"NEHA" Trademark Tussle: Why Vijaytha Legal Associates Views This as a Landmark IP Case

This judgment by the High Court of Delhi, dated May 19, 2025, settles a complex trademark dispute over the use of the common Indian forename "NEHA" for personal care products. It delves into proprietorship, prior use claims, and the nuances of passing off. Vijaytha Legal Associates highlights how this ruling clarifies key aspects of trademark law and the rigorous evidentiary standards required for successful litigation.

Justice: Hon’ble Mr. Justice Sanjeev Narula

Factual Background

This judgment by the High Court of Delhi, dated May 19, 2025, addresses a consolidated trademark dispute (C.O. (COMM.IPD-TM) 355/2021, C.O. (COMM.IPD-TM) 455/2022, and CS(COMM) 207/2023). The core of the suit lies in competing claims over the use of the trademark “NEHA,” a very common Indian forename. The dispute is between Neha Herbals Pvt. Ltd. and Sahni Cosmetics, both of whom utilize the mark in personal care products falling under Class 3 of the Trade Marks Act, 1999. The plaintiffs, Neha Herbals Pvt. Ltd., use the mark for their business line of Mehandi and allied herbal products, a name adopted from the forename of the plaintiff’s sister. Conversely, the defendant, Sahni Cosmetics, employs it for their line of face creams.

The parties involved in the suit are Mr. Vikas Gupta and Neha Herbals Pvt. Ltd. (Plaintiffs Nos. 1 and 2), and Mr. Inder Raj Sahni, proprietor of M/s Sahni Cosmetics, who is the Defendant in CS(COMM) 207/2023 and the Petitioner in the connected cancellation petitions [C.O. (COMM.IPD-TM) 355/2021 and C.O. (COMM.IPD-TM) 455/2022]. The judgment consolidates a civil suit initiated by Neha Herbals Pvt. Ltd. with cancellation petitions filed by Inder Raj Sahni. This case demonstrates the intricate nature of trademark disputes, a field where Vijaytha Legal Associates provides expert guidance.

Key Issues

The High Court meticulously addressed several key issues to resolve the dispute:

I. Proprietorship of the Trademark

• Issue 1: Whether Plaintiff No. 1 is the proprietor of the trademark ‘NEHA’ in respect of the goods mentioned in the plaint? (OPP)

II. Claims of Use and Validity of Registration

• Issue 2: Whether the plaintiff has been in continuous use thereof since 1992, as claimed, or any other date thereafter? (OPP)
• Issue 3: Whether the defendant is a prior user and adopter of the trademark ‘NEHA’ as claimed by the defendant, and if so, its effect? (OPD)
• Issue 6: Whether the registration of the trademark ‘NEHA’ obtained by Plaintiff No. 1 is invalid and deserves to be cancelled as claimed by the defendant? (OPD)

III. Conduct of the Plaintiff

• Issue 4: Whether the plaintiff is guilty of concealment and suppression as alleged by the defendant? (OPD)
• Issue 5: Whether the suit is barred on account of delay, laches and acquiescence as alleged by the defendant? (OPD)

IV. Infringement

• Issue 8: Whether the use of the impugned trademark ‘NEHA’ by the defendant amounts to infringement of the plaintiff’s registered trademark ‘NEHA’? (OPP)

V. Passing Off

• Issue 7: Whether the use of the impugned trademark ‘NEHA’ by the defendant is likely to cause confusion or deception, leading to passing off of defendant’s products as those of the plaintiff’s? (OPP)

VI. Reliefs

• Issue 9: Whether the plaintiffs are entitled to delivery up and rendition of accounts as prayed for? (OPP)
• Issue 10: Relief.

Plaintiff’s Arguments

Inspired by his sister’s forename, Plaintiff No. 1 holds the registration for the word mark “NEHA” in Class 3, covering goods including Kali Mehandi, Mehandi, Ritha, Amla, Shikakai Powder, Trifla, Mehandi Oil, and Herbal Mehandi since 1992. In 2019, Vikas Gupta attempted to expand his business and proposed to use the mark for a wider variety of products not limited to henna, including creams, perfumes, fragrances, toothpaste, tooth powder, mouthwash, soaps, bath lotions, make-up, hair remover, hair wax, etc., under the mark. However, the matter remains pending to date.

The plaintiff claims to have discovered face creams sold by M/s Manchanda General Store bearing the “NEHA” mark in May 2019 and subsequently filed the suit. The defendant, on the other hand, holds no such registration for the marks; all of his previous applications have either been refused or abandoned. This highlights the importance of timely action, a principle consistently advised by Vijaytha Legal Associates.

