### Introduction
This judgment addresses a dispute in intellectual property law concerning the infringement of trademarks and copyrights related to a bird device mark used in laundry and cleaning products. The plaintiff, Reckitt Benckiser (India) Private Limited, sought protection for its 'Robin' bird device mark, claiming prior adoption and use since 1899 globally and 1942 in India, against the defendant, Sauss Home Products Private Limited, which asserted use since 1976. The High Court of Delhi examined issues of prior user rights, fabricated evidence, delay in filing, and territorial jurisdiction, ultimately granting an interim injunction in favor of the plaintiff while dismissing the defendant's plea for rejection of the plaint. The decision underscores the principles of passing off and the superiority of prior user rights over subsequent registrations, even in cases involving registered marks.
### Factual Background
The plaintiff is an Indian subsidiary of the global Reckitt Group, engaged in fast-moving consumer goods including bleaching and cleaning preparations, with a turnover exceeding INR 8,000 crores in India and USD 17 billion globally. The Reckitt Group adopted the 'Robin' mark and bird device in 1899 for rice starch products, using it continuously worldwide and in India since 1942, securing multiple trademark and copyright registrations, including the subject device mark registered in 1998. The plaintiff demonstrated extensive sales and advertising, claiming goodwill in the mark. The defendant, incorporated in 2013, manufactures washing soaps and detergents, claiming adoption of a similar bird device mark since 1976 through a predecessor entity, with registrations from 2006 onward. The plaintiff learned of the defendant's use in 2017 via a trademark application, opposed it, and filed the suit in 2023 after discovering actual sales, alleging infringement and passing off. The defendant countered with claims of prior use, filing rectification petitions against the plaintiff's marks and a prior suit in Agra where an interim order was stayed.
### Procedural Background
The suit was filed on 8 August 2023 seeking permanent injunction for trademark infringement, copyright violation, and passing off. An application under Order XXXIX Rules 1 and 2 CPC for interim injunction was filed, along with the defendant's application under Order VII Rules 10 and 11 CPC for rejection/return of the plaint on jurisdictional grounds. Summons were issued on 8 August 2023, with the defendant appearing on 18 October 2023. No ex parte injunction was granted initially. Pleadings were completed, and arguments were heard on 6 March 2025, 24 April 2025, and 13 May 2025, with judgment reserved on the latter date and pronounced on 14 August 2025. The court also referenced a parallel suit in Agra where the defendant's interim relief was dismissed on 25 February 2025.
### Core Dispute
The primary issue was whether the defendant infringed the plaintiff's trademarks and copyrights in the 'Robin' bird device mark and passed off its goods as those of the plaintiff. Key sub-issues included determining prior user and adopter of the identical marks for similar goods, the validity of the defendant's prior use claims based on allegedly fabricated documents, the impact of delay in filing the suit, and the court's territorial jurisdiction under Section 20 CPC, given the plaintiff's Haryana office and sales in Delhi. The dispute highlighted the tension between registered rights and common law passing off principles, with the plaintiff asserting global heritage and the defendant claiming local prior adoption since 1976.
### Discussion on Judgments
The parties and court referenced several precedents to support their positions on prior user rights, delay, and injunctions. The plaintiff relied on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, in the context of arguing that prior user rights prevail over subsequent registrations, emphasizing that passing off actions remain viable despite statutory registrations. Hindustan Pencils Private Limited v. India Stationery Products Co., AIR 1990 Delhi 19, was cited by the plaintiff to contend that mere delay does not bar interim relief if the defendant's adoption is dishonest, as the court must consider fraudulent intent over laches. Similarly, Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90, was invoked by the plaintiff to reinforce that in trademark infringement suits, delay alone is insufficient to deny injunction, particularly where dishonesty is evident. The defendant did not cite additional judgments beyond challenging the plaintiff's claims, but the court applied these precedents to prioritize prior use and dismiss delay defenses.
### Reasoning and Analysis of the Judge
Justice Amit Bansal analyzed the rival marks as nearly identical in shape, color, and layout, used for identical goods, likely causing confusion. Focusing on passing off under Section 27(2) of the Trade Marks Act, the judge prioritized prior user rights, finding the plaintiff's evidence from 1998-2000, including artist interviews and sales certificates, prima facie credible. The defendant's 1976 claim was rejected as fabricated, particularly the 'Sainik Newspaper' document from 1997 reporting post-1997 events, deeming it manufactured without needing further inquiry at interim stage. Other defendant documents referenced only 'Pooja' mark, not the bird device. Delay was dismissed as non-fatal given dishonest adoption, per established precedents. Jurisdiction was upheld under Section 20 CPC based on Delhi sales and website accessibility. Balancing equities, the judge found prima facie case, irreparable harm, and convenience favoring the plaintiff, granting injunction.
### Final Decision
The court dismissed the defendant's application under Order VII Rules 10 and 11 CPC, affirming territorial jurisdiction. It allowed the plaintiff's interim injunction application under Order XXXIX Rules 1 and 2 CPC, restraining the defendant from using the bird device mark or infringing the plaintiff's copyright until final adjudication. Observations were limited to the interim stage.
### Law Settled in This Case
This decision reaffirms that prior user rights in passing off actions supersede subsequent trademark registrations, even if valid. It clarifies that fabricated evidence undermines prior use claims, and delay does not bar injunctions where adoption is dishonest. The judgment also settles that jurisdiction under Section 20 CPC extends to places of sale and online accessibility, emphasizing protection of goodwill in identical marks for similar goods.
### Case Details
Case Title: Reckitt Benckiser (India) Private Limited vs Sauss Home Products Private Limited
Date of Order: 14th August, 2025
Case Number: CS(COMM) 539/2023
Neutral Citation: 2025:DHC:68966
Name of Court: High Court of Delhi
Name of Judge: Amit Bansal
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
Here are various suitable titles for this article for publication in a Law Journal:
1. Prior User Rights and Fabricated Evidence: Analyzing the Delhi High Court's Interim Injunction in Reckitt Benckiser v. Sauss Home Products
2. Trademark Infringement and Passing Off: The Superiority of Prior Adoption in the 'Robin' Bird Device Dispute
3. Delay and Dishonest Adoption: Judicial Insights from the Reckitt Benckiser Case on Interim Relief in IP Suits
4. Jurisdictional Challenges in Trademark Litigation: Lessons from the High Court of Delhi's Ruling
5. Copyright and Trademark Overlap in Device Marks: A Case Study on the Bird Symbol Controversy
6. Fabricated Documents in Prior Use Claims: The Impact on Passing Off Actions
7. Balancing Equities in Interim Injunctions: The Reckitt Benckiser Judgment Explored
8. Global Heritage vs. Local Claims: Prior User Determination in Indian Trademark Law
