Saurabh Gupta Vs Sheopals Pvt. Ltd.

Brief Introductory Head-Note & Case Summary

The case arises from cross-appeals before the High Court of Delhi concerning interim injunctions in a trademark infringement and passing-off suit. The plaintiff claimed that the defendant’s use of the mark “SHEOPAL’S” for cosmetics violated his trademark rights over the registered word mark OPAL in Class 3. The earlier single-judge Commercial Court order had granted injunction to the plaintiff, but on appeal, the Division Bench remanded the matter holding that the lower court had illegally dissected the defendant’s mark. On remand, the Commercial Court again dismissed the injunction sought by the plaintiff, but for flawed reasons on dominance, phonetic similarity, originality, genericity, and irreparable injury. The Division Bench, while sustaining the result of non-grant of injunction, set the law right by clarifying that neither anti-dissection nor dominance applies where the plaintiff’s mark OPAL is not composite, and that SHEOPAL’S, taken as a whole and viewed from the perspective of an average consumer, is not deceptively or phonetically confusingly similar. Equity based on defendant’s expenses is not recognized. The decision reinforces holistic comparison, common word distinctiveness by context, and statutory presumption of validity under Section 31(1) of the Trade Marks Act.

Factual Background

The plaintiff, Saurabh Gupta, owns the registered word trademark OPAL under Class 3, registered with effect from 1992, covering cosmetics items including gels, soaps, foundation cakes, and similar products. He asserted continuous use since 1992 and later species of cosmetics like shampoos and face-packs since 2015, generating large goodwill. To show market reputation, he relied on financial records depicting an annual sales turnover rising from ₹93,60,686 in 2006-07 to ₹28,50,74,632.18 in 2023-24.

The defendant, Sheopals Private Limited, was incorporated on 17 June 2016. The defendant adopted the brand name SHEOPAL’S, derived from the name of the late father of one of its founders, Sheopal Meena. The defendant also holds a registered trademark SHEOPAL’S under Class 5, registered from 23 November 2018, for health, wellness, and pharmaceutical-related products. The defendant applied for registration of SHEOPAL’S in Class 3 in 2018 and again in 2022, which were both opposed by the plaintiff. The plaintiff alleged that despite knowledge of his opposition, the defendant launched cosmetics under SHEOPAL’S in the market around February 2024.

The suit was filed in August 2024 alleging infringement under Section 29(2)(b) of the Trade Marks Act, 1999, and passing-off under common law principles.

Procedural & Procedural History

The suit was instituted as CS (Comm) 3590/2024 before the Commercial Court‑05 (District Judge) at Saket. The plaintiff’s interim injunction application under Order XXXIX Rules 1 & 2 CPC was allowed initially by order of 7 September 2024, while the defendant’s application under Order XXXIX Rule 4 CPC to vacate the injunction was dismissed.

This initial order was challenged by the defendant before the High Court of Delhi in FAO (Comm) 216/2024. A coordinate bench allowed the appeal on 20 November 2024 and remanded the Order XXXIX Rule 4 application for fresh decision, holding that the lower court’s reasoning violated the anti-dissection rule by splitting the defendant’s mark into “SHE” and “OPAL”.

On remand, the Commercial Court reheard the parties and passed the order dated 22 April 2025 (impugned order), reversing the injunction earlier granted, dismissing the plaintiff’s O39 R1-2 application, and allowing the defendant’s O39 R4 application, thereby vacating the interim protection.

Both parties filed cross-appeals FAO (COMM) 175/2025 and FAO (COMM) 187/2025 before this Court.

Core Dispute

The central question was whether the defendant’s mark SHEOPAL’S, used for cosmetics in Class 3, infringes or passes off against the plaintiff’s registered OPAL mark in Class 3, when tested by the legal standards applicable to deceptive similarity, phonetic similarity, dissection, dominance, distinctiveness, and equity.

Court’s Detailed Reasoning & Discussion (with Citation Discussion Referenced)

The Division Bench presided in the judgment by Justice C. Hari Shankar examined the legal principles threadbare, but made them clear and easy to follow.

The Court first noted that the anti-dissection principle, contained in Section 17(2)(a) of the Trade Marks Act, applies only where the plaintiff’s mark is composite and divisible into distinct parts. Since the plaintiff’s mark was a single word mark OPAL and he claimed exclusivity in the entire mark alone, anti-dissection did not apply at all. Therefore, the Commercial Court erred in applying anti-dissection to the defendant’s mark, fundamentally misunderstanding the law.

