Case Summary
The case of Kamal Raheja v. Hahnemann Pure Drug Co. decided by the Division Bench of the High Court of Delhi on 8 July 2025, presented a significant question in trademark law: whether the suspension of a plaintiff’s drug licence precludes them from seeking an injunction to protect a registered trademark under the Trade Marks Act, 1999?
The appeal arose from an order of the Commercial Court that had made an ex parte ad interim injunction absolute, restraining the appellant from using the mark ‘MARKS GO’, which was identical to the respondent’s registered trademark. The judgment explored the scope and interpretation of Sections 28, 29, 31 and 47 of the Trade Marks Act, reaffirming core principles regarding statutory rights of registered proprietors and the irrelevance of current commercial exploitation at the stage of an infringement action.
Factual Background
The respondent, Hahnemann Pure Drug Co., is the registered proprietor of the trademark ‘MARKS GO’, registered under Class 5 of the NICE Classification with effect from 14 September 2010. The registration covered skincare cream and related products, and was valid and subsisting on the date of the dispute.
Alleging that the appellant, Kamal Raheja, was manufacturing and selling similar products under the identical trademark ‘MARKS GO’, the respondent approached the Commercial Court seeking protection of its statutory rights. Importantly, during the pendency of the dispute, the respondent’s licence to manufacture products under the Drugs and Cosmetics Act, 1940 was suspended following a show cause notice issued on 13 May 2024.
The appellant relied heavily on this suspension to argue that the respondent could not lawfully exploit the mark and was therefore disentitled to seek an injunction.
Procedural Background
The respondent filed CS (Comm) 346/2023 before the District Judge (Commercial Court-02), Rohini, seeking a decree of permanent injunction restraining the appellant from using the infringing mark ‘MARKS GO’. Alongside, an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was filed to obtain an interim injunction pending the suit.
On 8 June 2023, the Commercial Court passed an ex parte ad interim injunction restraining the appellant and others from manufacturing, selling, or dealing in skincare creams under the mark ‘MARKS GO’ or any deceptively similar mark. The appellant, in response, filed an application under Order XXXIX Rule 4 CPC seeking vacation of this interim order.
On 7 March 2025, the Commercial Court dismissed the appellant’s application and made the interim injunction absolute. Aggrieved, the appellant preferred FAO (COMM) 105/2025 before the High Court of Delhi.
Core Dispute
The principal question before the High Court was whether the respondent’s inability to commercially exploit the registered mark ‘MARKS GO’—due to suspension of its drug licence—deprived it of the right to seek relief against trademark infringement under Sections 28 and 135 of the Trade Marks Act, 1999?
The appellant contended that without the ability to manufacture and sell, the respondent suffered no irreparable injury, making the grant of injunction unjustified. The respondent argued that registration alone was sufficient to entitle a proprietor to seek protection under the Act, and actual commercial use was neither required nor relevant to an infringement action.
Discussion on Judgments
During arguments, the appellant heavily relied on the regulatory action under the Drugs and Cosmetics Act, 1940 and contended that without an active licence, the respondent could neither use nor defend the mark.
However, the Court noted that such reliance was misplaced, as the Trade Marks Act operates independently of the licensing regime under the Drugs and Cosmetics Act.
The Court discussed Section 28(1) of the Trade Marks Act, 1999, which explicitly provides that the registration of a trademark gives the registered proprietor the exclusive right to its use and to seek relief in respect of infringement. The judges also referred to Section 31(1) of the Trade Marks Act, which treats registration as prima facie evidence of validity in all legal proceedings relating to the registered trademark.
Additionally, the Court elaborated on Section 47(1) of the Act, explaining that non-use of a registered trademark may be a ground for removal from the register, but only through a separate application filed by an aggrieved person. The judges made clear that there was no evidence of any such application having been filed by the appellant. Therefore, the respondent’s rights under the Trade Marks Act remained intact.
The discussion was firmly anchored in these statutory provisions: Section 28 (Rights conferred by registration), Section 29 (Infringement of registered trademarks), Section 31 (Registration to be prima facie evidence of validity), and Section 47 (Removal from register on ground of non-use).
Reasoning and Analysis of the Judge
The Court reasoned that the statutory right to seek relief for infringement is not contingent on the proprietor’s actual commercial use of the mark at the time of litigation. Registration itself confers the right to sue for infringement, irrespective of present capacity to manufacture or sell.
The judges observed that the Trade Marks Act provides only two circumstances where a defendant may avoid the consequences of infringement: when the mark has been removed from the register on grounds of non-use under Section 47(1), or where statutory defences under Sections 30, 33, 34 or 35 apply. None of these circumstances were pleaded or proved by the appellant.
The Court clarified that the suspension of the respondent’s drug licence was under the Drugs and Cosmetics Act and could not diminish the respondent’s statutory rights under the Trade Marks Act. Moreover, mere non-use does not automatically extinguish the right; it must be followed by a formal cancellation process, which had not been initiated.
The Court also addressed the argument that the respondent had started using a new mark ‘MARKS OUT’, stating that this fact did not affect the respondent’s right to restrain infringement of the existing registered mark ‘MARKS GO’.
Final Decision
The High Court dismissed the appeal, upheld the Commercial Court’s order dated 7 March 2025 making the interim injunction absolute, and reaffirmed that the respondent was entitled to an injunction against the appellant’s infringing use of the mark ‘MARKS GO’. The Court held that the statutory rights of a registered proprietor under Section 28(1) could not be defeated solely because the mark was not in present commercial use, absent an order for removal under Section 47(1).
Law Settled in This Case
This case reiterates that the statutory right to seek relief for infringement under Section 28(1) of the Trade Marks Act, 1999 arises purely from the subsistence of registration and is not contingent on active commercial exploitation of the mark.
Suspension of a manufacturing licence under the Drugs and Cosmetics Act or adoption of a new mark does not divest the proprietor of the registered mark from the right to seek an injunction. To challenge such rights, an aggrieved party must move for cancellation of the mark on grounds of non-use under Section 47(1); mere allegations of non-use are insufficient.
Case Details
- Case Title: Kamal Raheja Vs. Hahnemann Pure Drug Co.
- Date of Order: 08.07.2025
- Case Number: FAO (COMM) 105/2025
- Neutral Citation: 2025:DHC:5613-DB
- Name of Court: High Court of Delhi
- Name of Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539
