Delhi High Court Dismisses Trademark Appeals | Marks Are Strikingly Similar And Likely To Confuse Public In Same Business Domain
Safiya Malik
The High Court of Delhi Division Bench of Justice Navin Chawla and Justice Harish Vaidyanathan Shankar dismissed two connected appeals challenging interim injunction orders issued by the District Judge in a commercial trademark dispute. The Court held that the District Judge committed no error in rejecting the appellant’s application seeking vacation of the injunction and confirmed that the injunction granted ex-parte would remain in place. The Court directed that the appeals be dismissed and clarified that its findings were only prima facie observations and would not bind the trial court at the final stage of adjudication.
The appeals arose in the context of a commercial trademark dispute between two entities engaged in the software and IT services industry. The respondent, incorporated in 1992, is engaged in the business of software product development and serves clients across various sectors, including banking, insurance, and healthcare. The respondent claimed to be the registered proprietor of several trademarks under the name “NEWGEN,” registered in 1999 with user claims dating from 1992, covering goods and services in Classes 09, 16, 35, and 42.
The respondent stated that over the years, it had invested significantly in the promotion and advertisement of its business under the “NEWGEN” marks, using various media including newspapers, magazines, television commercials, sponsorships, pamphlets, and hoardings.
In June 2023, the appellant approached the respondent with a proposal to enter into a partnership agreement for mutual collaboration. This culminated in the execution of a Partnership Agreement on 12 July 2023. At the time of entering into the agreement, the appellant operated under the name “VCARE InfoTech Solutions and Services Pvt. Ltd.” The agreement included Article 14, which acknowledged the respondent’s exclusive rights over its registered and unregistered trademarks and provided that the appellant could use the marks only under the terms of the agreement.
On 16 July 2024, the appellant informed the respondent that it had changed its name to “NewGen IT Technologies Limited,” providing a new Certificate of Incorporation dated 10 July 2024 and a declaration announcing the rebranding. The respondent discovered that the appellant had applied for registration of the mark “NEWGEN IT” in Class 42 under application no. 5139598, with a claimed user date of 21 October 2015. The respondent also found that further applications for registration in Classes 16, 35, and 42 had been filed on 29 January 2025 under application nos. 6829503, 6829504, and 6829505.
The respondent issued a cease-and-desist letter dated 15 September 2024, terminating the partnership agreement and demanding that the appellant stop using the impugned marks. It also filed an application under Section 16(1) of the Companies Act, 2013 before the Regional Director, Northern Region, seeking rectification of the appellant’s corporate name. Additionally, the respondent filed objections before the Securities and Exchange Board of India (SEBI) in January 2025, alleging nondisclosure of material facts in the appellant’s Draft Red Herring Prospectus submitted in connection with its proposed Initial Public Offering.
On 27 February 2025, the District Judge passed an ex-parte ad-interim injunction restraining the appellant, its affiliates, employees, agents, and associates from using the marks “NEWGEN,” “NEWGEN IT,” and the corporate name “NewGen IT Technologies Limited,” or any similar variation. The court also appointed a Local Commissioner to inspect the appellant’s premises and secure any infringing material.
The appellant challenged the order by filing an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, arguing that the injunction had been obtained without notice and on the basis of alleged misrepresentations. The appellant contended that it had been using the impugned mark since 2017 through entities incorporated in Singapore, UAE, UK, and Australia. It stated that it had registered and operated the domain www.newgenit.com since 2017 and had used the domain in correspondence and legal notices exchanged with the respondent before and after the execution of the partnership agreement. The appellant argued that the respondent had acquiesced in the use of the impugned marks and that the term “NEWGEN” was commonly used by many businesses as an abbreviation for “New Generation.” It also submitted that the respondent had no exclusive statutory right over the word “NEWGEN,” as the relevant trademark registration carried a disclaimer, and similar marks were in use by multiple third parties in the IT sector.
In its response, the respondent stated that the appellant had adopted the name “NewGen IT Technologies Limited” only in July 2024, after having conducted business in India as “VCARE InfoTech Solutions and Services Pvt. Ltd.” It relied on the timeline of its trademark registrations dating from 1992 to 2014 and contended that its rights predated any use by the appellant. The respondent submitted that the defendant’s conduct violated the express terms of the partnership agreement, in which the appellant acknowledged the respondent’s exclusive rights. It argued that there was no suppression of material facts and that its rights had been infringed by the adoption of a deceptively similar mark and name by the appellant.
