Stay of Registered Trademark during pendency of Rectification Proceeding
Factual Background: This case centers around a trademark dispute in the Indian spices industry, where the petitioner, Mr. Ankit Batra, proprietor of M/s KD Industries, sought rectification and cancellation of the registered trademark ‘KEEP DEEP - KD MASALE’ owned by respondent Mr. Ravinder Kumar. The conflict arose over the use of the letters “KD”, which the petitioner claimed as the core part of his brand identity.
The petitioner’s case was founded on long-standing use, reputation, and prior adoption of the trademark ‘KD’ and its label ‘KD Masale’. The petitioner asserted that his firm, M/s KD Industries, had been using the mark ‘KD’ since 2003 in connection with manufacturing and selling spices and blended condiments. The mark had become widely recognized in both domestic and international markets, with sales and exports extending to countries such as Australia, the United Kingdom, the United States, and Canada.
The petitioner claimed that the rights in the trademark ‘KD’ were originally held by his predecessor in business, who had assigned those rights to him through a valid Assignment Deed dated 16 February 2022. Thus, by operation of both statutory and common law principles, he was the lawful proprietor and user of the trademark.
According to the petitioner, the respondent dishonestly and with mala fide intent adopted a deceptively similar mark, ‘KEEP DEEP - KD MASALE’, under Application No. 4923053 in Class 30, which covers spices and similar goods. The petitioner argued that this imitation was deliberate and intended to exploit his established goodwill and reputation, thereby deceiving consumers and diluting the distinctiveness of his mark.
The petitioner supported his claim with evidence including invoices dating back to 2013, packaging, promotional materials, and online listings showing consistent and extensive use of the ‘KD’ mark and label for over two decades.
Procedural Background: The petitioner approached the High Court under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation and rectification of the respondent’s registered trademark on grounds of dishonest adoption and likelihood of confusion. Alongside the main petition, he filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking a stay on the operation of the respondent’s registration during the pendency of the rectification proceedings.
The petition also included an application requesting the Court to summon the complete record of the impugned registration from the office of the Registrar of Trade Marks to facilitate fair adjudication.
Upon hearing the matter, Hon’ble Justice Tejas Karia issued notice to both respondents — Mr. Ravinder Kumar (the private respondent) and the Registrar of Trade Marks (as the statutory respondent). The Central Government Standing Counsel accepted notice on behalf of the Registrar.
The respondent was directed to file a reply within four weeks, and the petitioner was allowed to file a rejoinder thereafter. Meanwhile, the Court proceeded to examine the petitioner’s interim application for a stay on the respondent’s mark.
Core Legal Dispute: The principal issue before the Court was whether the registration of the respondent’s trademark ‘KEEP DEEP - KD MASALE’ was valid and bona fide or whether it constituted an infringement upon the petitioner’s prior rights in the mark ‘KD’.
The case also raised critical questions of trademark law such as:Whether the respondent’s adoption of the impugned mark was honest or tainted by mala fide intent;Whether the impugned mark was deceptively similar to the petitioner’s registered and prior-used mark;Whether continued operation of the respondent’s registration would cause confusion and prejudice to the petitioner’s business;Whether the Registrar’s decision to register the mark contravened Sections 9(2)(a) and 11 of the Trade Marks Act, 1999.
Arguments on Behalf of the Petitioner: Counsel for the petitioner argued that his client was the lawful proprietor of the trademark ‘KD’, being the assignee of the original registration (No. 1446270 in Class 30). The mark, they submitted, had been continuously and extensively used since 2003 and had acquired a strong reputation and distinctiveness in the market.
The petitioner’s mark ‘KD’ formed the dominant and essential feature of his packaging, labeling, and brand presentation under ‘KD Masale’. Because the respondent’s mark, ‘KEEP DEEP - KD MASALE’, prominently reproduced the same element ‘KD’ in identical font and structure, it was bound to create confusion among consumers.
