Introduction
In the evolving landscape of intellectual property law in India, the case of Rajvaidya Shital Prasad and Sons versus Karna Goomar and Another stands as a significant precedent underscoring the paramount importance of prior use, goodwill, and the prevention of deceptive similarity in trademark disputes.
Delivered by the Delhi High Court, this judgment addresses a rectification petition filed under Section 57 of the Trade Marks Act, 1999, seeking the cancellation, removal, or rectification of the registered trademark ‘Activepushpa’ held by the respondent.
The petitioner, a long-established entity in the ayurvedic medicine sector, argued that the impugned mark infringed upon their well-known trademark ‘Hempushpa’, which has been in continuous use for over nine decades.
Court Decision And Reasoning
The court ruled in favor of the petitioner, emphasizing how extensive historical usage and acquired reputation can trump subsequent registrations that appear to capitalize on established goodwill.
This decision not only reinforces the protective mechanisms of the Trade Marks Act but also highlights the judiciary’s role in maintaining the purity of the trademark register by eliminating marks that could lead to consumer confusion and unfair trade practices.
Key Legal Principles Highlighted
- Priority of use over mere registration.
- Protection of goodwill and acquired reputation.
- Prevention of deceptive similarity in trademarks.
- Safeguarding consumer interest against confusion.
Comparative Overview Of The Marks
| Aspect | Petitioner’s Mark | Respondent’s Mark |
|---|---|---|
| Trademark Name | Hempushpa | Activepushpa |
| Duration of Use | Over nine decades | Subsequent registration |
| Sector | Ayurvedic medicine | Ayurvedic medicine |
| Legal Standing | Prior user with goodwill | Rectified and removed |
Broader Implications Of The Judgment
At its core, the case illustrates the delicate balance between innovation in branding and the safeguarding of legacy marks in competitive markets like pharmaceuticals and ayurvedic products, where phonetic and structural similarities can easily mislead the average consumer.
Factual Background
Petitioner Profile and Trademark History
The petitioner, Rajvaidya Shital Prasad and Sons, has been deeply entrenched in the business of manufacturing and marketing medical preparations, including ayurvedic syrups and tonics, for generations. They claim proprietorship over the trademark ‘Hempushpa’ in Class 05, which encompasses pharmaceutical and ayurvedic preparations. The origins of this mark trace back to the late 1920s or early 1930s, with documented use commencing as early as June 1, 1933.
| Particulars | Details |
|---|---|
| Trademark | ‘Hempushpa’ |
| Class | 05 (Pharmaceutical and ayurvedic preparations) |
| First Use Claimed | June 1, 1933 |
| Word Mark Application | No. 362381 (Filed with use from January 1, 1938) |
| Registration Date | February 28, 1983 |
| Validity | Renewed up to May 30, 2028 |
| Label Mark Application | No. 4054631 (Filed in 2019, pending) |
Continuous Use and Reputation
Over the years, ‘Hempushpa’ has been continuously and exclusively used without interruption, building substantial trade value and becoming synonymous with high-quality ayurvedic tonics specifically targeted at women’s health. The mark’s distinctiveness stems from long-term, extensive promotion, including endorsements by Bollywood celebrities, positioning it as the leading ayurvedic tonic for women in India.
- Continuous and exclusive use since 1933
- Strong market recognition in women’s health segment
- Celebrity endorsements and extensive promotion
- Acquisition of secondary meaning
This has led to secondary meaning acquisition, rendering it a well-known trademark under the Act, with associated goodwill and reputation that the petitioner asserts is protected under both statutory and common law, including copyright over the label design.
