The Bombay High Court has granted interim injunctions restraining the defendants from using the mark 'SAPAT' in relation to tea, affirming the exclusive rights of the registered proprietor under the Trade Marks Act, 1999. The Court held that the plaintiff, as the subsequent registered proprietor of the mark 'SAPAT' in Class 30, is entitled to statutory protection against infringement and passing off. The defendants' claims of prior user and independent existence of their trading entity were rejected for lack of sufficient documentary evidence and due to the assignment of the mark in favor of the plaintiff in 1995.
Background & Facts
The Genesis of the Dispute
The plaintiff, Sapat International Private Limited, claims to be the successor in title of Sapat & Co., which was founded in 1897 by Late Ramashankar Haribhai Joshi. The plaintiff asserts that the mark 'SAPAT' was used for tea since 1905 and registered in Class 30 in 1957. The plaintiff contends that the tea business and the mark 'SAPAT' were assigned to it in 1995, while the health care business was assigned to Sapat Global Health Private Limited.
Key Facts
- The plaintiff's predecessor in title secured registration of the word mark 'SAPAT' in Class 30 on 20.12.1957, with user claimed since 1896.
- The plaintiff was recorded as the subsequent proprietor of the mark 'SAPAT' in Class 30 by assignment on 05.01.1995.
- The defendants, Niravi Consumer LLP and Arjun Venture (India) LLP, are alleged to be using the mark 'SAPAT' in relation to tea through signages, adhesive tapes, and invoices.
- The defendants claim prior user of the mark 'SAPAT' through their trading name Sapat & Co. Nashik since the 1950s and independent existence as a separate entity.
- The defendants also claim to be authorized resellers of Sapat Global Health Private Limited for Class 3 and 5 products under the mark 'SAPAT NIRAVI'.
- The plaintiff issued a cease and desist notice on 04.07.2024, following the termination of supply of tea to the defendants on 19.06.2024.
Procedural History
- 28.01.2025: The Court recorded a statement by the defendants that they would not use the mark 'SAPAT' on packaged tea or while advertising packaged tea.
- 18.12.2024: Defendants filed a limited affidavit-in-reply denying the plaintiff's exclusive rights and claiming prior user and independent existence.
- 05.05.2026: The suit was reserved for orders.
- 21.07.2026: The Court pronounced its order granting interim injunctions and dismissing the defendants' application under Order 39 Rule 2A of the CPC.
Relief Sought
The plaintiff sought interim injunctions restraining the defendants from using the mark 'SAPAT' in relation to tea, including through signages, adhesive tapes, and invoices. The plaintiff also sought dismissal of the defendants' application under Order 39 Rule 2A, which alleged non-compliance with the Court's order dated 28.01.2025.
The Legal Issue
The central question was whether the plaintiff, as the registered proprietor of the mark 'SAPAT' in Class 30, is entitled to interim injunctions restraining the defendants from using the mark 'SAPAT' in relation to tea, and whether the defendants' claims of prior user and independent existence are sustainable.
Arguments Presented
For the Applicant/Plaintiff
Dr. Birendra Saraf, Senior Advocate, argued that the plaintiff is the registered proprietor of the mark 'SAPAT' in Class 30 and is entitled to exclusive use of the mark in relation to tea. He contended that the defendants' use of the mark 'SAPAT' in relation to tea constitutes infringement under Section 29 of the Trade Marks Act, 1999, and passing off. He relied on several decisions to support the plaintiff's claim, including Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. and Ors., Lupin Limited vs. Eris Lifesciences Pvt. Ltd. and Ors., and Velcro Industries B.V. and Ors. v. Velcro India Ltd.
For the Respondent/Defendants
Mr. Alankar Kirpekar, learned counsel for the defendants, argued that the defendants are prior users and adopters of the mark 'SAPAT' through their trading name Sapat & Co. Nashik since the 1950s. He contended that the defendants are entitled to use the mark 'SAPAT' in relation to tea and that the plaintiff's claim to exclusivity is not sustainable. He also argued that the defendants are authorized resellers of Sapat Global Health Private Limited for Class 3 and 5 products and that the use of the mark 'SAPAT NIRAVI' does not constitute infringement. He relied on Proctor & Gamble Health Ltd. and Anr. Vs. Horizon Biochemicals Pvt. Ltd. and Ors. and Chemco Plastic Industries Pvt. Ltd. v. M/s. Chemco Plast. to support the defendants' claim of honest and concurrent use.
