Risk of Claiming a Registered Trademark as a Descriptive Trademark in a TM Infringement Suit

Table of Contents

• 1. Bibliographic Details of the Judgment: Claiming a Registered Trademark as a Descriptive Trademark
• 2. Brief Facts of the Case: When a Competing Business Claiming Our Registered Trademark as “Descriptive” or “Generic” Emerges
• 3. Timelines of the Case: From Adoption to Rectification Petition
• 4. Arguments Presented by the Plaintiffs and the Defendants
  • 4.1. Plaintiffs’ Contentions: The Importance of Dominant Word in a Trademark and Protection of Prior Goodwill
  • 4.2. Defendants’ Contentions: Invalidity Pleas and Assertions on the Impact of Suffixing a Keyword on the Validity of a Trademark
• 5. Core Legal Issues and Principles Addressed by the Hon’ble Court
  • 5.1. Can a defendant claim a registered trademark is descriptive after applying to register the same mark? (Plaintiffs’ Estoppel Argument vs. Defendants’ Invalidity Plea)
  • 5.2. Deceptive Similarity and the Importance of Dominant Word in a Trademark (Plaintiffs vs. Defendants)
  • 5.3. Evaluating the Phonetic Use of a Symbol of a Registered Wordmark
  • 5.4. The Impact of Suffixing a Keyword on the Validity of a Trademark (Defendants’ Defense)
  • 5.5. Passing Off and Commercial Loss: Prior Goodwill vs. Defendants’ Higher Sales Volume
• 6. Legal Precedents Relied Upon by the Hon’ble Court
• 7. Operative Portion of the Judgment
• 8. Conclusion – Learning / Takeaways for Plaintiff and Defendant
• 9. Frequently Asked Questions

1. Bibliographic Details of the Judgment: Claiming a Registered Trademark as a Descriptive Trademark

When an intellectual property dispute reaches the Hon’ble Court, claiming a registered trademark as a descriptive trademark often becomes a primary defense strategy for the accused infringers. The following bibliographic details outline a recent commercial litigation where the Hon’ble High Court of Delhi examined the validity of such a defense, especially when a competing business claiming our registered trademark as “descriptive” or “generic” enters the market.

• Title of the Judgment: NIPPON PAINT (INDIA) PRIVATE LIMITED versus GLOSSY PAINTS INDIA PVT. LTD. & ANR. along with the connected commercial suit GLOSSY PAINTS INDIA PVT. LTD. & ANR. versus NIPPON PAINT (INDIA) PRIVATE LIMITED & ORS.
• Name of the Judge: Hon’ble Mr. Justice Tejas Karia
• Citation Number of the Judgment: 2026:DHC:3003
• Date of the Judgment: 10/04/2026

2. Brief Facts of the Case: When a Competing Business Claiming Our Registered Trademark as “Descriptive” or “Generic” Emerges

The dispute stems from a clash between two entities operating within the identical trade channels of the paint industry. The Plaintiffs, Glossy Paints India Pvt. Ltd. & Anr., are engaged in manufacturing and selling decorative and industrial paints, varnishes, lacquers, and related goods. According to the Plaintiffs’ version, they adopted the trademark ‘INFINITY’ in the year 2001 and successfully secured its registration under Class 2. The Plaintiffs discovered the Defendants’ competing goods in August 2024, which were being promoted and sold on an e-commerce platform. To protect the importance of dominant word in a trademark, the Plaintiffs filed a suit seeking a decree of permanent injunction against the Defendants to restrain them from using the allegedly infringing mark.

On the other side, the Defendants, Nippon Paint (India) Private Limited & Ors., are part of a global entity with substantial international presence and extensive marketing investments in India. The Defendants adopted their mark on a proposed-to-be-used basis on August 6, 2022, filing a trademark application for identical paint products. During the pendency of the commercial suit, an initial attempt at resolving the matter occurred when the parties were referred to the Delhi High Court Mediation and Conciliation Centre, as the Defendants had expressed a willingness to give up the impugned mark.

