Prior adoption and registration of a trademark confer exclusive rights under Section 28 of the Trade Marks Act, 1999
Introduction: In the evolving landscape of intellectual property law in India, disputes over trademark infringement and passing off are increasingly prevalent, particularly in industries where brand identity plays a pivotal role in consumer perception. The case of Waterways Leisure Tourism Private Limited v. Mukesh Prasad Thapliyal and Others is a significant judicial pronouncement by the High Court of Delhi that addresses the conflict between two entities operating in the hospitality sector over the use of the trademark "Cordelia." This case study delves into the legal intricacies of the dispute, examining the arguments presented by both parties, the court's reasoning, and the broader implications for trademark law in India.
Factual Background:Waterways Leisure Tourism Private Limited, the plaintiff, is a company engaged in providing luxury ocean cruise tourism services under the trademark "Cordelia Cruises." The plaintiff adopted this mark in November 2020 and secured its domain name, www.cordeliacruises.com, in December 2020. On January 4, 2021, the plaintiff applied for trademark registration for "Cordelia" in Classes 39, 41, and 43 under the Trade Marks Act, 1999, and subsequently obtained registration in these classes. The plaintiff demonstrated continuous use of the mark since 2021, achieving significant goodwill and recognition in the hospitality industry, evidenced by a turnover increase from Rs. 30.92 lakhs in 2020-2021 to Rs. 48.53 crores in 2022-2023, along with various industry awards.
The defendants, led by Mukesh Prasad Thapliyal, operate a land-based hotel in Rishikesh under the mark "Cordelia Inn," which they claim to have adopted in August 2022. They registered the domain name www.hotcordeliainn.com and applied for trademark registration for "Cordelia Inn" in Class 43 on August 4, 2022. The Trade Marks Registry raised an objection to the defendants' application on December 28, 2022, citing the plaintiff's registered mark. Despite a cease-and-desist notice issued by the plaintiff on August 22, 2024, the defendants continued using the mark, prompting the plaintiff to file a suit for trademark infringement and passing off, along with an application for an interim injunction.
Procedural Background
The case was filed before the High Court of Delhi as CS(COMM) 42/2025, with the plaintiff seeking an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to restrain the defendants from using the mark "Cordelia Inn" or any deceptively similar mark. The application, numbered I.A. 1268/2025, was heard by Justice Saurabh Banerjee, who reserved the judgment on July 11, 2025, and pronounced it on July 28, 2025. The plaintiff was represented by Ms. Kripa Pandit and others, while the defendants were represented by Ms. Kangana Roda and her team. Both parties presented extensive arguments, supported by documentary evidence and case law, to substantiate their claims regarding the use and proprietorship of the trademark "Cordelia."
Core Dispute:The central issue in this case revolves around whether the defendants' use of the mark "Cordelia Inn" constitutes trademark infringement and passing off in relation to the plaintiff's registered mark "Cordelia Cruises." The plaintiff argued that the defendants' mark is deceptively similar, likely to cause consumer confusion, and an attempt to capitalize on the plaintiff's goodwill, given the prior adoption, registration, and extensive use of the "Cordelia" mark. The defendants countered that their mark was adopted in good faith, that "Cordelia" is a generic term, and that their land-based hotel services in Rishikesh are distinct from the plaintiff's cruise services, thus negating any likelihood of confusion. The court was tasked with determining the validity of these claims, the scope of protection for the plaintiff's registered mark, and the balance of convenience for granting an interim injunction.
Discussion on Judgments:Both parties relied on several judicial precedents to bolster their arguments, each cited to address specific aspects of trademark law. The plaintiff placed reliance on Somany Ceramics Limited v. Shri Ganesh Electric Co. & Others (2022 SCC OnLine Del 3270), emphasizing the principle that prior use and registration confer exclusive rights to a trademark holder, supporting their claim of being the prior adopter and registrant of the "Cordelia" mark. The plaintiff further argued that the defendants' continued use post a cease-and-desist notice demonstrated mala fide intent.
The defendants cited multiple cases to argue against the plaintiff's claims. In Dalpat Kumar v. Prahlad Singh (1992 Supp (2) SCC 722), they highlighted that the plaintiff must establish a prima facie case and actual harm, which they claimed was absent. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965 AIR SC 980) was referenced to argue that the plaintiff’s mark, being a device mark, does not confer exclusive rights over the word "Cordelia." Registrar of Trade Marks v. Ashok Chandra Rakhit (1955 AIR SC 558) was cited to support the contention that "Cordelia" is a generic term, not exclusively proprietary. Other cases included Institute of Directors v. Worlddecorp Technology & Business Solution Pvt. Ltd., Anirdhara Pharmacy v. Satyadeo Gupta, M/s. Nandhini Deluxe v. M/s. Karnataka Cooperative Milk Producers Federation Ltd., Sanjha Chulha v. Sanjha Chulha & Ors., Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobacco Co. Ltd., Mitaso Electronics v. Sujata Home Appliances Pvt. Ltd. & Anr., RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Limited & Anr., and Schering Corporation v. Alkem Laboratories Ltd., all of which were used to argue that the plaintiff failed to demonstrate a likelihood of confusion or harm, and that the defendants' services were sufficiently distinct.
