Rectification Proceedings Do Not Freeze Trademark Rights

Brief Introductory Head Note Summary of the Case

This case concerns a trade mark infringement dispute relating to the compost bin product known as “BOKASHI BUCKET”. The plaintiff, Rajeev K.P., who owns the registered trademark for the term BOKASHI BUCKET, approached the court seeking a temporary injunction preventing the defendant, Unais K.K., from selling an identical product using the same trademark. The trial court rejected the application for temporary injunction, but the Kerala High Court reversed that decision and granted injunction in favour of the plaintiff.

Factual Background

The plaintiff is the proprietor of Global Pharmaceuticals, and claims to have introduced an innovative composting product under the registered trademark BOKASHI BUCKET, which is scientifically designed to convert biodegradable waste into manure. The plaintiff asserts that due to extensive usage, promotional activities and presence in the market, the product enjoys wide reputation, especially with repeated procurement by Suchitwa Mission and local government authorities.

According to the plaintiff, distributors discovered that an identical compost bin was being sold by the defendant. It was alleged that the defendant copied the overall appearance, design, configuration and features of the plaintiff’s product and further used the words “BOKASHI BUCKET”, thereby infringing the plaintiff’s registered trademark and passing off his goods as those of the plaintiff.

Procedural Detail

The plaintiff filed a suit in the Additional District Court, Manjeri, along with an application for interim injunction. Initially, an ad-interim injunction was granted; however, after the defendant appeared and filed objections, the trial court vacated the injunction through its order dated 23.08.2025, holding that there was no prima facie case, and that balance of convenience and irreparable injury did not favour the plaintiff. Aggrieved, the plaintiff filed FAO No.118 of 2025 before the Kerala High Court under appellate jurisdiction.

Core Dispute

The pivotal legal issue before the High Court was whether the plaintiff, as the registered proprietor of the trade mark BOKASHI BUCKET, was entitled to a temporary injunction on the ground of trademark infringement, especially when the defendant was also using the term “BOKASHI BUCKET” to market identical goods.

A side issue argued by the defendant was that a rectification petition was already filed before the Trade Marks Registry against the plaintiff’s registration. Hence, according to the defendant, failure of the plaintiff to file counter statement meant that the registration had become ineffective, extinguishing the plaintiff’s statutory rights.

Detailed Reasoning Including Judgment with Citations

The High Court first clarified that since the plaintiff confined the appeal only to the ground of trademark infringement, aspects of design registration, patent claims and prior user were not germane for consideration.

Undisputed Facts

• The plaintiff held valid trademark registration for “BOKASHI BUCKET”.
• The defendant was using the same term (“BOKASHI BUCKET”).
• Both parties were selling identical goods – compost bins.

This combination brought the case squarely within Section 29(2)(c) of the Trade Marks Act, which states that infringement occurs when there is identity of both trademark and goods, resulting in deemed likelihood of confusion. Section 29(3) mandates that in such situations the Court shall presume confusion.

The High Court relied heavily on the Supreme Court’s landmark decision in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Others, (2022) 5 SCC 1, which clarified that in an infringement action, once identity of the marks and goods is established, no further inquiry into confusion or deception is necessary. The Supreme Court had reiterated earlier positions laid down in:

• Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980
• Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727

The Court highlighted that in an infringement matter, arguments regarding get-up, packaging and price difference are irrelevant if the essential features of the registered trademark are adopted by the defendant.

On Rectification Argument

Regarding the defendant’s argument that failure to file counter-statement in rectification proceedings resulted in extinguishment of trademark rights, the High Court interpreted Rule 98 of the Trade Marks Rules, 2017, and held that:

• Non-filing of counter-statement only allows the rectification applicant to proceed with evidence.
• There is no statutory consequence of deeming the registration as void or inoperative due to this delay.

Therefore, the Court held that so long as the trademark remains on the register, the statutory protections under Sections 28 and 29 remain fully enforceable.

Decision

The High Court concluded that:

• The plaintiff had a strong prima facie case.
• Balance of convenience favoured the plaintiff because permitting the defendant to continue use of the registered trade mark would dilute statutory rights.
• Irreparable injury would occur if infringement continued during the pendency of the suit.

Accordingly, the order of the trial court was set aside, and a temporary injunction was granted restraining the defendant from manufacturing, selling, or promoting compost bins under the name “BOKASHI BUCKET”, until disposal of the suit.

Concluding Note

This judgment reinforces the principle that once a trademark is validly registered, the statutory right of exclusivity under Sections 28 and 29 of the Trade Marks Act becomes absolute in infringement matters. Even ongoing rectification proceedings do not dilute trademark protection unless the registration is removed through a final order. The case further underscores that infringement analysis is distinct from passing off, and where identity of mark and goods is established, injunction becomes a legal consequence rather than a discretionary relief.

Case Details

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