Introduction: The dispute in Newgen IT Technologies Ltd. v. Newgen Software Technologies Ltd. epitomizes the complexities involved in trademark conflicts, particularly when commercial partnerships deteriorate into litigation. The matter revolves around the alleged infringement and passing off involving the mark "NEWGEN," a name prominently used in the technology domain. This case throws light on the intricate interplay between prior use, statutory rights, contractual acknowledgments, and equitable doctrines such as acquiescence in trademark law.
Factual Background: Newgen Software Technologies Ltd. (the Respondent) is a well-established software development company, incorporated in 1992 and holding trademark registrations for "NEWGEN" since 1999, with a user claim dating back to 1992. It has operated in classes 09, 16, 35, and 42, and heavily invested in brand promotion.
The Appellant, Newgen IT Technologies Ltd., initially operated under the name VCare Infotech Solutions and Services Pvt. Ltd. In July 2023, both parties entered into a Partnership Agreement to collaborate on software-related services. Notably, Article 14 of this agreement acknowledged the Respondent's exclusive rights over the "NEWGEN" trademarks.
However, in July 2024, the Appellant changed its name to Newgen IT Technologies Ltd. and initiated trademark applications for "NEWGEN IT" across multiple classes, while also launching steps to go public via an IPO. The Respondent terminated the partnership in September 2024 and filed a suit for trademark infringement and passing off in February 2025.
Procedural Background: The learned District Judge (Commercial) at Saket Courts, New Delhi, initially passed an ex-parte ad-interim injunction on 27.02.2025, restraining the Appellant from using the mark "NEWGEN IT." The Appellant’s application under Order XXXIX Rule 4 CPC to vacate the injunction was dismissed on 05.03.2025. Consequently, the Appellant preferred FAO (COMM) 73/2025 and FAO (COMM) 75/2025 before the Delhi High Court.
Legal Issue: Whether the Appellant's adoption and use of the mark "NEWGEN IT" constituted trademark infringement, passing off, and contractual breach in light of the Respondent's prior rights and the Partnership Agreement?
Discussion on Judgments: The Appellant relied on Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 to argue against appellate interference with discretionary interim orders unless the decision was perverse. The Appellant also cited Natco Pharma Ltd. v. Bayer Healthcare LLC, 2019 SCC OnLine Del 9124 to claim that the trial court failed to properly assess the balance of convenience.
Other authorities cited by the Appellant include: Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, (2010) 2 SCC 142, arguing "Skyline" was publici juris. Parakh Vanijya (P) Ltd. v. Baroma Agro Products, (2018) 16 SCC 632: coexistence of similar marks. PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd., 2023 SCC OnLine Bom 764, on descriptive marks.
The Respondent relied on: Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, stressing prior user rights. Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448 on acquiescence. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., 1955 SCC OnLine SC 12: disclaimers do not affect passing off rights. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 on deceptive similarity.
Reasoning and Analysis of the Judge: The High Court reaffirmed the settled principle from Wander Ltd. and Ramakant Ambalal Choksi v. Harish Ambalal Choksi, 2024 SCC OnLine SC 3538, that appellate interference in discretionary orders must be limited to cases of perversity or arbitrariness.
The Court noted the Respondent’s prior and continuous use since 1992, while the Appellant began operations under a different name in 2017 and only rebranded to "Newgen IT" during the subsistence of the partnership. The Appellant’s act of adopting a confusingly similar mark while in a contractual relationship acknowledging Respondent's exclusive rights indicated mala fides.
Further, Article 14 of the Partnership Agreement clearly vested the rights of the "NEWGEN" mark with the Respondent. The Court also found the marks visually and phonetically similar, and held that minor distinctions like "IT" and "Software" were insufficient to avert confusion.
On acquiescence, the Court referred to Power Control Appliances and ruled that mere tolerance during the partnership did not amount to legal acquiescence, especially when the Appellant changed its name post-agreement.
Final Decision: The Delhi High Court dismissed both appeals. It held that the trial court had applied its discretion judiciously and the Appellant had failed to demonstrate any perversity or material suppression of facts by the Respondent. The interim injunction in favour of the Respondent was upheld.
Law Settled in This Case: The case clarifies that: Prior use and registration of a trademark, coupled with contractual acknowledgment, override claims of concurrent user. An interim injunction can be granted even against a party who was formerly in partnership if the subsequent conduct indicates bad faith. Acquiescence cannot be claimed where the tolerance was conditional and contractual. Appellate courts will not interfere with discretionary interim orders unless the exercise is perverse, arbitrary, or ignores settled legal principles.
Case Title: Newgen IT Technologies Ltd. Vs. Newgen Software Technologies Ltd.: Date of Order: 12 June 2025:Case Number: FAO (COMM) 73/2025 and FAO (COMM) 75/2025:Neutral Citation: 2025:DHC:4964: Court: High Court of Delhi at New Delhi:Judge(s): Hon'ble Mr. Justice Navin Chawla and Hon'ble Mr. Justice Harish Vaidyanathan Shankar
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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