Case Title: M/S Vaidya Rishi India Health Private Limited & Anr. v. Suresh Dutt Parashar & Ors.; Order date: 07.08.2025; Case Number: FAO (COMM) 122/2024, CM APPLs. 36142/2024 & 36143/2024; Neutral Citation: 2024:DHC:644-DB; Name of Court: High Court of Delhi at New Delhi; Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla.
### Detailed Summary of the Case
#### Facts
The respondents (Suresh Dutt Parashar & Ors., originally the plaintiffs in the lower court) are the registered proprietors of several trademarks under the Trade Marks Act, 1999, including the word mark "VAIDRISHI" in Classes 5 (pharmaceuticals), 35 (advertising and business services), and 42 (scientific and technological services), as well as the device mark "ARSHKALP" (which incorporates "VAIDRISHI" as a prominent element) in Class 5. These registrations date back to December 31, 2018, with the respondents claiming prior user since January 1, 1972. The respondents operate in the health and wellness sector, particularly dealing in Ayurvedic medicines and related products.
The appellants (M/S Vaidya Rishi India Health Private Limited & Anr., originally the defendants) hold registrations for the device mark "VAIDYA RISHI" in Classes 29 (edible oils and fats), 30 (coffee, tea, spices), 31 (agricultural products), 32 (beverages), and 35 (advertising and business services). The appellants also engage in health-related products but in different classes from the respondents' primary Class 5 registrations.
The respondents instituted a commercial suit, CS (Comm) 741/2023, before the District Judge (Commercial Court), West, Delhi, alleging that the appellants' use of "VAIDYA RISHI" infringed their registered marks "VAIDRISHI" and "ARSHKALP". Specifically, the respondents claimed that "VAIDYA RISHI" was phonetically, visually, and deceptively similar to "VAIDRISHI", and that "VAIDRISHI" formed a dominant part of the "ARSHKALP" device mark. They sought an injunction against the appellants' use of "VAIDYA RISHI" in any manner, including as a trademark, trade name, domain name (https://vaidyarishiindia.in/), or on social media and third-party platforms. The suit was based primarily on infringement under the Trade Marks Act, with no detailed examination of passing off elements like goodwill or misrepresentation.
The learned Commercial Court, relying on the Division Bench decision in Raj Kumar Prasad v. Abbott Healthcare (P) Ltd. (2014), granted an ex parte interim injunction on the respondents' application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The order restrained the appellants from manufacturing, selling, advertising, or dealing in goods under "VAIDYA RISHI" or any deceptively similar mark. It also directed the domain registrar (Defendant No. 3 in the suit) to suspend and lock the domain https://vaidyarishiindia.in/ and reveal registrant details. The Commercial Court found prima facie that the marks were phonetically similar, the appellants had dishonestly adopted the mark to ride on the respondents' goodwill, and the goods were nearly identical, likely causing consumer confusion. The balance of convenience and irreparable harm favored the respondents. Notably, the order did not address passing off, focusing solely on infringement.
Aggrieved, the appellants filed the present appeal (FAO (COMM) 122/2024) before the High Court of Delhi, challenging the injunction on the ground that no infringement action could lie against their registered trademark.
#### Dispute
The core dispute in the appeal revolved around whether an action for trademark infringement could be maintained against the proprietor of a registered trademark, and consequently, whether the appellants could be injuncted from using their registered mark "VAIDYA RISHI" in the classes for which it was registered (29, 30, 31, 32, and 35). The appellants argued that their mark's registration conferred exclusive rights under the Trade Marks Act, precluding any infringement claim. They offered an undertaking to limit use to their registered classes and not encroach on the respondents' classes (e.g., Class 5). The respondents opposed this, insisting on a complete injunction, claiming priority in registration and user, and alleging deceptive similarity leading to infringement.
A broader legal question arose: the correctness of prior Division Bench decisions like Raj Kumar Prasad (which held that infringement suits against registered marks are maintainable) in light of subsequent Supreme Court jurisprudence and statutory provisions.
#### Reasoning
The Division Bench of the High Court, led by Justice C. Hari Shankar, began with a prefatory note emphasizing that no infringement action can lie against a registered trademark, citing inconsistencies in prior Delhi High Court decisions. It reviewed Raj Kumar Prasad (2014), where a Division Bench affirmed that a registered proprietor could sue another registered proprietor for infringement and obtain an interim injunction. This was followed in Corza International v. Future Bath Products (P) Ltd. (2023). However, the Bench noted conflicting Single Judge decisions and its own prior reference in Abros Sports International (P) Ltd. v. Ashish Bansal (2025) doubting Raj Kumar Prasad's correctness and referring the issue to a larger Bench (outcome pending).
The Court then analyzed the Supreme Court's decision in S. Syed Mohideen v. P. Sulochana Bai (2016), which post-dated Raj Kumar Prasad and held unequivocally that no infringement action lies against a registered trademark, as registration confers absolute rights. The Bench concluded that Raj Kumar Prasad was no longer good law, being contrary to Syed Mohideen.
Delving into statutory interpretation, the Court examined key provisions of the Trade Marks Act, 1999:
- **Section 29 (Infringement Definition)**: Sub-sections (1) to (4) define infringement as use by a person "not being a registered proprietor or a person using by way of permitted use." The Court reasoned that this excludes registered proprietors from the scope of infringement, as the definition presupposes the infringer is unregistered.
- **Section 30(2)(e)**: This exempts from infringement the use of a registered trademark by its proprietor, even if identical or similar to another registered mark, reinforcing that registration grants an absolute defense against infringement claims.
- **Section 28(1)**: Grants the registered proprietor exclusive right to use the mark in relation to the registered goods/services, making any injunction against such use violative of this right.
- **Section 28(3)**: Addresses scenarios where two persons hold identical or similar registered marks, stating that neither can claim exclusive rights against the other (except against third parties). This prohibits one registered proprietor from injuncting another's use, though rectification or cancellation proceedings could be pursued separately.
The Court held that these provisions collectively bar infringement suits against registered marks. An injunction based on infringement would undermine the statutory exclusivity of registration. The impugned order erred by following Raj Kumar Prasad and granting relief solely on infringement grounds without examining passing off (e.g., no findings on the respondents' goodwill or misrepresentation). The appellants' offer to restrict use to their classes further highlighted the lack of overlap, but the respondents' refusal did not alter the legal position.
The Bench clarified that while passing off actions or rectification proceedings (under Sections 47 or 57) could lie against registered marks, infringement per se could not. The Commercial Court's order was thus unsustainable.
#### Decision
The High Court allowed the appeal, setting aside the impugned order of the Commercial Court dated [specific date not mentioned in provided pages, but implied as prior to the appeal]. It held that no infringement action could lie against the appellants' registered mark "VAIDYA RISHI" in the classes for which it was registered, and the injunction granted on infringement grounds was contrary to law. The respondents' suit could proceed on passing off or other grounds if applicable, but the interim injunction was vacated. No costs were awarded, and the matter was remanded for further proceedings on merits, if any.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
