Delay Is No Defence Against Action For Infringement & Passing Off Where Adoption Of Trademark Is Dishonest: Delhi High Court

Justice Amit Bansal observed, “Delay cannot be a defence in an action for infringement and passing off in a case where the defendant's adoption of the mark itself is dishonest.”

The remarks were made while granting relief to Reckitt Benckiser India Private Limited which deals in laundry and cleaning preparations.

The company was aggrieved by alleged infringement of its trade mark 'ROBIN', stated to be adopted in the year 1899 along with the device of a bird, for use in relation to its fabric whitener.

Summons in the suit were issued back in August 2023.

The defendant, Sauss Home Products Private Limited opposed the suit, contending that the plaintiff became aware of its use of the subject device mark in 2017. Hence, the suit filed in the year 2023 was highly belated.

The Plaintiff however claimed that it became aware of the defendant's use of impugned trademark only in August, 2022 and it immediately served a legal notice. Thereafter, the present suit was filed and it cannot be said that there was any delay.

The High Court relied on Hindustan Pencils Private Limited v. India Stationery Products Co. (1990) where it was held that mere inordinate delay cannot, by itself, create a bar from the grant of an interim injunction, especially in cases where the use of the mark by the defendant is fraudulent in nature.

In the case at hand, the High Court noted that the two marks were nearly identical and the defendant had placed on record prima facie fabricated documents for establishing prior use.

“Not only is the shape of the bird deceptively similar, but the colour scheme, layout and copyright are also almost identical. Further, both the plaintiff and the defendant are using the subject device mark for identical goods, i.e. laundry and cleaning goods…which is likely to cause confusion and deception among the consumers who are ordinary persons of average intelligence and imperfect recollection…It is evident from the CA certificate that the plaintiff has impressive sales for the products under the subject device mark.”

Therefore, the Court was of the view that adoption of the subject device mark by the defendant was not honest, and it appeared the same was adopted only to ride on the goodwill and reputation of the plaintiff.

Stating that a prima facie case of passing off is made out on behalf of the plaintiff, the Court restrained the defendant from using the impugned mark till final adjudication of the suit.

Appearance: Mr. C.M. Lall, Senior Advocate with Ms. Anuradha Salhotra, Ms. Ekta Sarin, Mr. Nikhil Sharma, Ms. Vanshika Arora and Ms. Annanya Mehan, Advocates for Plaintiff; Mr. Gagan Gupta, Senior Advocate with Mr. Arkaj Kumar, Ms. Ramya Aggarwal, Mr. Aakarsh Mishra, Mr. Ishank Jha and Ms. Vaishnavi Bhargava, Advocates for Defendant

Case title: Reckitt Benckiser India Private Limited v. Sauss Home Products Private Limited

Citation: 2025 LiveLaw (Del) 979

Case no.: CS(COMM) 539/2023

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