Bombay High Court Rejects Rynox’s Injunction Plea, Cites False Claims and Absence of Market Goodwill

Bombay High Court Rejects Rynox’s Injunction Plea, Cites False Claims and Absence of Market Goodwill

Introduction

The Bombay High Court refused to grant interim injunction to Rynox Gears in its trademark dispute with Steelite India over the mark “RHYNOX”, holding that the plaintiff failed to establish a prima facie case and had approached the Court with false statements on oath, disentitling it from equitable relief.

Factual Background

Rynox Gears, a partnership firm established in 2012, claimed rights over the registered trademark “RYNOX” in relation to motorcycle protective gear. It alleged that Steelite India was using the mark “RHYNOX” for helmets, which was phonetically and visually similar, thereby causing confusion in the market. The plaintiff asserted prior adoption and use of the mark and contended that it had built goodwill in the industry. It further claimed that a cease-and-desist notice was issued in October 2023 and that the defendant had temporarily discontinued use before resuming in 2024. However, the defendant maintained that it had been independently using the mark for helmets since 2016–2017 and had secured registration after conducting due diligence.

Procedural Background

The plaintiff filed a suit before the Bombay High Court seeking interim injunction against the defendant’s use of the mark “RHYNOX”. The matter came up before Justice Sharmila U. Deshmukh, who examined whether the plaintiff had made out a case for grant of interim relief on grounds of trademark infringement and passing off.

Issues

1. Whether the plaintiff was entitled to interim injunction for trademark infringement against a registered proprietor.

2. Whether the plaintiff established a prima facie case of passing off.

3. Whether suppression of material facts and false statements disentitled the plaintiff to equitable relief.

Contentions of Parties

The plaintiff contended that “RHYNOX” was deceptively similar to its registered mark “RYNOX” and that such use in relation to similar goods would lead to confusion among consumers. It asserted prior use and goodwill in the mark and sought injunctive relief. The defendant, on the other hand, argued that both parties held registered trademarks and that infringement could not be claimed in such circumstances. It further contended that it had adopted the mark after conducting a trademark search and had been using it independently for several years in the helmet segment.

Reasoning and Analysis

The Court held that where both parties are registered proprietors, a claim for infringement is generally not maintainable unless the rival registration is shown to be invalid or fraudulent, which was not established in the present case. It further observed that the defendant had adopted the mark after conducting due diligence and that the plaintiff’s mark was published subsequently. The Court also found that the plaintiff had made false statements on oath, including incorrect claims regarding its presence in the helmet segment since 2012 and the alleged service of a cease-and-desist notice. It noted that the plaintiff had no established goodwill in the helmet market, while the defendant had been operating in that segment since 2016–2017.

On the issue of passing off, the Court held that the plaintiff failed to establish the essential elements of goodwill, misrepresentation, and damage. It also observed that the defendant’s branding included distinguishing features such as a rhinoceros device and stylised lettering, reducing the likelihood of confusion. The Court emphasized that equitable relief cannot be granted to a party that approaches the Court without clean hands.

Decision

The Bombay High Court dismissed the interim application, holding that no prima facie case was made out for grant of injunction on grounds of either infringement or passing off.

In this case the plaintiff was represented by Advocates Amreen Khan, Kanishka Chawla i/b Snehashree Hinge. Meanwhile the respondent was represented by Advocates Anand Mohan with Prasad A. Kamthe and Aditya Agarwal.