The Bombay High Court granted an interim injunction restraining use of “TRACK-ON”, “TRACKON” or deceptively similar marks in courier services. Justice Arif S Doctor held a strong prima facie infringement case, finding balance of convenience favoured Trackon clearly decisively.
MUMBAI: The Bombay High Court granted an interim injunction restraining the defendant from using “TRACK-ON,” “TRACKON,” or any deceptively similar mark or trade name in relation to courier and logistics services, pending disposal of the suit.
Justice Arif S. Doctor held that Trackon Couriers established a strong prima facie case of trademark infringement and passing off. The balance of convenience lay in favour of the plaintiff, and irreparable harm would result if injunction was denied.
Factual Background Of the Case:
Trackon Couriers Private Limited, engaged in courier, logistics, and supply chain services since 2002, is the registered proprietor of multiple composite trademark registrations for the mark “TRACKON” in Class 39. These registrations are valid and undisputed.
In 2016, Trackon appointed the defendant as its business associate for Andhra Pradesh and Telangana, authorising him to operate under the name “Trackon Couriers & Cargo Services.” The defendant continued using “TRACKON” as part of his business identity until 2023.
In May 2016, the Defendant and his wife created a partnership for carrying on business under the name “TRACKON COURIERS & CARGO SERVICES”.
In October 2023, Trackon asked the defendant to discontinue use of the mark. Correspondence between the parties allegedly reflected the defendant’s agreement to change the name. However, in 2024, Trackon discovered that the defendant had applied for registration of “TRACK-ON EXPRESS” and launched a new firm, “Track On Express Logistics.”
Following a cease-and-desist notice and termination of the business relationship, Trackon filed a commercial IP suit seeking interim injunctions restraining trademark infringement and passing off.
Arguments of Parties
PLAINTIFF: The plaintiff contended that “TRACKON” is a coined and distinctive mark, enjoying extensive goodwill due to long, uninterrupted use, substantial advertising expenditure, and high turnover. It was argued that the essential and dominant feature of the registered composite label is the word “TRACKON,” and unauthorised use of this feature amounts to infringement under the Trade Marks Act, 1999.
He argued that registration of a composite or label trademark grants the registered proprietor exclusive rights over its dominant, essential, and distinctive elements, even where such elements are not independently registered as word marks.
It was further contended that a trademark may comprise more than one key or leading feature, and any unauthorised use of any such dominant component of a registered composite mark constitutes infringement. To support this proposition, reliance was placed on the rulings in Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd., Jagdish Gopal Kamath v. Lime and Chilli Hospitality Services, and Prince Pipes and Fittings Ltd. v. Shree Sai Plast Pvt. Ltd.
He also contended that when a word forms an integral part of a registered composite or label mark, its visual or phonetic use amounts to trademark infringement under Section 29(9) of the Trade Marks Act, 1999. He further argued that such protection is strengthened where the word has acquired goodwill and distinct association with the registered proprietor, relying on Hindustan Embroidery Mills Pvt. Ltd. v. K. Ravindra & Co. and Himalaya Drug Co. v. SBL Limited.
Trackon asserted that the defendant’s adoption of “TRACK-ON” was dishonest, especially after termination of the association and prior assurances to change the business name. The plaintiff also relied on email correspondence to demonstrate the defendant’s consent to discontinue use.
DEFENDANT: The defendant opposed the interim relief on three principal grounds:
- Suppression of Material Facts: The defendant alleged deliberate suppression of a 2016 letter issued by Trackon acknowledging the defendant as a business associate, as well as the defendant’s reply to the cease-and-desist notice. Such suppression, according to the defendant, disentitled the plaintiff to equitable relief.
He argued that suppression of a document which goes to the root of the matter is fatal to any plea contrary thereto and disentitles the Plaintiff from any interlocutory reliefs, as held in S.P. Chengalvaraya Naidu v. Jagannath and ors
- Lack of Jurisdiction: The defendant argued that the Bombay High Court lacked territorial jurisdiction as neither party carried on principal business in Mumbai and that Section 134 of the Trade Marks Act was wrongly invoked.
