Anti‑Dissection and Dominant Part Tests are Confined to the Plaintiff’s Composite Mark: Commentary on Saurabh Gupta v. Sheopals Pvt Ltd (2025 DHC 10443‑DB)

1. Introduction

The Division Bench of the Delhi High Court (C. Hari Shankar and Om Prakash Shukla, JJ.) in Saurabh Gupta v. Sheopals Pvt Ltd (FAO (COMM) 175/2025 & 187/2025, decided on 26 November 2025) delivers an important and tightly reasoned ruling on trademark infringement, particularly:

• the correct scope of the anti‑dissection rule under Section 17(2) of the Trade Marks Act, 1999,
• the proper use of the “dominant part” test,
• the assessment of phonetic similarity and likelihood of confusion under the Pianotist test,
• the distinctiveness of common word marks under Sections 9(1)(a) and 17(2)(b),
• the evidentiary significance of registration under Section 31(1), and
• the impact of delay, acquiescence, and defendant’s expenditure on interim injunctions.

The litigation arises from a dispute between:

• Saurabh Gupta (“Saurabh”): proprietor of the registered trademark OPAL in Class 3 (cosmetics – gels, bathing soaps, foundations, shampoos, face packs etc.), used since 1992; and
• Sheopals Pvt Ltd (“SPL”): using and seeking registration for the mark SHEOPAL'S for Ayurvedic, herbal, beauty, health and wellness products, incorporated in 2016. Its Class 3 applications were opposed by Saurabh; it holds Class 5 registration for pharmaceuticals and health supplements.

Saurabh’s suit alleged that SPL’s use of SHEOPAL'S for cosmetics infringed his registered mark OPAL under Section 29(2)(b), and also amounted to passing off. An ex parte interim injunction was initially granted, but after a prior appeal and remand, the Commercial Court vacated the injunction. Both parties filed cross-appeals against that order.

The Division Bench ultimately refuses interim injunction to Saurabh and sustains the vacation of the ex parte order, but on reasoning radically different from the Commercial Court. In doing so, it significantly refines Indian trademark doctrine on how to compare marks and how to treat common word marks and procedural defences at the interim stage.

2. Summary of the Judgment

2.1 Procedural Background

1. Registration and Use
   • Saurabh is the registered proprietor of OPAL in Class 3 since 1992.
   • SPL was incorporated in 2016; it adopted SHEOPAL'S (derived from its founder’s late father “Sheopal Meena”) for Ayurvedic/health/wellness products, and holds Class 5 registration.
   • SPL applied for Class 3 registration of SHEOPAL'S in 2018 and 2022; both were opposed by Saurabh.
2. Suit and Interim Orders
   • Saurabh filed CS (Comm) 3590/2024 seeking injunction against SPL’s use of SHEOPAL'S for cosmetics, asserting infringement and passing off, supported by robust turnover figures (about ₹ 28.5 crores in 2023‑24).
   • On 14 August 2024, the Commercial Court granted an ex parte ad interim injunction.
   • On 7 September 2024, after hearing, it maintained injunction in favour of Saurabh and rejected SPL’s application under Order XXXIX Rule 4 CPC. This order was set aside in FAO (COMM) 216/2024 by a coordinate Division Bench, which found the earlier reasoning (bisection into SHE + OPAL) contrary to the anti‑dissection rule and remanded for fresh consideration.
3. Impugned Order (22 April 2025)
   • On remand, the Commercial Court:
     • accepted that OPAL appears as the dominant part of SHEOPAL'S,
     • found the marks phonetically similar and likely to cause confusion,
     • rejected SPL’s “generic/common to trade” argument against OPAL, but
     • refused injunction to Saurabh and vacated the earlier order on two grounds:
       1. delay of about six years (computed from SPL’s 2018 application), and
       2. SPL’s substantial promotional expenditure and growing turnover.
   • It allowed SPL’s Order XXXIX Rule 4 CPC application and dismissed Saurabh’s Order XXXIX Rules 1–2 application.
4. Cross-Appeals
   • Saurabh’s appeal (FAO (COMM) 175/2025): sought restoration of the injunction and reversal of the refusal.
   • SPL’s appeal (FAO (COMM) 187/2025): challenged the adverse observations on similarity/confusion (paras 8–11 of the Commercial Court’s order).

