When a Prefix Is Not Enough: Deceptive Similarity and the Essential Feature Doctrine

Posted On - 18 April, 2026 • By - Himanshu Deora

Introduction

In a significant ruling dated February 10, 2026, the Delhi High Court revisited core principles of trademark law particularly prior use, deceptive similarity, and the essential feature doctrine, in the context of competing marks in the same commercial space.

The dispute arose from the long-standing use of the mark “ARUN” by the petitioner in relation to sewing machines and parts, and the subsequent registration of the mark “AIC ARUN” by a competing entity operating in the same industry and geographical market. The case presented a classic conflict between prior user rights and subsequent registration, requiring the Court to assess whether the addition of a corporate prefix was sufficient to distinguish the marks.1

The Court ultimately held that the prefix “AIC” did not sufficiently distinguish the impugned mark from the dominant and distinctive element “ARUN,” and ordered partial rectification of the register.

Historical Adoption and Statutory Rights in “ARUN”

The petitioner established long-standing use of the mark “ARUN” dating back to 1962, including through predecessor entities and registered user arrangements. Over time, the mark was also formally registered under the Trade Marks Act, 1999, consolidating both statutory and common law rights.

While other entities had adopted marks incorporating “ARUN,” the petitioner asserted that its use was prior, continuous, and commercially significant, thereby entitling it to protection against confusingly similar marks.

Evidence of Goodwill and Acquired Distinctiveness

The petitioner substantiated its claim of goodwill and distinctiveness through extensive evidence, including:

  • Long-standing commercial use spanning several decades;
  • Newspaper advertisements and cautionary notices issued to trade channels;
  • Circulars warning against infringement;
  • Prior enforcement actions against infringers; and
  • Audited sales figures demonstrating sustained commercial growth.

This evidence supported the conclusion that the mark “ARUN” had acquired secondary meaning within the relevant market. Even though “ARUN” is a common personal name, the Court reaffirmed that a descriptive or ordinary word can become distinctive through long, exclusive, and continuous use.

Registration of “AIC ARUN” and Rectification Proceedings

The respondent applied for registration of “AIC ARUN” in 2007, claiming use since 2004. The mark was advertised and subsequently registered in Class 7 for identical goods (sewing machines and parts).

Notably, the Trade Marks Registry had cited the petitioner’s earlier “ARUN” marks in its examination report. However, the petitioner did not oppose the application under Section 21 of the Trade Marks Act, 1999 at the advertisement stage.

The petitioner later initiated rectification proceedings under Sections 47 and 57, seeking removal or modification of the impugned mark on the ground of deceptive similarity and prior rights.

Defences Raised by the Respondent

The respondent advanced two principal arguments:

  1. Statutory Validity of Registration: The respondent relied on the presumption of validity attached to a registered trademark.
  2. “ARUN” as Publici Juris: It was contended that “ARUN” had become common to the trade (publici juris), and therefore incapable of exclusive appropriation.

The Court rejected the publici juris argument, noting the absence of evidence demonstrating widespread, uncontrolled use of “ARUN” in the relevant market. Mere existence of similar marks on the register does not establish that a term has become generic or common to the trade.

Clarification: Publici Juris vs Genericness

A key correction in legal reasoning is necessary here:

  • Genericness refers to a term that denotes the product itself and is incapable of trademark protection.
  • Publici juris refers to a term commonly used in the trade, which may weaken exclusivity but does not automatically negate protection.

The Court correctly applied trademark principles (not copyright law) in holding that dilution of distinctiveness through widespread use must be proven with credible evidence failing which, prior rights prevail.

Deceptive Similarity and the Essential Feature Doctrine

The central issue before the Court was whether the addition of the prefix “AIC” sufficiently distinguished the mark “AIC ARUN” from “ARUN.”

Applying the essential feature doctrine, the Court held:

  • The dominant and distinctive component of the impugned mark was “ARUN”;
  • The prefix “AIC,” being a corporate abbreviation, had minimal distinctiveness;
  • The visual and phonetic identity of “ARUN” remained unchanged.

The Court relied on the principle of the average consumer with imperfect recollection, and identified the following factors supporting a likelihood of confusion:

  • Phonetic identity of the dominant element (“ARUN”);
  • Visual prominence of “ARUN” within the composite mark;
  • Identity of goods (sewing machines and parts);
  • Overlapping trade channels and consumer base;
  • Geographic proximity of the parties.

In these circumstances, the Court held that the impugned mark was deceptively similar, and the prefix was insufficient to avoid confusion.

Failure to Oppose vs Right to Rectification

The respondent argued that the petitioner’s failure to oppose the mark under Section 21 barred subsequent rectification under Sections 47 and 57. The Court rejected this contention and clarified that:

  • Opposition and rectification are distinct remedies;
  • Failure to oppose does not create a permanent bar to rectification;
  • Rectification serves the broader purpose of maintaining the purity of the register.

This position is consistent with established trademark jurisprudence.

Consideration of Precedents

The Court distinguished authorities where marks were held to be common to the trade due to lack of evidence in the present case.

It relied on established principles from cases such as:

  • Himalaya Drug Co. v. SBL Ltd. (2012)2
  • Greaves Cotton Ltd. (2011)

These decisions reiterate that mere addition of prefixes or suffixes to the dominant feature of a mark does not eliminate deceptive similarity.

Exercise of Powers under Section 57

Instead of cancelling the respondent’s mark in its entirety, the Court exercised its powers under Section 57 to partially rectify the register by directing deletion of the word “ARUN” from “AIC ARUN.”

This nuanced approach:

  • Preserved the respondent’s ability to continue business under “AIC”;
  • Prevented misappropriation of the petitioner’s goodwill;
  • Balanced competing commercial interests.

The Registrar was directed to implement the modification within six weeks.

This decision reaffirms several important principles:

  • Prior use prevails over subsequent registration, particularly where goodwill is established;
  • Even common or personal names can acquire distinctiveness through secondary meaning;
  • The essential feature doctrine remains central to assessing deceptive similarity;
  • Addition of corporate prefixes or suffixes does not negate infringement;
  • Failure to oppose does not extinguish the right to seek rectification;
  • Section 57 empowers courts to order partial rectification to balance equities.

Conclusion

The Delhi High Court’s decision underscores that trademark protection is rooted in commercial reality, not merely formal registration. While registration confers statutory rights, it does not override the superior rights of a prior user with established goodwill.

By ordering partial rectification, the Court adopted a pragmatic and equitable approach, ensuring both protection of established rights and continuity of legitimate business operations.

The ruling serves as a clear reminder: minor additions such as corporate prefixes cannot legitimise appropriation of the essential feature of an established mark, particularly where such use is likely to cause confusion or dilute accrued goodwill.

  1. (Case No. C.O.(Comm.IPD-TM) 651/2022, Judgement No. 2026:DHC:1038), ↩︎
  2. The Himalaya Drug Co. v. SBL Ltd., (2013) 53 PTC 1 (Del). ↩︎