Naga Limited Vs Mr Cherukuri Gopi Chand

Introduction: This case revolves around a dispute under the Trade Marks Act, 1999, where the plaintiff sought remedies against alleged groundless threats issued by the defendant concerning the use of the trademark "ANAGANAGA." The defendant, in response, applied for a summary dismissal of the suit, arguing that the plaintiff's claims lacked merit and did not warrant a full trial. The Madras High Court adjudicated the matter by examining the scope of Section 142 of the Trade Marks Act, which deals with groundless threats of legal proceedings for trademark infringement. The judgment provides clarity on whether statements made in opposition proceedings before the Registrar of Trade Marks can be construed as actionable threats under this provision. It also underscores the application of summary judgment principles in commercial disputes, emphasizing expeditious disposal where claims have no real prospect of success.

Factual Background: The plaintiff, Mr. Cherukuri Gopi Chand, trading as ANAGANAGA, operates in the restaurant business and applied for registration of the trademark "ANAGANAGA" and its variants in relevant classes, including those pertaining to hospitality services. The defendant, Naga Limited, holds registrations for the trademark "NAGA" in multiple classes, including Class 43, which covers restaurant services. Upon advertisement of the plaintiff's trademark applications, the defendant filed notices of opposition before the Registrar of Trade Marks, asserting that the plaintiff's mark was deceptively similar to "NAGA" and that its use constituted infringement. These notices also mentioned potential initiation of criminal proceedings under Sections 102 and 103 of the Trade Marks Act. The plaintiff claimed no evidence of commercial use by the defendant in similar services and argued that the oppositions were an abuse of process. The defendant, on the other hand, maintained that it had not issued any threats outside the opposition proceedings and saw no need for an infringement suit due to the plaintiff's lack of proven commercial use.

Procedural Background:The plaintiff instituted the suit under Sections 134 and 142 of the Trade Marks Act, 1999, seeking declarations that its mark was dissimilar to the defendant's, that the threats were groundless, a permanent injunction against further interference, and damages of Rs. 5,00,000 for business losses. Along with the suit, the plaintiff filed applications for interim relief. The defendant responded by filing an application under Order XIV Rule 8 of the Original Side Rules read with Order XIIIA of the Code of Civil Procedure (as amended by the Commercial Courts Act, 2015) for summary dismissal of the suit. Arguments were advanced by both parties, with the defendant relying on the notices of opposition not qualifying as threats, and the plaintiff contending that statements within those notices fell within the ambit of Section 142. The court heard the matter and delivered the judgment on the summary dismissal application.

Core Dispute: The central issue in this case was whether the statements made by the defendant in the notices of opposition to the plaintiff's trademark applications constituted "groundless threats" under Section 142(1) of the Trade Marks Act, 1999, thereby entitling the plaintiff to declarations, injunctions, and damages?

The plaintiff argued that assertions of infringement and threats of criminal proceedings in the oppositions amounted to unjustifiable interference with its business. The defendant countered that opposition proceedings are legitimate legal actions under Section 21 of the Act, initiated by "any person," and do not fall within the scope of threats as contemplated by Section 142, which targets pre-litigation communications like circulars or advertisements. 

Additionally, the dispute extended to whether the suit merited summary dismissal under Order XIIIA of the Code of Civil Procedure, on the grounds that the plaintiff had no real prospect of succeeding on any of the claimed reliefs.

Discussion on Judgments: The parties and the court referred to several precedents to support their positions on the interpretation of Section 142 and the propriety of summary judgment. The defendant relied on Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited, 2019 SCC OnLine Del 11952, particularly paragraphs 3 to 6, 15, and 16, to argue that filing notices of opposition initiates legal proceedings and cannot be construed as a threat of proceedings under Section 142(1), as the provision applies only to threats of initiating actions, not to actions already commenced. The plaintiff cited Sidharth Wheels Private Limited v. Bedrock Limited and another, 1987 SCC OnLine Del 365, to contend that the expression "or otherwise" in Section 142(1) should be construed broadly and not ejusdem generis with "circulars" and "advertisements," thereby encompassing statements in opposition notices as threats, regardless of whether they are public communications. The plaintiff also invoked Dhaval Diyora v. Union of India and others, 2021 (4) Mh. Law Journal 282, especially paragraphs 33 to 35, to assert that opposition proceedings could amount to an abuse of process warranting judicial interference, particularly when the opponent lacks registrations in relevant classes or engages in similar business. The court, in its analysis, drew from its own prior decision in Godaddy.com LLC and others v. Puravankara Projects Limited, 2022 (91) PTC 440 (Mad), to outline non-exhaustive principles for granting summary judgment under Order XIIIA, emphasizing the need to assess whether the plaintiff has a real prospect of success and whether there are compelling reasons for a trial.

Reasoning and Analysis of the Judge: The judge began by examining the scope of Section 142 of the Trade Marks Act, noting that it provides remedies against unjustified threats of infringement proceedings, but only where such threats are communicated through circulars, advertisements, or otherwise, without having initiated actual proceedings. Agreeing with the broad interpretation of "or otherwise" from Sidharth Wheels, the judge clarified that while it covers various modes of communication, it does not extend to statements in pleadings of ongoing legal proceedings like opposition notices, as these are part of initiated actions under Section 21. The judge reasoned that opposition proceedings are statutory legal processes before the Registrar, where the plaintiff can defend itself and challenge the oppositions as abusive, and any determination of their merit lies exclusively with the Registrar or appellate authorities. Allowing the suit to proceed would impede the Registrar's statutory functions. On the summary judgment application, applying principles from Godaddy.com, the judge assessed each relief claimed: the declaration of dissimilarity would preempt the Registrar's decision on deceptive similarity; the declaration against threats failed as opposition statements are not threats; the injunction lacked basis absent other communications; and damages were contingent on the other reliefs. Concluding that the plaintiff had no real prospect of success and that the issues were predominantly legal without need for oral evidence, the judge found no compelling reason for a trial.

Final Decision: The court allowed the defendant's application for summary judgment, dismissing the suit in its entirety. The plaintiff's applications for interim relief were consequently closed. While acknowledging that the defendant would ordinarily be entitled to costs, the court directed that each party bear its own costs, considering the ongoing opposition proceedings where the plaintiff might still prevail and the expeditious dismissal of the suit filed in the same year.

Law Settled in This Case: This judgment settles that statements asserting infringement or threatening further action, when made within notices of opposition under Section 21 of the Trade Marks Act, 1999, do not constitute "groundless threats" under Section 142(1), as they form part of initiated legal proceedings rather than mere threats of proceedings. It reinforces that the expression "or otherwise" in Section 142(1), while broad, excludes pleadings in pending statutory processes, preserving the exclusive jurisdiction of the Registrar of Trade Marks to evaluate such oppositions. The case also affirms the robust application of summary judgment under Order XIIIA of the Code of Civil Procedure in commercial trademark disputes, where suits based solely on opposition proceedings have no real prospect of success and can be dismissed without trial to promote expeditious justice.

Case Title: Naga Limited Vs Mr Cherukuri Gopi Chand

Date of Order: 16.07.2025

Case Number: A.No.2583 of 2025 in C.S.(Comm.Div.) No.92 of 2025

Name of Court: High Court of Judicature at Madras

Name of  Hon'ble Judge: Senthilkumar Ramamoorthy, J.

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi