Introduction: This judgment, delivered by a division bench, underscores the distinction between mere prior use and the requirement to establish protectable goodwill in passing off actions, even when the defendant holds a registered trademark.
At stake were competing marks "BONERICH" and "BONRICH" for medicinal products aimed at bone health, highlighting how courts balance statutory registration rights under the Trade Marks Act, 1999, against common law remedies for unregistered marks.
The appellant, a sole proprietor, challenged the restraint on his use of "BONERICH," arguing that the respondent's claim lacked foundational proof of reputation predating his adoption, while the respondent defended its prior user status dating back to a proprietorship era.
The High Court's intervention, setting aside the injunction, reinforces that passing off cannot succeed on priority alone but demands evidence of market recognition and potential harm, drawing on precedents like Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra and Wander Ltd. v. Antox India (P) Ltd.
Factual Background:The dispute centers on two phonetically and visually similar trademarks, "BONERICH" and "BONRICH," both used for pharmaceutical preparations related to bone health and nutritional supplements under Class 5. The appellant, Kedar Nath Mishra, operating as a sole proprietor, asserted that he honestly adopted and began using "BONERICH" on August 29, 2011, for marketing and distributing medicinal products, claiming continuous and uninterrupted commercial use that built distinctiveness and exclusive association with his goods over time.
To secure statutory protection, he first applied for registration on September 18, 2013, but the application was refused due to non-prosecution of objections under Sections 9 and 11 of the Trade Marks Act; subsequently, a fresh application on December 5, 2018, led to registration on February 8, 2021, with claimed prior use from 2011.
The respondent, Invision Medi Sciences Pvt. Ltd., incorporated on February 22, 2011, engaged in pharmaceuticals including allopathic, ayurvedic, and homeopathic medicines, contended that its promoter, Mukesh Kumar, had adopted "BONRICH" since 2007 through his proprietorship firm, initially named Marx Remedies and later Invision Medi Sciences. Upon incorporation, the respondent claimed the entire business, including goodwill and trademarks, was transferred to it, enabling continuous use of "BONRICH" from 2007 onward.
The appellant became aware of the respondent's mark on July 29, 2021, when the latter applied for registration under Application No. 5064847, initially claiming use from November 18, 2011—a date postdating the appellant's adoption—but later amended to December 31, 2007, via a form filed on January 18, 2023, supported by an Assignment Deed dated January 14, 2023, formalizing the transfer from Marx Remedies.
The respondent bolstered its prior use claim with documents like VAT registrations, licenses, stock registers, invoices showing sales of Rs. 25.73 lakhs from 2007-2011 and Rs. 1.05 crores thereafter, CA certificates, and evidence of pan-India distribution. Conversely, the appellant challenged these as fabricated, pointing to inconsistencies in the respondent's pleadings about Marx Remedies' existence and the absence of any mention of its takeover in the respondent's Memorandum of Association, which only referenced Invision Medi Sciences.
This factual matrix revealed a classic conflict between a registered mark's proprietor asserting infringement and a prior user relying on common law rights through assignment and succession, setting the stage for examining whether documentary evidence of use sufficed without proven market reputation.
Procedural Background:The proceedings commenced with the appellant filing a commercial suit, CS (COMM) 702/2022, before the District Judge (Commercial Court-01), South, Saket, Delhi, seeking permanent injunction against the respondent for trademark infringement and passing off, along with delivery-up, damages, and costs, based on the deceptive similarity between "BONERICH" and "BONRICH" for identical goods. Accompanying the suit was an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, for interim relief. Summons were served on the respondent on January 12, 2023, prompting it to file a written statement denying the claims, alleging suppression by the appellant, and asserting prior use since 2007.
Simultaneously, the respondent lodged a counter-claim, CS (COMM) 79/2023, for passing off, seeking similar injunctive relief against the appellant, supported by its own interim application under Order XXXIX Rules 1 and 2, an application under Section 124(2) of the Trade Marks Act for permission to file rectification proceedings challenging the appellant's registration, and relying on the amended user claim and Assignment Deed.
The appellant responded with an application under Section 340 of the Code of Criminal Procedure, accusing the respondent of perjury through fabricated documents. The Commercial Court, in its order dated June 7, 2024, disposed of the interim applications by dismissing the appellant's plea for injunction, granting the respondent's counter-claim interim relief restraining the appellant from using "BONERICH," allowing three months for rectification proceedings, and deferring the Section 340 application to trial.
