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  • Writer's pictureKunal Khanna


It has been a usual trend in the IP cases involving infringement or passing off of Trade Marks that the Defendants often take the plea of honest and bonafide adoption of their Trade Mark without having any knowledge of the Plaintiffs Trade Mark. Such kind of pleas are sometimes sustainable when the Trade Marks in dispute are dictionary meaning words or noun i.e. are not coined words, however, in case of disputes involving coined Trade Marks such plea of honest adoption without having knowledge of plaintiffs registered Trade Mark is mostly dodgy.

For readers belonging to non IP background we would like to explain the difference between coined Trade Marks and Trade Marks which are dictionary meaning words or nouns. A coined word is a made up word that has no reference or context in any dictionary. Examples of few coined Trade Marks can be Google, Kodak, Xerox etc. On the other hand when any dictionary meaning word or noun is used as source of identification for any product or service, then such brand names are considered as non-coined Trade Marks. Some example of such Trade Marks can be Apple, Auto Car, Vision World, Camel, Caterpillar etc.

The reason behind not believing plea of honest and bonafide adoption of a Trade Mark by the Defendant contesting a case involving coined Trade Marks is obvious since the Defendant could not have adopted an exactly identical / deceptively similar Trade Mark with that of a pre existing coined Trade Mark other than the reason of copying the same and also since the distinctiveness of a coined Trade Mark is the highest and such expressions could not be found from anywhere else but apart from the owner of the coined Trade Mark.

Regardless of the above obvious position many at times in IP cases involving well known brands and coined Trade Marks, the Defendants had become habitual of taking false pleas for the purposes of justifying the adoption of their nearly identical / deceptively similar Trade Marks as that of Plaintiffs which resulted into stall of speedy disposal of such cases by the Courts as the Courts had to spend time examining the veracity of such claims which were truly in the nature of afterthoughts.

Recently, the Hon’ble Delhi High Court while passing it’s judgment in the case of Nishi Gupta Vs. M/s. Cattle Remedies [W.P. (C) 13710/2018 & CM Appl. 53530/2018] strictly emphasised upon the importance of maintaining the sanctity of the court and preventing litigating parties from making false statements before the court.

The brief facts of the case were that the respondent had preferred cancellation of the registration of the Trade Mark Utroton of the petitioner on the basis of it’s prior used and registered Trade Mark Uterotone before the Hon’ble Intellectual Property Appellate Board (“IPAB”). In the present dispute the Trade Mark of the respondent was alleged to have been coined by the respondent. That the Hon’ble IPAB passed the orders for cancellation of registration of the petitioner’s Trade Mark and aggrieved by the said order, the petitioner moved before the Hon’ble Delhi High Court for assailing the said order.

The outcome was that the Hon’ble Delhi High Court affirmed IPAB’s decision holding the Trade Marks Uterotone and Utroton to be similar to each other and thereby upholding the cancellation of registration of the petitioner’s Trade Mark Utroton.

The Hon’ble Delhi High Court relied upon the principles of constructive notice of Trade Mark registration which means that the registered Trade Mark is a constructive notice of Trade Mark to all concerned and since registration is open to public inspection and is subject to public search, it becomes the bounden duty of the party relying upon no knowledge of the mark, to ascertain that there exists a prior registered trade mark on register.

By applying the test of constructive notice of Trade Mark registration, the Hon’ble Delhi High Court held the statements of the petitioner that she had no knowledge about the respondents registered Trade Mark to be prima facie false claim before the Court.

That in the said matter the Hon’ble Delhi High Court strictly emphasized and criticized the fact of false claims being raised by the petitioners before the Court and even laid down the following essential ingredients of Section 209 of IPC, 1860 which deal with punishment for making false claim before the Court:

(i) The accused made a claim;

(ii) Such claim was made in a Court of Justice;

(iii) The claim was false, either wholly or in part;

(iv) The accused knew that the claim was false; and

(v) The claim was made fraudulently, dishonestly, or with

intent to injure or to annoy any person.

The Hon’ble Delhi High Court further issued show cause notice to the petitioner to show cause as to why a complaint be not made against her under Section 340 CrPc, 1973 for raising false claims under Section 209 of IPC, 1860.


The importance of the aforesaid decision is that the doctrine of constructive notice of a registered Trade Mark has been firmly upheld by the Court. This means that if any litigating party raises a claim of honest and bonafide adoption of a Trade Mark similar to a pre existing registered Trade Mark and if it is further found out that there were no special reasons / justifiable cause behind the said adoption and material in support of said plea was absent, then the Court may dismiss such plea of the party by applying the doctrine of constructive notice of a registered Trade Mark. Moreover, the consequential effect of this would not merely end at the point of dismissal of the case but it could also lead into launching of criminal prosecution proceedings against the party for making false claim before the Court.

Accordingly, next time when any party makes the plea of honest adoption of Trade Mark before the Court, in a case involving imitation, one has to be very careful about the consequences attached to the same and this case highlights such consequences which one should keep in mind prior to taking such defences.

By Sushant Singh and Kunal Khanna Advocates

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