Introduction: Heard in the High Court at Calcutta, Commercial Division, the case revolves around the plaintiff’s claim to exclusive rights over the trademark "NEW LIFE" and the defendant’s alleged infringement through the use of "NL" in its corporate name "NLCARE Private Limited." The plaintiff sought an interim injunction to restrain the defendant, while the defendant countered with an application to vacate an ex-parte ad-interim order granted in favor of the plaintiff. The court’s decision hinges on issues of prior use, family rights to a trademark, and the plaintiff’s alleged suppression of material facts, offering insights into the principles governing trademark exclusivity and equitable relief.
Detailed Factual Background:The origins of the dispute trace back to Dr. Mohammad Idrees, who began practicing homeopathy in Bhopal, Madhya Pradesh, in 1952, establishing the "NEW LIFE HOMEO CLINIC" with a distinctive leaf device. His eldest son, Dr. Mohammad Ilyas, joined the practice in 1970, opening the "NEW LIFE HOMEO STORE" and adopting the "NEW LIFE" trademark, inspired by patients who referred to him as a giver of "new life." Dr. Ilyas expanded the family business, and in 1995, he founded New Life Laboratories Private Limited, the plaintiff, with his wife, Mrs. Ishrat Begum, and sons, Dr. Mohammad Zakariya, Mohammad Zaki, and Dr. Salman Mohammad. The company later included other family members as directors, such as Mohammad Zaheer, Mohammad Azam, and Faizan Mohammad.
The plaintiff company took over the family’s homeopathic medicine business, claiming proprietary rights over the "NEW LIFE" trademark, which it registered in 2013 under Class 35 (Registration No. 2477030) for trading, marketing, and business management of pharmaceutical preparations. The registration was subject to a condition limiting the mark to specific colors as depicted in the application. The plaintiff alleged that it had used the mark since 1970, building significant goodwill and reputation, making "NEW LIFE" a household name for homeopathic medicines across India.
The defendant, NLCARE Private Limited (initially incorporated as Dr. Ilyas New Life Homoeo and Herbals Pvt. Ltd. in 2019), was promoted by Mohammad Zaki, Faizan Mohammad, and Mrs. Saima Zaki, who had resigned from the plaintiff company in 2018 due to internal family disputes. These individuals, all descendants or relatives of Dr. Ilyas, established NLCARE to manufacture and market pharmaceuticals, adopting the "NEW LIFE" mark and the abbreviation "NL" in their corporate name. The defendant claimed that the "NEW LIFE" mark was a family legacy, used by multiple family members across approximately 20 shops and clinics in Bhopal since the 1970s, including by Dr. Idrees’ other sons, Dr. Mohammad Tariq and Dr. M.M. Siddiqui.
The plaintiff discovered the defendant’s use of "NL" and "NEW LIFE" and alleged that it infringed their registered trademark and constituted passing off by eroding their market share and goodwill. The defendant, in turn, argued that the mark was a family asset, with no single entity entitled to exclusivity, and accused the plaintiff of suppressing material facts about prior litigation and the widespread family use of the mark.
Detailed Procedural Background: The plaintiff initiated the suit (IP (COM) No. 22 of 2024) before the High Court at Calcutta, Commercial Division, seeking remedies for trademark infringement and passing off. Concurrently, it filed an application (G.A. (Com) No. 1 of 2024) for an interim injunction to restrain the defendant from using the "NEW LIFE" mark or "NL." On 19th August 2024, the court granted an ex-parte ad-interim injunction in favor of the plaintiff, which remained in effect pending further hearings. The defendant responded with an application (G.A. (Com) No. 2 of 2024) to vacate this interim order, arguing that the plaintiff had misrepresented facts and that the mark was a shared family asset.
Prior to this, the plaintiff had filed a similar suit (CS (COMM) No. 323 of 2023) before the Delhi High Court against the defendant, which was withdrawn after arguments on interim relief were heard but no injunction was granted. The plaintiff disclosed the filing and withdrawal of the Delhi suit but omitted details of the defendant’s pleadings and the court’s refusal to grant interim relief, a point heavily contested by the defendant as suppression of material facts.The court considered the pleadings, affidavits, and documentary evidence, including a family business chart submitted by the plaintiff in the Delhi proceedings and an affidavit from Dr. M.M. Siddiqui, a family member, supporting the defendant’s claim of shared family use.
Issues Involved in the Case: The case presented several critical issues for adjudication. First, whether the plaintiff, as the registered proprietor of the "NEW LIFE" trademark, was entitled to exclusive use of the mark to the exclusion of the defendant, a company formed by family members with historical ties to the mark’s origin? Second, whether the defendant’s use of "NL" and "NEW LIFE" constituted trademark infringement or passing off, given the plaintiff’s registration and alleged prior use? Third, whether the "NEW LIFE" mark was a family-owned asset, with rights accruing to all descendants of Dr. Idrees, or whether the plaintiff’s registration conferred exclusive proprietary rights?
