Delhi High Court Rejects Injunction Against ‘NOKUF’, Reaffirms Prior User Doctrine

Delhi High Court Rejects Injunction Against ‘NOKUF’, Reaffirms Prior User Doctrine

Introduction

In an important reaffirmation of the prior user principle in trademark law, the Delhi High Court has declined to restrain a city-based Ayurvedic drug manufacturer from using the mark “NOKUF” for cough syrups. The Court held that long-standing use of the mark since 1994 by Dehlvi Remedies Private Limited defeats the later claim of Sana Herbals Private Limited, which markets its product as “NOKUFSYRUP.”

Factual Background

Dehlvi Remedies has been using the trademark “NOKUF” in relation to cough syrups since 1994 and holds a trademark registration dating back to June 1996. Sana Herbals, on the other hand, relied on a trademark registration granted in May 2015, along with an assignment deed dated September 1999, to assert ownership over the mark “NOKUFSYRUP.” Sana Herbals alleged that Dehlvi Remedies had abandoned the mark due to non-use and claimed goodwill arising in its favour during the alleged period of non-use.

Procedural Background

Sana Herbals filed a suit seeking an interim injunction before the Commercial Court at Tis Hazari, which declined to grant relief. Aggrieved, Sana Herbals preferred an appeal before a Division Bench of the Delhi High Court. The appeal was heard by Justices C Hari Shankar and Om Prakash Shukla, culminating in a judgment delivered on January 5, 2026.

Issues

1. Whether Sana Herbals was entitled to an interim injunction restraining Dehlvi Remedies from using the mark “NOKUF”.

2. Whether prior and continuous use of the mark by Dehlvi Remedies defeated Sana Herbals’ claim.

3. Whether a case of passing off was made out despite Dehlvi Remedies’ registered trademark.

4. Whether alleged non-use and abandonment could justify interim relief.

Contentions of the Parties

Appellant: Sana Herbals argued that it was the lawful owner of the mark based on its 2015 registration and the 1999 assignment deed. It contended that Dehlvi Remedies had abandoned the mark due to non-use and that Sana Herbals had, in the meantime, acquired goodwill and reputation in the market.

Respondents: Dehlvi Remedies countered that it was the prior user of the mark since 1994 and held a valid trademark registration from 1996. It denied any abandonment and challenged the validity of the assignment deed relied upon by Sana Herbals, asserting that its rights were statutorily protected.

Reasoning and Analysis

At the outset, the Division Bench relied on the Supreme Court’s decision in S. Syed Mohideen v. P. Sulochana Bai, observing that no action for trademark infringement can lie against a registered proprietor. Since “NOKUF” stood registered in favour of Dehlvi Remedies, the Court held that Sana Herbals’ infringement claim was barred.

The Court clarified, however, that a passing off claim could still be examined. On this aspect, it noted that Sana Herbals had not objected to Dehlvi Remedies’ use of the mark during the period 1994 to 1999, which was critical for assessing prior user rights under Section 34 of the Trade Marks Act. The Bench observed that what matters is use by the defendant, irrespective of whether such use was continuous or sporadic. Rejecting Sana Herbals’ claim of having acquired goodwill during an alleged period of non-use, the Court emphasised that to succeed in passing off, the plaintiff must establish that its goodwill predates the defendant’s adoption of the mark, which was not the case here.

The Court also found serious deficiencies in the assignment deed relied upon by Sana Herbals. Since the deed did not expressly transfer goodwill and was executed under the Trade and Merchandise Marks Act, 1958 which prohibited assignment without goodwill, the Court held that it could not be relied upon at the interim stage. On the plea of abandonment, the Court held that non-use of a registered trademark is a matter for rectification proceedings and cannot form the basis for granting an interim injunction.

Decision

The Delhi High Court dismissed the appeal and upheld the Commercial Court’s refusal to grant interim relief. It held that Dehlvi Remedies’ prior use and registration of the mark “NOKUF” since 1994 was fatal to Sana Herbals’ claim, and that no case for infringement or passing off was made out at the interim stage.

In this case the plaintiff was represented by Mr. J. Sai Deepak, Sr. Adv with Mr. M.K. Miglani, Mr. R. Abhishek, Mr. Amit Tomar and Mr. Hardik Gogia, Advocates. Meanwhile the defendant was represented by Ms. Swathi Sukumar, Sr. Adv. with Ms. Tanzeela, Ms. Ritika Aggarwal, Mr. Ritik Raghuwanshi, Ms. Shrudula Murthy and Ms. Pratibha Singh, Advocates.