Use of a Registered Trade mark as a Trade Name is Still Infringement: Madras High Court Reaffirms Trademark Sanctity in the ORBIT Case
INTRODUCTION
In a significant and authoritative ruling, the Hon’ble Division Bench of the Madras High Court has once again reinforced the sanctity of registered trademark rights, holding that use of a registered trademark as a trade name constitutes infringement, and that mere silence or delay does not amount to acquiescence.
The judgment in OSA (CAD) Nos. 58 & 59 of 2025, delivered on 6 January 2026, decisively upholds the grant of an interim injunction in favour of the registered proprietor of the “ORBIT” trademark, sending a strong message against dishonest adoption and continued misuse of well-known marks.
CASE OVERVIEW
Case Title:
Shiv Kumar Gupta & Anr. v. Amit Agarwal & Anr.
Case Numbers:
OSA (CAD) Nos. 58 & 59 of 2025
Court:
High Court of Judicature at Madras (Division Bench)
Date of Judgment:
06 January 2026
Coram:
Hon’ble Mr. Justice S.M. Subramaniam
Hon’ble Mr. Justice C. Kumarappan
BACKGROUND OF THE DISPUTE
The dispute arose between parties engaged in the manufacture and marketing of cables and wires, where the appellants were the registered proprietors of the trademarks “ORBIT” and other “ORBIT” formative marks.
Upon discovering that the appellant/ defendant were using “ADLORBIT” as part of their trade name and had also attempted to register a deceptively similar mark “ORBIT”, the respondent/plaintiff approached the Commercial Division of the Madras High Court seeking interim injunction especially in light of the an existing settlement which restricted the appellants from using the mark “ORBIT”/ “ADLORBIT” both as Trade Mark and Trade name. The learned Single Judge, after considering the material on record, found a prima facie case of infringement, held that the balance of convenience lay in favour of the trademark owner, and concluded that denial of injunction would result in irreparable loss. Accordingly, interim injunction was granted.
Aggrieved by this order, the appellant/defendant preferred the present appeals before the Division Bench.
KEY ISSUES BEFORE THE COURT
- Whether the continued use of a registered trademark as a trade name amounts to infringement under the Trade Marks Act, 1999.
- Whether the trademark owner had acquiesced to such use by silence or past business dealings.
- Whether the grant of interim injunction by the Single Judge warranted interference.
CONTENTIONS MADE BY THE APPELLANT/ DEFENDANT
Although the Respondent/ Plaintiff are the registered proprietors of the Trade Mark, they have acquiesced in the continuous use of the said mark by the respondents.
The learned Single Judge failed to appreciate and consider the aspect of acquiescence in its proper perspective.
The respondent/plainitff being the registered owners of the Trade Mark, the respondents are not using “ORBIT” as a product name, but only as a trading name.
Consequently, it is argued that the respondents’ product cannot be construed as deceptively similar to that of the applicants.
Grant of any injunction would cause grave hardship and irreparable loss to the appellants.
CONTENTIONS MADE BY THE RESPONDENT/ PLAINTIFF
It was submitted that there was acompromise/settlement before the Delhi District Court in T.M. No. 48 of 2018, wherein the appellant categorically agreed not to challenge the ownership of the applicant’s Trade Mark.
As part of the said settlement, the appellant alsoundertook not to use the respondent/ plaintiff’s Trade Mark in any form, includingas a trade name.
The plaintiffs Trade Mark as a trade name would not cause any confusion or prejudice to consumers was stated to becontrary to Section 29(5) of the Trade Marks Act, 1999.
Non-grant of injunction would cause substantial lossto the respondent/ plaintiff and that thebalance of convenience lies squarely in their favour.
Thelearned Single Judge had duly considered all relevant factorsand hadrightly granted the relief.
Consequently, it was contended thatno grounds exist for interferencewith theimpugned order, and the appealsdeserve to be dismissed.
DIVISION BENCH FINDINGS: A CLEAR STAND ON TRADEMARK PROTECTION
The Hon’ble Division Bench decisively held that:
- The Court referred to Sec. 33 of the Trade Marks Act and observed that as the Appellants are not the Registered Proprietor Section 33 will have no operation in the present case.
- Acquiescence requires positive and conscious consent by the trademark owner; mere silence, delay, or isolated transactions do not amount to acquiescence. [Power Control Appliances and others Vs. Sumeet Machines Pvt. Ltd., and Others; Ramdev Food Products Pvt. Ltd., Vs. Arivindbhai Rambhai Patel and others]
- Use of a registered trademark as a trade name constitutes infringement under Section 29(5) of the Trade Marks Act, 1999.
- Trade names enjoy no immunity from infringement actions and are equally capable of causing consumer confusion and dilution of goodwill.
- Continued use in breach of a settlement agreement reflects dishonest adoption, disentitling the infringer from equitable relief.
- Interim injunction is the norm in infringement cases, where prima facie validity of registration and likelihood of deception are established.
FINAL OUTCOME
The Division Bench found no infirmity in the order passed by the learned Single Judge and accordingly:
- Dismissed both appeals
- Confirmed the interim injunction restraining the respondents from using the ORBIT/ ADLORBIT both as Trade mark and Trading style
CONCLUSION
The ORBIT judgment is a powerful reaffirmation of trademark exclusivity and consumer protection. By decisively rejecting weak defences and upholding interim relief, the Madras High Court has once again underscored that registered trademark rights cannot be diluted through technicalities, silence, or clever rebranding as trade names.
This ruling stands as an important precedent for brand owners, legal practitioners, and businesses alike—reminding all stakeholders that goodwill built over years deserves uncompromising legal protection.
