Delhi High Court: In a suit filed by the plaintiff to determine whether the defendant’s use of trade mark ‘NEHA’, amounts to trade mark infringement and/or passing off, Sanjeev Narula, J*., stated that ‘NEHA’ is a common Indian forename, not a coined or inherently distinctive word. The tort of passing off was not a mechanism to prevent all forms of competitive entry, especially in the case of marks that are non-distinctive or commonly used.
The Court stated that while the plaintiffs’ goodwill in the trade mark ‘NEHA’ was established, it remained confined to the domain of mehndi, and herbal hair-care preparations. There was insufficient evidence to suggest that such goodwill extended to creams or general cosmetics prior to the institution of the suit. Thus, the Court dismissed the present suit.
Background
Plaintiff 1 was the Director of Neha Herbals Pvt. Ltd., (‘Plaintiff 2’) a company incorporated in 2007, under the provisions of Companies Act, 2013. Plaintiff 2 operated the business in manufacturing and trading of Henna (Mehndi) Powder, Mehndi Cones (Paste) and Hair dyes/Hair Colour Products.
It was submitted that Plaintiff 1 adopted the trade mark ‘NEHA’ in 1992, drawing inspiration from the first name of his sister. Since then, the mark was used continuously in relation to Henna (Mehndi) Powder and Mehndi Cones (paste). Initially, Plaintiff 1 used the trade mark in connection with the business of Henna (Mehndi) powder and Ubtan. In exercise of its natural right to expand its business, Plaintiff 1 filed several applications for the trade mark “NEHA” across a range of product categories and classes.
The cause of action arose in May 2019 when Plaintiff 1 discovered that cold cream bearing the mark ‘NEHA’ was being sold by a retail outlet in Delhi. Thus, plaintiff filed the present suit, alleging unauthorized and infringed use of the mark ‘NEHA’ by the defendant.
The defendant submitted that through its proprietor, it adopted the trade mark ‘NEHA’ for creams as early as 1990. Its use of the mark was both honest and concurrent, and prior in time to the plaintiffs’ adoption.
Thus, both parties use the identical mark ‘NEHA’, however, the goods in respect of which the parties claim use of the mark differ in function and formulation. The plaintiffs have utilized the mark in relation to Mehndi and allied herbal preparations, while the defendant uses it in respect of face creams. Further, in the present suit, a petition was also filed by the proprietor of the defendant (‘Petitioner’) seeking removal of the plaintiffs’ registered trade marks.
Analysis, Law, and Decision
1. Prior use of the mark
Regarding the issue of prior use over an identical trade mark, the Court observed that the plaintiffs’ Income Tax Returns dating back to 1994 reflected business activity under the name “M/s Neha Enterprises.” Further, the plaintiffs had also produced dated advertisements, promotional materials, and turnover records that established commercial deployment of the mark “NEHA” from at least the mid-1990s onwards. Thus, the Court stated that taken together, these materials form a coherent and credible evidentiary foundation demonstrating the plaintiffs’ adoption and bona fide use of the mark “NEHA” in connection with Mehndi, herbal hair dyes, and allied personal care products from 1994 onwards.
On the other hand, the Court stated that the defendant had taken inconsistent positions with respect to the claimed date of first use. The defendant filed an affidavit before the Trade Marks Registry declaring first use from 1998. However, this directly contradicted the defendant’s stand in these proceedings that the mark was adopted in 1990. The Court stated that a party cannot approbate and reprobate with respect to the date of first use when making conflicting claims before the Registry and the Court. Therefore, the Court stated that such contradictory statements significantly eroded the defendant’s claim of prior use.
2. Whether use of the impugned trade mark by the defendant amounts to infringement of the plaintiffs’ registered trade mark.
The Court stated that despite fact that both henna and creams fall within the broad umbrella of cosmetics under Class 3, but they were not functionally interchangeable or competitive. They serve distinct purposes, have different ingredients, and were marketed with separate consumer expectations. They differ materially in their nature, purpose and formulation.
