Introduction
In a decisive ruling strengthening trademark and copyright enforcement in India, the Delhi High Court in Ashok Kumar Gupta v. Arif Khan (CS(COMM) 608/2023 & I.A. 16670/2023) granted a permanent injunction and awarded aggravated damages against the defendant for adopting a deceptively similar trademark and label. Delivered on 28 February 2025 by Hon’ble Mr. Justice Amit Bansal, the judgment reiterates the judiciary’s strict stance against dishonest adoption of trademarks, especially in cases where infringers deliberately evade judicial proceedings. The decision reinforces settled principles relating to trademark infringement, passing off, copyright infringement, and the legal consequences of ex-parte conduct in commercial intellectual property disputes.
Factual Background
The plaintiffs in the suit were:
- Ashok Kumar Gupta, Proprietor of Jai Durga Plaster Industries
- Sakarni Plaster (India) Pvt. Ltd.
The plaintiffs are engaged in the manufacture and sale of Plaster of Paris, wall putty, and allied construction materials, marketed under the trademark “SAKARNI” and its Hindi equivalent “सकारणी”. The mark has been in continuous use since 2004 and stands registered under Class 19 of the Trade Marks Act, 1999. Through long-standing commercial use, extensive distribution networks, and sustained promotional efforts, the plaintiffs established significant goodwill and reputation, with the mark “SAKARNI” becoming distinctly associated with their products in the construction materials market. The dispute arose when the plaintiffs discovered that the defendant, Arif Khan, had begun manufacturing and selling identical goods under the mark “SIKARNI” / “सिकारणी”, accompanied by a label strikingly similar to that of the plaintiffs. The plaintiffs alleged that the defendant’s adoption was deliberate, dishonest, and intended to exploit their established market reputation.
Nature of the Suit and Reliefs Claimed
The plaintiffs instituted a commercial suit before the Delhi High Court seeking:
- Permanent injunction against trademark infringement
- Permanent injunction against copyright infringement
- Relief against passing off
- Delivery up of infringing goods
- Damages and costs
Despite valid service of summons, the defendant failed to enter appearance or file a written statement within the statutory period. Consequently, the defendant’s right to defend the suit was closed, and the matter proceeded ex-parte.
Issues Considered by the Court
In light of the ex-parte proceedings, the Court examined whether the plaintiffs had established:
- Trademark infringement under the Trade Marks Act, 1999
- Passing off based on deceptive similarity and prior use
- Copyright infringement of the artistic label
- Entitlement to damages and costs owing to the defendant’s conduct
Trademark Infringement: Deceptive and Phonetic Similarity
The Court held that the defendant’s mark “SIKARNI” was phonetically identical and deceptively similar to the plaintiffs’ registered mark “SAKARNI”. The substitution of the letter “A” with “I” and the addition of expressions such as “No.1” were found to be immaterial.
Justice Amit Bansal emphasized that:
- Both marks were used for identical goods
- The products targeted ordinary purchasers of construction materials
- The likelihood of confusion and deception was inevitable
Reiterating settled law, the Court observed that trademarks must be compared as a whole and assessed from the perspective of an average consumer with imperfect recollection. Viewed in this manner, the defendant’s mark was clearly infringing.
Passing Off: Prior Use and Established Goodwill
On the issue of passing off, the plaintiffs successfully proved:
- Continuous use of the “SAKARNI” mark since 2004
- Trademark registration dating back to 2007
- Significant goodwill and market presence
The Court found that the defendant’s adoption of a nearly identical mark for the same goods constituted misrepresentation, intended to deceive consumers into believing an association with the plaintiffs. The defendant’s dishonest intent was inferred from the close similarity of the marks, the identical nature of goods, and the absence of any explanation for adopting such a mark.
Copyright Infringement: Protection of Artistic Labels
In addition to trademark rights, the plaintiffs were also the registered proprietors of the copyright in the artistic label “SAKARNI PLASTER / SAKARNI”. The defendant’s label was found to be a near replica, reproducing similar font styles, layout, and visual elements.
The Court held that:
- The plaintiffs’ label qualified as an original artistic work under the Copyright Act, 1957
- The defendant had engaged in substantial copying
- Such reproduction amounted to clear copyright infringement
The overlap of trademark and copyright infringement further strengthened the plaintiffs’ claim.
Ex-Parte Proceedings and Legal Presumptions
Given the defendant’s failure to contest the proceedings, the Court treated the plaintiffs’ pleadings and documentary evidence as admitted. Relying on Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd. [2013 (54) PTC 419 (Del)], the Court held that where the plaint is duly supported by affidavits and documents, directing formal ex-parte evidence would serve no useful purpose. Accordingly, the suit was liable to be decreed under Order VIII Rule 10 of the Code of Civil Procedure, 1908.
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Award of Damages and Costs
A notable feature of the judgment was the award of INR 1,00,000/- as aggravated damages and costs. Relying on M/s Inter Ikea Systems BV v. Imtiaz Ahamed & Anr., the Court emphasized that defendants who evade court proceedings should not be permitted to benefit from such conduct. The damages were awarded both as compensation and as a deterrent against future infringing activities.
Final Reliefs Granted
The Delhi High Court decreed the suit in favour of the plaintiffs and granted:
- Permanent injunction restraining the defendant from using the mark “SIKARNI” or any deceptively similar mark
- Permanent injunction restraining copyright infringement of the plaintiffs’ artistic label
- Aggravated damages and costs amounting to INR 1,00,000/-
Significance of the Judgment
The judgment reinforces critical principles of Indian trademark jurisprudence:
- Minor spelling variations do not negate infringement where phonetic similarity exists
- Prior use and goodwill are decisive in passing off actions
- Ex-parte defendants cannot escape liability by avoiding proceedings
- Courts will impose monetary consequences to discourage dishonest commercial practices
For trademark proprietors, the ruling highlights the importance of timely enforcement and documentation. For infringers, it sends a clear warning that imitation coupled with evasion will invite strict judicial action.
Conclusion
The decision in Ashok Kumar Gupta v. Arif Khan stands as a robust affirmation of intellectual property protection in India. By granting permanent injunctive relief and awarding damages in an ex-parte proceeding, the Delhi High Court reaffirmed its commitment to safeguarding brand integrity and consumer trust. The ruling strengthens the enforcement framework for trademarks and copyrights and adds significant value to India’s evolving commercial IP jurisprudence.