In a passing off action, a plaintiff cannot obtain an injunction against a registered trademark proprietor whose adoption and registration of the mark predates the plaintiff's user, especially when the plaintiff fails to establish prior goodwill and the alleged assignment of rights lacks a concurrent transfer of business goodwill.

JUDGMENT

C. HARI SHANKAR, J.

1. This appeal assails order dated 21 December 2024, passed by the learned District Judge, Commercial Court-03 (Central), Tis Hazari¹“the learned Commercial Court” hereinafter whereby the appellant’s application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908²“CPC” hereinafter. has been dismissed. Respondent 1, in the appeal, is Mohsin Dehlvi, and Respondent 2 is Dehlvi Remedies Pvt Ltd.

2. CS (Comm) 1776/2020³Sana Herbals Pvt Ltd v. Mohsin Dehlvi & Anr stands instituted by the appellant against the respondents, alleging (i) infringement, by the respondents, of the trade mark NOKUFSYRUP which stands registered in favour of the appellant, under Section 23 of the Trade Marks Act, 1999, with effect from 15 May 2015, and (ii) passing off, by the respondents, of their product NOKUF/ KufNo Syrup as the product of the appellant, by using the mark NOKUF.

3. No case of infringement can sustain

3.1 At the very outset, we deem it appropriate to clear the air by observing that, as the trade mark NOKUF stands registered in favour of Respondent 2 with effect from 3 June 1996, no allegation of infringement can sustain against the respondents, in view of the law declared by the Supreme Court in paras 27, 28 and 32.2 of S. Syed Mohideen v. P. Sulochana Bai ⁴(2016) 2 SCC 683 which clearly hold that no infringement action can lie against a registered trade mark, though an action for passing off is maintainable:

“27. Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other. It, thus, postulates a situation where same or similar trade mark can be registered in favour of more than one person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act.

28. However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for considerati