Johnson Paints Co. Vs. Johnson Paints Private Limited

Johnson Paints Co. Vs. Johnson Paints Private Limited:24.04.2026:Commercial Appeal No. 2 of 2025:PatnaHC:Rajeev Ranjan Prasad and Praveen Kumar, H.JJ.

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Brief Facts

The dispute concerns competing claims over the trademark “JOHNSON” used in relation to paints and allied products. The appellant, Johnson Paints Co., claimed prior adoption and continuous use of the mark since 1987, asserting goodwill and reputation built over decades. The respondent, Johnson Paints Pvt. Ltd., relied on a chain of assignment deeds dating back to 1990 and subsequent trademark registrations to justify its use.

The appellant filed a suit for permanent injunction alleging passing off, along with an application for interim injunction. The Commercial Court rejected the injunction application on the ground that the appellant failed to establish a prima facie case of prior use and goodwill. The present appeal challenged that refusal.

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Issues

1. Whether the appellant established a prima facie case of prior user of the trademark “JOHNSON”.
2. Whether the refusal of interim injunction by the Commercial Court was justified.
3. Applicability of the “first user rule” in passing off vis-à-vis competing claims and assignments.

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Key Findings

• The High Court reiterated that prior use is the foundation of a passing off action under Section 27 of the Trade Marks Act, 1999.
• Upon examining invoices, tax records, and contemporaneous documents, the Court found prima facie evidence supporting the appellant’s use since 1987–88.
• The respondent’s reliance on assignment deeds was viewed with skepticism due to serious inconsistencies, lack of supporting evidence, and absence of registration or proof of use by assignors.
• The Court emphasized that registration does not override prior user rights, reaffirming the principle laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd..
• It was observed that the Commercial Court failed to adequately consider relevant documents and misapplied the principles governing interim injunctions.

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Legal Principles

• First User Rule Prevails: Prior use outweighs subsequent registration.
• Passing Off Independent of Registration: Common law rights survive statutory registration.
• Interim Injunction Test: Courts must assess prima facie case, balance of convenience, irreparable harm, and likelihood of confusion.

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Decision

The High Court found that the appellant had made out a prima facie case of prior use, and that the respondent’s claim based on assignment deeds lacked credibility at this stage. The refusal of interim injunction was held to be unsustainable, warranting interference.

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Significance

This judgment reinforces the dominance of the “prior user” doctrine in Indian trademark law, especially in passing off actions. It also underscores judicial caution in accepting assignment-based claims without clear proof of continuity and legitimacy, and reiterates that registration alone cannot defeat established goodwill.

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Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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