Respondent Profile and Competing Mark
On the other side, the respondent, Karna Goomar, operates in a similar domain, dealing in ayurvedic medicines. They adopted the mark ‘Activepushpa’ for identical or allied goods in Class 05, applying for registration on February 4, 2013, claiming use since January 1, 1992, and securing registration (No. 2471490) on December 14, 2016.
| Particulars | Details |
|---|---|
| Trademark | ‘Activepushpa’ |
| Class | 05 |
| Use Claimed | From January 1, 1992 |
| Application Date | February 4, 2013 |
| Registration Number | 2471490 |
| Registration Date | December 14, 2016 |
Additionally, the respondent pursued registrations for ‘Kudos Active Pushpa Label’ under applications Nos. 3998498 and 4024987, which the petitioner opposed.
Allegations of Deceptive Similarity
The petitioner contends that the respondent’s adoption was dishonest, as ‘Activepushpa’ is phonetically, visually, and structurally deceptively similar to ‘Hempushpa’, particularly with the shared prominent element ‘Pushpa’, which is arbitrary in the context of ayurvedic products.
- Phonetic similarity between the two marks
- Visual and structural resemblance
- Identical trade channels and consumer base
- Likelihood of market confusion and deception
This similarity, coupled with identical trade channels and consumer bases, is alleged to inevitably cause market confusion, deception, and passing off, allowing the respondent to unfairly benefit from the petitioner’s established reputation.
Procedural Background
Rectification Petition by the Petitioner
The procedural journey of this dispute began with the petitioner filing a rectification petition before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, invoking multiple provisions including Sections 9, 11, 12, 18, 34, 47, and 125 to challenge the validity of the respondent’s ‘Activepushpa’ registration.
Aggrieved by what they perceived as fraudulent adoption and registration that infringed upon their prior rights, the petitioner detailed their historical use and registration, highlighting the respondent’s later entry into the market.
Arguments Advanced by the Petitioner
- Deceptive similarity between the marks
- Bad faith and dishonest adoption
- Violation of trademark principles
- Dominance of ‘Pushpa’ as a key feature
- Lack of distinctiveness in the impugned mark
They cited numerous precedents to bolster their case, emphasizing phonetic similarity, the dominance of ‘Pushpa’ as a key feature, and the lack of distinctiveness in the impugned mark.
Arguments Advanced by the Respondent
The respondents, defended countered by asserting honest adoption of ‘Activepushpa’ under their house mark ‘Kudos’, claiming it was a coined term combining ‘Active’ (denoting liveliness) and ‘Pushpa’ (Sanskrit for flower, symbolically linked to women).
- Holistic comparison of marks
- Industry practice of using ‘Pushpa’ variations
- No exclusivity over ‘Pushpa’
- Reliance on Sections 15 and 17 of the Act
- Evidence of third-party use of ‘Pushpa’ marks
They argued for holistic comparison of marks, pointing to industry practices where ‘Pushpa’ variations are common, and invoked Sections 15 and 17 of the Act to deny exclusivity over ‘Pushpa’ since it wasn’t separately registered by the petitioner. Evidence of third-party uses of ‘Pushpa’-containing marks was submitted to argue commonality.
Court Proceedings
The court proceedings involved detailed submissions from both sides, with no apparent interim orders mentioned, leading directly to the final judgment after considering affidavits, documents, and legal citations. The petitioner also referenced their oppositions to the respondent’s additional applications, underscoring ongoing conflicts, while the respondents highlighted their investments in promotion to establish goodwill.
Reasoning and Decision of Court
The Delhi High Court’s reasoning in this case was rooted in a comprehensive analysis of trademark law principles, prioritizing the petitioner’s prior adoption, continuous use, and accrued goodwill over the respondent’s subsequent registration. Justice Tejas Karia meticulously dissected the competing marks, noting that both ‘Hempushpa’ and ‘Activepushpa’ are word marks in Class 05 for similar ayurvedic products, with the petitioner’s mark enjoying precedence in registration (from 1983) and use (from 1933).
