Can A Common Name Receive Trademark Protection Under the Law? Delhi HC Answers
The Delhi High Court, on Monday, examined whether a personal name such as "NEHA" could be validly trademarked and protected under Indian trademark law. The case arose from a trademark dispute between Vikas Gupta of Neha Herbals Pvt. Ltd. (the Plaintiffs) and Inder Raj Sahni of Sahni Cosmetics (the Defendant), both operating in the personal care sector.
The court, after analysing the case, highlighted that a name like “NEHA” can be trademarked and protected, provided it acquires distinctiveness in relation to specific goods. However, protection is not absolute and does not automatically extend across dissimilar product categories, especially where the name is common and lacks inherent uniqueness. The court therefore reinforced the principle that trademark rights are grounded in actual market use and consumer perception, and that statutory registration must be supported by evidence of real-world application to be enforceable.
The Plaintiffs claimed to have used the mark “NEHA” since 1992 for Mehandi and other herbal products, relying on two trademark registrations—one for the word mark “NEHA” and another for the composite mark “NEHA HERBALS.” The cause of action emerged in 2019 when the Plaintiffs discovered cosmetic creams bearing the “NEHA” mark in the Delhi market and filed a suit for infringement and passing off.
The Defendant, in response, asserted prior and honest use of the mark since 1990 for face creams and produced a 1990 manufacturing license, along with invoices and product samples. He also filed cancellation petitions against the Plaintiffs’ trademarks, claiming invalid registration and non-use. All proceedings were consolidated before the High Court, and final arguments were heard in January 2024.
The court first addressed whether Plaintiff No. 1 was the lawful proprietor of the “NEHA” trademark. Despite questions surrounding the assignment of the mark between the plaintiffs, the court upheld the registration and found Plaintiff No. 1 to be the lawful proprietor under Section 28(1) of the Trade Marks Act. The proprietary rights were not invalidated by procedural gaps in the assignment documentation.
When analyzing competing claims of prior use, the bench emphasized that trademark rights arise from public-facing, consistent commercial use. While the Defendant claimed use since 1990, he failed to present documentary proof of market use prior to 1999. Conversely, the Plaintiffs established use since at least 1994, supported by promotional materials, turnover records, and credible oral testimony.
However, the bench rejected the Defendant’s argument that the Plaintiffs’ use was illegal due to the absence of a cosmetic manufacturing license. It held that Mehandi did not require such a license under the Drugs and Cosmetics Act, and voluntary licensing in 2005 did not imply prior illegality.
The bench noted that the Defendant failed to substantiate prior commercial use, and his cancellation petitions were dismissed for lack of evidence.
When determining trademark infringement under Section 29(2)(a), the court concluded that no infringement had occurred. Although the mark “NEHA” was identical, the goods—Mehandi and face creams—were not similar in function or market perception. The bench held that mere classification under the same trademark class (Class 3) was insufficient, as the two product types served different purposes and targeted different consumers.
Additionally, the court refused to apply Section 29(4), which protects reputed marks across dissimilar goods, since the Plaintiffs failed to prove that the mark “NEHA” had acquired a reputation beyond its use in Mehandi and herbal products. Evidence of brand spillover into the cosmetic creams market was absent.
In evaluating the passing off claim, the bench applied the classic trinity test—goodwill, misrepresentation, and damage. While the Plaintiffs demonstrated goodwill in the herbal product segment, they failed to show that their reputation extended to cosmetic creams. The packaging, product nature, and consumer perception differed significantly. Moreover, the bench noted that “NEHA,” being a common Indian name, lacked inherent distinctiveness and required evidence of secondary meaning, which was not established.
The Court ultimately held that the Plaintiffs had enforceable statutory rights in the mark “NEHA” within their product segment, but those rights did not extend to bar the Defendant’s use in the unrelated cosmetic creams category. Consequently, the suit was dismissed with no relief granted to the Plaintiffs, but the Defendant’s cancellation petitions were also rejected, preserving the Plaintiffs’ trademark registrations.
For Petitioner: Advocates M.K. Miglani, Hardik Gogia and Akash Singh
For Respondent: Advocates Sachin Gupta, Adarsh Agarwal, Rohit Pradhan and Prashansa Singh
Case Title: Inder Raj Sahni v Neha Herbals Pvt. Ltd (2025:DHC:4037)