- 1 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 IN THE HIGH COURT OF KARNATAKA AT BENGALURU DATED THIS THE 8TH DAY OF JUNE, 2026 BEFORE THE HON'BLE MR. JUSTICE HANCHATE SANJEEVKUMAR MISCELLANEOUS FIRST APPEAL NO. 6215 OF 2023 (IPR) BETWEEN: 1. DR. SAPNA W/O. MR VINOD M V, AGED ABOUT 40 YEARS, TRADING AS “MY NEIGHBOURHOOD DENTIST” NO.40, 1ST FLOOR, BASAVANAGAR MAIN ROAD, OPP. SHELL PETROL BUNK, MARATHAHALLI POST, BANGALORE – 560 037. SAPNAVINU@GMAIL.COM, MOBILE: 9980005753 …APPELLANT (BY SRI. V S BIJU, ADVOCATE) AND: 1. M/S NEIGHBOURHOOD HOSPITAL (P) LTD., HAVING ITS OFFICE AT NO.9, WILSON GARDEN HOUSE BUILDING CO.OP. LTD, KOTHNUR MAIN ROAD, RBI LAYOUT, J P NAGAR 7TH PHASE, J P NAGAR, BENGALURU – 560 078. REP. BY ITS DIRECTOR, MR. BOPANNA C U …RESPONDENT (BY SMT. AKSHATHA M PATEL, ADVOCATE) Digitally signed by THEJAS KUMAR N Location: HIGH COURT OF KARNATAKA - 2 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 THIS MFA IS FILED U/O.XLIII RULE 1(r) OF THE CPC, AGAINST THE ORDER DATED 20.07.2023 PASSED ON IA NO.1 AND 2 IN O.S.NO.1448/2023 ON THE FILE OF THE XVIII ADDITIONAL CITY CIVIL JUDGE, BENGALURU CITY AND ETC., THIS APPEAL, COMING ON FOR HEARING, THIS DAY, JUDGMENT WAS DELIVERED THEREIN AS UNDER: CORAM: HON'BLE MR. JUSTICE HANCHATE SANJEEVKUMAR ORAL JUDGMENT The Miscellaneous First Appeal is filed by the appellant/defendant calling in question the orders dated 20.07.2023 passed on I.A.Nos.1 and 2 in O.S.No.1448/2023 by the Court of the XVIII Additional City Civil Judge at Bangalore City1, wherein the applications filed for temporary injunction are allowed restraining the defendant from infringing and passing off of the plaintiff’s registered trade mark “Neighbourhood Hospital” either directly or by using any structurally, visually, phonetically or deceptively similar mark to the plaintiff’s trade mark “Neighbourhood” and “Neighbourhood Hospital” as a part of its trade name, trade mark, online and offline advertisements and 1 hereinafter referred to as ‘the Trial Court’ for short - 3 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 promotions or in any commercial manner whatsoever for providing medical and related services till the disposal of the suit. 2. For the sake of convenience and easy reference, the parties are referred to as per their rankings before the Trial Court. 3. The brief case of the plaintif is that the plaintiff is running its flagship hospital in the name and style of “Neighbourhood Hospital” which was inaugurated in the year 2013 and from thereto, the plaintiff is running the hospital in the name of “Neighbourhood Hospital” and the said hospital is being used as a trademark. Subsequently, the trademark said to have been registered in the year 2013 and applied for registration of trademark under the name and style of “Neighbourhood Hospital”. When this being the fact, the defendant by using the name “Neighbourhood”, is running a hospital in the name of “My Neighbourhood Dentist”, which is similar to the plaintiff’s - 4 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 trademark. Thus, she is infringing the rights of the plaintiff’s company. 4. The plaintiff has filed the suit and also filed an applications for temporary injunction under Order XXXIX Rule 1 and 2 CPC and the trial Court has allowed the said applications and granted an order of temporary injunction against the defendant. 5. The defendant has filed objections to the applications and contended that the defendant is a practicing dentist from the year 2006 and she has established her dental clinic in the year 2016 in the name and style of “My Neighbourhood Dentist”. Accordingly, the defendant got registered the trademark and the Logo with the concerned authority. Therefore, the brand name is being used by the defendant is prior to the registration of the plaintiff. Therefore, the defendant has precedence over the plaintiff by using the trademark as “My Neighbourhood Dentist”. Therefore, with these contentions, prays to - 5 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 dismiss the applications. But the trial Court has held that the plaintiff being the prior user of the trade name “Neighbourhood” is entitled to protect its trade name and accordingly ordered for temporary injunction. Being aggrieved by the order of temporary injunction, the defendant has preferred the present appeal. 6. Learned counsel for the appellant/defendant submitted that the defendant got registered her trademark as “My Neighbourhood Dentist” in the year 2016 and since then, has been using and practicing as dentist under the name of “My Neighbourhood Dentist”. But the Plaintiff had filed an application for registration of the trademark in the year 2017 and got registered the trademark in the year 2018 under the name of “Neighbourhood Hospital”. Therefore, the defendant's registration trademark is prior to the plaintiff’s trademark. Therefore, it is submitted that the trial Court is not correct in granting an order of temporary injunction as the defendant expressed her right based on prior registration of the plaintiff’s trade mark. - 6 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 Hence, the trial Court has committed an error in granting an order of temporary injunction. In support of his contentions, he has placed reliance on the judgment of the Hon’ble Apex Court in the case of Pernod Ricard India Private Limited vs. Karanveer Singh Chhabra.2 7. On the other hand, learned counsel appearing for the respondent/plaintiff submitted that though the Registering Authority has issued registration certificate in the year 