Brief Facts of the Case:
The dispute pertains to trademark rights over the name "DISPOSAFE." The appellants, Disposafe Health & Life Limited, claimed prior use of the trademark "DISPOSAFE" for disposable medical devices. They alleged that the respondents, Rajiv Nath & Anr., attempted to register and use the same mark, leading to confusion and dilution of their brand identity. The learned Single Judge initially refused to grant an injunction in favor of the appellants and instead granted an injunction against them, preventing them from using the "DISPOCANN" and other "DISPO" formative marks. The appellants challenged this decision before the Division Bench.

Brief Issues:
The primary issue was whether the appellants were entitled to an injunction against the respondents to restrain them from using the "DISPOSAFE" trademark. Another issue was whether the respondents had any legitimate claim over the mark or if their use constituted passing off.

Reasoning of the Court:
The Division Bench observed that the learned Single Judge failed to consider the appellants' claim for an injunction against the respondents while focusing on the respondents' claim. The court found that the appellants had provided evidence of prior use of the "DISPOSAFE" trademark, including incorporation certificates, sales figures, invoices, and product packaging. The respondents, on the other hand, had not commenced marketing under the name "DISPOSAFE" and their claim of prior use was found to be weak. The court emphasized that portmanteau words could be protected as trademarks and that the respondents' application for registration of "DISPOSAFE" indicated an acknowledgment of its distinctiveness.

Decision:
The Division Bench allowed the appeal, set aside the order of the learned Single Judge, and granted an injunction restraining the respondents from using the trademark "DISPOSAFE" or any deceptively similar mark in relation to medical disposable devices until the disposal of the suit.

Law Point Settled:
An injunction can be granted in favor of a party that establishes prior use of a trademark, even if the mark consists of a combination of descriptive elements. Portmanteau words can be protected as trademarks if they acquire distinctiveness. A court must ensure that both parties' claims are fairly considered when granting or denying injunctions. A party that has not commenced marketing under a disputed trademark may not claim rights superior to an established user.

Case Title: Disposafe Health & Life Limited & Ors. vs. Rajiv Nath & Anr.
Date of Order: February 28, 2025
Case Number: FAO(OS)(COMM) 272/2018
Neutral Citation: 2025:DHC:1326:DB
Name of Court: High Court of Delhi at New Delhi
Name of Judges: Hon'ble Mr. Justice Yashwant Varma and Hon'ble Mr. Justice Prateek Jalan

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539