Can An Infringement Action Lie Against A Registered Trade Mark?

Introduction

Suppose you start a new company, say 'Xyz Pvt Ltd' with "Xyz" being the brand identity for your business. The company gains popularity and people start recognising your company just by, say, a logo of 'Xyz' or the word itself 'Xyz', and accordingly, you get a trade mark registered in your name for the specific goods that you are dealing with. Thereafter, you find an infringer, dealing in similar or identical goods using an identical mark 'Xyz' and decide to sue the said infringer as per Section 29 read with Section 132 of the Trade Marks Act, 1999. However, the Defendant comes up with a defence that it also has a similar/identical registered trade mark for the similar/identical goods. Now, before 2025, you could have said, so what? that's okay, I am covered with Raj Kumar Prasad v Abbott healthcare¹/ Corza International²/ Clinique v Gufic³ etc. and I have prior rights, which topple a subsequent user as per Section 34 of the Trade Marks Act, 1999 and SC's Syed Mohideen v Sulochana Bai⁴, I, therefore, can totally sue the infringer. Nevertheless, the tables have recently been turned in Abros Sports International Pvt. Ltd. v. Ashish Bansal & Ors MANU/DE/3242/2025, wherein the legality qua suing a proprietor of a registered trade mark has been questioned and Hon'ble Delhi High Court's division bench, in the aforesaid judgement penned down by J. C. Hari Shankar. The Hon'ble DB under Para 16.2 of the judgement has noted the Sequitur that "There can be no infringement by a registered trademark. An unregistered trademark alone can infringe. Use of a registered trademark, for the goods or services in respect of which it is registered, can never be infringing in nature". Since, the said view is contrary to what was laid down by coordinate benches in Corza International & Raj Kumar Prasad , the matter is now referred to a larger bench.

Facts leading to the dispute in Abros Case.

It is commonly understood that only an unregistered mark can be sued for infringement of a registered trademark according to section 29 of the act. However, in the Abros v Nebros case, both the marks are registered in class 25 under the Act. Here the plaintiff (Abros sports) sues the respondent, bearing the mark Nebros, for infringement of their registered trademark. They claim Nebros to be deceptively similar to Abros, however, both the marks are validly registered by the registrar of trademarks. Now the legal issue is whether a registered trademark can infringe another registered trademark. On May 2, 2024, the Single Bench of the Delhi High Court, presided over by Justice Anish Dayal, rejected an injunction against Ashish Bansal & others (defendant) and others. Instead than focusing on infringement, the SB examined whether the defendants had attempted to pass off their goods as the plaintiff's. The SB determined that there were no phonetic, visual, or structural similarities between the marks that may create consumer confusion, and the documentary evidence demonstrated that the defendants were more credible in demonstrating prior usage, hence the request for an injunction was refused.

What are the legal questions involved?

Whether a suit for trademark infringement can be instituted against the registered proprietor of a trademark?
If such a suit is maintainable, does the Court have the authority to grant an interlocutory injunction restraining the use of the allegedly infringing registered trademark?
Can an injunction be granted without adhering to specific procedural requirements – such as invoking a defence under section 30(2)(e), pleading invalidity of the defendant's registration, the Court's prima facie determination of invalidity, initiation of rectification proceedings, and the consequent stay of trial under section 124?
Alternatively, is it permissible for the court to issue an injunction solely on the basis of a prima facie claim of invalidity, without following the procedural steps outlined above?
Does the decision in Raj Kumar Prasad v. Abbot Healthcare interpret the legal position under the Trade Marks Act, 1999?

There are not simple questions, they set the floor for the interpretation of section 28, 29, 30 and 124. The interpretation of these sections plays a key role in deciding the matter.

Is it the one-of-a-kind encounters in the court of law?

It not the first time that the court is facing an issue like this. Precedents like Raj Kumar Prasad v Abbott Healthcare⁵ (2014) and Corza International v. Future Bath Products⁶ (2023) looked at infringement in a wider perspective. In the case of Raj. Kumar Prasad v. Abbott Healthcare, the plaintiff as a registered proprietor of the mark ANAFORTAN, asserted that it used the mark since 1988 via its predecessor in interest. The issue of controversy came up after the defendant started to sell a similar product with the mark name of AMAFORTEN in 2012 to which the defendant has registered the trademark in 2011. To counter the defendant, the plaintiff initiated a suit with request of permanent injunction against the defendant to restrain the defendant against infringing its trademark as well as passing off. The defendant, however, petitioned against maintainability of the suit under section 28 (3) of the Trade Marks Act, 1999 saying that since it was a registered proprietor of a mark, under name or title AMAFORTEN, could not be sued by another registered proprietor.

