Heard in the High Court at Calcutta, Commercial Division, the case revolves around the plaintiff’s claim to exclusive rights over the trademark "NEW LIFE" and the defendant’s alleged infringement through the use of "NL" in its corporate name "NLCARE Private Limited." The plaintiff sought an interim injunction to restrain the defendant, while the defendant countered with an application to vacate an ex-parte ad-interim order granted in favor of the plaintiff. The court’s decision hinges on issues of prior use, family rights to a trademark, and the plaintiff’s alleged suppression of material facts, offering insights into the principles governing trademark exclusivity and equitable relief.

Detailed Factual Background:

• The origins of the dispute trace back to Dr. Mohammad Idrees, who began practicing homeopathy in Bhopal in 1952 and established the "NEW LIFE HOMEO CLINIC" with a distinctive leaf device.
• In 1970, his eldest son, Dr. Mohammad Ilyas, joined the practice, opening the "NEW LIFE HOMEO STORE" and adopting the "NEW LIFE" trademark.
• In 1995, Dr. Ilyas founded New Life Laboratories Private Limited with his wife and sons, later adding other family members as directors.
• The company took over the family’s homeopathic business and registered the "NEW LIFE" trademark in 2013 under Class 35.
• The plaintiff claimed to have used the mark since 1970 and built significant goodwill, making it a household name in India.
• In 2019, NLCARE Private Limited was incorporated by family members who resigned from the plaintiff company in 2018 due to internal disputes.
• The defendant adopted the "NEW LIFE" mark and abbreviation "NL," claiming it was a family legacy shared by many relatives and businesses.
• The plaintiff alleged trademark infringement and passing off, while the defendant claimed shared ownership and suppression of prior litigation facts by the plaintiff.

Detailed Procedural Background:

• The plaintiff filed suit (IP (COM) No. 22 of 2024) before the High Court at Calcutta for trademark infringement and passing off, with an interim injunction request.
• On 19th August 2024, an ex-parte ad-interim injunction was granted to the plaintiff.
• The defendant filed a counter-application to vacate the injunction, alleging suppression of facts and shared ownership.
• A prior suit (CS (COMM) No. 323 of 2023) was filed by the plaintiff in Delhi High Court but was withdrawn after denial of interim relief.
• The Calcutta court considered pleadings, affidavits, a family business chart, and an affidavit from Dr. M.M. Siddiqui supporting the defendant.

Issues Involved in the Case:

• Whether the plaintiff was entitled to exclusive use of the "NEW LIFE" mark despite the defendant's historical family connection.
• Whether the defendant’s use of "NL" and "NEW LIFE" constituted trademark infringement or passing off.
• Whether the mark was a family-owned asset or exclusively owned by the plaintiff as per the 2013 registration.

Detailed Submission of Parties:

• The plaintiff asserted exclusive proprietorship of the mark, continuous use since 1970, and statutory rights through the 2013 registration.
• They claimed the defendant’s directors exploited the plaintiff’s goodwill after resigning in 2018 and formed NLCARE using deceptively similar marks.
• The plaintiff argued family members were common law licensees without proprietary rights.
• The plaintiff relied on several precedents, including:
  • Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. & Ors. – emphasized exclusivity of registered trademarks.
  • Sri Narasu’s Coffee Company Ltd. vs. Narasu’s Sarathy Industries & Anr. – only registered proprietor has rights.
  • M/s. Power Control Appliances vs. Sumeet Machines Pvt. Ltd. – trademark cannot have multiple origins.
  • Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. – registration overrides pending applications.
  • Gujarat Bottling Co. Ltd. vs. Coca Cola Co. & Ors. – licensees enhance distinctiveness for proprietor.
• The defendant argued the mark was a family legacy used by approximately 20 family-run entities without prior objections.
• They claimed knowledge and acceptance by the plaintiff, highlighting proximity of operations and prior use since 2002/2017.
• The defendant contended the plaintiff’s registration was limited in scope and not over the word "NEW LIFE."
• They accused the plaintiff of suppressing prior adverse orders and relied on judgments such as:
  • Satish Khosla vs. Eli Lilly Ranbaxy Ltd. – non-disclosure of facts can vacate interim relief.
  • Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. and Shri Ram Education Trust vs. SRF Foundation & Ors. – family names cannot be monopolized.
  • Prosanta Kumar Dutta vs. Prosanta Shilpa Protishtan Pvt. Ltd. – shared use does not preclude rights of other family members.