Reliance was placed on the Supreme Court’s decision in Indian Performing Rights Society Ltd. v. Sanjay Dalia, which held that Section 134(2) must be interpreted to prevent plaintiffs from forum shopping by dragging defendants to courts lacking a real or substantial nexus with the dispute. It was further noted that this principle has been consistently followed, including in Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd.
- Inconsistent Pleadings: It was contended that the plaintiff advanced a case of “permissive use” during arguments while expressly denying any permission in the plaint, thereby violating settled pleading principles.
He argued that during oral submissions, the Plaintiff put forward a position that was wholly inconsistent with its pleadings. Specifically, while the Plaintiff contended that the Defendant’s use of “TRACKON” was permissive, paragraph 13 of the Plaint expressly states, “The Plaintiff has at no point expressly or implicitly permitted the Defendant to use the TRACKON Mark or any part thereof.”
It was submitted that the Plaintiff cannot be allowed to argue a case that contradicts its own pleadings, reliance being placed on Bachhaj Nahar v. Nilima Mandal. He further relied on Ram Sarup Gupta v. Bishun Narain Inter College to contend that while pleadings should not be construed hyper-technically, no leeway is permissible where submissions directly conflict with them. Emphasis was also placed on Commissioner of Central Excise v. Reliance Industries Ltd. to reiterate that a party cannot advance arguments contrary to its pleadings, particularly where such arguments are entirely inconsistent with the case set out in the plaint.
Legal Issues Involved:
The Court examined the following legal issues:
- Whether the Bombay High Court had territorial jurisdiction to entertain the suit.
- Whether use of “TRACK-ON” infringed the plaintiff’s registered composite trademark.
- Whether the plaintiff’s pleadings were inconsistent or self-contradictory.
- Whether alleged suppression of documents barred the grant of interim relief.
- Whether the defendant could claim prior use, consent, or acquiescence.
Analysis of the Court:
The Court held that jurisdiction was validly invoked as part of the cause of action arose within Mumbai, including offering of rival services and alleged commercial injury. Once leave under Clause XII of the Letters Patent was granted, jurisdiction became a mixed question of law and fact, to be decided at trial.
Relying on Isha Distribution House (P) Ltd. v. Aditya Birla Nuvo Ltd. (2019) 12 SCC 205, the Court ruled that leave could not be revoked at the interim stage.
The Court reaffirmed that registration of a composite or label mark confers exclusivity over its essential and dominant features, even if individual elements are not separately registered. Use of such features, visually or phonetically, constitutes infringement.
The court relied on Pidilite Industries Ltd. v. Jubilant Agri, Jagdish Gopal Kamath v. Lime and Chilli Hospitality, and Prince Pipes v. Shree Sai Plast to hold that “TRACKON” was the dominant element and the defendant’s mark was deceptively similar. The Court also applied Section 29(9) of the Trade Marks Act, holding that spoken or visual use of a registered word element amounts to infringement.
The defendant’s plea of prior use was rejected as unsupported by evidence, particularly in light of the defendant’s own trademark application claiming “proposed-to-be-used” status. The Court found the adoption to be dishonest, especially after termination of the business relationship.
On acquiescence, the Court relied on Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448, holding that mere delay does not amount to consent unless accompanied by encouragement post-knowledge of infringement.
While acknowledging that the 2016 letter was relevant, the Court held that suppression alone does not automatically defeat statutory trademark rights, particularly where infringement is otherwise prima facie established. The principle in S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1 was distinguished on facts.
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Final Order Of the Court:
The Bombay High Court, exercising its Commercial Division jurisdiction, delivered a significant ruling in Trackon Couriers Private Limited v. B.N. Srinivas, addressing trademark infringement, passing off, territorial jurisdiction, and the consequences of alleged suppression of material facts. The case underscores the scope of protection available to registered composite trademarks and clarifies how prior business associations impact claims of dishonest adoption.
The Bombay High Court held that Trackon Couriers established a strong prima facie case of trademark infringement and passing off. The balance of convenience lay in favour of the plaintiff, and irreparable harm would result if injunction was denied.
Accordingly, the Court granted an interim injunction restraining the defendant from using “TRACK-ON,” “TRACKON,” or any deceptively similar mark or trade name in relation to courier and logistics services, pending disposal of the suit
Case Title: Trackon Couriers Private Limited v. B.N. Srinivas
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