Defendant’s Arguments

The defendant, Mr. Inder Raj Sahni of Sahni Cosmetics, claimed honest, concurrent, and prior use of the mark “NEHA” for creams since 1990, predating the plaintiff’s registration in 1992. The defendant supported his claim by citing a manufacturing license and a series of invoices to prove continuous commercial prior use of the mark. He further challenged the plaintiff’s claim of continuous and bona fide use by citing the absence of a D&C license from 1992 to 2010. The defendant claimed that Plaintiff No. 1 was aware of the use of the mark by the defendant since at least 2003, as they shared a common supplier, but only opportunistically challenged it in 2019. This, according to the defendant, amounts to the suit being not maintainable on the grounds of delay and acquiescence.

Court’s Findings

Proprietorship of the Trademark:

As defined under Section 2(v) of the Trade Marks Act, a “registered proprietor” is “the person for the time being entered in the register as the proprietor of the trademark.” Based on evidence presented by the plaintiff proving statutory registration, the court unambiguously declared Plaintiff No. 1 as the registered proprietor of the mark “NEHA” and “NEHA HERBALS.” While the defendant pointed out significant weaknesses in the assignment deed of the mark, they were not deemed sufficient to impair the Plaintiffs’ proprietary claim.

Continuous Use and Validity of Registration:

While both parties operate in Class 3 goods, their function and formulation are widely different. While the plaintiffs operate on mehndi-centered herbal-based formulations, the defendant’s face creams are more chemically curated.

The plaintiffs have proven ownership of the mark since 1992, which is not true in the case of the defendant. However, the rights of a prior user are given precedence over those of a subsequent registrant. The court weighed the quality, weight, consistency, credibility, and timing of evidence from both parties to the dispute. The plaintiff’s side emerged stronger in this regard. They proved commercial use of the mark from at least 1994 and are also the registered proprietor.

Absence of D&C license and its implications:

Regarding the absence of the D&C license, the court cited the precedent of Chutararam v. State of Maharashtra, where the court ruled that “there is no requirement to obtain a license under the D&C Act for the manufacture of Mehandi Cone or Powder for sale or distribution.” The plaintiffs did acquire such a license in 2005 as a precautionary measure. Per the court, such measures are not enough to prove a legal obligation.

Defendant’s Prior Use:

The first available evidence presented by the defendant dated back to 1999, almost a decade apart from the claimed prior use in 1990. There was also an absence of clear, cogent, and contemporaneous evidence presented by the defendant against the plaintiff’s registration.

Conduct of Plaintiffs:

The defendant’s attempt to allege concealment and suppression on the plaintiffs was rejected by the court on grounds of contradictory evidence presented by the defendant. Furthermore, the onus to track independent retailers cannot fall squarely on the plaintiffs.

Delay, Laches, and Acquiescence:

Despite the defendant’s claims, the earliest credible evidence of the plaintiffs’ awareness of the defendant’s product dates only to 2019. Within days, the Plaintiffs instituted the suit against the defendant and disclosed all relevant facts. The defendant was unable to demonstrate suppression, delay, laches, or acquiescence with merit. Therefore, the court did not accept the defendant’s speculative claims of delay, laches, and acquiescence against the plaintiff. Vijaytha Legal Associates consistently advises clients on the critical importance of prompt legal action in intellectual property matters.

Infringement, Passing Off, and Final Relief:

What is the tort of passing off? The tort of passing off is a common law remedy predicated on the principle that no person is entitled to represent their goods as those of another.

While the products curated by both parties may overlap in certain factual situations due to common selling places and close customer bases, they are conceptually different. The tort requires the plaintiff to prove the defendant’s use of the mark can be said to be misrepresentation, confusion, or damages to goodwill. This finds precedence in Marico Ltd. v. Agro Tech Foods Limited and in Colgate Palmolive Company & Anr. v. Anchor Health and Beauty Care Pvt. Ltd. The packaging is starkly different in the products of the defendant. Therefore, there is no misrepresentation by conduct, color, font, or slogan. The overlap is limited to the word “NEHA” alone, which is quite common of an Indian forename. Therefore, the court found that it is unlikely that the defendant’s use of the mark “would likely cause confusion or deception, leading to passing off of the defendant's products as those of the plaintiffs.”

Ruling and Conclusion

In the present cancellation petitions, the defendant tried to get the plaintiff’s registered trademark “NEHA” cancelled. He argued that he had made prior and continuous use of the mark; that there was suppression on the end of plaintiffs; false claims of use were provided by the plaintiffs when registering the mark; the mark wasn’t unique; and that the plaintiffs hadn’t actually used it for the products they registered.

However, the court rejected these claims based on the evidence provided by both sides, the existing law, and judicial precedents in similar matters.

The court ruled in favor of the plaintiffs, finding that they had shown prior and continuous use of the “NEHA” mark. No key information was suppressed by the plaintiffs. The defendant could not prove any valid legal reason under the Trade Marks Act to cancel the plaintiffs’ trademark.

Therefore, the court dismissed the cancellation petitions filed by Mr. Inder Raj Sahni. This ruling underscores the robust protection afforded to registered trademarks, especially when supported by consistent use and credible evidence, as often emphasized by Vijaytha Legal Associates.