The Court's Analysis
The Court examined the statutory framework under the Trade Marks Act, 1999, particularly Sections 28 and 29, which confer exclusive rights on the registered proprietor to use the mark in relation to the goods for which it is registered and provide remedies for infringement. The Court noted that the plaintiff is the subsequent registered proprietor of the mark 'SAPAT' in Class 30, as recorded by the Trade Marks Registry, and that there is no rectification application against this recordal.
"Sections 28 and 29 of the Trade Marks Act,1999 uses the expression 'in relation to goods or services in respect of which the trade mark is registered' and recognises the exclusive right of the registered proprietor to use the mark in relation to the goods and services in respect of which the trade mark is registered."
The Court rejected the defendants' claim of prior user and independent existence, noting that the defendants failed to produce sufficient documentary evidence to substantiate their claims. The Court observed that the defendants' reliance on a solitary invoice from 1990 and a shop act license from 1973 was insufficient to establish prior user or independent existence, particularly given the assignment of the mark in favor of the plaintiff in 1995.
"The solitary purchase invoice of the year 1990, even otherwise, is prior to the assignment of the mark SAPAT in respect of tea in favour of Plaintiff. Defendant No.2 seeks to raise a claim of independent existence of Sapat & Co. Nashik and right to use 'SAPAT' as part of trading name and not as trade mark."
The Court also rejected the defendants' claim of acquiescence, noting that the defendants' use of the mark 'SAPAT' was by reason of a common law license granted by the plaintiff during the subsistence of their commercial relationship. The Court held that the defendants' continued use of the mark 'SAPAT' in relation to tea after the termination of their commercial relationship constitutes infringement and passing off.
The Court applied the test for passing off, as laid down in Laxmikant V. Patel v. Chetanbhat Shah and Ors., and found that the plaintiff had established goodwill and reputation in the mark 'SAPAT' in relation to tea, and that the defendants' use of the mark constituted misrepresentation and was likely to cause damage to the plaintiff's goodwill and reputation.
"The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders."
The Court also considered the balance of convenience and held that it tilted in favor of the plaintiff, given the plaintiff's exclusive rights as the registered proprietor and the defendants' failure to establish prior user or independent existence.
The Verdict
The Court allowed the plaintiff's interim application (IA No. 6387 of 2025) and granted interim injunctions restraining the defendants from using the mark 'SAPAT' in relation to tea. The Court dismissed the defendants' application under Order 39 Rule 2A (IA(L) No. 18951 of 2025) for alleged non-compliance with the Court's order dated 28.01.2025. The Court also granted a stay of the order for a period of four weeks.
The Court directed the defendants to refrain from manufacturing, packaging, marketing, selling, or advertising tea or similar goods bearing the mark 'SAPAT' or any mark identical with or similar to the plaintiff's mark 'SAPAT' in Class 30. The Court also restrained the defendants from using the mark 'SAPAT' in relation to counters, outlets, or stores for selling tea or similar goods or services.
What This Means For Similar Cases
The Exclusive Right of Registered Proprietors Is Non-Negotiable
- Registered proprietors of trademarks are entitled to exclusive use of their marks in relation to the goods or services for which the marks are registered, as provided under Section 28 of the Trade Marks Act, 1999.
- Claims of prior user or independent existence by defendants must be supported by robust documentary evidence, particularly where the mark has been assigned to the plaintiff.
- Courts will not entertain claims that render assignments nugatory or undermine the statutory protection afforded to registered proprietors.
Documentary Evidence Is the Cornerstone of Prior User Claims
- Defendants seeking to establish prior user must produce voluminous documentary evidence, including partnership deeds, invoices, and other records spanning decades.
- A solitary invoice or license is insufficient to establish prior user or independent existence, particularly where the mark has been assigned to the plaintiff.
- Courts will scrutinize the nexus between the defendants' claimed entity and the mark, particularly where the defendants' use of the mark is intertwined with the plaintiff's business.
Passing Off Requires Clear Misrepresentation and Damage
- The test for passing off, as laid down in Laxmikant V. Patel v. Chetanbhat Shah and Ors., requires proof of goodwill, misrepresentation, and damage.
- Misrepresentation may arise from the use of signages, adhesive tapes, or invoices that associate the defendants' goods with the plaintiff's mark, even where the defendants claim to have taken steps to indicate the source of origin.
- Courts will consider the likelihood of initial interest confusion, particularly where the defendants' outlets sell both the plaintiff's goods and the defendants' goods under the same signage.