In the case of Corza International & Ors. vs. Future Bath Products Pvt Ltd & Anr., the Delhi Court has ruled on the infringement of a trademark and in that particular case the infringement between the trademarks CORZA and CORSA. The court has seen whether the trademarks were confusingly similar either in sound aka phonetically or in appearance aka visually and whether the defendant had infringed the plaintiff right to the use and registration of trademark Corsa with the use of the trademark Corza. The court also looked into the jurisdiction to award ad-interim injunction in cases like that. The courts in these cases held that under such circumstances, a registered proprietor can be injuncted, applying his or her mark which creates an impression of a preliminary mark in the mind of the consumers, although the mark belonging to defendant remains on the Register. They premised their case on Section 124(5) that allows interlocutory relief to a user of a trademark in cases of infringement pending rectification proceedings.⁷⁸

In Abros v. Nebros, however, the court took a different route from Raj Kumar Prasad judgement. More literal was the approach of the Division Bench in the present case which culls out that a registered proprietor could not be described as causing infringement of the statutory rights of another unless his own mark was first proved to be invalid. The DB acknowledged in its analysis of Raj Kumar that although Section 28(3) forbids a registered proprietor from suing another, it also confers exclusive rights over a registered mark. Section 124(2) permits an infringement litigation, it recognized, provided the plaintiff files a plea of invalidity or wants a stay for rectification. However, Section 124(5) allows for the issuance of provisional remedy, including injunctions.

However, the DB also noted that Raj Kumar did not answer whether infringement could occur at all where the defendant's mark was registered, even while it allowed a remedy against a registered proprietor in circumstances where invalidity was alleged. It focused on Sections 28(1) and 28(3), ignoring Section 30(2)(e), which exempts a registered proprietor's usage from being infringing, and Section 29, which defines infringement exclusively with regard to unregistered users. Raj Kumar's interpretation that interlocutory relief under Section 124(5) could precede the stay under Section 124(2) was rejected by the DB with regard to Section 124. Rather, the DB ruled that the whole process described in Sections 124(1)(b), 124(1)(ii), and 124(2) had to be followed before such relief may be provided.

The court noted that Sections 28(1) (which grants exclusive rights), 30(2)(e) (which allows use of own registration mark) and 124 (which tackles a scenario of rectification) together established a scheme where it was not possible to have one registered trade mark infringe another without first challenging the registration as such.⁹

A point of contention that is a sore subject is interim injunctions. The Division Bench indicated that such relief, given a challenge neither prior to nor contemporaneously to the validity of the mark of the defendant, may constitute an overreach on the part of the court and a breach of the statutory scheme. This is as opposed to previous practice, where courts had been following interim relief after a prima facie determination of interception of the goods of another by way of creating deceptive similarity without necessarily awaiting the decision of the rectification proceedings to take place. The referral attempts to ascertain the same by establishing whether there is some form of sustainability following the current legislative structure.

India – UK view

The legal predicament as postulated in Abros v. Nebros is not exclusive to India. The protection of a registered trademark is usually absolute in jurisdictions such as the United Kingdom, unless revoked by cancellation or invalidation. Infringement actions between co-existing registered trademarks are not entertained by the UK Trade Marks Act, and legal claims have to be channelled through the administrative process. The primary legal concerns are not passing off but infringement, which should also be kept in mind. If a later registered trademark is not considered invalid by other provisions, its use does not violate an earlier one, as stated in Section 11 of the UK Trade Marks Act, 1994 (subsection 1). In terms of comparison, this reduces the influence of a registered trademark in infringement cases. The older mark cannot be used against the later one, but if this protection is in place, it cannot be deemed to be infringing against it (subsection 3). This concept was further demonstrated in Reuter v. Mule¹⁰ (1953), when the court clarified that trademark protection does not supplant the common law remedy of passing off, especially in cases involving goods appearance or packaging.

