Summary
This case involved a quia timet suit seeking injunction against anticipated use of a mark similar to the plaintiff’s. The Court held that without actual use, there can be no infringement under Section 29 of the Trade Marks Act, and a trademark application alone does not confer a cause of action.
Background and Facts
The appellant, Deepak Kumar Khemka, is engaged in the business of tobacco-related products under the marks “SHUDH,” “SHUDH PLUS,” and “SHUDH PLUS ULTRA LABEL.” In March 2024, the appellant became aware of a trademark application filed by the respondent for the mark “ATS SHUDH” in Class 34. The application, filed on a proposed-to-be-used basis, was published in the Trade Marks Journal in February 2024. An opposition was promptly filed by the appellant.
Upon conducting market inquiries, the appellant found no evidence of the mark’s actual use. Despite this, he instituted a quia timet suit before the Commercial Court seeking a permanent injunction against possible future use of the impugned mark and related reliefs. The Commercial Court rejected the suit under Order VII Rule 11(a) of the CPC for disclosing no cause of action. This appeal was filed challenging that rejection.
Issues for the Court
The central issue before the Court was whether the mere filing of a trademark application, absent any use, creates a valid cause of action for infringement. Ancillary to this was the question of whether a quia timet action could lie based solely on apprehended future use of a mark.
Key Arguments
Appellant:
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- Filing of a trademark application for “ATS SHUDH” implied intent to use, triggering a credible threat.
- Injunctive relief should not be withheld merely because use has not yet commenced.
- The claim was maintainable as a quia timet action based on anticipatory infringement.
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Respondent:
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- The application was filed on a proposed-to-be-used basis with no actual use in trade.
- There was no evidence of any sales or marketing of goods under the impugned mark.
- The plaintiff’s proper remedy was opposition before the Trade Marks Registry, which had already been exercised.
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Court’s Analysis
The Court carefully considered the judgment of the Commercial Court, as well as the binding precedents of the Supreme Court. It reaffirmed the settled position that under Section 29 of the Trade Marks Act, infringement arises from use “in the course of trade.” As per the Court, filing a trademark application, in and of itself, does not amount to use, nor does it infringe the rights of an earlier proprietor.
The Court relied particularly on paragraph 20 of the Supreme Court’s decision in K. Narayanan v. S. Murali, which unequivocally states that an application for registration does not give rise to a cause of action for infringement. The Court observed that the attempt to distinguish Narayanan on the basis that it pertained to passing off, rather than infringement, was misplaced. According to the Court, the principle laid down therein was expressed in terms general enough to cover both.
The Court also stated in the case that the appellant admitted that no products under the mark “ATS SHUDH” had entered the market. As market inquiries yielded nothing more than speculative fear of use, the Court was of the opinion that such fear was not sufficient to sustain a quia timet action. The Court said that the mere apprehension of use, without a factual foundation or evidence of preparatory acts indicating imminent use was not sufficient to give rise to a cause of action for trademark infringement.
Findings and Order
The Delhi High Court dismissed the appeal in limine. It held that:
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- No cause of action arose merely from the respondent’s trademark application.
- No evidence of actual or imminent use of the impugned mark had been produced.
- The proper remedy in such circumstances lies before the Trade Marks Registry, not in a civil court.
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As per the Court, the suit was rightly rejected by the Commercial Court under Order VII Rule 11(a) for lack of cause of action.
Relevant Paragraphs
From the Commercial Court’s Order:
“It is thus plaintiff’s admitted case that though he is apprehending that goods are likely to be infused in the territory of Delhi, the same are not available anywhere in any market across the country.” (¶12) “As per Hon’ble Supreme Court, cause of action will arise in favour of plaintiff only when the registered trademark is used by the defendant and not when application for registration is filed.” (¶14) From the High Court Judgment:
“Para 20 of K. Narayanan is clear and categorical. It holds, in plain terms that ‘before registration is granted for the trademark, there is no right in the person to assert that the mark has been infringed and that a proposed registration which may or may not be granted will not confer a cause of action to the plaintiff…’” (¶17) “The trigger point for an infringement action is use, not registration of the plaintiff’s mark, or a mark which is identical or deceptively similar thereto, by the defendant.” (¶21) “Even on facts, the learned Commercial Court has found that no supportive material to sustain a quia timet action on the ground of apprehension of use of the allegedly infringing mark by the respondents, was made out.” (¶23)
Disclaimer
This case note has been prepared based on the author’s understanding, views, and conclusions. Opinions of others may differ. Parts of this note wre generated using a proprietary AI application.
Citation: Deepak Kumar Khemka v. Yogesh Kumar Jaiswal & Ors., RFA(COMM) 381/2025, Delhi High Court, decided on July 28, 2025. https://indiankanoon.org/doc/76790625/ (last visited Aug. 4, 2025).