Triple Identity Test and Deceptive Similarity
The court found the impugned mark deceptively similar, satisfying the triple identity test—identical goods, similar marks, and same trade channels—leading to inevitable confusion. Phonetic similarity was particularly emphasized, drawing from precedents like K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., where ‘Ambal’ and ‘Andal’ were deemed confusingly alike; here, the shared suffix ‘Pushpa’ was deemed the dominant, essential feature, arbitrary and non-descriptive in the ayurvedic context, not merely laudatory or common as argued by the respondent.
Rejection of Honest Concurrent Use
The court rejected the respondent’s claim of honest concurrent use under Section 12, citing evident bad faith: the respondent’s awareness of the petitioner’s reputation, lack of plausible explanation for adopting a similar mark, and failure to conduct prior searches indicated an intent to pass off and encash on established goodwill.
Non-Use and Statutory Violations
Evidence showed the respondent’s actual use was minimal or non-existent prior to 1992, contradicting their claims and violating Section 47 for non-use. Under Section 11, the registration was deemed contrary to the Act, as it conflicted with a well-known mark, and Section 9 was invoked for lack of distinctiveness.
Anti-Dissection Rule and Commonality Argument
The court dismissed arguments on commonality of ‘Pushpa’, requiring substantial third-party evidence which was insufficient, and applied anti-dissection rules from cases like Parle Products v. J.P. and Co., viewing marks holistically rather than side-by-side.
Broader Considerations and Final Order
Broader considerations included potential future business expansions and the need to protect against dilution, as in Laxmikant V. Patel v. Chetan Bhai Shah. Ultimately, the court decided to allow the petition, directing the Registrar of Trade Marks to cancel, remove, or rectify ‘Activepushpa’ from the register, affirming the petitioner’s statutory and common law rights to prevent infringement and maintain market purity.
Key Legal Findings (Summary)
| Issue | Court’s Finding |
|---|---|
| Similarity of Marks | Deceptively similar; phonetic dominance of ‘Pushpa’ |
| Section 12 | Honest concurrent use rejected due to bad faith |
| Section 47 | Registration liable for cancellation due to non-use |
| Section 11 | Conflicts with a well-known prior mark |
| Section 9 | Lack of distinctiveness |
| Final Direction | Rectification and removal of ‘Activepushpa’ |
Point of Law Settled in the Case
This judgment solidifies several key principles in Indian trademark jurisprudence, particularly that extensive, continuous use spanning over 90 years can establish a mark as well-known, granting it superior protection against deceptively similar subsequent marks under Sections 9 and 11 of the Trade Marks Act, 1999, even if the common element like ‘PUSHPA’ is argued to be generic or common to trade without substantial evidence of widespread third-party usage.
Bad Faith Adoption and Non-Use
It reiterates that bad faith adoption, evidenced by lack of search reports, implausible explanations, and intent to ride on another’s goodwill, cannot be cured by any amount of subsequent use, as per precedents like Hindustan Pencils v. India Stationary Products, and mandates cancellation under Section 47 for proven non-use or frivolous registration.
- Lack of search reports
- Implausible explanations
- Intent to ride on another’s goodwill
Phonetic Similarity and Passing Off
The case clarifies that phonetic similarity alone, especially in dominant features, suffices for deceptive similarity and passing off, applying the test from K.R. Chinna Krishna Chettiar, while holistic comparison trumps dissection, rejecting claims of honest concurrent use under Section 12 absent honesty in adoption.
Statutory and Common Law Rights
Furthermore, it establishes that prior registration and use confer both statutory and common law rights to seek rectification under Sections 18, 34, 57, and 125, emphasizing the judiciary’s role in purifying the register to prevent consumer confusion in allied goods markets.
Case Details
| Case Detail | Rajvaidya Shital Prasad and Sons Vs Karna Goomar and Anr. |
|---|---|
| Date of Order | 24.12.2025 |
| Case Number | C.O. (COMM.IPD-TM) 385/2021 |
| Neutral Citation | 2025:DHC:11881 |
| Name of Court | High Court of Delhi |
| Name of Hon’ble Judge | Hon’ble Mr. Justice Tejas Karia |
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