The Court stated that the plaintiffs’ products were largely plant based and were traditionally used as a natural dye for the hair or body art application and were culturally associated with ceremonial or festive occasions, particularly in the Indian subcontinent. In contrast, the defendant’s goods were emulsified chemical-based creams marketed for daily skin care use, such as cold cream, turmeric cream, and fairness cream. They were typically used for therapeutic or aesthetic reasons. Therefore, the mere fact that the same fall under the same class could not be said to be allied or cognate to each other.
The Court stated that ‘NEHA’ is a common Indian forename, not a coined or inherently distinctive word. It is well settled that marks comprising everyday/common names or generic expressions do not, by themselves, command the highest level of legal protection. Thus, considering the nature of the mark, which was neither composite nor invented and lacks inherent distinctiveness, the threshold for establishing secondary meaning was notably high.
The Court stated that mere use of a mark, even if continued over a period, is not by itself sufficient to establish enforceable rights under trade mark law. What must be shown was that the mark, through its use in trade, had acquired a distinct association in the minds of the relevant consumer base with the claimant’s goods and none other. Thus, to claim exclusivity over trade mark ‘NEHA’, the plaintiffs were required to demonstrate that this common word had acquired a secondary meaning. However, the Court stated that the plaintiff had failed to establish this aspect.
The Court stated that the goodwill generated by the mark “NEHA” over the years had been confined to Mehndi and allied herbal preparations. There was no evidence on record to suggest that the plaintiffs had expanded into the cream segment or extended their product line beyond the Mehndi category.
Thus, the Court stated that the plaintiff’s reputation for Mehndi and allied herbal preparations could not travel to distinct goods such as face creams, despite being in the same class. Thus, in the absence of cogent material on record by the plaintiffs to establish that their registered mark ‘NEHA’ had acquired reputation in cold creams, where the defendant had been the prior adopter, the claim for infringement under Section 29(4) of the Trade Marks Act, 1999 (‘the Act’) would be untenable.
3. Whether the use of the impugned trade mark by the defendant leads to passing off the products as those of the plaintiffs?
The Court stated that the tort of passing off was not a mechanism to prevent all forms of competitive entry, especially in the case of marks that are non-distinctive or commonly used. While plaintiffs’ goodwill in the trade mark ‘NEHA’ was established, it remained confined to the domain of Mehndi, and Herbal hair-care preparations. There was insufficient evidence to suggest that such goodwill extended to creams or general cosmetics prior to the institution of the suit.
Consequently, the Court stated that the defendant’s use of the mark for cold cream did not amount to misrepresentation, nor can the plaintiffs’ claim umbrella protection over the broader cosmetic category in the absence of proof of secondary meaning across product lines.
4. Removal of plaintiff’s registered trade mark
Regarding the petition filed seeking removal of plaintiffs’ registered trademarks, the Court stated that plaintiffs have established prior and continuous use of the mark in relation to their goods. No suppression or material misstatement on the part of the plaintiffs was found. The Court also concluded that the defendant had failed to discharge the burden of proving prior use in terms of the products for which the plaintiff has registration or any statutory ground under Sections 47 or 57 of the Act to warrant cancellation.
Thus, the Court dismissed the present suit and petition.
[Inder Raj Sahni Proprietor v. Neha Herbals (P) Ltd., C.O. (COMM.IPD-TM) 355 of 2021, decided on 19-5-2025]
*Judgment authored by Justice Sanjeev Narula
Advocates who appeared in this case :
For the Petitioner: M.K. Miglani, Hardik Gogia and Akash Singh, Advocates.
For the Respondents: Sachin Gupta, Adarsh Agarwal, Rohit Pradhan and Prashansa Singh, Advocates.
For the Plaintiffs: Sachin Gupta, Adarsh Agarwal, Rohit Pradhan and Prashansa Singh, Advocates.
Buy Trade Marks Act, 1999 HERE
