Abros Sports International Pvt. Ltd. Vs . Ashish Bansal

Introduction

The case of Abros Sports International Pvt. Ltd. v. Ashish Bansal and Ors. is a significant trademark dispute adjudicated by the High Court of Delhi, addressing complex issues of trademark infringement, passing off, and the legal implications of registered trademarks under the Trade Marks Act, 1999. The case revolves around the appellant, Abros Sports International Pvt. Ltd. (ASIPL), alleging that the respondents’ use of the mark “NEBROS” infringes its registered trademark “ABROS” and constitutes passing off. The appeal arises from a Single Judge’s dismissal of ASIPL’s application for an interim injunction, prompting a deeper examination of whether an infringement suit can be maintained against a registered trademark and the procedural nuances involved. The Division Bench, unable to reconcile its interpretation with a prior coordinate bench decision, referred critical legal questions to a Larger Bench, leaving the appeal’s final resolution pending.

Detailed Factual Background

ASIPL, incorporated on February 14, 2020, claimed proprietorship of the “ABROS” trademark, used for footwear and related products. The mark, a portmanteau of “A” (from Anil Sharma, the founder) and “BROS” (indicating the family business), was conceived in March 2017 by Anil Sharma’s proprietorship and assigned to ASIPL via a deed dated January 15, 2021. ASIPL held multiple trademark registrations for “ABROS” across Classes 25 (footwear), 28 (sporting articles), and 35 (trading and e-commerce), with the earliest registration dated March 3, 2017, claiming use since March 1, 2017. ASIPL operated the domain www.abrosshoes.com since June 2018 and reported substantial sales (₹7.84 crores in 2020 and ₹216.45 crores in 2021) and advertising expenses (₹35.12 lakhs in 2020 and ₹337.69 lakhs in 2021), underscoring the mark’s market reputation.

The respondents, led by Ashish Bansal (Respondent 1), used the mark “NEBROS” for similar footwear products in the same price range (₹1500–₹2000). Respondent 1 held a trademark registration for “NEBROS” in Class 25 (clothing and footwear) from September 25, 2019, applied on a “proposed to be used” basis. Respondent 1 claimed “NEBROS” was derived from “Nice Footwear” (a business run by Bansal’s uncle) and “BROS” (indicating brothers), asserting it as a coined, distinctive mark. Respondents 2 to 6 were involved in manufacturing or trading goods bearing the “NEBROS” mark. ASIPL alleged that “NEBROS” was deceptively similar to “ABROS,” causing confusion and infringing its trademark rights, while also challenging the validity of the “NEBROS” registration. The respondents countered that “NEBROS” was distinct, with prior use since September 2020, and that “BROS” was a generic suffix, precluding ASIPL’s claim to exclusivity.

Detailed Procedural Background

ASIPL filed a suit (CS (Comm) 702/2022) before the Delhi High Court, seeking a permanent injunction against the respondents’ use of “NEBROS,” alleging trademark infringement and passing off. Alongside, ASIPL moved an application (IA 16555/2022) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for an interim injunction. On May 2, 2024, a learned Single Judge dismissed the interim application, finding no phonetic, visual, or structural similarity between “ABROS” and “NEBROS,” and noting Respondent 1’s prior use (since September 2020) compared to ASIPL’s earliest invoice from February 2021. The Single Judge also observed that ASIPL failed to oppose the “NEBROS” registration and that the marks’ distinct logos negated passing off.

Aggrieved, ASIPL appealed to a Division Bench of the Delhi High Court vide FAO(OS) (COMM) 140/2024, accompanied by CM APPL. 38801/2024. The appeal was reserved on May 6, 2025, and pronounced on May 13, 2025. During adjudication, the Division Bench identified a fundamental legal conflict with the precedent in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708), which held that an infringement suit could lie against a registered trademark if its invalidity was pleaded. Disagreeing with this view, the Division Bench referred the matter to a Larger Bench to resolve critical questions regarding the maintainability of infringement suits against registered trademarks and the scope of interlocutory relief in such cases.

