The case of Abros Sports International Pvt. Ltd. v. Ashish Bansal and Ors. is a significant trademark dispute adjudicated by the High Court of Delhi, addressing complex issues of trademark infringement, passing off, and the legal implications of registered trademarks under the Trade Marks Act, 1999. The case revolves around the appellant, Abros Sports International Pvt. Ltd. (ASIPL), alleging that the respondents' use of the mark "NEBROS" infringes its registered trademark "ABROS" and constitutes passing off.

The appeal arises from a Single Judge's dismissal of ASIPL's application for an interim injunction, prompting a deeper examination of whether an infringement suit can be maintained against a registered trademark and the procedural nuances involved. The Division Bench, unable to reconcile its interpretation with a prior coordinate bench decision, referred critical legal questions to a Larger Bench, leaving the appeal's final resolution pending.

Detailed Factual Background
ASIPL, incorporated on February 14, 2020, claimed proprietorship of the "ABROS" trademark, used for footwear and related products. The mark, a portmanteau of "A" (from Anil Sharma, the founder) and "BROS" (indicating the family business), was conceived in March 2017 by Anil Sharma's proprietorship and assigned to ASIPL via a deed dated January 15, 2021. ASIPL held multiple trademark registrations for "ABROS" across Classes 25 (footwear), 28 (sporting articles), and 35 (trading and e-commerce), with the earliest registration dated March 3, 2017, claiming use since March 1, 2017. ASIPL operated the domain www.abrosshoes.com since June 2018 and reported substantial sales (₹7.84 crores in 2020 and ₹216.45 crores in 2021) and advertising expenses (₹35.12 lakhs in 2020 and ₹337.69 lakhs in 2021), underscoring the mark's market reputation.

The respondents, led by Ashish Bansal (Respondent 1), used the mark "NEBROS" for similar footwear products in the same price range (₹1500–₹2000). Respondent 1 held a trademark registration for "NEBROS" in Class 25 (clothing and footwear) from September 25, 2019, applied on a "proposed to be used" basis. Respondent 1 claimed "NEBROS" was derived from "Nice Footwear" (a business run by Bansal's uncle) and "BROS" (indicating brothers), asserting it as a coined, distinctive mark. Respondents 2 to 6 were involved in manufacturing or trading goods bearing the "NEBROS" mark. ASIPL alleged that "NEBROS" was deceptively similar to "ABROS," causing confusion and infringing its trademark rights, while also challenging the validity of the "NEBROS" registration. The respondents countered that "NEBROS" was distinct, with prior use since September 2020, and that "BROS" was a generic suffix, precluding ASIPL's claim to exclusivity.

Detailed Procedural Background
ASIPL filed a suit (CS (Comm) 702/2022) before the Delhi High Court, seeking a permanent injunction against the respondents' use of "NEBROS," alleging trademark infringement and passing off. Alongside, ASIPL moved an application (IA 16555/2022) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for an interim injunction.

On May 2, 2024, a learned Single Judge dismissed the interim application, finding no phonetic, visual, or structural similarity between "ABROS" and "NEBROS," and noting Respondent 1's prior use (since September 2020) compared to ASIPL's earliest invoice from February 2021. The Single Judge also observed that ASIPL failed to oppose the "NEBROS" registration and that the marks' distinct logos negated passing off.

Aggrieved, ASIPL appealed to a Division Bench of the Delhi High Court vide FAO(OS) (COMM) 140/2024, accompanied by CM APPL. 38801/2024. The appeal was reserved on May 6, 2025, and pronounced on May 13, 2025. During adjudication, the Division Bench identified a fundamental legal conflict with the precedent in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708), which held that an infringement suit could lie against a registered trademark if its invalidity was pleaded.

Disagreeing with this view, the Division Bench referred the matter to a Larger Bench to resolve critical questions regarding the maintainability of infringement suits against registered trademarks and the scope of interlocutory relief in such cases.

Issues Involved in the Case:

• Whether the respondents' use of "NEBROS" infringes ASIPL's registered "ABROS" trademark under Section 29 of the Trade Marks Act, 1999?
• Whether an infringement suit can be maintained against the proprietor of a registered trademark, particularly when the plaintiff pleads invalidity of the defendant's registration?

