By Vikrant Rana, Rima Majumdar and Aashi Nema
Introduction
In an important pronouncement for Indian trademark jurisprudence, a Division Bench of the Delhi High Court, on July 28, 2025, highlighted that a mere filing of a trademark application by a defendant does not itself give rise to a cause of action for infringement. The judgment in Deepak Kumar Khemka Vs. Yogesh Kumar Jaiswal & Ors. clarifies the limits of anticipatory or quia timet reliefs in the absence of actual use. This case reinforces that before filing a suit under Section 29 of the Trade Marks Act, 1999, the Plaintiff must demonstrate a credible threat predicated on more than abstract apprehension.
Background and Facts of the Case
The Appellant, Deepak Kumar Khemka, is engaged in manufacturing and selling tobacco and related products under the trade marks “SHUDH”, “SHUDH PLUS” and “SHUDH PLUS ULTRA LABEL.” The Respondent, Yogesh Kumar Jaiwal, filed a trademark application for the mark “ATS SHUDH”, bearing application number 5308717 in Class 34 (which covers tobacco and allied products) on a proposed to be used basis. The said trademark application was published in the Trade Marks Journal on February 12, 2024. The Appellant filed an opposition against this trademark application on March 19, 2024.
Alongside, the Appellant filed a civil suit in a Commercial Court, Saket, Delhi seeking permanent injunction, basis a reasonable apprehension that the Respondent would launch goods under “ATS SHUDH” and infringe its existing rights on SHUDH formative trademarks. On investigation or market inquiry, no evidence was found of the Respondent actually using or preparing to use the mark in commerce.
The Respondent moved an Application under Order VII Rule 11 of the Code of Civil Procedure, 1908 seeking dismissal of the suit for absence of cause of action. The Commercial Court after hearing both parties was of the view that no cause of action is made out, and hence proceeded to dismissed the suit on June 2025. Aggrieved by this Order, the Appellant (Plaintiff before the Commercial Court) filed an Appeal before the Hon’ble High Court of Delhi.
Trial Court’s Analysis
When the Appellant’s suit Plaint was challenged under Order VII Rule 11of CPC (i.e. for rejection of plaint for lack of cause of action) by the Defendant, the Learned Trial Court keeping in mind the settled law that, for the purpose of Order 7 Rule 11 only plaint is to be considered, undertook the following analysis by examining the plaint as filed:
- Admitted lack of actual use: The Trial Court observed that it was the Plaintiff’s /Appellant own admission that the Defendants / Respondents had not yet placed any goods under the mark “ATS SHUDH” in the market. The Plaint itself did not disclose any sales, distribution, marketing, manufacturing, or preparation steps by the Respondent.
- Apprehension of use only speculative: The Trial Court noted that the Plaintiff’s /Appellant case was based on an apprehension that goods might be introduced later in Delhi (or in India generally). But this was construed as speculative, not supported by credible material. The Trial Court found no smoking gun evidence suggesting the Respondent was actually on the threshold of launch.
- Reliance on Supreme Court precedent – registration ≠ cause of action: The Trial Court relied on the Hon’ble Supreme Court in Narayanan Vs. S. Muarli ,(2008) 10 SCC 479 that mere filing of a trademark application, or registration proceedings, cannot by themselves give rise to a cause of action for infringement. The Trial Court also quoted the ruling of Dhodha House Vs. S. K. Mainga, (2006) 9 SCC 41 for the proposition that suit may lie where the infringement of trademark or copyright takes place.
Arguments of Appellant before the Division Bench
- The Appellant contended that the act of applying for registration of a mark deceptively similar to its existing marks signaled an intention to enter the market, giving rise to a credible threat of infringement.
- The Appellant contended that the Trial Court has misapplied the judgments of Supreme Court to the fact of present case, as those judgments relate to passing off action.