Detailed Submission of Parties: The plaintiff argued that New Life Laboratories was the sole proprietor of the "NEW LIFE" trademark, having inherited the goodwill and assets of Dr. Ilyas’ business. They claimed continuous use since 1970, reinforced by the 2013 registration, which they argued conferred statutory protection under the Trade Marks Act, 1999. The plaintiff asserted that the defendant’s use of "NL" in "NLCARE Private Limited" and "NEW LIFE" on its products and packaging was deceptively similar, infringing their registered mark and passing off their goods as those of the plaintiff. They highlighted the defendant’s directors—Mohammad Zaki, Faizan Mohammad, and Saima Zaki—as former shareholders and directors of the plaintiff who, after resigning in 2018, established NLCARE to exploit the plaintiff’s goodwill. The plaintiff further argued that Dr. Ilyas had permitted family members to use the "NEW LIFE" mark on a profit-sharing basis, which did not confer proprietary rights on them.
The plaintiff relied on several precedents to support their case. In Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. & Ors. (MANU/DE/0513/1982), the Delhi High Court held that even a person named Surjeet could not use the name as a trademark if it was registered by a prior entity, emphasizing the exclusivity of registered marks. In Sri Narasu’s Coffee Company Ltd. vs. Narasu’s Sarathy Industries & Anr. (2019 SCC OnLine Mad 38978), the Madras High Court ruled that only the registered proprietor has proprietary rights over a mark, excluding descendants of the mark’s originator. The plaintiff also cited M/s. Power Control Appliances vs. Sumeet Machines Pvt. Ltd. ((1994) 2 SCC 448) for the principle that a trademark cannot have multiple origins or proprietors, precluding rival use. In Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. & Ors. (MANU/DE/3191/2023), they argued that their registration trumped the defendant’s pending applications. Finally, Gujarat Bottling Co. Ltd. vs. Coca Cola Co. & Ors. ((1995) 5 SCC 545) was cited to assert that family members using the mark were common law licensees, enhancing the mark’s distinctiveness for the plaintiff.
The defendant countered that the "NEW LIFE" mark was a family legacy, adopted by Dr. Idrees in 1952 and used by his descendants across multiple shops and clinics in Bhopal. They argued that approximately 20 family-run entities operated under the "NEW LIFE" name, including those of Dr. Mohammad Tariq and Dr. M.M. Siddiqui, without objection from the plaintiff. The defendant’s directors, Mohammad Zaki and Faizan Mohammad, had used the mark since 2002 and 2017, respectively, in their individual shops, with the plaintiff’s knowledge, as their shops shared a common boundary wall. The defendant contended that the plaintiff’s registration in Class 35 was limited to a specific label and color scheme, not the word mark "NEW LIFE," and did not confer exclusivity over the term.
The defendant accused the plaintiff of suppressing material facts, particularly the Delhi High Court proceedings where interim relief was denied, citing Satish Khosla vs. Eli Lilly Ranbaxy Ltd. (MANU/DE/0763/1998), which held that non-disclosure of prior adverse orders warrants vacation of interim relief. They relied on Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. (MANU/DE/3191/2023) and Shri Ram Education Trust vs. SRF Foundation & Ors. (2016 SCC OnLine Del 472) to argue that a family name adopted by a common ancestor cannot be appropriated by one branch to exclude others, with goodwill accruing to all heirs. In Prosanta Kumar Dutta vs. Prosanta Shilpa Protishtan Pvt. Ltd. (2014 SCC OnLine Cal 19929), they asserted that the mark’s adoption by Dr. Ilyas did not preclude other family members’ rights. The defendant supported their claims with documents, including a 1975 tax notice to Dr. Idrees’ New Life Clinic and an affidavit from Dr. M.M. Siddiqui affirming the family’s shared use of the mark.
Detailed Discussion on Judgments Cited by Parties: The parties cited several judgments, each applied to specific aspects of the case. The plaintiff’s reliance on Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. & Ors. (MANU/DE/0513/1982) was to underscore the exclusivity of a registered trademark, where the Delhi High Court prohibited an individual from using their own name as a trademark when it was registered by a prior entity. However, the court found this distinguishable, as the present case involved a family mark with historical shared use, unlike a personal name appropriated by a single entity.
In Sri Narasu’s Coffee Company Ltd. vs. Narasu’s Sarathy Industries & Anr. (2019 SCC OnLine Mad 38978), the Madras High Court emphasized the registered proprietor’s exclusive rights, denying descendants of the mark’s originator proprietary claims. The Calcutta High Court deemed this inapplicable, as the "NEW LIFE" mark was a family asset used by multiple branches, not solely the plaintiff’s property.
M/s. Power Control Appliances vs. Sumeet Machines Pvt. Ltd. ((1994) 2 SCC 448) was cited by the plaintiff for the principle that a trademark cannot have multiple proprietors or origins. The court found this distinguishable, as the family context and shared historical use suggested a common origin under Dr. Idrees, not rival proprietary claims.
