Trademark Battles: When 'First Come, First Served' Rules the Market
Imagine spending years building a brand, only to find someone else using a similar name. That's the heart of the matter in a recent Delhi High Court case that has significant implications for trademark law. The court refused to stop Dehlvi Remedies Private Limited, an Ayurvedic drug maker, from using the mark "NOKUF" for its cough syrups. But why?
This decision stems from a dispute with Sana Herbals Private Limited, which sells its product as "NOKUFSYRUP." The court's ruling highlights the importance of prior use in trademark disputes. Dehlvi Remedies had been using "NOKUF" since 1994, long before Sana Herbals entered the scene. This early adoption played a crucial role in the court's decision.
The case, decided on January 5, 2026, saw a Division Bench of Justices C Hari Shankar and Om Prakash Shukla dismissing Sana Herbals' appeal against a Commercial Court order. The Commercial Court had previously denied an interim injunction, and the High Court upheld this decision.
Sana Herbals based its claim on a trademark registration from May 2015 and an assignment deed from September 1999. They also argued that Dehlvi Remedies had abandoned the mark due to non-use. However, Dehlvi Remedies countered with its continuous use of the mark and its own trademark registration from June 1996, challenging the validity of the assignment deed.
The Legal Breakdown
The court referenced the Supreme Court ruling in S. Syed Mohideen v. P. Sulochana Bai, which clarified that an infringement action couldn't be maintained against Dehlvi Remedies because "NOKUF" was a registered trademark in their favor. However, the court did note that a claim of passing off (misleading consumers) could still be examined.
Here's where it gets controversial...The court found that Sana Herbals hadn't challenged Dehlvi Remedies' use of the mark between 1994 and 1999. The court emphasized that the defendant's use of the mark, whether continuous or sporadic, is what matters in a passing off action.
Sana Herbals argued that they had built goodwill during a period when Dehlvi Remedies allegedly didn't use the mark. But the court rejected this, stating that to succeed in a passing off action, the plaintiff must prove they had established goodwill and reputation before the defendant adopted the mark.
The Assignment Deed Issue
The court also scrutinized the assignment deed relied upon by Sana Herbals. It noted that the deed didn't explicitly transfer goodwill, and since it was executed under the Trade and Merchandise Marks Act, 1958 (which didn't allow assignment without goodwill), it couldn't be relied upon at the interim stage.
Abandonment Claims
Regarding the claim of abandonment, the court clarified that non-use of a registered mark is a matter for separate rectification proceedings and not grounds for an interim injunction.
The Outcome
The Delhi High Court dismissed the appeal, upholding the Commercial Court's decision to deny interim relief. The case title is Sana Herbals Private Limited v. Mohsin Dehlvi & Anr., with a citation of 2026 LLBiz HC (DEL) 9 and case number FAO (COMM) 77/2025.
Key Takeaways
This case underscores the importance of:
- Prior Use: Establishing that you were the first to use a trademark is crucial.
- Continuous Use: Maintaining consistent use of your trademark helps protect it.
- Proper Documentation: Ensuring that assignment deeds explicitly transfer goodwill is essential.
What do you think? Do you agree with the court's emphasis on prior use? Do you think Sana Herbals had a strong case, despite the existing trademark? Share your thoughts in the comments below!