Division Bench’s Stand on the Trial Court’s Analysis
The Division Bench of Hon’ble High Court of Delhi scrutinized the reasoning rendered by Ld. Trial Court, affirmed and refined the principles more sharply. Below is how the Division Bench treated the trial court’s analysis, where it agreed, where it added nuance, and where it offered further clarity.
- Affirmation of the core principle: use, not registration, is trigger
The Division Bench endorsed the Trial Court’s reliance on the Hon’ble Supreme Court decisions that a trademark infringement action arises only upon “use in the course of trade.” It held that that “no cause of action, to maintain a suit for infringement, would lie merely on the defendant filing an application for registration of a trade mark.”
The Division Bench also rejected the Appellant’s attempt to confine the judgment rendered in K. Narayanan to passing-off contexts, stating that its reasoning is general enough to apply to infringement claims as well. - Reviewing factual basis for quia timet / anticipatory relief
The Division Bench also emphasized that for a quia timet suit to survive i.e. a lawsuit filed on the basis of an apprehension that a party is about to launch its infringing goods in the market, the Plaintiff must adduce a strong factual foundation, absence of which, a mere speculative fear would not suffice. Thus, even in facts, the suit is liable to be dismissed, given that there is no evidence pertaining to launch of the product in the market, that could be produced by the Appellant/Plaintiff. - On an alternative remedy (opposition)
The Division Bench accepted the logic of the Trial Court that the Plaintiff had an existing remedy before the Trademark Registry, i.e. filing an opposition against the trademark application. Thus, civil courts should not become forums for speculative claims in parallel to statutory proceedings.
Court’s Order
The Hon’ble Delhi High Court dismissed the Appeal, upholding the Trial Court’s order to reject the plaint for lack of cause of action. The suit was held not maintainable, as the Appellant had not shown actual or imminent use by the Respondent which would justify civil infringement or quia timet relief.
Author’s Note
While the principle that “use, not registration, is the trigger” is well established, the reasoning in the case and its application invite several critical observations:
- Strict formalism vs flexible equity: The judgment leans heavily on a formalistic reading that the statutory cause of action is anchored in “use,” and hence no suit can lie merely from application. But trademarks operate not just as property rights but as instruments to protect reputation, goodwill, and the distinctiveness of marks. A purely formal rule may under-protect brand owners who face real threats from impending infringers.
- Risk of “preemptive” infringers gaining unfair advantage: If an infringer is allowed to apply for a mark (or adopt it) and invest in preparing production, marketing, packaging, etc., before launching, he may put the brand owner to a difficult position: either rush to court and incur costs or lose ground in the market. The case’s dismissal of fear-of-use claims may open a gap for opportunistic behavior.
- Unclear standard for “imminent use” or “credible threat”: To bring a quia timet action, one must show credible threat, not mere suspicion. But the case appears to draw a hard line: no suit unless use is established or imminently foreseeable. Courts may struggle to demarcate exactly when intention becomes “imminent use.” The judgment may thus create uncertainty.Thus, the relevant point to mention here is that if the applicant applies for a trademark on “’proposed to be used” basis, he has already established his intention to use the mark in question. The counter-risk is that courts may treat preemptive suits based on fear as overreach by brand owners. The case attempts to guard against frivolous suits, but possibly at the expense of legitimate early intervention.
Essentially, Quia Timet action means “because he fears”, if one waits until the Defendant actually launches the product, it may be too late; the Defendant might invest heavily, market, distribute, and entrench position. A Plaintiff should be able to restrain a credible threat to prevent irreparable injury, brand dilution or confusion, rather than await full-blown damage. This would cause serious prejudice to the Defendant if an injunction is granted only after he has already expended substantial amount towards investment, production and marketing. Restraining the Defendant at that stage would result in significant financial loss and disruption of business operations.
It is also pertinent to note that trademark law is preventive as much as remedial; equity should allow early suits under quia timet principles. A brand owner dealing with entry threats should have recourse before damage is done.