The plaintiff’s use of Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. & Ors. (MANU/DE/3191/2023) to assert the primacy of their registration was countered by the defendant’s interpretation of the same case, which held that a family name adopted by a common ancestor cannot be exclusively appropriated by one branch. The court favored the defendant’s reading, given the evidence of widespread family use.
Gujarat Bottling Co. Ltd. vs. Coca Cola Co. & Ors. ((1995) 5 SCC 545) was cited by the plaintiff to argue that family members using the mark were licensees, reinforcing the plaintiff’s control. The court did not directly address this, focusing instead on the family’s shared rights.
The defendant’s reliance on Satish Khosla vs. Eli Lilly Ranbaxy Ltd. (MANU/DE/0763/1998) was pivotal, as the Delhi High Court held that non-disclosure of prior adverse orders in similar proceedings constitutes suppression of material facts, justifying the vacation of interim relief. The Calcutta High Court applied this principle, finding the plaintiff’s omission of the Delhi High Court’s refusal to grant interim relief critical.
Shri Ram Education Trust vs. SRF Foundation & Ors. (2016 SCC OnLine Del 472) supported the defendant’s claim that a family mark adopted by a common ancestor benefits all heirs unless explicitly excluded. The court found this directly applicable, given the family’s extensive use of "NEW LIFE."
Prosanta Kumar Dutta vs. Prosanta Shilpa Protishtan Pvt. Ltd. (2014 SCC OnLine Cal 19929) reinforced the defendant’s argument that Dr. Ilyas’ adoption of the mark did not preclude other family members’ rights, aligning with the court’s view of shared family entitlement.
Detailed Reasoning and Analysis of Judge: Court’s analysis focused on the plaintiff’s claim to exclusivity versus the defendant’s assertion of shared family rights. The court examined the plaintiff’s registration (No. 2477030, Class 35), noting it was limited to a specific label and color scheme, not the word mark "NEW LIFE." The plaintiff’s claim of use since 1970 was unsupported by documents predating 1999, whereas the defendant provided a 1975 tax notice evidencing Dr. Idrees’ use of "New Life Clinic." The affidavit from Dr. M.M. Siddiqui, a family member, corroborated the defendant’s claim that approximately 20 family-run shops used the "NEW LIFE" mark without objection, undermining the plaintiff’s exclusivity claim.
The court found the plaintiff’s statements contradictory, particularly their assertion in the Delhi suit that they used the mark exclusively since 1970, contrasted with admissions in the Calcutta proceedings that Dr. Ilyas permitted family members to use it. The plaintiff’s failure to provide evidence of profit-sharing arrangements with family members further weakened their case. The family business charts disclosed in the Delhi suit revealed extensive use of "NEW LIFE" by Dr. Idrees’ and Dr. Ilyas’ descendants, supporting the defendant’s argument of a shared family legacy.
The court applied the principles from Shri Ram Education Trust and Dhananjay Rathi, holding that a family mark adopted by a common ancestor cannot be appropriated by one branch to exclude others. The goodwill of "NEW LIFE" accrued to all family members, and the plaintiff’s registration did not extinguish these rights, especially given the mark’s historical use since 1952.
Crucially, the court addressed the plaintiff’s suppression of material facts, invoking Satish Khosla. The plaintiff’s failure to disclose the Delhi High Court’s refusal to grant interim relief and the defendant’s pleadings in that suit was deemed a deliberate attempt to mislead the court. This suppression alone justified vacating the ad-interim injunction, as it tainted the plaintiff’s claim to equitable relief.
The court assessed the interim injunction criteria—prima facie case, balance of convenience, and irreparable injury—finding that the plaintiff failed to establish a prima facie case due to the shared family use and lack of exclusivity. The balance of convenience favored the defendant, who had operated under the mark for years, and no irreparable injury was demonstrated, given the plaintiff’s coexistence with other family users.
Final Decision:The court dismissed the plaintiff’s application (G.A. (Com) No. 1 of 2024) and allowed the defendant’s application (G.A. (Com) No. 2 of 2024), vacating the ad-interim injunction granted on 19th August 2024. The plaintiff’s request for a stay of the order was refused, affirming the defendant’s right to continue using the "NEW LIFE" mark pending the suit’s final adjudication.
Law Settled in This Case: The case reinforces the principle that A family trademark adopted by a common ancestor cannot be exclusively appropriated by one branch unless other heirs are explicitly excluded. It underscores that goodwill in such marks accrues to all family members with a common lineage. The decision also highlights the importance of full disclosure in interim injunction applications, with suppression of material facts, such as prior adverse orders, warranting the vacation of equitable relief. The court clarified that a limited trademark registration (e.g., for a specific label or class) does not confer exclusivity over a word mark, particularly in the context of historical family use.
Case Title: New Life Laboratories Private Limited Vs. NLCARE Private Limited: Date of Order: 29 April 2025: Case No.: G.A. (COM) No. 1 of 2024: High Court at Calcutta: Name of Hon'ble Judge: Krishna Rao J.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