The Court then traced the origin and purpose of the dominant-part test. The dominant-part test is not an independent rule. It is only an aid to the anti-dissection rule and is applied when part of a composite plaintiff’s mark is so strong that an average consumer remembers that part the most. The Court explained that this test was expounded in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 61 PTC 231 (Del), and later approved again by the Supreme Court in Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra SCC OnLine SC 1701. The Court emphasized from these citations that a consumer remembers the most striking part of a composite mark and confusion is tested by overall commercial impression, not by picking parts one-by-one. These authorities, read in the correct context, confirm that dominance applies to plaintiff’s mark (if composite), not to defendant’s mark and not to a single-word mark like OPAL. Therefore, reliance on dominance by the Commercial Court was legally unsustainable.

Next, the Court laid down the correct comparison standard: holistic assessment. The Court reiterated the long-settled principle that trademark similarity must not be judged by placing marks side by side. It must be judged by considering how an average buyer, with imperfect memory, would remember one mark and later encounter another. This foundational principle was cited from Coca‑Cola Co. of Canada Ltd. v. Pepsi‑Cola Co. of Canada Ltd. AIR 1942 PC 40, which states that courts must compare marks based on average memory, not mechanical juxtaposition.

On phonetic similarity, the Court applied the “Pianotist test”, laid down in Pianotist Co. Ltd’s Application 23 RPC 774. The Court discussed the citation to reason that pronunciation similarity alone does not automatically mean confusion. The Court must see the type of goods, the kind of people who buy them, and the real-world market effect of the marks in normal usage. After this judgment discussion, the Court held that although there is some sound overlap between OPAL and SHEOPAL’S, the mark SHEOPAL is an Indian-style personal name. A common person seeing SHEOPAL’s cosmetics would remember the mark as a name “SHEOPAL’S”, and would not break it into “She + Opal’s”. No ordinary buyer splits or analyzes names like this before buying cosmetics. Real-world confusion was therefore unlikely.

Further, the Court rejected the defendant’s argument that OPAL was a “generic word” incapable of monopolization. The Court discussed Sections 9(1)(a), 17(2)(b), and 31(1) of the Trade Marks Act in very clear and easy terms, holding that a mark is called non-distinctive only if it cannot separate one seller’s goods from another’s. The mere fact that OPAL is an English dictionary word or a gemstone name does not make it non-distinctive for cosmetics. Cosmetics have no natural connection to gemstones. When a common word is used for something it has no connection with, it becomes distinctive in trademark law. The Court cited the niche perfumery usage of the word “AND” (as a conversational reference) only to explain that trademarks need not be coined, invented, or original; they need only be distinctive by use-context. The Court held that OPAL is distinctive for cosmetics and valid enough to seek protection.

Here, the Court highlighted Section 31(1) which holds that the registration certificate itself is prima facie evidence of validity for interim injunction stage. The Court discussed that this provision means: once a trademark is registered, the plaintiff does not have to prove again, at interim stage, that it deserved registration. Registration is presumed valid unless extremely exceptional facts exist (like one mark granted against another application). The Court cited this Bench’s recent decision (for context of exception) from Quantum Hi‑Tech Merchandising Pvt. Ltd. v. LG Electronics India Pvt. Ltd. SCC OnLine Del 8238 to explain when interim invalidity can be seen, but clarified that this is very rare. In normal life trademark disputes, registration stands strong.

The Court then dealt with delay, acquiescence, and equity. The Court corrected the Commercial Court’s method of computing delay from the defendant’s application filing date. The plaintiff’s opposition in 2018 showed objection, not delay or consent. The law was reaffirmed from Midas Hygiene (Supreme Court) that mere delay cannot defeat injunction when infringement is clearly made out. The Court also explained from Power Control Appliances (1994) 2 SCC 448 that acquiescence means knowingly sitting back and letting the other party build goodwill—consent + knowledge. A person who has already opposed a trademark cannot be presumed to have given consent. Opposition and acquiescence cannot exist together.

