Can trademark rights exist even without continuous commercial use?

Summary

The Delhi District Court has permanently restrained Racing Promotions Pvt. Ltd. from using the trademarks “X1” and “X1 Racing League,” citing infringement of Ashish Aggarwal’s registered marks. The ruling reinforces trademark rights even without continuous commercial use.

The Delhi District Court granted a permanent injunction restraining the defendant from using the mark “X1” or “X1 Racing League”. The court held that the plaintiff’s registered trademarks were infringed and passed off by the defendant. It found that the plaintiff’s rights under the Trade Marks Act were valid and enforceable, even in the absence of continuous commercial use.

Background

The plaintiff, Ashish Aggarwal, obtained registrations for the trademarks “X1” and “X1 WAR OF X-TREME SPEED” under Classes 35 and 41 on 11 July 2016. These were used in connection with sporting and entertainment services, including a planned international JetSki racing event. Though the major event could not be held due to market disruptions, the plaintiff continued to promote the brand and claimed goodwill.

In 2019, the plaintiff discovered that the defendant, Racing Promotions Pvt. Ltd., was using the mark “X1” and “X1 Racing League” for a motorsport league. The plaintiff initiated legal proceedings alleging trademark infringement, passing off, and copyright infringement of the artistic elements in the mark.

Issues for the court

1. 1. 1. Whether the plaintiff was entitled to a permanent injunction restraining the use of “X1” and “X1 Racing League”?
      2. Whether the plaintiff was entitled to a decree for rendition of accounts?
      3. Whether the court had territorial jurisdiction to try the matter?

Plaintiff’s Arguments:

The Plaintiff argued that:

• • • He held valid registrations for “X1” and “X1 WAR OF X-TREME SPEED” and had used the marks since 2016.
    • He learned on November 25, 2019 through BookMyShow and the defendant’s website that the Defendant was using the registered marks without authorization.
    • The defendant’s use of “X1” for the “X1 Racing League” was phonetically, structurally, and visually similar.
    • Defendant’s conduct amounted to infringement, passing off, and dilution of trademark rights.
    • Plaintiff relied on documents showing use, event promotions, media coverage, and government permissions.

Defendant’s Arguments:

The Defendant argued that:

• • • The Plaintiff had not used the mark since 2017 and failed to prove continuous commercial activity.
    • The Defendant adopted “X1” based on the high-speed connotation from “Bell X1” aircraft and began conceptualising the same in 2017.
    • The use of “X1” was claimed to be independently conceived and not infringing.
    • Plaintiff’s registration was for a composite mark and could not claim exclusivity over the term “X1” alone.
    • Defendant’s own trademark application was pending and objected to but not rejected.

Court’s Observations and Analysis

The court held that the plaintiff was the registered proprietor of the trademarks and had enforceable statutory rights under Section 28 of the Trade Marks Act. It stated that a registered proprietor need not prove continuous commercial use to assert infringement. As per the court, the mere registration, unless removed or invalidated, confers exclusive rights.

The court referred to a decision of the Delhi High Court (Modi-Mundipharma Pvt. Ltd. v. Speciality Meditech Pvt. Ltd.) which clarified that the defence of non-use under Section 47 is not a ground to defeat infringement unless cancellation proceedings are initiated.

The court also addressed the issue of “well-known mark” status. Though the plaintiff had claimed the mark to be well-known, the court noted that no formal recognition was granted by any authority. However, the evidence submitted showed substantial use, promotion, and media presence, which supported the plaintiff’s goodwill and proprietary rights.

The court observed that the defendant was aware of the plaintiff’s registration and still went ahead with event promotions, advertisements, and social media posts under the “X1” mark. The evidence presented demonstrated visual and phonetic similarity likely to cause confusion.

The court rejected the argument that the mark “X1” was public or generic in the motorsport industry. According to the court, the fact that other companies may use “X1” did not dilute the plaintiff’s exclusive statutory rights unless the mark was shown to be generic or descriptive—which it was not.

While the plaintiff sought an account of profits, the court noted that the defendant had already filed a provisional statement of accounts showing a loss of over Rs. 62 lakhs. Since the plaintiff did not prove actual damages or challenge the account’s accuracy, no further directions were issued..

Conclusion

The court held that plaintiff’s registered trademarks were infringed and therefore passed a decree of permanent injunction restraining the defendant from using “X1” or “X1 Racing League”, or any mark deceptively similar to the plaintiff’s registered trademarks.

No separate relief was granted on rendition of accounts as the defendant had already submitted a loss statement.

Case Citation: Ashish Aggarwal v. Racing Promotions Pvt. Ltd., CS (COMM) 384/2019, Judgment dated 03.09.2025, District Judge (Commercial Courts)-05, South District, Saket Courts, New Delhi. Available on https://indiankanoon.org/doc/86307928/