Issues Involved in the Case

The case presents several key issues:

1. Whether the respondents’ use of “NEBROS” infringes ASIPL’s registered “ABROS” trademark under Section 29 of the Trade Marks Act, 1999?
2. Whether an infringement suit can be maintained against the proprietor of a registered trademark, particularly when the plaintiff pleads invalidity of the defendant’s registration?

Detailed Submission of Parties

ASIPL’s Submissions (Appellant):

ASIPL, represented by Mr. Ranjan Narula, argued that the Single Judge erred in dismissing the interim injunction application. Key submissions included:

• Priority of Use and Registration: ASIPL claimed priority of use since March 2017, evidenced by Narmada Polymers’ use of “ABROS” on soles, which are cognate to shoes. The mark’s presence on ASIPL’s Certificate of Incorporation and PAN Card (February 14, 2020) constituted “use” under Sections 2(2)(b) and (c) of the Trade Marks Act. The earliest “ABROS” registration (March 3, 2017) predated the “NEBROS” registration (September 25, 2019), granting ASIPL priority.
• Deceptive Similarity: “ABROS” and “NEBROS” were phonetically similar, satisfying the “triple identity test” (identical goods, same trade channels, same customer segment). The Single Judge’s focus on the “BROS” suffix was misplaced, as marks must be compared holistically, per Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13) and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980).
• Invalidity of NEBROS Registration: ASIPL challenged the “NEBROS” registration under Sections 9, 11, 12, 18, and 57, alleging it was deceptively similar, lacked distinctiveness, and was obtained in bad faith. The failure to oppose the registration was due to inadvertent oversight, not acquiescence.
• Passing Off: The distinct logos did not negate passing off, as “NEBROS” was prominently visible, likely to confuse consumers. Actual confusion was unnecessary, per Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1.
• Respondent’s Evidence: The respondents’ invoice (September 1, 2020) lacked the “NEBROS” mark, undermining their claim of prior use, per Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC).
• Legal Precedents: ASIPL relied on FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381) for the definition of “use,” Raj Kumar Prasad for infringement suits against registered trademarks, and K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131) for phonetic similarity.

Respondents’ Submissions:

Represented by Mr. Sanchay Mehrotra, the respondents defended the Single Judge’s findings, arguing:

• Distinctiveness of NEBROS: “NEBROS” was a coined mark derived from “Nice Footwear” and “BROS,” with no intent to imitate “ABROS.” The marks were visually and phonetically distinct, with different logos, negating confusion.
• Priority of Use: Respondents claimed use of “NEBROS” since September 2020, supported by invoices, predating ASIPL’s earliest invoice (February 2021). ASIPL’s reliance on Narmada Polymers’ use was irrelevant, as it pertained to soles, not shoes.
• Registered Trademark Defense: As “NEBROS” was registered, Sections 28(1), 28(3), and 30(2)(e) barred infringement claims. The respondents cited S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683) to emphasize the higher threshold for passing off against a registered mark.
• Generic Suffix: “BROS” was a common suffix, publici juris, and could not be monopolized, per the respondents’ written statement.
• Sales and Reputation: Respondent 1’s sales (₹8.5 crores in 2021–22) demonstrated “NEBROS”’s market presence, supporting its independent goodwill.
• Precedents: The respondents relied on Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95), Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022), and Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246) to argue distinctiveness and priority of use.

ASIPL’s Rejoinder:

ASIPL countered that the respondents’ sales figures reflected total turnover, not “NEBROS” sales. Section 34 (saving for vested rights) was inapplicable, as it required both prior use and registration, which Respondent 1 lacked. The “BROS” suffix argument was rebutted with Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744), emphasizing holistic comparison. Additional precedents included Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672) and Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020).

