The present case arises out of a dispute between Vishal Gupta and others on one side, and Rahul Bansal on the other, concerning alleged passing off and deceptive similarity in the use of trademarks related to edible oil products. The case, which reached the Delhi High Court by way of a First Appeal under Order XLIII CPC, centers around an interim injunction granted by the Commercial Court. The High Court was called upon to assess whether the injunction was legally sustainable, particularly when the respondent-plaintiff did not hold a registered trademark.

• Detailed Factual Background:
  • Rahul Bansal, the plaintiff, sought to restrain Vishal Gupta and others from using the trademarks "OM AMAR SHAKTI" and "SARKAR OM AMAR SHAKTI" for mustard oil.
  • The plaintiff claimed the marks were deceptively similar to his mark "MATA AMAR SHAKTI", amounting to passing off.
  • The plaintiff's mark was not registered under the Trade Marks Act, 1999, but he had copyright registration for the label.
  • He asserted prior user rights and alleged misappropriation of goodwill by the defendants.
  • An injunction was sought to restrain the defendants from using the impugned marks.
• Detailed Procedural Background:
  • The Commercial Court at Tis Hazari adjudicated three applications:
    • Plaintiff's application under Order XXXIX Rules 1 and 2 CPC for interim injunction.
    • Defendants' application under Order VII Rule 11 CPC for rejection of the plaint.
    • Defendants' application under Order VII Rule 10 CPC for return of the plaint due to lack of jurisdiction.
  • On 5 March 2025, the Commercial Court granted the plaintiff's injunction and restrained the defendants.
  • Defendants appealed via FAO (COMM) 103/2025 to the Delhi High Court, challenging only the injunction order.
• Issues Involved in the Case:
  • Whether the injunction was justified in favour of a plaintiff without a registered trademark.
  • Whether priority of user alone suffices in a passing off claim without evidence of goodwill, misrepresentation, or damage.
• Detailed Submission of Parties:
  • Appellants argued:
    • The plaintiff lacked a registered trademark.
    • No evidence of goodwill, misrepresentation, or damage was provided.
    • Injunction was based solely on alleged prior use.
  • Respondent contended:
    • Passing off rights exist independent of registration.
    • Relied on common law principles and Supreme Court judgments supporting protection of prior users.
• Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context:
  • Brihan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577:
    • Passing off requires proof of goodwill, misrepresentation, and damage.
    • Priority of use alone is insufficient.
  • Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145:
    • Deception to the public is key in passing off claims.
  • Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683:
    • Reaffirmed that registration is irrelevant if prior user is established.
  • Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR 491 (HL):
    • Established the triad: reputation, misrepresentation, and damage as essentials in passing off.
  • The High Court noted the Commercial Court overlooked these essentials.
• Detailed Reasoning and Analysis of Judge:
  • The Division Bench held the Commercial Court's order legally flawed.
  • The order did not discuss goodwill or reputation linked to "MATA AMAR SHAKTI".
  • Priority of use alone doesn't justify injunction.
  • Requirements for interim relief—misrepresentation and likely damage—were not adequately addressed.
  • The respondent's counsel agreed and sought remand.
  • The High Court used its appellate power to rectify the error.
• Final Decision:
  • The Delhi High Court set aside the injunction order under Order XXXIX Rules 1 and 2 CPC.
  • The matter was remanded to the Commercial Court for fresh consideration of the merits of the passing off claim.

Law Settled in This Case: This judgment reinforces the well-established principle that for a successful passing off action, the plaintiff must establish three crucial elements: goodwill associated with the mark, misrepresentation by the defendant, and resultant damage or likelihood of it. Mere prior use of a mark is not enough to secure an injunction unless these ingredients are present. It also reiterates that in the absence of a registered trademark, a claim for infringement is not maintainable under Section 28 and 29 of the Trade Marks Act, 1999. The decision underscores the responsibility of courts to conduct a thorough analysis of these components before granting interim relief in trademark disputes.

Case Title: Vishal Gupta and Others Vs. Rahul Bansal: Date of Order: 08 May 2025: Case No.: FAO (COMM) 103/2025: Neutral Citation: 2025:DHC: 3685-DB: Name of Court: High Court of Delhi:Name of Judge: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

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