The Delhi High Court has ruled that a commonly used Indian forename like “NEHA” cannot be granted exclusive trademark protection across product categories unless the claimant establishes that the mark has acquired secondary meaning through sustained and credible use. The judgment was delivered in a trademark dispute between Neha Herbals Pvt. Ltd. and Sahni Cosmetics, both using the name “NEHA” for their respective cosmetic products.
Justice Sanjeev Narula, deciding three connected proceedings — a trademark infringement suit and two cancellation petitions — held that while the plaintiffs had proven rights over the mark “NEHA” for Mehandi and herbal hair colour products, such rights could not extend to unrelated goods in the absence of a strong consumer association.
“NEHA is a common Indian forename, not a coined or inherently distinctive word. In trademark jurisprudence it is well settled that marks comprising everyday/common names or generic expressions do not, by themselves, command the highest level of legal protection.”
Background
Plaintiff Vikas Gupta claimed to have adopted the mark “NEHA” in 1992, naming the brand after his sister. The trademark was first used through his sole proprietorship “M/s Neha Enterprises” and later assigned to Neha Herbals Pvt. Ltd. The plaintiffs hold registrations for “NEHA” and “NEHA HERBALS” under Class 3 for products including Mehandi, herbal hair dyes, and Mehandi oil.
Sahni Cosmetics, through its proprietor Inder Raj Sahni, claimed prior adoption of the same mark in 1990 for face creams. However, the defendant’s trademark applications were either refused or abandoned, and he did not hold any valid registration.
The plaintiffs filed a suit for infringement and passing off, while the defendant filed two cancellation petitions challenging the plaintiffs’ trademark registrations.
Key Legal Findings
The Court acknowledged the plaintiffs’ status as registered proprietors under Section 28(1) of the Trade Marks Act and noted that they had demonstrated “credible and continuous commercial use” of the mark since at least 1994. However, the Court emphasized that the use of a common name like “NEHA” required heightened scrutiny.
“Thus, considering the nature of the mark, which is neither composite nor invented and lacks inherent distinctiveness, the threshold for establishing secondary meaning is notably high.”
On the defendant’s claim of prior use, the Court found the supporting evidence lacking:
“The Defendant has not established use of the mark ‘NEHA’ in relation to creams or allied cosmetic products prior to 1999 in a legally recognizable manner.”
The Court also clarified that mere use — even if continuous — does not automatically confer trademark rights:
“Mere use of a mark, even if continued over a period of time, is not by itself sufficient to establish enforceable rights under trademark law.”
What mattered, the Court held, was whether the mark had acquired a source-identifying function in the minds of consumers:
“The question is not merely whether the claimant has used the mark, but whether the mark has come, over time, to identify a single commercial source with respect of the goods used under the said mark.”
No Blanket Rights Beyond Established Categories
While the Court upheld the plaintiffs’ registrations, it expressly limited the scope of their exclusivity to the specific goods for which evidence had been led.
“The goodwill generated by the mark ‘NEHA’ over the years has been confined to Mehandi and allied herbal preparations.”
“It is not possible to conclude that the Plaintiffs’ mark had, at the time of Defendant’s adoption, acquired the status of a source identifier across disparate product categories.”
Decision
The Court dismissed the cancellation petitions filed by Sahni Cosmetics and decreed in favour of Neha Herbals in the infringement suit. The defendant was permanently restrained from using “NEHA” in relation to creams or other goods that overlap with the plaintiffs’ product category.
However, the Court cautioned against interpreting the judgment as granting a sweeping monopoly:
“The Plaintiffs’ statutory rights must be construed narrowly and enforced only in the product segments for which distinctiveness is established.”
Case Title: Vikas Gupta & Anr. vs Sahni Cosmetics & Ors.
Connected Matters: CS (COMM) 207/2023; C.O. (COMM.IPD-TM) 355/2021; C.O. (COMM.IPD-TM) 455/2022
