The appellant, Deepak Kumar Khemka, is engaged in the business of tobacco-related products under the marks \u201cSHUDH,\u201d \u201cSHUDH PLUS,\u201d and \u201cSHUDH PLUS ULTRA LABEL.\u201d In March 2024, the appellant became aware of a trademark application filed by the respondent for the mark \u201cATS SHUDH\u201d 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.<\/p>\n
Upon conducting market inquiries, the appellant found no evidence of the mark\u2019s 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.<\/p>\n
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.<\/p>\n
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 \u201cin the course of trade.\u201d 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.<\/p>\n
The Court relied particularly on paragraph 20 of the Supreme Court\u2019s 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.<\/p>\n
The Court also stated in the case that the appellant admitted that no products under the mark \u201cATS SHUDH\u201d had entered the market. As market inquiries yielded nothing more than speculative fear of use, the Court\u00a0 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\u00a0 use was not sufficient to give rise to a cause of action for trademark infringement.<\/p>\n
The Delhi High Court dismissed the appeal in limine. It held that:<\/p>\n
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.<\/p>\n
From the Commercial Court\u2019s Order:<\/p>\n
\u201cIt is thus plaintiff\u2019s 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.\u201d (\u00b612) \u201cAs per Hon\u2019ble 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.\u201d (\u00b614) From the High Court Judgment:<\/em><\/p>\n \u201cPara 20 of K. Narayanan is clear and categorical. It holds, in plain terms that \u2018before 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…\u2019\u201d (\u00b617) \u201cThe trigger point for an infringement action is use, not registration of the plaintiff\u2019s mark, or a mark which is identical or deceptively similar thereto, by the defendant.\u201d (\u00b621) \u201cEven 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.\u201d (\u00b623)<\/em><\/p>\n This case note has been prepared based on the author\u2019s understanding, views, and conclusions. Opinions of others may differ. Parts of this note wre generated using a proprietary AI application.<\/p>\nDisclaimer<\/h2>\n