Detailed Submission of Parties

ASIPL's Submissions (Appellant):

• Priority of Use and Registration: ASIPL claimed priority of use since March 2017, evidenced by Narmada Polymers' use of "ABROS" on soles. The earliest "ABROS" registration (March 3, 2017) predated the "NEBROS" registration (September 25, 2019).
• Deceptive Similarity: "ABROS" and "NEBROS" were phonetically similar, satisfying the "triple identity test." Marks must be compared holistically, per Amritdhara Pharmacy v. Satya Deo Gupta and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories.
• Invalidity of NEBROS Registration: ASIPL challenged the "NEBROS" registration under multiple sections, citing deceptive similarity, lack of distinctiveness, and bad faith.
• Passing Off: Despite distinct logos, "NEBROS" was prominently visible and likely to confuse consumers. Actual confusion is not required (Toyota Jidosha v. Prius Auto).
• Respondent's Evidence: Invoice dated September 1, 2020 lacked the "NEBROS" mark, weakening the claim of prior use.
• Legal Precedents: ASIPL cited cases like FDC Ltd. v. Docsuggest, Raj Kumar Prasad, and K.R. Chinna Krishna Chettiar to support their claims.
   

Respondents' Submissions:

• Distinctiveness of NEBROS: "NEBROS" was coined from "Nice Footwear" and "BROS," and was visually and phonetically distinct.
• Priority of Use: Respondents claimed use since September 2020, predating ASIPL's February 2021 invoice. Use by Narmada Polymers was irrelevant.
• Registered Trademark Defense: Sections 28(1), 28(3), and 30(2)(e) barred infringement claims. Cited S. Syed Mohideen v. P. Sulochana Bai.
• Generic Suffix: "BROS" was a common, non-distinctive suffix, not monopolizable.
• Sales and Reputation: ₹8.5 crores in sales in 2021–22 supported "NEBROS"'s market presence.
• Precedents: Relied on cases like Uniply v. Unicorn, Airtec v. Saluja, and Hindustan Sanitaryware v. Champion Ceramic.
   

ASIPL's Rejoinder:

• Respondents' sales figures reflected total turnover, not specific to "NEBROS."
• Section 34 protection inapplicable—requires both prior use and registration, which Respondent 1 lacked.
• "BROS" suffix argument countered by Pankaj Goel v. Dabur India Ltd., emphasizing holistic mark comparison.
• Additional support from Neon Laboratories v. Medical Technologies and Zydus Wellness v. Cipla Health.
   

Detailed Discussion on Judgments Cited by Parties

• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: Marks must be compared holistically. Slight differences do not negate infringement if confusion is likely.
• Amritdhara Pharmacy v. Satya Deo Gupta: Phonetic resemblance is crucial in trademark disputes.
• K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.: Phonetic similarity in marks for identical goods warrants injunction.
• Russell Corp. Australia v. Ashok Mahajan: Cited in support of ASIPL's infringement claim.
• Toyota Jidosha v. Prius Auto: Likelihood of confusion suffices; actual confusion not required.
• Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.: Evidence of use must clearly show mark application.
• FDC Ltd. v. Docsuggest: "Use" includes non-physical applications like on corporate documents.
• Raj Kumar Prasad v. Abbott Healthcare: Infringement suit maintainable against registered trademark when invalidity is pleaded.
• Neon Laboratories Ltd. v. Medical Technologies Ltd.: Section 34 inapplicable without continuous prior use.
• Pankaj Goel v. Dabur India Ltd.: Marks must be considered as a whole; "BROS" cannot be isolated.
• Zydus Wellness Products Ltd. v. Cipla Health Ltd.: Supported ASIPL's passing off claim.
• S. Syed Mohideen v. P. Sulochana Bai: Higher threshold for passing off against registered mark.
• Uniply Industries Ltd. v. Unicorn Plywood: Emphasized structural and visual differences in distinct marks.
• Airtec Electrovision v. Sunil Kumar Saluja: Supported distinctiveness of "NEBROS."
• Hindustan Sanitaryware v. Champion Ceramic: Prior use and registration protect against injunction.
• In re. Pianotist Co. Application (1906): Holistic comparison of marks includes appearance, sound, goods, and consumer perception.
   

Detailed Reasoning and Analysis of Judge

• Merits of the Appeal: ASIPL argued Single Judge erred by not recognizing similarity between "ABROS" and "NEBROS."
• ASIPL had prior registration and argued phonetic similarity.
• Respondents relied on registered status, earlier use, and distinct logos.
• Single Judge held:
  • No phonetic, visual, or structural similarity between marks.
  • Respondent 1's prior use (September 2020) predated ASIPL's (February 2021).
  • No evidence of Narmada Polymers' relevant use.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.: 13 May 2025: FAO(OS)(COMM) 140 of 2024: 2025:DHC:3606-DB: High Court of Delhi: Hon'ble Justice Mr. C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

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