However, the mediation failed to fructify. Subsequently, Defendant No. 1 filed a Rectification Petition aiming to remove the Plaintiffs’ registered mark from the Register of Trade Marks. The core of the Defendants’ attack rested on claiming a registered trademark as a descriptive trademark, arguing that the term was common to the trade. This factual progression forced the Hon’ble Court to evaluate a critical question: Can a defendant claim a registered trademark is descriptive after applying to register the same mark?. Furthermore, the factual matrix required the Hon’ble Court to assess the phonetic use of a symbol of a registered wordmark, specifically the infinity symbol, and determine the impact of suffixing a keyword on the validity of a trademark.

Understanding these foundational facts is essential, especially when dealing with a competing business claiming our registered trademark as “descriptive” or “generic”. If you are assessing the impact of suffixing a keyword on the validity of a trademark or need to evaluate the phonetic use of a symbol of a registered wordmark, it is critical to get expert assistance. Do not let the legal risks associated with claiming a registered trademark as a descriptive trademark harm your established business identity.

3. Timelines of the Case: From Adoption to Rectification Petition

The chronological sequence of events is vital in understanding the context in which a competing business claiming our registered trademark as “descriptive” or “generic” operates. The timelines help the Hon’ble Court decode whether can a defendant claim a registered trademark is descriptive after applying to register the same mark.

• July 1, 2001: The Plaintiffs claimed adoption and user date for the Subject Mark regarding paint products.
• May 23, 2002: Plaintiff No. 1 filed an application for the registration of the mark under Class 2.
• April 5, 2003: The Learned Registrar of Trade Marks issued an Examination Report objecting to the mark under Section 9 of the Act.
• April 19, 2003: Plaintiff No. 1 submitted a reply asserting the mark was distinctive, eventually securing registration valid up to 2032.
• August 6, 2022: Defendant No. 1 adopted the impugned mark and filed for its registration on a proposed-to-be-used basis.
• January 11, 2023: The Examination Report for Defendant No. 1’s application cited the Plaintiffs’ registered mark as an objection, providing the Defendants with knowledge of the prior mark.
• August 2024: The Plaintiffs discovered the Defendants’ products being promoted online, leading to a formal cease-and-desist notice on August 22, 2024.
• November 8, 2024: The Plaintiffs officially filed an opposition against the Defendants’ trademark application.
• April 4, 2025: During the commercial suit, the Hon’ble Court referred the parties to mediation as the Defendants initially expressed a willingness to give up the impugned mark.
• May 13, 2025: The Hon’ble Court recorded that the mediation failed.
• July 25, 2025: During the pendency of the suit, Defendant No. 1 filed a Rectification Petition to remove the Plaintiffs’ mark from the registry. This belated filing highlighted the strategic risk of claiming a registered trademark as a descriptive trademark as a mere afterthought in litigation.

4. Arguments Presented by the Plaintiffs and the Defendants

The timeline clearly shows a transition from initial settlement talks to an aggressive invalidity plea by the Defendants. Consequently, the Hon’ble Court heard extensive arguments from both sides regarding the impact of suffixing a keyword on the validity of a trademark and the phonetic use of a symbol of a registered wordmark. The dispute required the Hon’ble Court to evaluate the importance of dominant word in a trademark alongside the defenses raised by a competing business claiming our registered trademark as “descriptive” or “generic”.

4.1. Plaintiffs’ Contentions: The Importance of Dominant Word in a Trademark and Protection of Prior Goodwill

The Plaintiffs argued that they adopted the mark in 2001 and have been the registered proprietors with continuous use. They heavily emphasized the importance of dominant word in a trademark, pointing out that the Defendants’ label completely subsumes their registered wordmark as its most prominent feature. To strengthen their case for deceptive similarity, the Plaintiffs raised concerns regarding the phonetic use of a symbol of a registered wordmark. They argued that the infinity symbol used by the Defendants will be spoken and read exactly as their registered word, leading to phonetic identity and massive consumer confusion within identical trade channels. Furthermore, to counter the Defendants’ tactic of claiming a registered trademark as a descriptive trademark, the Plaintiffs stated that because Defendant No. 1 had applied for the exact same mark, they were legally estopped from asserting it was generic. This perfectly encapsulated the core question for the Hon’ble Court: can a defendant claim a registered trademark is descriptive after applying to register the same mark?.

