhibit - C" hereto;
ii. collect up and/or obtain all Forevermark Materials and Forevermark Viewers and hand them over to the Petitioner and/or its representatives;
iii. remove all references to "Authorised Forevermark Jeweller" and to any other descriptive wording referencing Respondent's Authorised Forevermark Jeweller status from any materials (including website, domain names, corporate and promotional materials, invoices, labels, signages, hoardings) in respect of the Respondent's s Unauthorised Forevermark Jewellery Stores or any other stores/premises bearing the same, and where such references cannot be removed, destroy such materials and report the same to this Hon'ble Court;
iv. cease to sell, offer or dispose of any Products under, or by reference to the Trade Mark "Forevermark" including but not limited to the Trade Marks mentioned in Schedule III of the FMJ Agreement or any mark / label / logo identical with or similar thereto;
v. cease to hold itself out as an Authorised Forevermark Jeweller or as being in any way connected or associated with Forevermark on an on-going basis;
(b) this Hon'ble Court be pleased to pass an order of appointment of Court Receiver, High Court, Bombay or any other fit person be appointed as Receiver with all powers under Order XL Rule 1 and Order XXXIX Rule 7 of the Code of Civil Procedure, 1908 to attend and search the Respondent's Unauthorised Forevermark Jewellery Stores as more particularly described in Exhibit - C or any other stores / premises / warehouses / godowns of the Respondent and to make an inventory, seize and take possession/custody of all material, including Products and Forevermark Materials pertaining to the FMJ Agreement, all stationery, signages, hoardings, documents, visual display material, invoi
