Groundless Threats and Trademark Opposition
Introduction: The case of Naga Limited Vs. Cherukuri Gopi Chand, adjudicated by the Madras High Court, represents a significant exploration of the scope of Section 142 of the Trade Marks Act, 1999, concerning groundless threats of legal proceedings. Heard under C.S. (Comm. Div.) No. 92 of 2025, this case involves an application by the defendant, Naga Limited, for summary judgment to dismiss the plaintiff’s suit, which sought declarations and injunctions against alleged threats made through notices of opposition filed against the plaintiff’s trademark applications. The dispute centers on whether such notices constitute actionable threats under Section 142, raising critical questions about the interpretation of statutory provisions and the appropriateness of summary disposal in trademark disputes.
Factual Background: Cherukuri Gopi Chand, trading as Anaganaga, operates a business in Gachibowli, Telangana, and sought to register the trademark "ANAGANAGA" and its variants for services, likely related to the restaurant business, as indicated by the trademark applications in Class 43. Naga Limited, a company based in Chennai, Tamil Nadu, holds registered trademarks for "NAGA" across multiple classes, including Class 43, which pertains to restaurant services. The dispute arose when Naga Limited filed notices of opposition against three of Gopi Chand’s trademark applications, alleging that "ANAGANAGA" was deceptively similar to "NAGA" and constituted an infringement of its registered rights. Gopi Chand responded by filing a suit, claiming that these notices contained groundless threats of legal proceedings, actionable under Section 142 of the Trade Marks Act.
Procedural Background: The suit, C.S. (Comm. Div.) No. 92 of 2025, was initiated by Cherukuri Gopi Chand before the Madras High Court under Sections 134 and 142 of the Trade Marks Act, 1999, read with Order VII Rule 1 of the Code of Civil Procedure and Order IV Rule 1 of the Original Side Rules. Gopi Chand sought multiple reliefs, including declarations that his trademark "ANAGANAGA" was distinct from Naga Limited’s "NAGA," that his use did not infringe Naga’s rights, and that the threats issued via notices of opposition were groundless. He also requested a permanent injunction against further threats and damages for business losses. Naga Limited responded by filing an application (A. No. 2833 of 2025) for summary judgment under Order XIII-A of the CPC, seeking dismissal of the suit on the grounds that it had no real prospect of success.
Core Dispute: The central issue in this case is whether the notices of opposition filed by Naga Limited against Gopi Chand’s trademark applications constitute groundless threats of legal proceedings under Section 142(1) of the Trade Marks Act, 1999, thereby justifying the reliefs sought by Gopi Chand. Naga Limited argued that opposition proceedings before the Registrar of Trade Marks are statutory actions, not mere threats, and thus fall outside the scope of Section 142. It further contended that Gopi Chand failed to provide evidence of commercial use of "ANAGANAGA," undermining his claim, and that its opposition was legitimate given its registered rights in "NAGA." Gopi Chand, conversely, asserted that statements in the notices alleging infringement and threatening proceedings under Sections 102 and 103 of the Trade Marks Act qualified as actionable threats. He argued that the term "or otherwise" in Section 142(1) should be interpreted broadly to include such statements, and that Naga’s opposition was an abuse of process, as it did not operate in the same business segment. The dispute thus hinges on the interpretation of "threats" under Section 142 and the applicability of summary judgment under Order XIII-A of the CPC.
Discussion on Judgments: The parties cited several judgments to support their arguments, each addressing key aspects of trademark law and summary judgment principles. Naga Limited relied on Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited (2019 SCC OnLine Del 11952), particularly paragraphs 3 to 6, 15, and 16, to argue that notices of opposition constitute initiated legal proceedings, not threats of future proceedings, under Section 142. The Delhi High Court in this case clarified that statutory opposition proceedings are distinct from threats, as they are formal actions before a competent authority, supporting Naga’s contention that its notices did not fall within Section 142’s ambit. Gopi Chand cited Sidharth Wheels Private Limited v. Bedrock Limited and Another (1987 SCC OnLine Del 365), emphasizing that the phrase "or otherwise" in Section 142(1) should not be construed ejusdem generis with "circulars, advertisements," but broadly to encompass all forms of communication, including notices of opposition. The court in Sidharth Wheels held that "or otherwise" extends to private communications, not just public ones, bolstering Gopi Chand’s argument that the notices qualified as threats. Gopi Chand also referenced D. Val Divora v. Union of India and Others (2021 (4) Mh. L.J. 282), particularly paragraphs 35 to 45, to argue that Naga’s opposition was an abuse of process, as it lacked relevant registrations in the same class or business, though the judgment’s specific relevance was not fully detailed in the record. Both parties implicitly relied on Godaddy.com LLC and Others v. Puravankara Projects Limited (2022 (91) PTC 440 (Mad)), where Justice Senthilkumar Ramamoorthy himself formulated principles for summary judgment under Order XIII-A, emphasizing that a plaintiff must have a real, not illusory, prospect of success and that no compelling reason should exist to proceed to trial. This precedent guided the court’s assessment of Naga’s application for summary dismissal.