4.2. Defendants’ Contentions: Invalidity Pleas and Assertions on the Impact of Suffixing a Keyword on the Validity of a Trademark

The Defendants countered by raising an invalidity plea, strongly claiming a registered trademark as a descriptive trademark. They asserted that the word itself is common to the trade for paint products, pointing out that even the Learned Registrar had initially raised a Section 9 objection. Relying on visual and structural differences, they argued about the impact of suffixing a keyword on the validity of a trademark, noting their label added descriptive words like ‘TIMELESS’ and ‘APPEAL’. Furthermore, they argued that their mark was sufficiently distinguishable because it was used alongside their prominent house brand name. By demonstrating massive sales of Rs. 34.21 Crores compared to the Plaintiffs’ Rs. 1.27 Crores, the Defendants argued that no goodwill was misappropriated and no irreparable injury was caused. The Defendants effectively represented the classic stance of a competing business claiming our registered trademark as “descriptive” or “generic” to justify their subsequent adoption.

5. Core Legal Issues and Principles Addressed by the Hon’ble Court

The dispute raised several pivotal legal questions under the Trade Marks Act, 1999, specifically regarding estoppel, deceptive similarity, descriptive challenges, and passing off.

5.1. Can a defendant claim a registered trademark is descriptive after applying to register the same mark? (Plaintiffs’ Estoppel Argument vs. Defendants’ Invalidity Plea)

The Hon’ble Court evaluated the maintainability of a competing business claiming our registered trademark as “descriptive” or “generic” after having applied for registration of the very same mark. The Plaintiffs contended that Defendant No. 1, having sought statutory monopoly for an identical mark in Class 2, was legally estopped from attacking the Subject Mark as descriptive. The Hon’ble Court upheld this position, quoting directly from its precedent in Automatic Electric Ltd. v. R.K. Dhawan:

“16. The defendants got their trade mark “DIMMER DOT” registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in “DIMMER DOT”, it does not lie in their mouth to say that the word “DIMMER” is a generic expression…..”

Applying this principle, the Hon’ble Court held that:

“Having applied for the registration of the Impugned Mark, there is force in the Plaintiffs’ contention that Defendant No. 1 is estopped from claiming that the Subject Mark is descriptive / non-distinctive in nature, when used for paints and allied goods.”

Furthermore, the Hon’ble Court observed that the plea of invalidity and rectification was an afterthought raised only after mediation failed, reaffirming that a defendant cannot challenge distinctiveness when they have applied for the identical mark.

5.2. Deceptive Similarity and the Importance of Dominant Word in a Trademark (Plaintiffs vs. Defendants)

Evaluating deceptive similarity under Section 29(2)(c) of the Trade Marks Act, 1999, the Hon’ble Court stressed the importance of dominant word in a trademark. The Defendants contended that visual differences, label packaging, and distinct house marks eliminated confusion. However, the Hon’ble Court observed:

“A comparison of the competing Marks makes it clear that the Impugned Mark has completely subsumed the Subject Mark, i.e., the word ‘INFINITY’ in the label, along with the symbol of ‘INFINITY’, i.e., ‘∞’, in addition to the suffix ‘TIMELESS APPEAL’. The word ‘INFINITY’ and the symbol’∞’ are prominently highlighted in the Impugned Mark and constitute dominant features of the Impugned Mark.”

5.3. Evaluating the Phonetic Use of a Symbol of a Registered Wordmark

The Hon’ble Court closely assessed the phonetic use of a symbol of a registered wordmark where visual signs mirror spoken words. The Hon’ble Court held:

“It is also imperative to note that the said symbol’s spoken use is phonetically identical to the Subject Mark, i.e., ‘INFINITY’.”

Thus, incorporating the mathematical symbol ‘∞’ alongside the word ‘INFINITY’ creates complete phonetic identity with the registered wordmark, heightening the likelihood of consumer deception in identical trade channels.