Detailed Discussion on Judgments Cited by Parties

1. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980): Cited by ASIPL to argue that marks must be compared holistically for deceptive similarity, considering phonetic, visual, and structural aspects. The Supreme Court emphasized that slight differences do not negate infringement if the marks are likely to confuse consumers.
2. Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13): ASIPL relied on this to stress phonetic similarity as a key factor in trademark disputes. The Supreme Court held that “Amritdhara” and “Lakshmandhara” were deceptively similar due to phonetic resemblance, despite minor differences.
3. K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131): ASIPL cited this to argue that “ABROS” and “NEBROS” were phonetically similar, akin to “Ambal” and “Andal.” The Supreme Court ruled that phonetic similarity in marks for identical goods warrants injunction.
4. Russell Corp. Australia Pty. Ltd. v. Ashok Mahajan (2023 SCC OnLine Del 4796): ASIPL referenced this Delhi High Court decision to support its infringement claim, though the court’s specific findings were not detailed in the judgment.
5. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. ((2018) 2 SCC 1): ASIPL cited this to argue that actual confusion is not required for passing off or infringement. The Supreme Court clarified that likelihood of confusion suffices, particularly for well-known marks.
6. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC): ASIPL relied on this to challenge the respondents’ September 2020 invoice, which lacked the “NEBROS” mark. The Supreme Court held that evidence of use must clearly demonstrate the mark’s application.
7. FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381): ASIPL cited this to argue that “use” under the Trade Marks Act includes non-physical applications, such as on corporate documents, supporting its claim of use since 2017.
8. Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708): ASIPL relied on this Division Bench decision, which held that an infringement suit could lie against a registered trademark if its invalidity is pleaded, with interlocutory relief permissible under Section 124(5).
9. Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672): ASIPL cited this to argue that Section 34 was inapplicable, as it protects only prior users with continuous use, which Respondent 1 lacked.
10. Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744): ASIPL used this to counter the respondents’ claim that “BROS” was generic, emphasizing that marks must be assessed as a whole.
11. Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020): ASIPL cited this Delhi High Court decision to support its passing off claim, though specific findings were not elaborated.
12. S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683): Respondents cited this to argue that passing off against a registered mark requires a higher threshold, as registration confers statutory rights.
13. Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95): Respondents relied on this to argue that distinct marks do not infringe, emphasizing visual and structural differences.
14. Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022): Respondents cited this to support their claim of distinctiveness between “ABROS” and “NEBROS,” though ASIPL distinguished it as irrelevant (involving “AIRTEC” and “AIRNET”).
15. Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246): Respondents used this to argue that prior use and registration protect against injunction.
16. In re. Pianotist Co. Application (1906) 23 RPC 774): Cited by the Single Judge to emphasize holistic comparison of marks, considering appearance, sound, goods, and consumer perception.

Detailed Reasoning and Analysis of Judge

The Division Bench conducted a meticulous analysis, focusing on both the merits of the appeal and a critical legal question regarding infringement suits against registered trademarks. The reasoning unfolded as follows:

Merits of the Appeal:

The Bench noted ASIPL’s contention that the Single Judge erred in finding no similarity between “ABROS” and “NEBROS” and in prioritizing Respondent 1’s use. ASIPL argued phonetic similarity, supported by substantial sales and prior registration (March 2017). The respondents countered with their registered status, prior use (September 2020), and distinct logos. The Single Judge’s findings included:

• No phonetic, visual, or structural similarity between the marks.
• Respondent 1’s prior use (September 2020) over ASIPL’s (February 2021).
• No evidence of Narmada Polymers’ use on shoes, rendering sole-related use irrelevant.
• Distinct logos negating passing off, with no proof of actual confusion.
• “BROS” being a generic suffix, per S. Syed Mohideen, and the Trade Marks Registry’s Examination Report not citing “ABROS” as conflicting with “NEBROS.”

The Division Bench did not conclusively rule on these findings, as a fundamental legal issue necessitated referral to a Larger Bench.