Reasoning and Analysis of the Judge: Justice Senthilkumar Ramamoorthy delivered a comprehensive judgment, focusing on the legal interpretation of Section 142 and the principles of summary judgment under Order XIII-A of the CPC. The court began by examining whether the notices of opposition constituted threats under Section 142(1), which allows an aggrieved person to seek relief against threats of infringement proceedings via circulars, advertisements, or otherwise, unless the defendant proves the trademark’s registration and actual infringement. Naga’s counsel argued that opposition proceedings are statutory actions, not threats, as they are initiated before the Registrar of Trade Marks, relying on the Chartered Institute case. The court agreed, noting that Section 142 aims to protect against unjustified threats of future proceedings, not ongoing statutory actions. The court further analyzed Gopi Chand’s reliance on Sidharth Wheels, acknowledging that "or otherwise" includes private communications but concluding that notices of opposition, being part of formal proceedings, do not qualify as threats under Section 142. The court observed that Gopi Chand could challenge the opposition’s merits before the Registrar, and if successful, pursue a separate claim for malicious prosecution, but such a claim was premature while opposition proceedings were pending.
On the summary judgment application, the court applied the principles from Godaddy.com LLC, requiring Naga to demonstrate that Gopi Chand had no real prospect of success and that no compelling reason existed for a trial. The court found that Gopi Chand’s primary relief—a declaration that "ANAGANAGA" was dissimilar to "NAGA"—would interfere with the Registrar’s statutory jurisdiction to determine deceptive similarity in the opposition proceedings, rendering it unsustainable. Similarly, the injunction against further threats (prayer (c)) lacked merit, as the notices were the sole basis for the suit and did not constitute threats under Section 142. The claim for damages (prayer (d)) was contingent on the other reliefs, and thus also lacked a real prospect of success. The court concluded that the issues were primarily legal, requiring no oral evidence, and that Gopi Chand’s suit had no real prospect of success, justifying summary dismissal.
Final Decision: The Madras High Court allowed Naga Limited’s application for summary judgment (A. No. 2833 of 2025) on 16 July 2025, dismissing C.S. (Comm. Div.) No. 92 of 2025. The court found that the plaintiff, Cherukuri Gopi Chand, had no real prospect of succeeding on any of the claimed reliefs, as the notices of opposition did not constitute actionable threats under Section 142 of the Trade Marks Act. The suit was disposed of summarily under Order XIII-A of the CPC, with no compelling reason to proceed to trial.
Law Settled in This Case: This case clarifies the scope of Section 142 of the Trade Marks Act, 1999, establishing that notices of opposition filed in trademark registration proceedings do not constitute groundless threats of legal proceedings, as they are formal statutory actions, not mere threats of future litigation. The judgment reinforces that Section 142 is intended to address unjustified threats, such as those made through circulars or advertisements, and does not extend to ongoing proceedings before the Registrar of Trade Marks. It also underscores the applicability of summary judgment under Order XIII-A of the CPC in commercial disputes, affirming that suits lacking a real prospect of success can be dismissed without trial when the issues are predominantly legal and no compelling reason exists for oral evidence. The ruling highlights the judiciary’s role in preventing premature or unfounded litigation that could impede statutory processes, while preserving the plaintiff’s right to pursue alternative remedies, such as malicious prosecution, after resolving opposition proceedings.
Case Title: Cherukuri Gopi Chand Trading as Anaganaga Vs. Naga Limited
Date of Order: 16 July 2025
Case Number: C.S. (Comm. Div.) No. 92 of 2025
Neutral Citation: 2025:MHC:1728
Name of Court: Madras High Court
Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
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
