When two registrations collide
The Delhi High Court’s May 13, 2025 decision in Abros Sports International Pvt. Ltd. v. Ashish Bansal & Ors. [2025 SCC OnLine Del 3410] has forced us to confront one of the most recurring questions in the Indian trade mark law: can the proprietor of one registered mark be sued for infringement by the proprietor of another registered mark? This case, concerning the competing marks ABROS and NEBROS, has not been definitively decided. Instead, the Division Bench has referred the core issues to a larger bench, recognizing the conflict between textual fidelity to the Trade Marks Act, 1999 and the equitable need to protect brand owners from mala fide registrations.
The statutory framework under the Trade Marks Act explains why this dispute assumed such significance. Section 28 gives the registered proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered. The provision also makes it clear that where two similar marks are registered, each proprietor has concurrent rights and none can assert exclusivity against the other merely by virtue of registration. Section 29 then defines infringement as the use of an identical or deceptively similar mark in the course of trade that causes likelihood of confusion, dilution or unfair advantage but does so in a language that is unmistakably cast against the acts of an unregistered user. It presupposes a proprietor asserting his rights against someone outside the register not one registrant suing another. Section 30 (2)(e) then brings it all home. This section, in particular, provides that no infringement action lies against the use of a registered trademark. In other words, registration operates as a statutory shield protecting its proprietor from being sued for infringement of another registered mark.
Overseeing this statutory framework is Section 124 which sets out the procedure for when validity of registration is challenged in an infringement suit. If the Defendant pleads the defence of his registration and the Plaintiff challenges the said registration, the civil court must consider whether the plea is prima facie tenable. If so, issues are framed on such invalidity, the suit is stayed and rectification proceedings must be pursued. Importantly here, Section 124(5) preserves the power of courts to grant interim relief even while the suit is stayed.
Indian courts have previously grappled with the overlap between registrations in different classes. A useful point of comparison is the decision in Rana Steels v. Ran India Steels. The Plaintiff, a prior adopter of the mark RANA for steel rolled products complained that the Defendant’s use of the mark RANATOR and its trading style “Ran India Steels” was deceptively similar and encroached upon its goodwill. The Defendant sought refuge in the fact that it held a registration for the mark RANATOR, however, that registration was in a different class. The Delhi High Court was clear that such a defence could not succeed i.e. registration in Class X does not entitle a proprietor to extend its mark into Class Y where another party has prior rights. To hold otherwise would be to subvert the very logic of the classification system under the Act. The court therefore confirmed that statutory exclusivity is confined to the class for which the mark is registered and that a Defendant cannot rely on a registration in one class to shield its activities in another.
Abros v. Nebros before the Delhi High Court
It is at this point that Abros Sports v. Ashish Bansal becomes particularly significant. Unlike Rana Steels, where the dispute arose from registrations across different classes, in Abros both the Plaintiff and the Defendant were registered in the same class viz. Class 25, covering footwear.
Abros Sports alleged that Ashish Bansal and his associates were selling footwear under the mark NEBROS which was phonetically and visually similar to its mark ABROS and likely to mislead consumers. The Plaintiff sought an interim injunction to restrain the Defendants from using their mark. The Defendants responded by pointing to their independent registration for NEBROS, asserting prior use with documentary support and contending that under Sections 28 and 30(2)(e) no infringement claim could lie against a registered proprietor.
The Single Judge declined to grant interim relief to the Plaintiff observing that the Defendants had placed credible evidence of prior use on record and that Abros had not demonstrated a sufficiently strong likelihood of confusion to justify an injunction at the interlocutory stage. The fact that the Defendants themselves held a registration weighed heavily in the balance against injunctive relief.
On appeal, the Division Bench examined the statutory framework more closely. They reasoned that infringement as defined in Section 29 presupposes unregistered use. To allow one registered proprietor to sue another for infringement would be to permit courts to undo what the Registry has already granted. The proper course, the bench held, is to challenge the validity of the Defendant’s registration through rectification proceedings under Section 124. Only if that registration is struck down could the Defendant’s use be termed infringement. On this reading, Sections 28 and 30(2)(e) together confer immunity upon registered proprietors against infringement claims.
The question now before the larger bench
Yet the bench recognized that the law was not free from doubt. Earlier judgments, most prominently Raj Kumar Prasad v. Abbott Healthcare, had permitted injunctions against registered proprietors when there was clear evidence of prior user rights and prima facie bad faith in the Defendant’s registration. These decisions took an equitable view, prioritizing the need to protect goodwill and prevent opportunistic registrations from being used as shields. Confronted with this conflict, the Division Bench referred the matter to a larger bench for authoritative determination.
The competing approaches are easy to state but difficult to reconcile. On one hand lies the textualist position, which treats registration as a complete shield until rectification. On the other hand lies the equitable position, which recognizes that without the ability to grant injunctions, courts may leave honest prior users unprotected while rectification proceedings drag on for years.
A nuanced critique suggests that neither position is fully satisfactory. Treating registration as an impregnable fortress risks injustice in cases of obvious bad faith. Allowing unfettered injunctions undermines the statutory structure by letting civil courts effectively bypass the register. A middle path may be to allow interim relief only where the Plaintiff shows strong prima facie evidence of invalidity, such as proof of mala fide adoption or clear prior use coupled with irreparable harm and a favourable balance of convenience.
The implications of the Full Bench’s eventual decision are far-reaching. If the court affirms that registrations confer absolute immunity until cancelled, Plaintiffs will have to rely primarily on passing off claims to secure protection. If, however, the court preserves a narrow power to enjoin even registered proprietors, it will maintain flexibility at the cost of weakening the certainty of the register. Either way, the outcome will reshape enforcement strategies and redefine the practical weight that registration carries in Indian trademark law.
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.
