Delhi High Court: Common Names Like ‘NEHA’ Can Acquire Trademark Distinctiveness

Summary:

On May 19, 2025, the Delhi High Court gave its decision in the case of Inder Raj Sahni Proprietor M/S Sahni Cosmetics v. Neha Herbals Pvt. Ltd. and Anr involving two businesses using the same trademark “NEHA.” The case was between Inder Raj Sahni, who runs Sahni Cosmetics, and Vikas Gupta, who runs Neha Enterprises and is also a director at Neha Herbals Pvt. Ltd. Both sides claimed they were the first to use the mark. While one used it for mehandi and herbal hair products, the other used it for creams. The Court was asked to decide who used the mark first, whether any rights had been violated, and if any trademarks should be cancelled.

Case Timeline:

According to the defendant, Sahni Cosmetics started using the mark “NEHA” in 1990 for creams. On the other hand, Vikas Gupta began using the mark in 1992 for mehandi products under a sole proprietorship. Later, in 2007, Neha Herbals Pvt. Ltd. was formed, and in 2012, it formally took over the business. In 2003, the plaintiffs registered the word mark “NEHA,” and in 2018, they registered “NEHA HERBALS.” In 2019, the plaintiffs found that creams were being sold under the same name and filed a case in court. Sahni then filed cancellation petitions against the plaintiffs’ trademark registrations. All these matters were eventually brought together and heard by the Delhi High Court.

Issues Raised:

The Court had to look at several issues. It had to decide who owned the trademark “NEHA” for the goods listed by the plaintiffs. It also had to decide whether the plaintiffs had been using the mark continuously since 1992. Another issue was whether Sahni was a prior user of the same mark. The Court also had to look at whether there was any delay by the plaintiffs in taking legal action, whether the plaintiffs had hidden any facts, and whether Sahni’s use of the mark amounted to infringement or passing off. Finally, the Court had to decide whether the plaintiffs’ registrations should be cancelled.

Arguments:

Vikas Gupta and Neha Herbals said they had used the “NEHA” mark since 1992 in connection with mehandi and other herbal hair products. They asked the Court to stop Sahni from using the mark and to confirm their trademark rights. Sahni Cosmetics argued that they had started using the “NEHA” mark earlier—in 1990—for creams. They submitted manufacturing licences, sales invoices, packaging, and other material to show their use of the mark over many years.

Sahni said that the plaintiffs had known about their use since at least 2003 but had taken legal action only in 2019. Sahni said that this delay showed that the plaintiffs had accepted their use. Sahni also said that the plaintiffs’ trademarks should be cancelled because they had not used the mark for creams, which was Sahni’s product line.

Judgment:

The Court accepted that Vikas Gupta and Neha Herbals had registered the trademark “NEHA” for certain products like mehandi and hair dye. The Court said that these registrations gave them rights to use the mark for those specific goods. However, the Court found that they had not used the mark for creams. Sahni Cosmetics, on the other hand, had shown that they had used the mark “NEHA” for creams since 2003, if not earlier.

The Court said that under trademark law, someone who has been using a mark honestly and without interruption can continue to do so, even if another party later registers it for other goods. So, the Court said Sahni Cosmetics could continue to use the mark for creams. At the same time, the Court did not cancel the plaintiffs’ registrations because they had been using the mark for the goods listed in their registrations.

Analysis:

The Court looked at how the law treats registered rights and earlier use. A person who registers a trademark usually gets legal rights, but someone who used the mark earlier can still be protected. The Court noted that Vikas Gupta had built his business around mehandi and herbal products and had been using the “NEHA” mark in that space for many years. His use was backed by financial records, advertisements, and other documents. At the same time, Sahni had been using the same mark for a different type of product—creams—for a long time as well. Both sides had built a customer base under the same name but for different products.

The Court also considered the question of whether a licence was needed for the plaintiffs to sell mehandi products in the 1990s. Sahni had argued that since no licence was obtained until 2005, the plaintiffs’ early use was not legal. The Court disagreed. It referred to decisions from other High Courts that said manufacturing licences were not required for selling mehandi powder. So, the plaintiffs’ early use could not be ignored.

By looking closely at how both parties used the mark, the Court concluded that each had its own space in the market. Vikas Gupta’s rights were based on mehandi and hair products, and Sahni’s use of the mark for creams did not interfere with that. At the same time, Sahni had built up his own identity in the creams market. The Court chose not to stop either side from using the mark, as long as they stayed within their areas of business.