JUDGMENT

26.11.2025

C. HARI SHANKAR, J.

The lis

1. These are cross appeals. They challenge order dated 22 April 2025, passed by the learned District Judge (Commercial Court-05), Saket, (1 “learned Commercial Court”, hereinafter) in CS (Comm) 3590/2024, (2 Saurabh Gupta v Sheopals Pvt. Ltd.). By the said order, the learned Commercial Court has allowed an application filed by Sheopals Pvt. Ltd., (3 “SPL”, hereinafter) under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, (4 “CPC” hereinafter) and, has thereby dismissed the application filed by Saurabh Gupta, (5 “Saurabh”, hereinafter) under Order XXXIX Rules 1 and 2 of the CPC.

2. Saurabh’s application under Order XXXIX Rules 1 and 2 had earlier been allowed, and SPL’s application under Order XXXIX Rule 4 dismissed by the learned Commercial Court, vide order dated 7 September 2024. SPL challenged the order before this Court by means of FAO (Comm) 216/2024, (6 Sheopals Pvt. Ltd. v Saurabh Gupta). By judgment dated 20 November 2024, a coordinate Division Bench of this Court allowed the said FAO, set aside the order dated 7 September 2024 of the learned Commercial Court and remanded SPL’s application under Order XXXIX Rule 4 of the CPC to the learned Commercial Court for consideration afresh. The coordinate Bench found the reasoning of the learned Commercial Court, which was predicted on bisection of the mark SHEOPAL’S into SHE and OPAL as violative of the anti-dissection rule applicable in such cases. The Coordinate Bench further noted that the learned Commercial Court had itself observed that the marks OPAL and SHEOPAL’S were not phonetically similar. If the marks were not phonetically similar, the learned Commercial Court, according to the Division Bench, could not have arrived at a finding of likelihood of confusion.

3. The application of SPL under Order XXXIX Rule 4 of the CPC was, therefore, remanded for fresh consideration and decision keeping in mind the observations of this Court. While doing so, the coordinate Bench clarified that its observations were merely for disposal of the appeal before it. We, therefore, do not feel inhibited by the said observations, as we are somewhat at variance therewith.

4. The presently impugned order dated 22 April 2025 is the culmination of the de novo consideration by the learned Commercial Court, in compliance with the order dated 20 November 2024 passed by the Division Bench of this Court in FAO (Comm) 216/2024.

Rival contentions raised before the learned Commercial Court

5. Contentions of Saurabh

5.1 CS (Comm) 3590/2024 stands instituted by Saurabh against SPL, alleging that SPL has, by using the mark “SHEOPAL’S”, infringed the trademark “OPAL” which stands registered in favour of Saurabh Gupta in Class 3 with effect from 1992 for “gels, bathing soaps, foundation cakes etc.”, under Section 23 of the Trade Marks Act, 1999. Saurabh asserted, in the suit, that he had, since 1992, been continuously using the mark OPAL for the goods in respect of which it stands registered and that, by dint of continuous use, the mark OPAL had gained considerable goodwill and reputation. To support this assertion, Saurabh filed, with the suit, proof of his annual turnover, which increased from ₹ 93,60,686/- in 2006-07 to ₹ 28,50,74,632.18 in 2023-24.

5.2 Saurabh further pointed out, in the suit, that SPL was incorporated only on 17 June 2016, much after Saurabh had commenced use of the mark OPAL for various cosmetics items. SPL applied under the Trade Marks Act for registration of the mark SHEOPAL’S in Class 3 on 23 November 2018 and 28 October 2022. Both applications stood opposed by Saurabh. Despite this, the suit asserted that Saurabh had come to learn, in February 2024, that SPL had launched cosmetics products bearing the mark SHEOPAL’S in the market.

5.3 In these circumstances, Saurabh instituted the suit against SPL, alleging that the use of the mark SHEOPAL’S by SPL for items which were similar to those being manufactured and sold by Saurabh under the re