Delhi High Court Holds That Trademark Proprietor Cannot Claim Monopoly Over Entire Class of Goods

Summary

The Delhi High Court clarified that trademark protection extends only to the specific goods within the class for which the mark is registered, and a proprietor cannot claim exclusivity over all goods in that class merely because of a similar mark, particularly when not using the mark for those goods.

Background and Facts

This appeal challenged a Patiala House District Court judgment dismissing an application for interim injunction under Order 39 Rules 1 and 2 CPC. The Appellant had conceived and adopted "PRO-EASE" in 2012 for sanitary napkins, sanitary towels, pads, menstruation briefs, panty liners, and allied feminine hygiene goods — all registered in Class 5. The Respondents adopted "PRUEASE" in 2017, also in Class 5, but for medicinal and pharmaceutical preparations treating constipation, containing the active ingredient Prucalopride ("PRU" from the ingredient, "Ease" denoting relief).

The Appellant's Case

The Appellant argued it was entitled to extend "PRO-EASE" to allied and cognate goods — including pharmaceuticals for menstrual cramps — and that its Class 5 registration entitled it to protection against any deceptively similar mark within that class, regardless of whether it currently used the mark for the specific goods in question.

The Respondents' Case

The Respondents had used "PRUEASE" continuously since 2017 — nearly seven years before suit — and argued no reasonable consumer would confuse a sanitary pad with constipation medication. They also raised estoppel: the Appellant had itself told the Registry, in response to an Examination Report and in a counter-statement, that sanitary napkins and pharmaceutical/ayurvedic goods were distinct and would not cause confusion — a position now contradicted by its infringement claim. The Respondents further pointed to their own withdrawal of oppositions against the Appellant's sanitary-goods applications, and their move to delete "hygiene and sanitary preparations" from their own specification, as evidence of bona fide, non-overlapping use.

The Court's Analysis

The Delhi High Court found the goods neither allied nor cognate — different nature, purpose, trade channels, and consumer base, leaving no likelihood of confusion. It held the key principle squarely: a trademark proprietor cannot claim monopoly over an entire class of goods merely by virtue of registration, particularly where it does not use the mark for the specific goods in dispute. Class 5 registration does not confer blanket rights over every pharmaceutical, sanitary, or health-related product within that class — only over the goods actually used.

The Court also found no passing off: packaging, presentation, and trade dress gave no basis for confusion between feminine hygiene products and constipation medication.

The Three-Fold Injunction Test

Applying the standard prima facie case / balance of convenience / irreparable harm test, the Court held the Appellant failed on the first limb, that the balance favoured the Respondents given their seven years of continuous, unchallenged use, and that damages would adequately compensate the Appellant if it ultimately succeeded at trial — so no irreparable harm justified an interim injunction.

Significance

• Registration in a trademark class is not a blanket monopoly — rights extend only to the specific goods actually used under the mark, not the entire class.
• Coined pharmaceutical marks combining a fragment of the active ingredient's name with a descriptive suffix (here, "PRU" + "Ease") are recognised as a legitimate, common industry practice.
• Taking inconsistent positions before the Registry and before a court can estop a party from later asserting a broader monopoly than it previously disclaimed.
• This decision protects legitimate competitors from overbroad trademark claims and reinforces that trademark law exists to prevent consumer confusion, not to warehouse rights over unused goods.