Delhi HC Denies Injunction: Why Descriptive Marks Face Hurdles

Legal Context and the Nature of the Dispute

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The Delhi High Court, in the matter of Hahnemann Scientific Laboratory India Pvt. Ltd. vs Meera Rastogi trading as Hahnemann Memorial Laboratory (FAO (COMM)-182/2026), addressed a complex trademark dispute centered on the homeopathic preparation market. The appellant, a manufacturer of homeopathic medicines, challenged an order passed by the learned District Judge (Commercial Court), which had dismissed an application for an interim injunction. The core of the dispute involved the trademark HASLAB’S DIGESTO, held by the appellant, and the respondent’s mark, DIGESTO PLUS.

The appellant initiated the original suit based on a cause of action for passing off, alleging that the respondent’s use of the mark DIGESTO PLUS in relation to digestive preparations constituted a misrepresentation likely to cause confusion. Crucially, at the time of the impugned order dated 19.01.2026, the appellant did not possess a subsisting trademark registration, its earlier registration (TM No. 456926) having lapsed in 1993 without renewal. The trial court’s decision to deny the injunction rested on the findings that the word DIGESTO was descriptive, publici juris, and that the respondent had established prior, continuous use of its mark since 1980.

Issues Before the Court

The appellate bench was tasked with evaluating two primary questions. First, whether the trial court exercised its discretion arbitrarily or perversely in denying the interim injunction. Second, whether the appeal, filed with a 76-day delay, satisfied the requirements for condonation of delay under the Limitation Act, 1963. The appellant sought to introduce evidence of a fresh trademark registration (TM No. 5887111), granted on 26.03.2026, to argue that the circumstances had changed. The respondent vehemently argued that the appeal was time-barred and that the registration obtained post-order could not be used to re-litigate the findings of the trial court on passing off.

Treatment of Precedent and Judicial Discretion

The Division Bench reaffirmed the narrow scope of appellate interference in discretionary orders. Invoking the principles laid down in Wander Ltd. v. Antox India (P) Ltd., the Court emphasized that an appellate court should not substitute its own discretion for that of the trial court unless the latter’s order is found to be arbitrary, capricious, or contrary to settled legal principles. The Court underscored that an appeal against such an order is an appeal on principle, not an opportunity to reassess the factual material from scratch.

Furthermore, citing Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, the Court reiterated that appellate courts must be circumspect in interfering with discretionary orders in trademark and passing off actions. The Bench observed that the trial court had adequately considered the evidence, including the lack of documentation for the appellant’s claimed use of the mark between 1981 and 2007. The Court found no basis to displace the trial court’s finding that the appellant failed to show a prima facie case of misrepresentation or deceptive similarity.

Statutory Interpretation and Evidentiary Scrutiny

The litigation highlights the distinction between trademark infringement and passing off. Passing off, a common law remedy, requires the plaintiff to prove goodwill, misrepresentation, and potential damage to the business, as distinct from the statutory infringement action provided under Section 29 of the Trade Marks Act, which deals with the unauthorized use of registered trademarks.

The trial court and the appellate bench focused heavily on the descriptive nature of the term DIGESTO. Evidence revealed that the term had been utilized by third parties as early as 1946. The Court noted that the appellant’s previous registration (TM No. 456926) had included a disclaimer regarding the word DIGESTO, a fact that the appellant failed to disclose in the initial plaint. This omission was viewed as significant in the context of the appellant’s claim to exclusive rights over the term. The Court observed that while the Registrar may have granted a fresh registration for the mark HASLAB’S DIGESTO, this did not automatically grant the appellant a monopoly over the generic or descriptive component, DIGESTO.

The Bench also scrutinized the application of Section 5 of the Limitation Act, 1963 (which allows for the extension of the prescribed period for filing an appeal if the appellant demonstrates sufficient cause for the delay). The appellant contended that the subsequent grant of its trademark registration constituted sufficient cause. The Court rejected this, holding that a subsequent event occurring after the impugned order cannot be used to justify a delay in challenging an order that had already achieved a level of finality in the commercial context. This aligns with the judicial trend, as noted in Government of Maharashtra v. Borse Brother Engineers and Contractors Private Limited, that condonation of delay in commercial matters must be treated as an exception rather than a rule.

Analysis of Passing Off Elements

The Court maintained the trinity test for passing off: goodwill, misrepresentation, and damage. The trial court’s finding that the respondent had used the impugned mark DIGESTO PLUS since 1980 was supported by drug controller approvals and contemporaneous invoices. In contrast, the appellant’s evidence for the period between 1981 and 2007 was found to be lacking. Consequently, the balance of convenience heavily favored the respondent, as an injunction would have disrupted a long-standing business operation. The Court concurred with the trial court’s assessment that the marks, when viewed as a whole and considering their respective trade dresses, were not deceptively similar to an extent that would warrant an ex-parte or interim injunction.

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Significance of the Decision

This decision serves as a significant reminder to practitioners regarding the rigorous evidentiary standards required in passing off actions. When a trademark is perceived as descriptive or common to the trade, the burden of proving that the mark has acquired a secondary meaning remains squarely on the plaintiff. The judgment also highlights the consequences of failing to disclose prior prosecution history, such as disclaimers, in the original pleadings. Such omissions can critically weaken a party’s stance when seeking equitable relief.

Furthermore, the ruling reinforces the strict enforcement of limitation periods in commercial litigation under the Act of 2015. By holding that subsequent trademark registrations do not automatically justify late appeals, the Court provides clarity on the finality of interlocutory orders. The decision directs the parties to focus on a time-bound trial, emphasizing that the final resolution of ownership and usage rights must be settled through the full presentation of evidence rather than preliminary appeals based on evolving, and often external, developments.

Ultimately, the High Court’s refusal to interfere illustrates the importance of judicial deference to findings of fact regarding prior use and trade practice in the homeopathic sector. The case acts as a cautionary tale for litigants relying on the perceived strength of a trademark registration that has faced historical scrutiny or disclaimers, especially in a market where descriptive terms are commonly employed by multiple traders.

Summary of Key Findings

• Scope of Appellate Review: The Court confirmed that it would not interfere with the trial court’s discretionary order regarding an interim injunction unless there was a manifest error in principle or perverse reasoning.
• Prior Use and Evidence: The court upheld the trial court’s finding that the respondent was a prior user of the mark DIGESTO PLUS, based on substantial documentary evidence dating back to 1980.
• Descriptiveness of Marks: The term DIGESTO was categorized as descriptive and publici juris, limiting the appellant’s ability to claim exclusive proprietary rights over the word in isolation.
• Limitation Period: The Court strictly applied the limitation rules for commercial appeals, rejecting the argument that a later trademark registration provided sufficient cause for a 76-day delay in filing.
• Trademarks Act Implications: The decision underscores that the existence of a registration for a combined mark does not override the evidentiary hurdles in a passing off suit concerning descriptive components of that mark.