This Indian framework that provides more judicial discretion is approaching a crossroads now. By the larger bench confirming the opinion that infringement cannot exist between registered proprietors, the law of India can move closer to following the international standards. Nevertheless, it would equally restrict the rights of brand owners to directly take legal action against the confusingly similar marks without resorting to the process of rectification.¹¹

How the case impacts

This Abros v. Nebros can be described as a landmark case in the protection of trademarks in India. It refers to some of the important points:

Section 28 gives the proprietors exclusive rights but Section 28(3) does not exclude the infringement action under Section 29 in relation between the registered proprietors although the limitation is subject to the showing of confusion or deception.
The Court asserted that consumer confusion is the key issue. According to Section 29(2) and 29(4), a registered mark can itself be an infringement when it causes a circumstance of likelihood of confusion, particularly where, the plaintiff claims prior use.
Section 124 does not apply automatically, and that it has to be exercised under the relieving provisions of section 124, when the invalidity of the plaintiff registration is at issue. In the event that the plaintiff brings his suit without challenging the registration of the defendant, but on allegations of confusion, then the suit should not be stayed.

The end decision will be on whether the courts can admit allegations of infringement between two registered proprietors or whether such situations have to be dealt with by the rectification, cancellation, or passing off proceedings only.

Conclusion

The Delhi High Court made the decision to refer Abros Sports International Pvt. Ltd. v. Ashish Bansal & Ors. The fact that the case was transferred to a bigger bench shows that a doctrinal gap in the Indian trademarks law needed to be solved. The Division Bench framed the following questions for reference to a Larger Bench, to be constituted by the Chief Justice:

"(i) Whether a suit for infringement can lie against the proprietor of a registered trademark, with respect to the use of such trademark?

(ii) Whether, assuming such a suit can lie, the Court can pass any interlocutory order, injuncting the use, by the defendant, of the allegedly infringing registered trademark?

(iii) Assuming the Court can do so, whether such an order of injunction can be passed without, in the first instance, the proceedings going through the steps envisaged in para 19.1(viii) supra, i.e., without

the defendant raising a Section 30(2)(e) defence,
the plaintiff pleading invalidity of the defendant's trade mark in response thereto,
the Court being satisfied that the plea of invalidity raised by the plaintiff is tenable,
an issue being framed by the Court in that regard,
the suit being adjourned by a period of three months in order to enable the defendant to initiate rectification proceedings, [sic, should be plaintiff]
rectification proceedings being initiated by the defendant within the said period and [sic, should be plaintiff]
trial of the suit being stayed, pending the outcome of the rectification proceedings? OR whether the mere incorporation, in the plaint, of a plea that the registration of the defendant's trade mark is invalid, is sufficient to empower the Court to injunct the defendant from using its registered trade mark on the ground of prima facie infringement, without proceeding through steps (a) to (g) above?

(iv) Whether, therefore, the judgement in Raj Kumar Prasad v Abbott Healthcare (P) Ltd can be said to be laying down the correct legal position, particularly in para 18 thereof?"

There is a need to decide on the above matter as the question whether registration is to be regarded as an absolute defence, or are the courts to be allowed, in the interest of eliminating marketplace confusion, to pierce that veil? The response to this question will define the commercial and brand context in India as its market becomes more advanced. Now the case awaits the decision of the bigger bench-not only in terms of doctrinal relevance but even in terms of effective implementation in real-life contexts of the rights of the trademark owners in the competitive and congested market, needless to mention the administrative delays on the part of Trade Mark registry will have significant impacts on businesses.

Footnotes

1. 2014 SCC OnLine Del 7708.

2. 2023 SCC OnLine Del 153.

3. 2009 (41) PTC 41 (Del)

4. (2016) 2 SCC 683

5. 2014 SCC OnLine Del 7708.

6. 2023 SCC OnLine Del 153.

7. A continued saga of confusion: Section 124 of Trade Marks Act, https://www.barandbench.com/columns/a-continued-saga-of-confusion-section-124-of-trademarks-act-1999 (last visited Jul 12, 2025).

8. Scheme of Sections 124 and 125 of the Trademarks Act, 1999 explained | SCC Times, https://www.scconline.com/blog/post/2016/01/28/scheme-of-sections-124-and-125-of-the-trademarks-act-1999-explained/ (last visited Jul 12, 2025).

9. No Bar On Filing Infringement Suit Against Registered Trademarks And For Passing Off - Trademark - India, https://www.mondaq.com/india/trademark/1272764/no-bar-on-filing-infringement-suit-against-registered-trademarks-and-for-passing-off (last visited Jul 12, 2025).

10. [1953] EWCA Civ J1016-4.

11. Navigating Concurrent Rights: The Strategic Value Of Trademark Coexistence Agreements Under Indian Law - Trademark - India, https://www.mondaq.com/india/trademark/1632806/navigating-concurrent-rights-the-strategic-value-of-trademark-coexistence-agreements-under-indian-law (last visited Jul 12, 2025).

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.