The Bombay High Court has granted an interim injunction restraining a former business associate from using the marks “TRACK-ON” and “TRACK-ON EXPRESS”, holding them to be deceptively similar to the registered trademark “TRACKON” owned by Trackon Couriers (P) Ltd.
A Single Judge Bench of Justice Arif S. Doctor held that “TRACKON” constituted the dominant and essential feature of the plaintiff’s registered composite and label marks, which have been continuously and extensively used since 2002 in relation to courier and logistics services.
The plaintiff, a subsidiary of XpressBees, is the registered proprietor of several trademarks in Class 39 incorporating the word “TRACKON”. The defendant was formerly associated with the plaintiff and had used the mark during the subsistence of the business relationship. In October 2023, after being called upon to discontinue use, the defendant undertook to change its name. However, in 2024, the defendant adopted the marks “TRACK-ON” and “TRACK-ON EXPRESS” and filed a trade mark application on a “proposed to be used” basis, leading to the present suit seeking interim relief.
Allowing the interim application, the Court reiterated that registration of a composite or label mark confers exclusivity over its dominant and essential features, and unauthorised use thereof amounts to infringement under Section 29(9) of the Trade Marks Act, 1999. The Court found that the impugned marks were deceptively similar to the plaintiff’s registered marks and were used in relation to identical services.
The Court noted that the defendant had abandoned its plea of prior use and failed to establish any bona fide basis for adoption of the impugned marks. The adoption was held to be prima facie dishonest, particularly in light of the prior business relationship, correspondence evidencing an undertaking to change the name, and the defendant’s own trade mark application claiming only proposed use.
Objections raised by the defendant regarding alleged suppression of documents and lack of territorial jurisdiction were rejected. The Court held that the alleged non-disclosure did not affect the plaintiff’s entitlement to relief and that leave under Clause XII of the Letters Patent had been validly granted.
Accordingly, the defendant was restrained from using the impugned marks or any other deceptively similar variation pending disposal of the suit.
Appearances:
For the Applicant/Plaintiff: Mr. Venkatesh Dhond Sr. Adv. a/w Mr. Anand Mohan, Alhan Kayser, Varsha Vasave i/b Avesh Kayser, for the Applicant/Plaintiff.
For the Defendant: Dr. Veerendra Tulzapurkar, Sr. Adv. a/w Mr. Ankit Tiwari i/b Shashipal Shankar.
