The changing dynamics of Infringement, Stay of Suit and damages in Trademark Cases


This blog post summarizes four recent trademark cases from various High Courts across India, and provides important takeaways relating to trademarks. In one of the cases, the Karnataka High Court pointed out that a trademark infringement suit can be stayed if a rectification is pending against the same trademark, although it was filed by another party. In another suit, the Delhi High Court, allowed the Defendant in the suit to conduct business under a modified name during the pendency of the case. This arrangement was agreeable to the Plaintiff as well.

Case Notes

1. Stay of suit under Section 124 can be based on a rectification petition filed by a person not party to the suit, says the Karnataka High Court

In an appeal from the civil court refusing to stay the suit pending trademark rectification proceedings, the Karnataka High Court held that the application for stay of a trademark infringement suit need not be based on rectification filed by a party to the suit. It observed that the right to file a rectification petition under Section 57 must not be combined with the application for stay of the suit under Section 124. As per the Court, the sections are independent of each other, and a trademark infringement suit can be stayed even if the defendant had not filed the rectification petition as long as rectification proceedings against the trademark in question are pending. The Court further stated that the passing off part of the suit shall also be stayed in order to avoid a multiplicity of proceedings.

Citation: THERELEK MACHINES PRIVATE LIMITED vs THERELEK ENGINEERS PRIVATE LIMITED & ORS., High Court of Karnataka, 28th February, 2024, WP No. 28029 of 2023. 

2. Nizam’s Vs. Nazim’s for restaurant services: Delhi High Court permits the defendant to use Nazim Khan during the pendency of the suit

In a case relating to the trademark, Nizam’s and Nizam’s Kathi Kabab, the defendant in the case, Nazim Khan, agreed to change the name of his restaurants from Nazim’s to Nazim Khan during the pendency of the suit. Taking this on record, the Delhi High Court restrained the defendant from using Nizam’s while the suit is pending. It referred the parties for mediation before proceeding with the case.

Citation: RAJESH CHUGH KARTA, AMIR CHAND AND SONS (HUF) ANR. vs MR. NAZIM KHAN PROPRIETOR/PARTNER NAZIM S KATHI, High Court of Delhi, 26th February, 2024, CS(COMM) 326/2022 & I.A. 13029/2023  

3. Delhi High Court restrains use of Café Social

In a case filed by Impresario Entertainment, the proprietor of the trademark, Social, for restaurants and other goods/services, the Delhi High Court passed an ex-parte injunction restraining the defendant from using ‘Café Social’. The defendant in the case was running a café in Chhindwara, Madhya Pradesh, under the name ‘Café Social’. The trademark of the defendant had similar artistic features, and it was also being used on social media. Convinced by Impresario’s case, the Court restrained the use of ‘Café Social’ online and offline.


4. Premium is confusingly similar to Premier for tissue papers, says the Madras High Court

In a case involving the trademark, Premier, for tissue papers, the Madras High Court held that ‘Premium’ is confusingly similar to ‘Premier’. The Court noted how the trademark was being used, and came to the conclusion because ‘Premium’ was being written by the defendant on its products in the same way, with the same font. The Court however did not grant any damages as no evidence was submitted by the plaintiff. But, it granted costs to the plaintiff.

Citation: M/s PREMIER TISSUES INDIA LTD. vs M/s DOLPHIN TISSUES, Madras High Court, 07th November, 2023, C.S. No.73 of 2021



From these cases decided by the various High Courts in India, the following points can be outlined with respect to trademark infringement suits :

  1. In a trademark infringement suit, along with the spelling and phonetics of the infringing mark, the way such a mark is being used is also considered. This may include font, style, artistic elements, placement and such other factors.
  2. A trademark infringement suit can be stayed even if the Defendant hasn’t filed a rectification petition. This can be done if a rectification proceeding filed by another person against the same trademark is pending.
  3. The right to file a rectification petition under Section 57 is independent of the application for a stay of the suit under Section 124.
  4. In a suit for infringement and passing off, both causes of action can be stayed under Section 124, to avoid multiplicity of proceedings.
  5. A Defendant can avoid an ad-interim injunction by requesting to continue to conduct business under a modified name during the pendency of the suit. In certain cases, the Court may allow this temporary resolution.
  6. On proving a clear case ie., a prima facie of infringement the Courts are agreeable to grant an ex-parte injunction. This approach can be taken for speedy resolution of a blatant infringement of one’s trademark.
  7. To secure damages in a trademark infringement suit one must adduce adequate evidence to support its claim.
  8. If a court does not grant damages in an infringement suit, due to lack of evidence, one is still eligible for securing costs in its favour.

Compiled by Ms. Kavya Sadashivan, Consulting & Strategy Team, BananaIP Counsels


The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: [email protected] or 91-80-26860414/24/34.