Aggrieved solely by the injunction in the counter-claim, the appellant filed two appeals under Section 13 of the Commercial Courts Act, 2015, read with Order XLIII Rule 1(r) CPC: FAO (COMM) 160/2024 challenging the dismissal of his interim application, and FAO (COMM) 159/2024 assailing the grant of injunction to the respondent. The High Court, after hearing arguments from both sides on prior use, goodwill, assignment validity, and passing off elements, delivered an oral judgment on January 13, 2026, partly allowing the appeals by setting aside the injunction against the appellant, while clarifying that observations were prima facie and not binding on trial.
Reasoning and Decision of Court:The division bench of the Delhi High Court meticulously analyzed the impugned order, emphasizing the limited appellate scope under Wander Ltd. v. Antox India (P) Ltd., where interference is warranted only for arbitrariness, perversity, or disregard of legal principles, and found the Commercial Court's grant of injunction flawed for failing to establish goodwill and reputation essential to passing off.
Recalling the tripartite test for passing off—goodwill/reputation, misrepresentation, and damage—from precedents like Pernod Ricard and FDC Ltd. v. Faraway Foods (P) Ltd., the court noted that prior use under Section 34 of the Trade Marks Act defends against infringement but does not suffice for affirmative passing off relief without proven market recognition predating the rival's adoption.
The bench observed that while the Commercial Court prima facie accepted the respondent's prior use since 2007 based on invoices, sales figures (Rs. 25.73 lakhs pre-2011, Rs. 1.05 crores post), licenses, and pan-India presence, it merely catalogued these without evaluating if they translated into goodwill by August 29, 2011, when the appellant adopted "BONERICH."
Rejecting the respondent's argument that such findings were implicit, the court stressed that passing off requires explicit prima facie satisfaction on reputation, as mere sales do not automatically confer protectable goodwill without evidence of consumer association or market impact. The bench dismissed the appellant's challenges to the Assignment Deed and Marx Remedies' existence as trial issues but held that even assuming valid prior use, the absence of goodwill findings vitiated the injunction, rendering it an error on principle.
Consequently, the court set aside the restraint on the appellant's use of "BONERICH," dismissed the respondent's interim application in the counter-claim, and clarified that its observations were tentative, not influencing the final trial, thus balancing interim equities without prejudging merits.
Point of Law Settled in the Case:This judgment crystallizes the principle that in an action for passing off, particularly at the interim stage, mere establishment of prior use of a mark does not entitle a party to injunctive relief against a subsequent user, even if the latter holds a registered trademark, unless the court records a prima facie finding on the existence of goodwill and reputation in the mark predating the rival's adoption, as goodwill forms the sine qua non of the tort, distinct from statutory defenses under Section 34 of the Trade Marks Act.
It reiterates that passing off requires proof of the classical trinity—goodwill/reputation, misrepresentation leading to confusion, and actual/likely damage—with courts mandated to analyze evidence like sales figures and geographical presence not just descriptively but evaluatively to determine if they evince market recognition capable of deception.
The decision affirms that appellate courts will interfere under Order XXXIX CPC if lower courts grant injunctions without explicit satisfaction on these elements, preventing presumptive relief based solely on documentary use without reputational impact, and underscores that allegations of document fabrication under Section 340 CrPC are trial matters not preempting interim assessments.
Case Title: Kedar Nath Mishra Vs Invision Medi Sciences Pvt. Ltd.
Date of Order: 13 January 2026
Case Number: FAO (COMM) 159/2024
Neutral Citation: 2026:DHC:352:DB
Name of Court: High Court of Delhi at New Delhi
Name of Hon'ble Judge: Mr. Justice C. Hari Shankar and Mr. Justice Om Prakash Shukla
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested Titles:
Prior Use vs. Goodwill in Passing Off
Suggested Tags:
Trademark Infringement, Passing Off, Goodwill and Reputation, Prior User Rights, Section 34 Trade Marks Act, Interim Injunction, Order XXXIX CPC, Pharmaceutical Trademarks, Assignment Deed Validity, Delhi High Court, Commercial Courts Act, Pernod Ricard Precedent, Wander v. Antox Principle
