Inder Raj Sahni Vs Neha Herbal

Case Title: Inder Raj Sahni  Vs  Neha Herbal Case No.:C.O. (COMM/IPD-TM) 355/2021 and CS (COMM) 207/2023 and  Date of Order: March 22, 2023 Neutral Citation: 2025:DHC:4037 Court: Delhi High Court Judge: Hon'ble Mr. Justice Sanjeev Narula

Facts of the Case:

The dispute centers on the use of the trademark "NEHA" in the personal care industry.

• The Plaintiffs, Neha Herbals Pvt. Ltd., represented by Vikas Gupta, have been using the mark "NEHA" since 1992, primarily in relation to henna (Mehandi) powders, cones, and herbal hair products. They hold a valid registration for "NEHA" under Registration No. 1198061 in Class 3, covering goods like henna, herbal powders, and hair dyes, with use dating back to 2012.

• The Defendant, Mr. Inder Raj Sahni of M/s Sahni Cosmetics, claims to have adopted and used "NEHA" earlier for face creams and cosmetic products. He has also filed multiple applications for registration of the same mark, but these applications have been refused or abandoned, and he does not hold a valid registration.

• The Plaintiffs initially obtained registration for the mark but lost it due to non-renewal; they allege long-standing use and prior rights over the mark "NEHA".

• The Defendant began selling "NEHA" branded face creams in 2012, asserting prior use and challenging the Plaintiffs' rights based on earlier adoption.

Procedural History:

• The Plaintiffs filed a suit for infringement and passing off alleging that the Defendant's use of "NEHA" for face creams infringed their registered trademark and prior use rights.

• The Defendant moved to cancel the Plaintiffs’ registration and raised defenses based on prior common law rights and prior use.

• The suit and cancellation petitions were initially with the Intellectual Property Appellate Board (IPAB) and later transferred to the Delhi High Court following procedural changes.

• The Court consolidated the suit and cancellation proceedings, recorded evidence, and heard final arguments.

• Based on the evidence, the Court examined whether the Plaintiffs had superior rights due to prior use and registration, and whether the Defendant’s use amounted to infringement or passing off.

Issues: Is the Plaintiff the prior user and owner of the exclusive right to the mark "NEHA"? Does the Defendant’s use of "NEHA" for face creams infringe upon the Plaintiff’s registered trademark? Has the Plaintiff's goodwill extended to the cosmetic category, including face creams?

Decision:

The Court held that:

• The Plaintiffs have demonstrated prior use of the mark "NEHA" in relation to herbal powders, hair dyes, and henna products since 1992, supported by registration and continuous use.

• The Defendant’s use of "NEHA" for face creams, although after the Plaintiffs’ use, does not amount to infringement because the goods are different (herbal products vs. cosmetics/creams), and the likelihood of confusion among the consumers is less due to the different nature of products.

• The Plaintiffs’ registration was active and effective, covering related herbal and hair products, but did not extend explicitly to the cosmetic creams category.

• The Plaintiffs’ goodwill was confined mainly to mehandi and herbal products and not established across broader cosmetics. Thus, the pass-off claim for "NEHA" in the cosmetics category fails.

• Considering priority rights under the Trade Marks Act, the Defendant’s prior use of "NEHA" for face creams, although not registered, does not amount to infringement or passing off, given the distinct product lines and consumer perceptions.

• The injunctions sought by the Plaintiffs were not granted, and the Defendant’s use of "NEHA" in relation to face creams was found to be lawful.

• The suit for infringement and passing off was accordingly decided against the Plaintiffs.

• The cancellation petitions filed by the Defendant regarding the registration were also decided in favor of the Defendant, with the Court concluding no prior user rights of the Plaintiffs extended to the cosmetic category.

Final Outcome:

The Court dismissed the suit of infringement and passing off filed by Neha Herbals Pvt. Ltd., holding that there was no infringement of the registered rights nor passing off actions proved, especially in the broader cosmetic categories. The Defendant’s prior use in face creams was recognized, and the evidence indicated that consumer confusion was unlikely.