Nadeem Majid Oomerbhoy & Anr. v. Sh. Gautam Tank & Ors.

High Court of Delhi at New Delhi, Single Judge | Date of Decision: January 9, 2026 Case Number: CS(COMM) 361/2018, with IA Nos. 49679/2024, 34537/2024 and 32689/2025 Bench: Hon’ble Mr. Justice Tejas Karia

BACKGROUND

The Suit was originally filed in the name of Plaintiff No. 2, acting as Court Receiver of Plaintiff No. 1 (M/s Ahmed Oomerbhoy, a partnership firm), pursuant to orders dated 06.07.2000 and 30.07.2001 passed by the High Court of Judicature at Bombay in Suit No. 4913 of 2000 (a dispute between partners of the firm), directing the Receiver to safeguard and enforce Plaintiff No. 1’s trade mark ‘POSTMAN’. Plaintiff No. 1 was engaged in manufacture and sale of refined groundnut oil under the mark ‘POSTMAN’, an arbitrary/coined word, used since 1949 and registered since 1954 (device marks) and since 1976 (word mark) in Class 29, comprising Registration Nos. 162666, 213353, 258918, 260538, 312898 and 415564, all renewed and subsisting at the time of filing. Plaintiff No. 1 also held copyright registrations for various ‘POSTMAN’ label artistic works (Registration Nos. A-39132/83, A-46241/84, A-57347/99 and A-57639/99) and a design registration for its bottle shape (No. 160845, effective 29.03.1989, expired 2004). The mark had been in continuous household use for over five decades until 2000, when internal disputes among the partners led to discontinuation of manufacture and sale; annual sales figures for 1990-91 through 1999-2000 were placed on record. In December 2004, a partner of Plaintiff No. 1 discovered that Defendant No. 2, Jagdamba Vegetable Products (P) Ltd., had begun manufacturing and selling refined groundnut oil under the mark ‘SUPER POSTMAN’ and by affidavit dated 17.03.2005 sought directions from the Bombay High Court for the Receiver to act; the Receiver was accordingly directed to protect the mark despite Plaintiff No. 1’s own non-use since 2000. Defendant No. 2 had applied to register ‘SUPER POSTMAN’ on 29.04.2004, prior to which it had given an undertaking dated 12.02.2005 to the Trade Marks Registry that it would withdraw its application if certain named entities objected; this undertaking was not disclosed by the Defendants in their Written Statement. The present Suit, originally CS(OS) 806/2005 and renumbered CS(COMM) 361/2018, sought permanent injunction against infringement of the registered ‘POSTMAN’ marks, passing off, copyright infringement (based on similar blue/yellow colour scheme), damages, rendition of accounts and delivery up.

The procedural history was extensive: an ex parte ad interim injunction was granted on 30.05.2005 (IA 4575/2005), confirmed on 20.12.2007 after dismissal of the Defendants’ vacation application (IA 4820/2005); the Suit was dismissed on 24.12.2010 for the Plaintiffs’ failure to lead evidence, but this dismissal was set aside on appeal (RFA(OS) 19/2011) by the Division Bench on 27.07.2012, subject to costs and the Suit was restored with evidence to be recorded by a Court Commissioner. During cross-examination in the restored proceedings, the Defendants admitted continuing use of ‘SUPER POSTMAN’; the Plaintiffs’ application alleging violation of the interim injunction (IA 13305/2016) was dismissed on 25.10.2016 on the view that the interim order had not been automatically revived, but this was reversed by the Division Bench on 25.10.2018 (FAO(OS)(COMM) 341/2016), which held the injunction revived and directed periodic disclosure of the Defendants’ turnover figures. A Special Leave Petition by the Defendants (SLP(C) 2837/2019) was disposed of by the Supreme Court on 27.09.2019 directing expeditious disposal within six months and framing of an additional issue on revival of the interim injunction; this additional issue was duly framed on 18.07.2022. During final hearing, it emerged that Defendant No. 2 had in fact obtained registration of ‘SUPER POSTMAN’ on 13.02.2023 (relating back to the 2004 application) during the pendency of the Suit; the Plaintiffs’ application under Section 124(1) of the Trade Marks Act, 1999 seeking a stay to pursue rectification of that registration was dismissed as premature and the Court, having reserved judgment, took up the question of the validity of the Defendants’ registration suo motu under Section 57(4) of the Act, appointing amici and hearing the parties on this issue; the Defendants’ challenge to this course (SLP(C) 23071/2023) was withdrawn. The Defendants subsequently filed their own application under Section 124 of the Act (IA 34537/2024) seeking a stay pending rectification proceedings pending before the Bombay High Court, while the Plaintiffs filed IA 49679/2024 seeking revival of the interim injunction in light of delays caused by the Defendants. The Suit, IA 34537/2024, IA 49679/2024 and the Section 57(4) inquiry were all argued together and the operative order pronounced on 26.09.2025, but the Defendants subsequently sought clarification (IA 32689/2025) as to the scope of that order, contending that only limited issues had actually been argued on 08.08.2025 and that the Suit’s status had erroneously been recorded as “disposed of.”