2018, but in the application, the plaintiff has mentioned the brand name as “Neighbourhood Hospital” and practicing medicine from the year 2013. Therefore, the plaintiff’s trade mark as ”Neighbourhood” is prior to the defendant’s trademark. Therefore, the right of the plaintiff is recognized as per Section 34 of the Trade Marks Act, 1999 and also Rule 25 of the Trade Mark Rules, 2017. Further, it is submitted that the right of prior usage has precedence over the subsequent registration of trade mark and the plaintiff has produced ample materials to show 2 2025 INSC 981 - 7 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 that the “neighbourhood hospital” was inaugurated in the year 2013 and has been practicing under the name and style of “Neighbourhood Hospital” from the year 2013 and therefore, the defendant is prior usage of the word “Neighbourhood” and in this regard, as per Section 34 of the Trade Marks Act, 1999 and Rule 25 of the Trade Marks Rules, 2017 Act and interpretation made in this regard by the Hon’ble Supreme Court establishes the right of apprehension of the plaintiff. Therefore, she justified the order passed by the trial Court and prays to dismiss the appeal. In support of her contentions, she placed reliance on the judgments of the Hon’ble Supreme Court in the case of Wander Ltd. and another vs. Antox India P. Ltd.3 and in the case of S. Syed Mohideen vs. P. Sulochana Bai4 8. Upon hearing the arguments from both the learned counsel appearing for the parties and considering 3 1990(2) ARBLR399(SC) 4 Equivalent to (2016) 2 SCC 683 - 8 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 the materials placed on record, the following points would arise for my consideration: i. Whether, under the facts and circumstances involved in the case, the appellants/defendant makes out a case that the plaintiff do not have prima facie case so as to grant an order of temporary injunction? ii. Whether, under the facts and circumstances involved in the case, the appellant/ defendant makes out a case that the plaintiff do not have balance of convenience so as to grant an order of temporary injunction? iii. Whether, under the facts and circumstances involved in the case, if an order of temporary injunction is not granted in favour of the plaintiff, thus, they would not suffer any irreparable loss and injury? iv. Whether, the order passed by the Trial Court requires interference by this Court? 9. The suit is filed for permanent injunction against the defendant by taking contentious averments in the plaint that the plaintiff is running a hospital under the - 9 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 name and style and as a trademark “Neighbourhood Hospital”. It is contended that the plaintiff has been using the said name for running the hospital from the year 2013. Though the plaintiff has got registered the name as ‘Neighbourhood Hospital’ in the year 2018, but prior usage of the said trademark such as “Neighbourhood Hospital” is from the year 2013. On the other hand, the defendant's case is that the defendant is a practicing dentist by using the trade name as “My Neighbourhood Dentist” from the year 2016. It is the case of the defendant that the plaintiff has got registered the trade name as “Neighbourhood Hospital” in the year 2018. Therefore, it is sum and substance of the prime contention of the defendant that the defendant’s trademark as “Neighbourhood” has been got registered prior to the registration of the plaintiff’s trade mark. 10. Here, the right of prior usage is recognized as per Section 34 of the Trade Marks Act and Rule 22 of the Trade Marks Rules. The word “Neighbourhood” is a specific - 10 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 unrelated to the generic term such as dentist, medical services, hospitals, etc. Therefore, the word “Neighbourhood” is being used for how long term is the question for consideration for deciding the trademark. The Hon’ble Supreme Court in the case of Wander Ltd., and another vs. Antox India P. Ltd., stated supra as observed as follows: “Secondly, even if a prior registration of a Trade mark is not necessarily evidence of prior user as contended by Sri Raa, Antox cannot, prima facie, explain how in a passing-off action its user subsequent to June 1986 would prevail over the prima facie finding that Wander Ltd. was manufacturing Calcium Gluconate Tablets under the trade-mark Cal-De-Ce at its own factory in Bombay from August 1983 to June 1986. The Appellate Bench does not dislodge this finding nor does it recognise the crucial effect of prior use by the defendant on the plaintiff's case in a passing-off action. It appears to us that it was not an appropriate case where the appellate Bench could have interfered with the discretion exercised by the learned Single, Judge.” - 11 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 11. Further, the Supreme Court in Syed Mohideen’s case stated supra at paragraphs 5, 12, 13, 14 held as under: 5. The High Court has also affirmed the aforesaid findings observing that the respondent's trade mark name 'Iruttukadai Halwa' had become a household name in the nook and corner of the State of Tamil Nadu. There was even a famous Tamil song from the movie “Samy” wherein name of this halwa was mentioned time and again. Therefore, opined the High Court, no one can claim as his own name 'Iruttukadai Halwa' except the respondent. The High Court cognised the fact that the appellant had also got the trade mark 'Iruttukadai Halwa' registered. However, no credence to this aspect is given by the High Court on the ground