Detailed Discussion on Judgments Cited by Parties:

• The plaintiff’s citation of Surjeet Book Depot was found distinguishable due to the current mark being a family legacy, unlike a personal name.
• Sri Narasu’s Coffee Company was deemed inapplicable as the case involved shared family use, not exclusive business ownership.
• Power Control Appliances was found distinguishable, as the context showed a common origin under Dr. Idrees, not rival proprietary claims.
• Reliance on Dhananjay Rathi to support exclusivity was challenged by the defendant with competing interpretations of the family context.

Detailed Reasoning and Analysis of Judge: Court’s analysis focused on the plaintiff’s claim to exclusivity versus the defendant’s assertion of shared family rights. The court examined the plaintiff’s registration (No. 2477030, Class 35), noting it was limited to a specific label and color scheme, not the word mark "NEW LIFE." The plaintiff’s claim of use since 1970 was unsupported by documents predating 1999, whereas the defendant provided a 1975 tax notice evidencing Dr. Idrees’ use of "New Life Clinic." The affidavit from Dr. M.M. Siddiqui, a family member, corroborated the defendant’s claim that approximately 20 family-run shops used the "NEW LIFE" mark without objection, undermining the plaintiff’s exclusivity claim.

The court found the plaintiff’s statements contradictory, particularly their assertion in the Delhi suit that they used the mark exclusively since 1970, contrasted with admissions in the Calcutta proceedings that Dr. Ilyas permitted family members to use it. The plaintiff’s failure to provide evidence of profit-sharing arrangements with family members further weakened their case. The family business charts disclosed in the Delhi suit revealed extensive use of "NEW LIFE" by Dr. Idrees’ and Dr. Ilyas’ descendants, supporting the defendant’s argument of a shared family legacy.

The court applied the principles from Shri Ram Education Trust and Dhananjay Rathi, holding that a family mark adopted by a common ancestor cannot be appropriated by one branch to exclude others. The goodwill of "NEW LIFE" accrued to all family members, and the plaintiff’s registration did not extinguish these rights, especially given the mark’s historical use since 1952.

Crucially, the court addressed the plaintiff’s suppression of material facts, invoking Satish Khosla. The plaintiff’s failure to disclose the Delhi High Court’s refusal to grant interim relief and the defendant’s pleadings in that suit was deemed a deliberate attempt to mislead the court. This suppression alone justified vacating the ad-interim injunction, as it tainted the plaintiff’s claim to equitable relief.

The court assessed the interim injunction criteria—prima facie case, balance of convenience, and irreparable injury—finding that the plaintiff failed to establish a prima facie case due to the shared family use and lack of exclusivity. The balance of convenience favored the defendant, who had operated under the mark for years, and no irreparable injury was demonstrated, given the plaintiff’s coexistence with other family users.

Final Decision:
The court dismissed the plaintiff’s application (G.A. (Com) No. 1 of 2024) and allowed the defendant’s application (G.A. (Com) No. 2 of 2024), vacating the ad-interim injunction granted on 19th August 2024. The plaintiff’s request for a stay of the order was refused, affirming the defendant’s right to continue using the "NEW LIFE" mark pending the suit’s final adjudication.

Law Settled in This Case: The case reinforces the principle that A family trademark adopted by a common ancestor cannot be exclusively appropriated by one branch unless other heirs are explicitly excluded. It underscores that goodwill in such marks accrues to all family members with a common lineage. The decision also highlights the importance of full disclosure in interim injunction applications, with suppression of material facts, such as prior adverse orders, warranting the vacation of equitable relief. The court clarified that a limited trademark registration (e.g., for a specific label or class) does not confer exclusivity over a word mark, particularly in the context of historical family use.

Case Title: New Life Laboratories Private Limited Vs. NLCARE Private Limited: Date of Order: 29 April 2025: Case No.: G.A. (COM) No. 1 of 2024: High Court at Calcutta: Name of Hon'ble Judge: Krishna Rao J.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539