The court also referred to additional precedents in its analysis. Automatic Electric Ltd. v. R.K. Dhawan (1999 PTC 81) was cited to reject the defendants' claim that "Cordelia" is generic, emphasizing that a party seeking proprietary rights over a mark cannot simultaneously claim it is generic. United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. & Ors. (2012 SCC OnLine Del 2942), referencing Registrar of Trade Marks v. Ashok Chandra Rakhit, clarified that a registered label mark includes protection for the word contained therein. Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (1970 (2) SCC 727), KSB Aktiengesellschaft & Ors. v. KSB Global Limited (2011 (45) PTC 103 (Del)), Cotton Ltd. v. Mohammed Rafi & Ors. (2011 (46) PTC 468 (Del)), Subhash Chand Bansal v. Khad7’s and Ors. (2011 (46) PTC 468 (Del)), MAX Healthcare Institute Ltd. v. Sahurdya Health Care Pvt. Ltd., and Pluto Travels India Private Limited v. PTW Holidays Private Limited were cited to establish that adding prefixes or suffixes does not distinguish a mark sufficiently to avoid infringement, particularly when the core element ("Cordelia") remains prominent.
Reasoning and Analysis of the Judge: Justice Saurabh Banerjee’s reasoning focused on several key aspects of trademark law. The court acknowledged the plaintiff’s prior adoption and registration of the "Cordelia" mark in November 2020 and January 2021, respectively, supported by documentary evidence such as WHOIS records, invoices, and a Chartered Accountant’s certificate. This established the plaintiff as the prior user and registrant, conferring exclusive rights under Section 28 of the Trade Marks Act, 1999. The court rejected the defendants’ claim of prior adoption, noting their application for "Cordelia Inn" was on a "proposed to be used" basis in August 2022, post-dating the plaintiff’s use.
The court found that both parties operate within the hospitality industry under Class 43, which encompasses services for food, drink, and temporary accommodation, including cruise ships and hotels. The shared trade channels, such as online platforms like Goibibo and TripAdvisor, and the common consumer base heightened the likelihood of confusion. The court dismissed the defendants’ argument that "Cordelia" is generic, citing Automatic Electric Ltd. v. R.K. Dhawan, which held that a party claiming proprietary rights cannot simultaneously assert a mark’s generic nature. The court further relied on United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. to affirm that a registered label mark protects the word contained therein, thus extending protection to "Cordelia."
The visual and phonetic similarity between "Cordelia Cruises" and "Cordelia Inn," particularly the retention of the prominent element "Cordelia," was deemed likely to confuse consumers with imperfect recollection. The court rejected the defendants’ argument that their land-based hotel services were distinct from the plaintiff’s cruise services, noting that both fall within the hospitality sector and cater to similar customers. The defendants’ use of palm tree imagery, unrelated to their services, was seen as an attempt to mislead consumers into associating their services with the plaintiff’s maritime brand. The court also found the defendants’ continued use after the cease-and-desist notice indicative of mala fide intent.
Applying the triple test for interim injunctions—prima facie case, balance of convenience, and irreparable harm—the court concluded that the plaintiff satisfied all criteria. The plaintiff’s established goodwill, the likelihood of confusion, and the potential for irreparable harm tilted the balance in their favor. The defendants’ cited cases, such as Vishnudas and Nandhini Deluxe, were deemed inapplicable due to the specific facts of the case, particularly the shared industry and consumer base.
Final Decision: On July 28, 2025, the High Court of Delhi granted the interim injunction sought by the plaintiff. The defendants were restrained from using, marketing, or advertising the mark "Cordelia Inn" or any deceptively similar mark through any medium, including online platforms and social media. They were further directed to remove all references to "Cordelia" from third-party websites and to block, suspend, and transfer the domain name https://hotelcordeliainn.com and associated email to the plaintiff. The application was allowed, and the case was listed for further proceedings on September 23, 2025, before the Joint Registrar for admission-denial and marking of exhibits.
Law Settled in This Case: This case reinforces several principles of trademark law in India. It affirms that prior adoption and registration of a trademark confer exclusive rights under Section 28 of the Trade Marks Act, 1999, enabling the proprietor to seek relief against infringement and passing off. The judgment clarifies that protection extends to the prominent word within a registered label mark, rejecting claims of genericness when the defendant seeks proprietary rights over the same term. It also establishes that services within the same class (e.g., Class 43) and industry (hospitality), even if delivered in different settings (cruise vs. hotel), are sufficiently allied to create a likelihood of confusion, particularly when marketed through common channels. The case underscores that minor additions, such as prefixes or suffixes, do not sufficiently distinguish a mark to avoid infringement. Finally, it emphasizes the court’s willingness to grant interim injunctions to protect registered trademarks when a prima facie case, balance of convenience, and risk of irreparable harm are established.
Case Title: Waterways Leisure Tourism Private Limited Vs. Mukesh Prasad Thapliyal and Others
Date of Order: July 28, 2025
Case Number: CS(COMM) 42/2025
Neutral Citation: 2025:DHC:6127
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Justice Saurabh Banerjee
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
