India: Registered Proprietor Of A Trademark Injuncted From Using Its Trademark By The Delhi High Court

Last Updated: 8 November 2017
Article by S.S. Rana & Co. Advocates

In a recent decision by the Delhi High Court, Hon'ble Justice Manmohan granted an injunction against the defendant who was also the registered proprietor of the impugned trademark for persistent conduct of selling products bearing the mark AMIR'S, and more importantly, for wrongly obtaining a registration of their mark AMIR in Class 3.

Brief Facts:

M/S Ishar Dass Amir Chand (hereinafter referred to as the 'Plaintiff') claimed to be the prior adopter and registered proprietor of the trademark AMIR'S in Class 3 and is stated to be engaged in the business of cultivating Henna and in manufacturing and exporting the same as natural Henna powder under the said mark. The Plaintiff is stated to be continuously and uninterruptedly using the mark AMIR'S for its products since 1996.

Claims of the Plaintiff

The Plaintiff also claims to be the registered proprietor of the product label, and contended that the color combination, trade dress and get-up of the label/packaging of their product constituted an 'original artistic work' under Section 2 (c) of the Copyright Act, 1957. Their trade mark AMIR'S along with its label had acquired a heightened degree of distinctiveness owing to the exclusive, extensive and continuous use of the same since 1996. In support of this contention, the Plaintiff proved its original sale invoices showing sales and exports for the period 1996 to 2014.

The Plaintiff further claimed that, Mr. Jagdish Babu Sharma (hereinafter referred to as 'Defendant') who is the Director of Defendants No. 2 and 3 companies, are engaged in manufacturing, selling and exporting henna and henna based dyes under the mark AMIR'S with identical trade dress/get-up as that of the Plaintiff's product. Plaintiff exhibited the Defendant no. 2's certificate of incorporation which shows that it was incorporated on May 17, 2001. Further, the Defendants had wrongly obtained a registration of the impugned mark AMIR in Class 3 for which the Plaintiff had filed rectification and cancellation applications. In second week of August, 2015, it came to the knowledge of the Plaintiff that despite the orders passed by the Food and Drugs Administration cancelling the license of the Defendants, pursuant to complaints made by the Plaintiff, the Defendants continued to illegally manufacture, sell and export their products under the impugned trade mark as well as trade dress/get-up deceptively similar to that of the Plaintiff.

Aggrieved by the conduct of the Defendants, the Plaintiff had prayed for an ex parte ad interim injunction before the Delhi High Court and the Court had granted the said injunction in favor of the Plaintiff and against the Defendants on September 21, 2015 restraining the Defendants and it's agents from manufacturing, selling, offering for sale or exporting Henna/Henna based products under the mark, "AMIR's/AMIR" or any other mark that is identical/deceptively similar to the Plaintiff's trademark, "AMIR'S", which was registered prior in time.

The Court had further observed that as on date, the Defendants enjoy a registration in the mark, "AMIR" and "AMIR (Device of Lady)" and even as per the Plaintiff, they have remained in the market for some time, hence, it is deemed appropriate to grant the Defendants a period of two months to make compliances of the aforesaid order.

However, as the Defendants entered appearance only on two occasions and did not file their written statement within the stipulated time granted, their right to file written statement was closed vide order dated August 12, 2016. Thus, the Defendants were proceeded ex-parte by this Court vide order dated October 27, 2016 and the interim injunction was made absolute.

Decision of the Court

Having perused the papers and having heard the Learned Counsel for the Plaintiff, Hon'ble Mr. Justice Manmohan of the Delhi High Court was of the view that, since the averments in the plaint have not been rebutted by the Defendants as they did not bother to put forth their stand, in spite of ample opportunities given to them, they are deemed to be admitted.

Further, the Court was of the view that color combination, trade dress and get-up of the label/packaging of the Plaintiff's product constitutes an 'original artistic work' under Section 2 (c) of the Copyright Act and the Plaintiff has the exclusive right to use and produce the same under Section 14 of the Copyright Act. The use of the impugned AMIR'S Henna label by the Defendants which is a colorable imitation and substantial reproduction of the Plaintiff's AMIR'S Henna Label/logo in respect of its overall color combination, lay out and arrangement of features and get up constitutes infringement of copyright of Plaintiff's product under Section 51 of the Copyright Act and is liable to be injuncted under Section 55 of the Copyright Act.

Additionally, the Defendants' impugned marks AMIR'S and AMIR are identical to the Plaintiff's mark. Even though both the Plaintiff's and Defendants' marks are registered, yet from the evidence on record, it is apparent that the Plaintiff is the prior adopter of the trade mark AMIR'S along with its label and has been using the same extensively since the year 1996. From the Plaintiff's sales figures it is also apparent that the product of the Plaintiff under the trade mark AMIR'S along with its label and get up, in particular the color combination of green and white has acquired distinctiveness and is identified as originating from the Plaintiff. The use of the impugned trade mark/trade dress/label comprising of box design, label including the overall color combination of golden and white by the Defendants for domestic and export sales is likely to cause confusion and/or deception in the minds of the consumers on account of imperfect recollection and the overall similarity and idea conveyed by the trade dress and packaging of both the parties. In fact, the adoption of the impugned trade mark AMIR'S and its packaging by the Defendants would invariably cause confusion and deception on account of being visually, structurally, phonetically and deceptively identical to the Plaintiff's mark and its packaging. The use and export of the impugned trade mark AMIR'S and its packaging by the Defendants constitute acts of misrepresentation, misappropriation and passing off.

Keeping in mind the aforesaid facts and contentions, the mandate of the law and the persistent conduct of the Defendants in selling products bearing the mark AMIR'S/AMIR, the suit is decreed in favour of the Plaintiff and the Plaintiff shall be entitled to costs including monies spent on Court-Fees, Local Commissioner's Fees and other expenses, etc.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

S.S. Rana & Co. Advocates
In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.