Trade Marks Act | Territorial Disclaimer in Prior Registration Does Not Fetter Subsequent Pan-India Rights: Delhi High Court

“The use of the ® superscript by the appellant, which is to be employed only where the mark is a registered trademark, is completely illegal and lacking in bona fides”— In a seminal ruling High Court of Delhi, comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, upheld an interim injunction against a "rank infringer" for adopting a deceptively similar mark and rejected the plea to read territorial restrictions into subsequent associated registrations.

The Battle of Screws: HP vs. HP+

The dispute arose within the commercial jurisdiction regarding the trademark "HP" used for self-drilling screws. Landmark Crafts Pvt. Ltd. (the Respondents/Plaintiffs) claimed rights over the "HP" mark, asserting usage since 1995 through predecessors and holding two registrations: one from 2007 (restricted to Uttar Pradesh) and a subsequent one from 2014 (Pan-India). They approached the Commercial Court seeking an injunction against Ganraj Enterprises (the Appellants/Defendants), who were marketing similar goods under the marks "HP+" and "HP®+".

The Commercial Court granted an interim injunction in favor of Landmark Crafts, restraining Ganraj Enterprises from using the impugned marks. Aggrieved by this order, Ganraj Enterprises preferred an appeal under Section 13 of the Commercial Courts Act, 2015. The primary contention raised by the Appellants was technical in nature: they argued that since the Respondent’s earlier 2007 registration was associated with the 2014 registration, the territorial restriction (UP only) applicable to the former should automatically apply to the latter, thereby negating infringement claims outside Uttar Pradesh.

“At the Order XXXIX stage, the remit of the Court is only to examine prima facie whether a case of infringement is made out. If it is, ordinarily, injunction has to follow.”

Territorial Restrictions and Associated Marks

The Division Bench undertook a granular analysis of the Trade Marks Act, 1999, specifically addressing the Appellant's argument on associated trademarks under Section 16. The Court categorically rejected the submission that a disclaimer or limitation in an earlier registration travels to a subsequent associated registration. The Bench clarified that while the marks are associated, they remain distinct registrations. There is no statutory provision that mandates a limitation imposed on one registration to be mechanically applied to another, even if they are associated.

Consequently, the Court held that the 2014 registration, which contained no territorial disclaimer, was enforceable on a Pan-India basis. The Appellants’ attempt to invalidate the 2014 registration by claiming concealment of the assignment of the earlier mark was also dismissed. The Court observed that at the interim stage, under Section 31(1) of the Trade Marks Act, the registration itself constitutes prima facie evidence of validity, and the burden to dislodge this presumption is high.

“A disclaimer can affect the right of exclusivity only in respect of the mark to which it applies.”

Dishonest Adoption and the Illegal Use of ®

The Court was particularly scathing regarding the conduct of the Appellants, labeling them as "rank infringers." The Bench noted that the Appellants had not only adopted a deceptively similar mark ("HP+") but had also brazenly used the ® symbol ("HP®+") despite having no registration. The Court held that this was a calculated attempt to mislead consumers into believing the goods were associated with the registered proprietor.

Furthermore, the visual comparison of the packaging revealed that the Appellants had replicated the Respondent's color scheme, the specific "Shikara" motif, and even the "LE" acronym. Such mimicry, the Court reasoned, evidenced a complete lack of bona fides. The addition of a mere "+" suffix to an identical dominant mark ("HP") was insufficient to distinguish the goods or obviate the charge of infringement under Section 29 of the Act.

“The consumer public would, because of the use of the said ®, with HP, be misled into believing the goods to be LC’s.”

Finally, the Bench reiterated the settled legal position regarding the scope of interference in appellate proceedings arising from discretionary interim orders. Citing the Supreme Court’s dictum in Wander Ltd. v. Antox India P. Ltd. and Midas Hygiene, the Court held that unless the exercise of discretion by the Commercial Court was perverse, arbitrary, or capricious, the Appellate Court should not substitute its own view. Finding the lower court's order well-reasoned and grounded in the prima facie evidence of infringement, the High Court dismissed the appeal.

Date of Decision: 23/12/2025