ISSUES FOR DETERMINATION

1. Whether Plaintiff No. 1 is the proprietor of the Trade Mark ‘POSTMAN’.
2. Whether Plaintiff No. 1 is the proprietor of the artistic work in the label/packaging bearing the mark ‘POSTMAN’.
3. Whether the Defendants are guilty of passing off their goods as those of the Plaintiffs.
4. Whether the Defendants have infringed the Plaintiffs’ Trade Mark ‘POSTMAN’ and/or the artistic work in the packaging/label.
5. Whether the Plaintiffs’ claim/Suit is barred by acquiescence and delay and the effect thereof (encompassing the Defendants’ contention that Plaintiff No. 1 abandoned the mark through non-use).
6. Whether the Plaintiffs are entitled to damages and if so, in what amount.
7. Whether the Plaintiffs are entitled to a decree for rendition of accounts and/or damages and if so, in what amount.
8. Whether the Plaintiffs are entitled to a decree of permanent injunction as prayed for Relief.
9. Whether, upon revival of the Suit vide the Division Bench’s order dated 27.07.2012 in RFA(OS) 19/2011, the ad interim injunction dated 30.05.2005 stood revived and whether the Defendants are liable for additional damages for use of the mark thereafter.

Ancillary to these, the Court also had to determine:

• the validity of the Defendants’ registration of ‘SUPER POSTMAN’ in exercise of its suo motu power under Section 57(4) of the Trade Marks Act;
• the maintainability of the Defendants’ application (IA 34537/2024) under Section 124 of the Act seeking a stay of the Suit pending rectification proceedings.
• the scope of clarification sought by the Defendants (IA 32689/2025) regarding the order dated 08.08.2025 and the correct procedural status of the Suit.