Finally, the Court rejected any equity in favor of the defendant based on its marketing expenses, since no expenses spent on promotion of an infringing mark ever create legal equity in trademark law. A defendant can always sell goods under a non-infringing brand if it wishes to avoid injunction. The citation from Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia 3 SCC 90 was discussed to hold that injunction is the natural relief in clear infringement cases, but since on merits (holistic test) no deception or confusion was found between these two marks, injunction must be refused.

Decision

The Court ultimately dismissed the plaintiff’s appeal FAO (Comm) 175/2025 and disposed of the defendant’s appeal only by correcting the law, sustaining the result that injunction is refused.

Concluding Note

The judgment reinforces a simple but powerful principle—trademark confusion is tested by the mind of an average buyer and not by courts splitting words or balancing equities based on money spent. Distinctiveness flows from use-context, not dictionary originality. Registration carries presumption of validity for interim stage. Opposition negates consent. The Court preserved the integrity of statutory provisions but made the law clear for every reader.

Concluding Observations

The decision is a strong restatement of the holistic trademark similarity test, fair-use of personal names, contextual distinctiveness, and immediate consequence of injunction only when deception is prima facie found.

Concluding Note & Paper Essence

The judgment stands as a guiding light for junior lawyers, students, and common citizens to understand that trademarks are compared in whole form, and expenses do not override statutory rights.

Saurabh Gupta Vs Sheopals Pvt …

Case & Order Details (in prescribed format)

Case Title: Saurabh Gupta Vs Sheopals Pvt. Ltd.
Order Date: 26 November 2025
Case Number: FAO (COMM) 175/2025 and connected matter
Neutral Citation: 2025:DHC:Neutral No.XXX
Court: High Court of Delhi
Hon'ble Judge: Justice C. Hari Shankar, High Court of Delhi
Court: High Court of Delhi
Hon'ble Judge: Justice C. Hari Shankar, High Court of Delhi

Suggested Suitable Titles for Article Publication in Legal Journal

The Ordinary Consumer’s Lens: A Simple Understanding of Deceptive Similarity in Trademarks
Single-Word Marks and the Myth of Dominance: The OPAL–SHEOPAL Debate Before Delhi High Court
Can Marketing Money Create Trademark Equity? A Clear Legal Answer from Delhi High Court
When Does a Common English Word Become a Strong Trademark? OPAL Cosmetics Decision Explained
Holistic Trademark Comparison and the Risk Doctrine: SHEOPAL’s vs OPAL in Cosmetic Trade

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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Saurabh Gupta v. Sheopals Pvt. Ltd., decided on 26 November 2025 by the Delhi High Court in cross-appeals FAO (COMM) 175/2025 & connected matter, involved trademark protection in cosmetics. The order disposed the appeal arising from CS (Comm) 3590/2024, and was delivered by the Hon’ble Bench of Justice C. Hari Shankar, High Court of Delhi, sitting at the High Court of Delhi. The Court examined if the cosmetics company Sheopals Pvt. Ltd., incorporated in 2016, could be stopped from using its brand SHEOPAL’S on beauty products because Saurabh Gupta already had the trademark OPAL registered since 1992 in Class 3.

The Court clarified that anti-dissection and dominant-part tests apply only when the plaintiff’s own mark is composite. Since the OPAL mark was a single ordinary word, the Court held that no breaking into parts was legally needed. Though “opal” is the name of a gemstone, cosmetics have no direct connection with gemstones, so OPAL is distinctive for beauty goods. The Court followed the long-standing holistic comparison rule in Coca-Cola Co. of Canada Ltd. v. Pepsi-Cola Co. of Canada Ltd. (AIR 1942 PC 40), and the phonetic similarity test in Pianotist Co. Ltd’s Application (23 RPC 774) to hold that an average buyer would remember and read SHEOPAL’S as one full Indian-style name, rather than splitting it as “She + Opal’s”. Mild sound overlap alone was held not enough to prove likely confusion in the real market.

On delay, the Court reiterated the Supreme Court position in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90) that delay alone cannot defeat injunction in clear infringement cases, and explained from Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448) that acquiescence means knowing consent, which cannot be presumed when the plaintiff had already formally opposed the defendant’s trademark filings in 2018 and 2022. Marketing expenses spent by a defendant on its brand never create equity to deny trademark protection.

Holding that there was no deceptive similarity likely to confuse ordinary buyers, the Court refused interim injunction, dismissed the appellant’s appeal, and disposed of the defendant’s appeal only by correcting the law without disturbing the final result.

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