Authors : Gautam Panchal, Partner; Priyanka Prabhakar, Associate; and Prathamesh Chikhale, Intern 

In a recent order dated September 7, 2026, the Madras High Court, in Vikas Mandoth v. M/s. Shanghai Huanqiu Lock Making Company Ltd. & Anr., A.Nos.446 & 447 of 2026 in O.A.Nos.1120 & 1121 of 2025 in C.S.(COMM.DIV.) No.307 of 2025 (“Order”), declined to vacate an ex-parte injunction restraining the defendant from using trademarks and artistic works allegedly identical or deceptively similar to the plaintiff’s registered “GLOBE” mark for padlocks and hardware equipment.

Notably, the defendant had resisted the injunction on the ground that he held a registration for the same trade name in Tamil. The Court, however, held that the mere fact that the impugned mark was registered and represented in a vernacular language did not, in the circumstances of the case, entitle the defendant to use a mark that was found, prima facie, to be phonetically and visually similar to the plaintiff’s established mark.

Background

The plaintiffs, M/s. Shanghai Huanqiu Lock Making Company Ltd. (a Chinese manufacturer) and Mr. Valaram, proprietor of M/s. Prince Impex, instituted a commercial suit against Mr. Vikas Mandoth alleging infringement and passing off of their registered “GLOBE” trademark and associated artistic works, colour combination and trade dress used on padlocks and hardware products.

On November 28, 2025, the Court had granted the plaintiffs an ex-parte ad-interim injunction in O.A.Nos.1120 and 1121 of 2025, restraining the defendant from using the impugned marks, including a Tamil-script rendition and globe device, and from infringing the plaintiffs’ artistic work and trade dress.

The defendant subsequently filed A.Nos.446 and 447 of 2026 seeking to vacate the ex-parte injunction.

Issues

Defendant’s registration of the trade name “Globe” in Tamil

The defendant’s central contention, as recorded by the Court, was that his trade name had been conceived through “an independent and deliberate process” having regard to the nature of the goods, and that he had “been benefited with the registration of the trade name ‘Globe’ in Tamil for its device” and therefore could not be injuncted from using it.

The Court observed that registration of a trademark does confer a right upon its proprietor to use the trademark. However, the Court also noted that the same statutory framework enables a person to seek rectification or removal of a trademark from the Register. The Court further took note of the fact that opposition/rectification proceedings concerning the defendant’s mark were pending before the Registry.

The Court also referred to the findings contained in the earlier ex-parte order and found that the material placed before it in the present applications did not displace the prima facie finding of infringement recorded earlier.

In this context, the Court observed that the defendant’s attempt to use a trademark or device that was phonetically and visually similar to the plaintiffs’ mark, albeit in a vernacular language, would not, in the circumstances of the case, entitle him to use the mark in a manner that infringed the plaintiffs’ established trademark, which the Court found, prima facie, to enjoy reputation and goodwill.

Prior use and reputation of the plaintiffs’ mark

The plaintiffs placed material on record to substantiate that they had been using the trademark alleged to have been infringed and were prior users of the mark.

The Court also noted that although the defendant claimed to be a prior user, his own application for registration of the trademark indicated that he had “proposed to use” the trademark. The application had been made in 2023, which the Court found to be inconsistent with the defendant’s claim of prior use.

On this basis, the Court concluded, prima facie, that the plaintiff was the prior user of the trademark and that the mark commanded good reputation and goodwill in the market.

The defendant further argued that the suit was not maintainable for want of compliance with Section 12A of the Commercial Courts Act, that the plaintiff could not claim exclusive ownership of a mark that was generic in nature, and that there had been commercial enmity between the second plaintiff and the defendant, such that the second plaintiff had persuaded the first plaintiff, despite there being no relationship between them, to institute the suit.

The defendant also contended that documents filed in support of the plaintiffs’ claim, particularly invoices using “Chennai” and “Madras” interchangeably, were fabricated.

The Court held that issues concerning the maintainability of the suit and allegations of fabrication of documents “can only be concluded after the trial takes place and after hearing the arguments of the respective parties in a suit.” The Court therefore did not finally determine those disputed questions at the interlocutory stage.

Procedural conduct of the suit

The Court additionally noted that the suit summons had been served on the defendant as early as December 11, 2025, that the defendant’s application seeking rejection of the plaint had been dismissed on March 23, 2026, and that no written statement had been filed within the time stipulated under the provisions of the Commercial Courts Act.

For the reasons recorded in the Order, the Court dismissed A.Nos.446 and 447 of 2026, made the injunction granted in O.A.No.1120 of 2025 absolute, and allowed O.A.No.1121 of 2025 restraining infringement of the plaintiffs’ copyright in the artistic work, trade dress and colour combination. No order as to costs was passed.

Comments

The Order is a useful illustration of the limited weight that may be accorded, at the interlocutory stage, to a defendant’s own trademark registration where the validity or continued registration of that mark is itself under challenge before the Registry and where the plaintiff has placed prima facie material establishing prior use and reputation.

The Court’s observation that the defendant’s use of a phonetically and visually similar mark in a vernacular language did not entitle him to infringe the plaintiffs’ established mark must be understood in the specific factual context of the case. The Court took into account, among other things, the similarity between the marks, the plaintiffs’ prima facie prior use and reputation, the pending opposition/rectification proceedings concerning the defendant’s mark, and the defendant’s own “proposed to use” declaration in his 2023 registration application, which undercut his claim of prior adoption.

The Order also reaffirms that disputed questions of fact, including allegations of fabrication of documents and challenges concerning the maintainability of the suit, ordinarily require adjudication on the basis of evidence and arguments at trial and may not, at the interlocutory stage, provide sufficient grounds to vacate an ex-parte injunction where a prima facie case of infringement has already been recorded.