It was also pointed out that the respondent’s application was filed in 2021, almost two decades after the petitioner’s adoption of the mark, and that it was made on a “proposed to be used” basis, demonstrating the absence of prior use. The petitioner alleged that the respondent’s adoption was not innocent but intentionally designed to mislead consumers and unfairly benefit from the goodwill of the ‘KD’ brand.
Citing Sections 9(2)(a) and 11 of the Trade Marks Act, counsel argued that registration of the impugned mark was in direct violation of statutory provisions, as it was both deceptive and confusingly similar to an existing registered mark. They further contended that balance of convenience and equity lay in favor of the petitioner since continued use of the impugned mark would irreparably harm his reputation and mislead the public.
Arguments on Behalf of the Respondents: The respondent’s counsel was yet to file a formal written reply, but during oral submissions, the government counsel representing the Registrar accepted notice and agreed to furnish the complete record of the registration in question. The respondent’s position, as recorded, was that the petition would be contested, though no concrete rebuttal on merits was placed on record at this interim stage.
Judicial Reasoning and Analysis: The Court nocied that the petitioner had produced ample evidence of use of the mark ‘KD’ since 2003, supported by documentary proof such as invoices, packaging labels, and promotional materials. The petitioner’s business, it was observed, was not limited to domestic operations but had extended internationally, thereby adding weight to his claim of distinctiveness and goodwill.
The Court further observed that the impugned mark ‘KEEP DEEP - KD MASALE’ reproduced the essential and dominant part of the petitioner’s mark — the letters ‘KD’. This similarity, both visually and phonetically, was likely to cause confusion among consumers in the same line of trade, especially because both parties operated in the same market segment (spices under Class 30).
The Court also considered the statutory framework under the Trade Marks Act, 1999. Section 9(2)(a) prohibits registration of marks that are likely to deceive or cause confusion, while Section 11 mandates refusal of registration if the mark is identical or deceptively similar to an earlier registered mark in respect of similar goods or services.
On this basis, the Court found that the respondent’s registration appeared prima facie to violate these provisions. The respondent’s mark was a subsequent adoption made in bad faith and lacked originality. The Court held that the balance of convenience was clearly in favor of the petitioner, as the potential for confusion in the marketplace was undeniable.
Court also observed that the petitioner had established both statutory rights (through registration and assignment) and common law rights (through long and continuous use), entitling him to protection even independent of registration. Allowing the respondent’s registration to remain in effect during pendency of the rectification petition would, therefore, cause irreparable harm to the petitioner and mislead the public.
In light of these findings, the Court exercised its equitable powers under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 to grant interim relief.
Decision: The Court held that the petitioner had made out a strong prima facie case for protection of his mark and for suspension of the respondent’s registration. It observed that the impugned mark ‘KEEP DEEP - KD MASALE’ incorporated the petitioner’s dominant feature ‘KD’ and was likely to deceive the public and trade.
Consequently, the High Court of Delhi ordered that the operation and effect of the registration of the impugned mark (Application No. 4923053 in Class 30) be stayed until the next date of hearing. The Court concluded that the respondent’s registration was prima facie in violation of Sections 9(2)(a) and 11 of the Trade Marks Act, 1999.
Conclusion: This case highlights how courts protect prior and bona fide trademark owners from deceptive and opportunistic registrations that attempt to capitalize on existing goodwill. The judgment also reinforces the dual protection afforded under Indian trademark law — both statutory and common law — and emphasizes the importance of continuous, consistent use in establishing proprietorship.
The Court’s reasoning affirms the principle that in matters of trademark disputes, the dominant feature test, likelihood of confusion, and intent of adoption are crucial determinants of judicial protection. The stay granted here safeguards both commercial integrity and consumer interest until a final determination is made.
Case Title: Sh. Ankit Batra, Proprietor of KD Industries Vs. Ravinder Kumar & Anr.
Case Number: C.O. (COMM.IPD-TM) 253/2025
Date of Order: 16 October 2025
Court: High Court of Delhi at New Delhi
Coram: Hon’ble Mr. Justice Tejas Karia
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