5.4. The Impact of Suffixing a Keyword on the Validity of a Trademark (Defendants’ Defense)

Addressing the defense regarding the impact of suffixing a keyword on the validity of a trademark, the Defendants argued that adding ‘TIMELESS APPEAL’ created a distinctive composite label. The Hon’ble Court categorically rejected this argument, observing:

“Further, mere addition of the suffix ‘TIMELESS APPEAL’ to the Word ‘INFINITY’ and its symbol ‘∞’, does not render the Impugned Mark distinct from the Subject Mark considering that the Subject Mark along with its symbol, is retained as the dominant feature of the Impugned Mark. Therefore, in view of the above analysis, it clear that the Impugned Mark is prima facie deceptively similar to the Subject Mark of the Plaintiffs.”

5.5. Passing Off and Commercial Loss: Prior Goodwill vs. Defendants’ Higher Sales Volume

In addressing passing off, the Defendants argued that their massive sales of Rs. 34.21 Crores compared to the Plaintiffs’ Rs. 1.27 Crores proved that they had not misappropriated goodwill and caused no irreparable harm. The Hon’ble Court rejected this contention, ruling that a widening sales gap in favour of the subsequent adopter actually proves commercial damage to the prior user:

“Upon comparison of the sales figures of the Plaintiffs’ products sold under the Subject Mark and the Defendants’ products sold under the Impugned Mark after the adoption of the Impugned Mark, the sales figures of the Defendants’ products are significantly higher than that of the Plaintiffs since the year 2022 when the Impugned Mark was adopted and put to use by the Defendants. The said difference in the sales figures widened in the years 2023 and 2024 in favour of the Defendants, which clearly shows that the Plaintiff has suffered actual loss due to use of the Impugned Mark by the Defendants. Therefore, prima facie case of passing off is made out against the Defendants.”

6. Legal Precedents Relied Upon by the Hon’ble Court

To establish the statutory standards governing rectification, estoppel, and prima facie invalidity, the Hon’ble Court placed reliance on key judicial precedents:

• Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112: Relied upon by the Hon’ble Court to reiterate that while the presumption of validity under Section 31 of the Act is rebuttable, the court must be prima facie satisfied that a plausible case of invalidity exists before entertaining an invalidity plea, thereby preventing frivolous challenges.
• Automatic Electric Ltd. v. R.K. Dhawan, 1999 SCC OnLine Del 27: Relied upon to establish that a party who has applied for registration of a trademark cannot subsequently claim that the mark is generic or descriptive in an infringement action, creating an estoppel against claiming a registered trademark as a descriptive trademark.

7. Operative Portion of the Judgment

Following the comprehensive analysis of the legal principles and precedents, the Hon’ble Court delivered its final verdict, bringing clarity to the dispute. The Hon’ble Court, after carefully examining the defense of a competing business claiming our registered trademark as “descriptive” or “generic”, delivered a decisive order in favour of the prior user. By addressing the critical question of whether can a defendant claim a registered trademark is descriptive after applying to register the same mark, the Hon’ble Court established strict boundaries against contradictory legal pleas. The operative directives in the Judgment are as follows:

• The Hon’ble Court concluded that a prima facie case was successfully made out by the Plaintiffs for the grant of an interim injunction to prevent the passing off of their Subject Mark.
• The Defendants, along with their agents and distributors, were explicitly restrained from “manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in paints or any other allied or cognate goods under the Impugned Mark” or any other mark deceptively similar to the Plaintiffs’ Subject Mark ‘INFINITY’.
• Validating the importance of dominant word in a trademark, the Hon’ble Court ruled that the phonetic use of a symbol of a registered wordmark (the infinity symbol) creates an identical phonetic impact, which cannot be cured by the mere impact of suffixing a keyword on the validity of a trademark.
• Consequently, the Hon’ble Court firmly rejected the legal tactic of claiming a registered trademark as a descriptive trademark and dismissed the Rectification Petition being C.O. (COMM.IPD-TM) 169/2025 filed by Defendant No. 1.

8. Conclusion – Learning / Takeaways for Plaintiff and Defendant

This Judgment serves as a crucial legal precedent for brand owners dealing with a competing business claiming our registered trademark as “descriptive” or “generic”.

Takeaways for the Plaintiffs: The Judgment validates the strategic necessity of protecting the importance of dominant word in a trademark. By demonstrating prior adoption, registration, and continuous use, original brand owners can successfully secure an interim injunction even if the infringing party boasts significantly higher sales figures. Plaintiffs must remain vigilant, actively oppose infringing trademark applications, and firmly challenge competitors who attempt to disguise their infringement through the phonetic use of a symbol of a registered wordmark.