The District Judge, by order dated 5 March 2025, dismissed the appellant’s application, finding no grounds to vacate the interim injunction. The court held that the similarity in names was sufficient to create confusion among the general public and found that the appellant had failed to make out a prima facie case warranting the setting aside of the ex-parte ad-interim injunction.
The High Court recorded that the appeals challenged interim injunction orders passed in the exercise of discretionary jurisdiction. It stated in reference to the legal standard that, “In such appeals, the appellate court will not interfere with the exercise of discretion of the court of the first instance and substitute its own discretion, except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely, or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions.”
The Court recorded that, “The appellate court is not entitled simply to say that if the judge had jurisdiction and had all the facts before him, the appellate court cannot review his order unless he is shown to have applied a wrong principle.”
On the facts of the case, the Court stated that, “We firmly reject the Appellant’s argument. First, it is an indisputable fact that the Appellant was fully aware that a suit seeking an interim injunction could be filed, as in anticipation of this, the Appellant proactively filed a caveat.”
Regarding the merits, the Court observed that, “We are also of the considered view that the two marks, namely, the Subject Marks of the Respondent and the Impugned Mark adopted by the Appellant, are strikingly similar, and both entities operate within the same business domain.” It added that, “The dominant element in both, the Appellant’s and Respondent’s marks is the word ‘Newgen’, and the distinction between their respective goods or services… is subtle and not readily apparent to the general public.”
The Court noted that the appellant had operated in India under a different name and that the respondent’s prior use of the Subject Marks dated back to 1992. It further recorded, “The argument that the Appellant had an online and global presence with the mark ‘Newgen IT’... does not establish the necessary trans-border reputation or recognition that would qualify as a defense against infringement.”
On the issue of acquiescence, the Court stated, “Acquiescence implies positive acts; not merely silence or inaction. The conduct relied upon by the appellant does not meet the threshold required to establish such a defence.”
Addressing the evidentiary value of Article 14 of the partnership agreement, the Court noted that it explicitly recognised the respondent’s proprietary rights, stating, “The central fact remains that the Respondent was operating under the name and style of NEWGEN Software, while the Appellant was known domestically as VCare Infotech Solutions, making the Respondent’s knowledge of the Appellant’s operations in foreign jurisdictions immaterial.”
The Court recorded that the trademark applications filed by the appellant had faced objections from the Trademark Registry due to similarity with the respondent’s marks and noted that the IPO filing had been done in the same name which was already in dispute. It concluded that the ex-parte ad-interim injunction was justified.
The High Court held that it found no merit in the appeals filed against the interim orders passed by the learned District Judge. It recorded that the learned District Judge committed no error in rejecting the appellant’s application under Order XXXIX Rule 4 of the Code of Civil Procedure and in confirming the ex-parte ad-interim injunction. The Court ordered that the appeals be dismissed.
The Court stated that its findings in the present judgment were only prima facie in nature and made for the limited purpose of deciding the question of interim relief. It clarified that these findings would not bind or prejudice the trial court when deciding the suit on merits after both parties have led evidence.
Accordingly, the appeals were dismissed.
Advocates Representing the Parties
For the Petitioners: Mr. Rajiv Nayar and Ms. Malvika Trivedi, Senior Advocates with Mr. Anirudh Bakhru, Ms. Vaishali Mittal, Mr. Siddhant Chamola, Mr. Saurabh Seth, Mr. Prabhav Bahuguna, Ms. Pallavi Bhatnagar, and Ms. Saijal Arora, Advocates.
For the Respondents: Mr. Sandeep Sethi and Mr. Ankit Jain, Senior Advocates with Mr. J.V. Abhay, Mr. Dhruv Grover, Mr. Abhineet Kalia, Ms. Riya Kumar, and Mr. Rishabh Jain, Advocates.
Case Title: Newgen IT Technologies Limited v. Newgen Software Technologies Limited
Neutral Citation: 2025: DHC:4964-DB
Case Number: FAO (COMM) 73/2025 and FAO (COMM) 75/2025
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