Bombay High Court Restrains Former Business Associate from Using Deceptively Similar Mark “TRACK-ON”

In Trackon Couriers (P) Ltd. v. B.N. Srinivas, the Bombay High Court was called upon to decide whether the defendant, by using the impugned marks “TRACK-ON/ TRACK-ON EXPRESS”, had infringed and passed off the plaintiff’s registered trade mark “TRACKON”. The plaintiff, a subsidiary of XpressBees, is engaged in courier and logistics services. A Single Judge Bench of Arif S. Doctor, J., while allowing the interim application, held that “TRACKON” constituted the dominant and essential feature of the plaintiff’s registered composite/label marks, which had been continuously and extensively used since 2002, and granted temporary injunctions restraining the defendant from using the impugned marks or any other deceptively similar variation.

The plaintiff was engaged in courier and logistics services and was the registered proprietor of multiple composite/label trademarks in Class 39 containing the word “TRACKON”. The defendant was a former business associate of the plaintiff and had used the mark during the subsistence of the business relationship. In October 2023, upon being called upon to discontinue use of the mark, the defendant agreed to change its name. However, in 2024, the defendant adopted the marks “TRACK-ON/ TRACK-ON EXPRESS” and filed a trade mark application on a “proposed to be used” basis, leading to the present suit seeking interim relief.

The Court reiterated that registration of a composite/label mark confers exclusivity over its dominant and essential features and that unauthorised use thereof amounts to infringement under Section 29(9) of the Trade Marks Act, 1999. The Court found that the impugned marks were deceptively similar to the plaintiff’s registered marks and were used in relation to identical services. The defendant abandoned its plea of prior use and failed to establish any bona fide basis for adoption. The adoption was held to be prima facie dishonest, particularly in view of the prior business relationship, correspondence evidencing an undertaking to change the name, and the defendant’s own trade mark application claiming proposed use.

Objections regarding suppression of documents and territorial jurisdiction were rejected. The Court held that the alleged non-disclosure did not undermine the plaintiff’s case and that leave under Clause XII of the Letters Patent having been granted, jurisdiction could not be questioned at the interim stage.

Advocates who appeared in this case:

For the Plaintiff: Venkatesh Dhond, Senior Advocate a/w Rashmin Khandekar, Anand Mohan, Alhan Kayser, Varsha Vasave i/b Avesh Kayser.