Takeaways for the Defendants: Subsequent adopters face severe legal risks when claiming a registered trademark as a descriptive trademark, especially as an afterthought during litigation. The Hon’ble Court clarified the dilemma of can a defendant claim a registered trademark is descriptive after applying to register the same mark by applying the strict principle of estoppel. Furthermore, defendants must recognize that the superficial impact of suffixing a keyword on the validity of a trademark (such as adding “Timeless Appeal”) is legally insufficient to escape infringement liability when the core dominant word is misappropriated.

9. Frequently Asked Questions

Q1: Can a defendant claim a registered trademark is descriptive after applying to register the same mark?
According to the Hon’ble Court, if a party has applied for the registration of an identical mark, they are legally estopped from claiming a registered trademark as a descriptive trademark. The plea of invalidity cannot be maintained when the defendant themselves sought a statutory monopoly for the identical mark.

Q2: Can a competing business claim our registered trademark is “descriptive” or “generic” if they themselves have applied to register an identical mark?
No, the Hon’ble Court has clarified that a competing business claiming our registered trademark as “descriptive” or “generic” loses this defense if they have filed a trademark application for the exact same mark. This constitutes an estoppel against challenging the mark’s distinctiveness.

Q3: Does adding a brand name or suffix prevent trademark infringement when the dominant word is identical?
Adding a brand name or suffix does not prevent infringement if the core feature of the prior mark is completely subsumed. The Hon’ble Court emphasized the importance of dominant word in a trademark, noting that mere descriptive additions do not eliminate deceptive similarity.

Q4: If a larger corporation adopts our brand name but adds their own house mark (like Nippon Paint) and descriptive words (like Timeless Appeal), does it still amount to deceptive similarity?
Yes, it still amounts to deceptive similarity. The Hon’ble Court ruled that the superficial impact of suffixing a keyword on the validity of a trademark (such as adding “Timeless Appeal” or a house brand) cannot cure the infringement when the dominant registered word is entirely misappropriated.

Q5: Is the spoken phonetic use of a symbol (like the infinity sign) considered identical to a registered word mark?
Yes, the Hon’ble Court held that the phonetic use of a symbol of a registered wordmark creates complete phonetic identity. If a mathematical symbol is spoken and read exactly as the registered word, it heavily contributes to consumer confusion in identical trade channels.

Q6: How does the Hon’ble Court treat symbols when determining phonetic similarity in trademark infringement cases?
The Hon’ble Court carefully evaluates how a symbol translates into spoken language within the market. If the spoken translation of the symbol is identical to the prior registered wordmark, it establishes strong phonetic and deceptive similarity.

Q7: Can higher turnover or sales volume protect a subsequent adopter against a claim of passing off and infringement?
No, massive sales figures cannot shield a subsequent adopter from a passing off claim. The Hon’ble Court established that prior adoption, registration, and continuous use of a trademark prevail over a subsequent infringer’s higher sales volume.

Q8: If an infringer has generated massive sales revenue (e.g., crores of rupees) compared to the original brand owner’s modest sales, can the prior user still get an interim injunction?
Yes, the prior user can successfully secure an interim injunction. The Hon’ble Court protects prior goodwill and ruled that the subsequent adopter’s massive sales do not negate the misappropriation of the original brand’s reputation.

Q9: Does a widening gap in sales volume between the prior user and the subsequent adopter prove that the prior user has suffered actual commercial damage?
Yes, the Hon’ble Court explicitly noted that a widening sales gap in favour of the subsequent adopter actually demonstrates that the prior user has suffered actual commercial loss and damage due to the misrepresentation.

Q10: What is the legal risk of claiming a registered trademark as a descriptive trademark during a commercial suit?
Claiming a registered trademark as a descriptive trademark, especially as a belated afterthought during litigation, is a legally risky strategy. If the defendant has already applied for the same mark, the Hon’ble Court will reject this invalidity plea as an afterthought and likely grant an injunction in favour of the prior user.