Too Early to Sue? The Delhi High Court Weighs in on Pre-Use Infringement Claims

Introduction

In the realm of Intellectual Property litigation, the doctrine of quia timet raises an intriguing question; can the Courts grant anticipatory relief even before any actual infringement has taken place? The recent decision of the Delhi High Court in Deepak Kumar Khemka v. Yogesh Kumar Jaiswal[1], reiterates the stringent evidentiary threshold that Plaintiffs must meet before Courts will entertain such pre-emptive actions. The Court’s judgment elucidates the boundaries of quia timet actions within the framework of Indian Trademark law.

Procedural History and Facts

The Appellant, Deepak Kumar Khemka, is engaged in the business of manufacturing and selling tobacco-related products under its trademarks, including “SHUDH”, “SHUDH PLUS”, and “SHUDH PLUS ULTRA LABEL”. In February 2024, the Respondent applied for registration of its mark “ATS SHUDH” in Class 34 (covering tobacco and related products), on a proposed to be used basis. The Appellant filed an Opposition to the said Application after it was published in the Trade Marks Journal. Alongside, the Appellant also filed a civil suit before the Commercial Court, seeking a decree of permanent injunction against the Respondent. This suit was premised on the apprehension that the Respondent was likely to introduce goods bearing its mark “ATS SHUDH” into the market, which allegedly would infringe upon the Appellants existing trademark rights. Market inquiries, however, revealed no evidence of such use. Despite the absence of commercial activity, the Appellant urged that the very act of applying for registration implied a credible threat of infringement.

The Commercial Court, however, dismissed the Plaint under Order VII Rule 11(a) of the Civil Procedure Code, ruling that no cause of action existed. The Appellant subsequently filed the present Appeal contesting this dismissal.

Issues

The questions before the Court were:

1. Whether the mere act of filing a Trademark Application could fall within the scope of Section 29 of the Trade Marks Act, 1999 in relation to infringement proceedings, and;

2. Whether a quia timet action was maintainable in the absence of credible and specific evidence pointing to a real and proximate likelihood of the impugned mark being used in a manner that could result in harm.

Appellant’s Contentions

The Appellant argued that the Respondent’s Application to register a deceptively similar mark indicated an intent to enter the market, thereby creating a reasonable apprehension of future infringement. He contended that injunctive relief should not be denied solely due to the absence of actual use, especially where the threat is credible and harm to brand goodwill is foreseeable.

Further, the Appellant contended that Opposition proceedings before the Trade Marks Registry are insufficient to safeguard substantive rights under the Trade Marks Act. He argued that Civil Courts must remain accessible in circumstances where procedural remedies may not provide timely or adequate protection.

Respondent’s Defence

The Respondent refuted any claim of infringement, asserting that the Application was made on a proposed to be used basis and no product had been launched in the market. It was highlighted that the Appellant’s own market inquiries had failed to uncover any preparatory steps or promotional activities linked to the impugned mark. The Respondent also emphasized that the Appellant had already availed the appropriate statutory remedy by opposing the Trademark Application and that the institution of a civil suit in the absence of actionable use was premature and unwarranted.

Court’s Analysis

The Court upheld the Commercial Court’s decision, affirming that the Plaint disclosed no actionable cause for either Trademark infringement or a maintainable quia timet suit. The Court placed significant reliance on the binding authority of the Supreme Court’s rulings in K. Narayanan v. S. Murali[2], and Dhodha House v. S.K. Maingi[3]. These decisions were interpreted to establish that no infringement action can lie unless the impugned mark is used in the course of trade. Rejecting the Appellant’s attempt to limit K. Narayanan to the context of passing off, the Court held that the observations in that case were broadly formulated and equally applicable to infringement suits. As noted in Paragraph 24 of the judgment:

“before registration is granted for the trademark, there is no right in the person to assert that the mark has been infringed and that a proposed registration which may or may not be granted will not confer a cause of action to the plaintiff…”[4]

The Court further reiterated that ‘use in the course of trade’ is the foundational requirement for an infringement action under Section 29 of the Trade Marks Act. The filing of an Application for registration, even if it suggests intent, does not itself give rise to actionable infringement.

The Court summarised its position succinctly in Paragraph 21:

“The trigger point for an infringement action is use, not registration of the plaintiff’s mark, or a mark which is identical or deceptively similar thereto, by the defendant.”

While recognizing the doctrine of quia timet as a valid equitable remedy, the Court held that its invocation requires credible, cogent evidence of an imminent threat. The Plaintiff must show that infringement is not only probable but imminent and unavoidable, failing which the action amounts to mere conjecture. As emphasized in Paragraph 23:

“Even on facts, the learned Commercial Court has found that no supportive material to sustain a quia timet action on the ground of apprehension of use of the allegedly infringing mark by the respondents, was made out.”[5]

The Court noted that the Plaint contained no factual foundation, documentary evidence, or investigative material to suggest that goods bearing the impugned mark were in the pipeline. On the contrary, it was an admitted position that no products were found in the market. Moreover, the Court concluded that the Appellant’s remedy lay before the Trade Marks Registry, where Opposition proceedings had already been initiated. The civil suit was thus premature, being based on speculative apprehension rather than a matured dispute.

Conclusion

The Delhi High Court’s ruling provides critical doctrinal clarity on the interplay between procedural safeguards under Trademark law and substantive remedies under infringement jurisprudence. It draws a clear line between speculative apprehension and actionable threat, reiterating that anticipatory suits must rest on material evidence indicating imminent use, rather than abstract fear. It cautions against prematurely burdening civil courts with speculative claims and reiterates that anticipatory legal strategies must be grounded in credible risk assessment. In doing so, it aligns Indian jurisprudence with a disciplined, evidence-oriented approach to IP enforcement.

Vrinda Harmilapi

Associate

vrinda.harmilapi@iprattorneys.com

References:

[1] Deepak Kumar Khemka v. Yogesh Kumar Jaiswal & Ors.,RFA(COMM) 381/2025

[2] K. Narayanan v. S. Murali, (2008) 10 SCC 479

[3] Dhodha House v. S.K. Maingi, (2006) 9 SCC 41

[4] Supra note 2

[5] Supra note 1