Legal Issue on Infringement Against Registered Trademarks:

The Bench identified a conflict with Raj Kumar Prasad, which permitted infringement suits against registered trademarks if invalidity was pleaded, with interlocutory relief under Section 124(5). The Bench disagreed, reasoning:

• Section 29 (Infringement): Sub-sections (1) to (4) define infringement as occurring only by a person “not being a registered proprietor or a person using by way of permitted use.” Thus, a registered trademark cannot infringe, as explicitly reinforced by Section 30(2)(e), which exempts use of a registered mark from infringement claims.
• Section 28 (Rights Conferred by Registration): Section 28(1) grants the registered proprietor exclusive use and relief against infringement, but is “subject to other provisions,” including Section 28(3), which prohibits one registered proprietor from restraining another’s use of an identical or similar mark. Granting an injunction against a registered mark would violate the defendant’s exclusive rights.
• Section 124 (Stay of Proceedings): The Bench rejected Raj Kumar Prasad’s interpretation that Section 124 permits suits alleging infringement by registered marks with a plea of invalidity. Instead, Section 124(1)(b) applies when a plaintiff sues for infringement (assuming the defendant’s mark is unregistered), and the defendant raises a Section 30(2)(e) defense (asserting registration). Only then can the plaintiff plead invalidity, triggering a procedural sequence: the court assesses the plea’s tenability, frames an issue, adjourns the suit for three months, and stays the trial if rectification proceedings are initiated. Section 124(5) allows interlocutory orders only post-stay, and injuncting a registered mark would contravene Sections 28 and 30.
• Critique of Raj Kumar Prasad: The Bench found Raj Kumar Prasad’s reliance on Section 124 misplaced, as it overlooked Section 29’s restriction of infringement to unregistered marks. Permitting suits against registered marks based solely on invalidity pleas undermines the statutory scheme, effectively nullifying the defendant’s rights without rectification.
• Harmonization: The Bench emphasized harmonizing provisions but found Raj Kumar Prasad’s interpretation contradictory to Sections 28, 29, and 30. A suit alleging infringement by a registered mark is “fundamentally unsound” unless the mark’s registration is invalidated.

Referral to Larger Bench:

Given the conflict with Raj Kumar Prasad and its subsequent affirmation in Corza International v. Future Bath Products Pvt. Ltd. (2023 SCC OnLine Del 153), the Bench referred the following questions to a Larger Bench:

1. Can an infringement suit lie against a registered trademark’s proprietor?
2. If so, can the court grant an interlocutory injunction against such use?
3. If permissible, must the court follow the procedural steps under Section 124 (defendant’s Section 30(2)(e) defense, plaintiff’s invalidity plea, tenability assessment, issue framing, adjournment, rectification, and stay)?
4. Is Raj Kumar Prasad, particularly para 18, correct in its legal position?

The Bench deferred the appeal’s final decision pending the Larger Bench’s resolution, as the “NEBROS” registration and ASIPL’s invalidity plea made the legal question pivotal.

Final Decision

The Division Bench did not deliver a final ruling on the appeal, instead referring the case to a Larger Bench to resolve the conflict with Raj Kumar Prasad. The appeal was re-notified for hearing on July 7, 2025, with the Registry directed to place the order before the Chief Justice for constituting the Larger Bench.

Law Settled in This Case

No definitive law was settled, as the appeal’s resolution was deferred. However, the Division Bench articulated a provisional legal position:

• A registered trademark cannot infringe, per Sections 29 and 30(2)(e).
• Infringement suits against registered trademarks are generally unsustainable unless the registration is invalidated through rectification.
• Section 124 does not permit suits alleging infringement by registered marks based solely on invalidity pleas; it applies when a defendant raises a registration defense in an infringement suit.
• The right to relief under Section 28(1) cannot override another registered proprietor’s exclusive use rights under Sections 28(3) and 30(2)(e). The final legal position awaits the Larger Bench’s determination.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.: 13 May 2025: FAO(OS)(COMM) 140 of 2024: 2025:DHC:3606-DB: High Court of Delhi: Hon'ble Justice Mr. C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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