KEY HOLDINGS OF THE COURT

1. On Issues (1) and (2), the Court held that Plaintiff No. 1 is the proprietor of the Trade Mark ‘POSTMAN’ and of the artistic work in its label/packaging, based on documentary and oral evidence establishing registration since 1954 (device marks) and 1976 (word mark) in Class 29 and use since 1949, with the mark ‘POSTMAN’ found to be an arbitrary and coined term for edible oil entitled to the highest degree of protection under both common law (passing off) and statutory (infringement) rights.
2. On Issue (5) (abandonment/acquiescence), the Court held that although Plaintiff No. 1 had not used the mark commercially since 2000 due to internal partner disputes, this non-use did not amount to abandonment, because Plaintiff No. 1 remained vigilant in protecting the mark — including litigation against its own partners (restraining use of “POSTIANO”) before the Bombay High Court — and because use of a mark need not be physical use on goods (citing Hardie Trading Ltd. v. Eddisons Paint & Chemicals Ltd., Burger King Corporation v. Ranjan Gupta and Official Liquidator of Ideal Jawa (India) Ltd. v. Registrar of Trademarks). The Court found no clear and convincing evidence of intention to abandon and held that the non-use, being attributable to genuine inter-partner disputes rather than deliberate discontinuation, did not destroy the mark’s goodwill built over five decades. Accordingly, the Defendants failed to establish abandonment and the Suit was held maintainable.
3. On Issue (10) (revival of interim injunction), the Court held, applying the Division Bench’s reasoning in FAO(OS)(COMM) 341/2016 (which itself relied on Vareed Jacob v. Sosamma Geevarghese and Amal Mal Sindhi v. Ram Prakash), that upon restoration of the Suit by the Division Bench’s order dated 27.07.2012, the interim injunction originally granted on 30.05.2005 and confirmed on 20.12.2007 stood automatically revived, since setting aside a dismissal restores the original interim order that had been in force prior to dismissal.
4. On the validity of the Defendants’ registration of ‘SUPER POSTMAN’ (examined suo motu under Section 57(4) of the Trade Marks Act), the Court held that the registration ought to have been refused under Section 11(1)(b) of the Act on the ground of deceptive similarity to Plaintiff No. 1’s earlier registered mark ‘POSTMAN’ for identical goods (edible groundnut oil) in the same class, since ‘POSTMAN’ was the essential and dominant feature of both marks, both textually and phonetically (relying on Fybros Electric Private Ltd. v. Vasu Dev Gupta Trading and Alpha Corporation Development (P) Ltd. v. Alpha Integrated Management Services (P) Ltd.). The Court further held the registration liable to cancellation under Section 10(3) of the Act as it infringed Plaintiff No. 1’s prior common-law rights, noting the Defendants’ own admission of awareness of the ‘POSTMAN’ mark since 2004 and their undertaking dated 12.02.2005 to withdraw their application if objected to, which the Court treated as an admission of the mark’s goodwill and reputation. Accordingly, the Court directed the Registrar of Trade Marks to rectify the Register by removing/cancelling Registration No. 1281470 for ‘SUPER POSTMAN’.
5. On Issues (4) and (6) (infringement), the Court held that the Defendants had committed infringement of Plaintiff No. 1’s mark ‘POSTMAN’ and its artistic work, given the deceptively similar packaging, colour scheme and container shape, the Defendants’ admitted awareness of the ‘POSTMAN’ mark at the time of adoption and the tiny/inconspicuous rendering of the prefix “SUPER” — with similarities, not minor dissimilarities, being determinative (citing Kaviraj Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories and related authorities). The Court also rejected the Defendants’ “common to trade” defence given their own application to register a mark containing “POSTMAN” (citing Indian Hotels Company Ltd. v. Jiva Institute of Vedic Science & Culture).
6. On Issue (8), the Court held the Plaintiffs entitled to a decree of permanent injunction restraining the Defendants from manufacturing or selling oil products under ‘SUPER POSTMAN’ or any deceptively similar mark and from using packaging/label infringing Plaintiff No. 1’s copyright and disposed of IA 49679/2024 (the Plaintiffs’ application for interim injunction) accordingly.
7. On Issue (7) (rendition of accounts), the Court held, applying the principles in K.C. Skaria v. Govt. of State of Kerala regarding the bases on which a right to accounts may arise, that since Plaintiff No. 1’s proprietorship and the Defendants’ infringement were both established, rendition of accounts was necessary to enable the Plaintiffs to satisfactorily assert their right to damages and to enable adjudication of Issues (6) and (10) on additional damages. The Defendants were directed to render accounts of goods sold under ‘SUPER POSTMAN’ from institution of the Suit to the date of submission.
8. On the maintainability of the Defendants’ application under Section 124 of the Act (IA 34537/2024), the Court held it not maintainable, since no issue on invalidity of Plaintiff No. 1’s mark had been framed and Section 124(1)(a)(i) applies only where a rectification proceeding was pending prior to institution of the Suit — not one filed after service of summons but before the Written Statement, as here (relying on Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd., Resilient Innovations Pvt. Ltd. v. Phonepe Private Limited & Anr. and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Ors.). The Court held that accepting the Defendants’ interpretation would allow automatic stays of infringement suits merely by filing rectification petitions immediately after summons, which could not have been the legislative intent. IA 34537/2024 was accordingly dismissed.
9. On IA 32689/2025 (clarification), the Court partially allowed the application, clarifying that the hearing of 08.08.2025 and the judgment did not cover Issues on passing off (Issue 3) or quantification of damages (Issues 6, 9 and part of Issue 10), recalled its earlier pronouncement of 26.09.2025 to that extent and directed the Registry to restore the Suit’s status from “disposed of” to “pending,” with the parties directed to file written submissions on the remaining issues within four weeks.
10. Final operative order: Issue Nos. (1), (2), (4), (5), (7), (8) and (10) (in part) were decided in favour of the Plaintiffs and against the Defendants; a preliminary decree was directed to be drawn up accordingly, declaring Plaintiff No. 1 the proprietor of the mark and artistic work, rejecting the abandonment defence, holding the interim injunction revived, directing cancellation of the Defendants’ ‘SUPER POSTMAN’ registration, granting permanent injunction against use of ‘SUPER POSTMAN’ or deceptively similar marks/packaging, directing rendition of accounts, dismissing IA 34537/2024, partially allowing IA 32689/2025 and listing the matter for further hearing on Issues (3), (6), (9) and the damages component of Issue (10) before the Roster Bench on 25.03.2026.