that as a prior user with prior registration of the trade mark the respondent had exclusive right to this trade mark. Another reason to confirm the decree is predicated on Section 34 of the Act, as per which rights of the prior user of the trade mark has been well recognized. The observations of the High Court in this behalf are as under: “Besides, under Section 34 of the Trade Marks Act, 1999, the vital right of the prior - 12 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 user of the trade mark has been well recognised. Even a registered trade mark holder like the defendant cannot lawfully interfere with or restrain the use of the trade mark by the prior user, for, the law is well settled that even a registration by the recent user cannot be a ground to reject the plea of the prior user that he/she is the prior user of the trade mark.” 12. No doubt, the respondent claims prior user of the trade mark 'Iruttukadai Halwa'. Moreover, she is also registered owner of this trade mark which she got registered in the year 2007. This registration is even prior to the registration of trade mark in favour of the appellant. But at the same time, we have the appellant who is also a registered owner of the trade mark 'Tirunelveli Iruttukadai Halwa' which was registered by the Registrar in the year 2008. In the fact situation, when the appellant also has the trade mark duly registered in his favour under Section 25(2) of the Act, what are the implications thereof, is the question. To put it otherwise, what are the rights of a registered trade mark holder against other person who also hold a valid registration of his trade mark, is the moot question. Before we advert to and answer this core issue, it becomes - 13 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 imperative to scan through the relevant provisions of the Act, in order to understand the scheme of subject matter in issue. 13. Chapter III of the Act pertains to the 'Procedure For And Duration of Registration'. For getting a trade mark registered, an application can be preferred under Section 18 of the Act. Such an application is to be made in the prescribed manner in the office of the trade mark registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants, the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate. Once such an application is made, the Registrar may refuse the application or he may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. However, in case the Registrar decides to reject the application or gives conditional acceptance, he is supposed to record in writing the grounds for doing so. Section 19 of the Act gives the discretion to the Registrar to revoke the acceptance even when such an application is accepted for registration of a trade mark. However, it is to be done after the acceptance but before its - 14 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 registration and that too on satisfaction of any of the two conditions stipulated in the said provision, which are: “(i) If the applications has been accepted in error; or (ii) If the Registrar finds that trade mark should not be registered or should be registered subject to conditions or limitations or subject to additional conditions or different from conditions or limitations subject to which the application has been accepted. However, before doing so, right of hearing is provided to the applicant.” 14. Procedure for registration of the trade mark is provided from Sections 20 to 23 of the Act. As per Section 20, when such an application is accepted for registration, the Registry is supposed to advertise the same in the prescribed manner. The purpose of advertising is to afford the public at large an opportunity to oppose the registration of the mark. After the advertisement, such a right to oppose the registration conferred on every member of the public as 'any person' can file objections under Section 21 of the Act. An opposition is to be made within four months from the date of advertisement/re-advertisement. Once - 15 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 opposition(s) is/are received, the Registrar is to serve a copy of the same to the applicant and within two months thereof the applicant is entitled to file a counter statement of the grounds on which he relies for his application. In case the applicant does not file such a counter statement, it is deemed that he has abandoned his application. On the other hand, if the counter statement is submitted by the applicant, copy thereof is to be served upon the person giving notice of opposition. Thereafter, both the applicant as well as opponent are given an opportunity to file their respective evidence. After receiving such evidence, the Registrar is duty bound to give an opportunity of hearing to both of them, if they so desire. After hearing the parties and considering the evidence, the Registrar is to take a decision as to whether he would be permitting the registration or rejecting the application. At this stage, if the Registrar feels that the mark considered as a whole is likely to create confusion, he is empowered to refuse the registration. Once the application is accepted and either there is no opposition thereto within the time permitted to file such objections or objections, if filed, are decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said - 16 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 trade mark and this process is to be completed within 18 months of the filing of the application.” 12. The plaintiff has produced the documents before the trial Court while considering the applications for temporary injunction and one of the documents produced is memorandum of association and articles of association of “Neighbourhood Hospital Private Limited” at Ex.P2 that the plaintiff hospital company is registered under the Companies Act, 1959 (No.1 of 1956) under the name and style of “Neighbourhood Hospital Private Limited” in the year 2011-12. Therefore, this memorandum of association and Articles of Association of the plaintiff establishes the fact that the “Neighbourhood Hospital Private Limited” was registered and got certificate of incorporation under the name and style of “Neighbourhood Hospital Private Limited”. Further, the documents produced prove that the bills issued by some of the pharma Companies to the plaintiff Company which are of the year 2013 onwards. Therefore, the plaintiff company has issued medical bills in - 17 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 the name and style of “Neighbourhood Hospital Pvt. Ltd.”. Also, the VAT registration certificate dated 11.09.2013 prove that the plaintiff’s company hospital is registered under the name and style of “Neighbourhood Hospital Pvt. Ltd,”. The plaintiff has produced several documents to this effect that the plaintiff is rendering medical services from the year 2013. Here, the plaintiff has filed an application for registration of trade mark in the year 2013. But the prior usage of the trademark namely “Neighbourhood” is prior to the date of registration of the defendant. Therefore, this prior usage is recognized as per Section 34 of the Trade Marks Act and Rule 22 of the Trade Marks Rules. Admittedly, as per the materials produced by the defendant, the defendant has got registered the trademark of “Neighbourhood” in the year 2016. But, the plaintiff has been using the name “Neighbourhood” from the year 2013. When for a long period, a particular name is being used for running services and carrying out business that is recognized, the very fact that the subsequent registration - 18 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 of a trademark by other companies or service providers cannot defeat the right of prior usage. Therefore, just because the plaintiff company has got registered the trademark in the year 2018 that does not take away the right of the prior usage to recognize from the year 2013. Therefore, in this regard, the trial Court has correctly assessed the material and found that the plaintiff has made out a prima facie case, balance of convenience and if an order of temporary injunction is not granted, it would cause injury and loss to the plaintiff and has correctly granted an order of temporary injunction. 13. Considering the citation relied upon by the learned counsel for the appellant, the factual matrixes of the case are different. In the cited case, the appellant had entered into business of manufacturing and distribution of wines, liquors and spirits under the name and style of “Blenders Pride” and “Imperial Blue” and the respondent started marketing whiskey under the mark “London Pride”. In this factual matrix of the case, at paragraph 56 of the - 19 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 judgment, which is highlighted by the learned counsel for the appellant/defendant is observed as follows: “56. Significantly, the appellants’ earlier challenge to United Spirits’ use of the term ‘PRIDE’ in the mark “Royal Challenger American Pride” was unsuccessful. The Punjab and Haryana High Court held that the appellants did not possess an independent registration for the word ‘Pride’, but only for the composite mark ‘Blenders Pride’. Accordingly, they could not claim any exclusive or enforceable rights over the standalone word ‘Pride’. The Court further observed that having failed to object to the registration of the impugned mark before the Trade Marks Registry, the appellants were estopped from asserting such rights subsequently. This decision was upheld by this Court in SLP (C) No. 17674/2023 dismissed on 06.09.2023. Therefore, the appellants’ present attempt is contrary to law and settled principles of equity.” 14. The appellant did not possess the word ‘Pride’ but only the component mark as ‘blender pride’. In this circumstance, the Hon’ble Supreme Court has rejected the - 20 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 contention of the appellant and ultimately dismissed the appeal filed by the appellant. Having found difference in the above factual matrix involved in the case, the cited judgment is not applicable to the present case. 15. Therefore, the plaintiff’s trade marks as “Neighbourhood” has been using by the plaintiff from the year 2013 and it is correctly recognized and considered by the trial Court while considering the applications for temporary injunction. Therefore, upon material placed by both the sides before the trial Court, the impugned order passed by the trial Court needs no interference. Accordingly, I answer to points 1 to 4 are in the negative. Therefore, appeal is liable to be dismissed. Accordingly, it is dismissed. 16. Whatever the observations made above shall not be construed as merits, as the same are only on the documents placed by the learned counsel for the parties and the observations made by the trial Court. Therefore, - 21 - HC-KAR NC: 2026:KHC:27193 MFA No. 6215 of 2023 the trial Court shall decide the suit independently on merits of the suit based on the evidence to be adduced. 17. The trial Court shall expedite the trial and dispose of the suit as early as possible. Sd/- (HANCHATE SANJEEVKUMAR) JUDGE KA List No.: 1 Sl No.: 55