STATUTORY PROVISIONS INVOLVED

Sections 28 and 29 of the Trade Marks Act, 1999, conferring exclusive rights on a registered proprietor and defining infringement, were invoked to hold that once Plaintiff No. 1’s marks were validly registered and continued on the Register (not having been removed under Section 47), the Defendants had no right to use a deceptively similar mark.

Section 47 of the Trade Marks Act, 1999, providing for removal of a mark from the Register on grounds of non-use (including a continuous period of non-use of five years and three months), was discussed in the context of the Defendants’ abandonment defence; the Court held that Plaintiff No. 1’s mark had not been removed under this provision and that the evidence did not establish the requisite intention to abandon.

Section 11(1)(b) of the Trade Marks Act, 1999, barring registration of a mark on the ground of similarity to an earlier registered mark for identical/similar goods where there is likelihood of confusion, was applied by the Court to hold that the Defendants’ registration of ‘SUPER POSTMAN’ ought to have been refused given its deceptive similarity to Plaintiff No. 1’s ‘POSTMAN’ mark for identical goods (edible groundnut oil) in the same class.

Section 10(3) of the Trade Marks Act, 1999, protecting common law rights in relation to registration of trade marks, was applied to hold that the Defendants’ registration also infringed Plaintiff No. 1’s prior common-law rights arising from long, continuous use of ‘POSTMAN’.

Section 57 of the Trade Marks Act, 1999 (reproduced in full in the judgment), empowering the tribunal to cancel or vary registration and rectify the register, including under sub-section (4) enabling suo motu action after notice and hearing, was the central provision under which the Court examined and ultimately directed cancellation of the Defendants’ registration of ‘SUPER POSTMAN’, the Court having earlier held (by order dated 11.09.2023) that this suo motu power operates independently of Section 124 of the Act.

Section 124 of the Trade Marks Act, 1999, governing stay of infringement suits pending rectification proceedings, was discussed in relation to both parties’ applications: the Plaintiffs’ earlier application (dismissed as not lying at that stage since the Defendants had not pleaded a Section 30(2)(e) defence) and the Defendants’ later application, IA 34537/2024 (dismissed as not maintainable because no issue on invalidity had been framed and because the Defendants’ rectification petition was not pending prior to institution of the Suit, as required under Section 124(1)(a)(i)).

Section 30(2)(e) of the Trade Marks Act, 1999, providing a defence to infringement where the impugned use is of a registered mark identical/similar to another registered mark, was referenced as a precondition for invoking Section 124(1)(b), which the Defendants had not pleaded, resulting in dismissal of the Plaintiffs’ earlier Section 124 application.

Section 31 of the Trade Marks Act, 1999, making registration prima facie evidence of validity (including of user), was cited by the Plaintiffs in support of their claim to be first users, though the Court’s ultimate holdings rested principally on the documentary and oral evidence of use and registration rather than solely on this presumption.

Section 46(1) and Section 48(2) of the Trade Marks Act, 1999, concerning registered users and the concept of “use” including intention to permit use by a registered user, were referenced in relation to the Plaintiffs’ argument that use need not involve direct commercial sale by the proprietor itself.

Section 73 of the Indian Contract Act, 1872, concerning damages for breach, was invoked by the Plaintiffs in support of their claim for damages including for loss of goodwill and reputation, though the Court’s judgment left final quantification of damages for later determination.

REASONING OF THE COURT

On proprietorship, the Court reasoned in a straightforward manner from the documentary record: since Plaintiff No. 1 held continuously renewed and subsisting registrations for ‘POSTMAN’ since 1954, coupled with use since 1949 and the mark ‘POSTMAN’ had no descriptive connection with edible oil (making it an arbitrary, coined term), the highest degree of protection was warranted and the evidentiary record left no serious contest to proprietorship.

On abandonment, the Court’s reasoning proceeded by first characterizing the source of non-use (internal partnership disputes rather than any voluntary decision to exit the market), then testing whether such non-use, however lengthy, negated the requisite intention to abandon. The Court drew on the line of authority holding that use need not be physical use on goods and can include advertisement or intent to license and reasoned that the Plaintiffs’ continued vigilance — evidenced by proceedings against their own errant partner over “POSTIANO” — was inconsistent with any intention to abandon. The Court treated the Defendants’ own admission (during cross-examination) that they knew of the ‘POSTMAN’ mark’s prior existence in 2004 as undermining any claim to have filled a market “vacuum” left by genuine abandonment, since knowingly adopting a mark identical in essential feature to a known, registered mark cannot be treated as good-faith filling of a vacated space.

On revival of the interim injunction, the Court’s reasoning was essentially one of adopting the binding intra-court precedent set by the Division Bench in FAO(OS)(COMM) 341/2016, which itself rested on the Supreme Court’s ruling in Vareed Jacob that restoration of a dismissed suit restores the interim orders that were in force at the time of dismissal; the Single Judge treated this as settled and applied it directly to the facts, noting that the interim order in force at dismissal (20.12.2010) was that confirmed on 20.12.2007.

On the validity of the Defendants’ registration, the Court’s reasoning followed a straightforward Section 11(1)(b)/Section 10(3) deceptive-similarity analysis: since “POSTMAN” was the essential, dominant and phonetically identical component of both marks, the addition of the prefix “SUPER” (rendered in visually minor form on the Defendants’ packaging) did not dispel the likelihood of confusion. The Court treated the Defendants’ 2005 undertaking to the Registrar and their admitted awareness of Plaintiff No. 1’s mark as decisive evidence that the adoption was not an innocent, good-faith choice but a deliberate attempt to trade on established goodwill, reinforcing both the infringement finding and the conclusion that the registration itself should never have been granted.

On the Section 124 maintainability question, the Court reasoned textually and by reference to precedent that the phrase “pending” in Section 124(1)(a)(i) must mean pending as of the date of institution of the suit, not pending as of some later stage of the proceedings; any other reading would create a procedural loophole allowing defendants to engineer an automatic stay by filing rectification petitions after being sued, which would undermine the object of the provision and the timely disposal directed by the Supreme Court itself.

On the clarification application (IA 32689/2025), the Court’s reasoning was essentially administrative and corrective: recognizing that the earlier pronouncement had been treated as fully disposing of the Suit when in fact certain issues (passing off and damages quantification) had not been the subject of complete argument on 08.08.2025, the Court exercised its inherent power under Section 151 CPC to recall the pronouncement to the necessary extent and restore the Suit’s correct procedural status, while preserving the substantive findings already reached on the issues that had in fact been fully argued.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this judgment is significant chiefly for its application and reaffirmation of settled principles rather than the creation of new doctrine. It reaffirms that non-use of a registered trade mark caused by circumstances such as internal partnership or ownership disputes, where the proprietor otherwise remains vigilant in protecting its rights, does not amount to abandonment sufficient to defeat an infringement claim and that use of a mark for these purposes need not involve continuous physical commercial sale. It illustrates the exercise of a court’s suo motu power under Section 57(4) of the Trade Marks Act to examine and direct cancellation of a defendant’s subsequently obtained registration in the course of an infringement suit, independent of the separate stay mechanism under Section 124, reinforcing the line of authority (Data Infosys, Societe Des Produits Nestle, Anubhav Jain) treating rectification remedies as independent of the civil suit’s Section 124 mechanics. It also reinforces the narrower, suit-institution-date reading of “pending” in Section 124(1)(a)(i), consistent with Patel Field Marshal Agencies, thereby closing off a potential procedural tactic of filing rectification petitions after summons to engineer an automatic stay. The judgment’s significance is, however, tempered by its own admittedly interlocutory and partial character: it is expressly a preliminary decree resolving only certain issues (proprietorship, abandonment, revival of interim injunction, validity of the Defendants’ registration, infringement and entitlement to injunction/rendition of accounts), while passing off, damages quantification and final relief remain expressly reserved for further hearing. It does not, therefore, constitute a final, comprehensive adjudication of the dispute and its doctrinal weight should be assessed as that of a detailed interlocutory/partial final judgment in a long-running trade mark suit rather than a concluded landmark ruling.

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