2.2 Final Decision of the Division Bench

The Division Bench:

• dismisses Saurabh’s appeal and upholds the refusal of interim injunction;
• allows SPL’s appeal to the extent of correcting the legal findings:
  • holds that the Commercial Court’s use of anti‑dissection and dominant part analysis was legally flawed;
  • finds that OPAL and SHEOPAL'S are not deceptively similar when compared as whole marks from the standpoint of the average consumer;
  • holds that even though some phonetic similarity exists, it is not sufficient to cause confusion in the relevant market context;
  • rejects the Commercial Court’s handling of delay, acquiescence and promotional expenditure as grounds to deny injunction in case of infringement – but observes that these issues are ultimately academic here because no prima facie infringement is made out.

Thus, the result (no interim injunction) is sustained, but the entire doctrinal anatomy of the Commercial Court’s order is substantially re‑written.

3. Detailed Analysis

3.1 Precedents Cited and Their Role

3.1.1 South India Beverages v. General Mills Marketing (2015) 61 PTC 231 (Del) (DB)

This Division Bench authority had explained that:

• the anti‑dissection rule (compare marks as a whole) is not violated merely because courts examine a dominant feature of a composite mark; and
• copying or replication of a dominant part of the plaintiff’s composite mark in the defendant’s mark can contribute to finding deceptive similarity.

The Commercial Court, on remand, relied heavily on this case to hold that OPAL is the dominant part of SHEOPAL'S and therefore confusion would arise. The Division Bench in the present judgment clarifies that South India Beverages must be read properly: the dominant part test is a tool within the anti‑dissection framework and applies to the plaintiff’s composite mark, not as a license to dissect the defendant’s mark and treat any overlapping element as dispositive.

3.1.2 Pernod Ricard India (P) Ltd v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701

The Supreme Court in Pernod Ricard revisited and reaffirmed the classic Pianotist test for deceptive similarity, emphasising:

• holistic comparison of marks by their look and sound,
• nature of goods,
• class of consumers,
• surrounding circumstances, and
• likely impact of normal use of both marks in trade.

The Division Bench here quotes Pernod Ricard at length to underscore that:

• trademark comparison is a multi‑factorial, context‑sensitive exercise;
• courts must consider the overall commercial impression, not indulge in mechanical dissection; and
• phonetic similarity is not, by itself, sufficient to conclude confusion.

This authority is central to the Bench’s rejection of the Commercial Court’s simplistic phonetic and dominant part analysis.

3.1.3 Coca‑Cola Co. of Canada Ltd v. Pepsi‑Cola Co. of Canada Ltd, AIR 1942 PC 40

The Privy Council’s classic dictum is cited (as also re‑affirmed in Pernod Ricard) to stress that:

the Court must assess similarity “not placing [marks] side by side” but considering how the plaintiff’s mark would be remembered by persons with “average memory with its usual imperfections”.

The Division Bench uses this to criticise the Commercial Court’s explicit approach of comparing the marks “when kept side by side”.

3.1.4 In the Matter of an Application by the Pianotist Co. Ltd (1906) 23 RPC 774

The foundational Pianotist test, as articulated by Justice Parker, is reproduced and forms the analytical backbone for:

• evaluating phonetic similarity in context, and
• requiring consideration of all relevant factors – visual and phonetic similarity, goods, consumers, circumstances, and likely confusion in real‑world trade.

The Bench relies on Pianotist to hold that even if OPAL and SHEOPAL'S share some phonetic similarity, confusion does not follow automatically.

3.1.5 Power Control Appliances v. Sumeet Machines (P) Ltd (1994) 2 SCC 448

This Supreme Court decision sets out the doctrine of acquiescence in IP disputes, holding that:

• mere inaction or delay does not amount to acquiescence;
• acquiescence implies a form of positive conduct – the plaintiff “sitting by” and knowingly accepting the defendant’s use, thereby allowing the defendant to build substantial goodwill.

The Commercial Court invoked this case (along with a Delhi High Court decision in Intex Technologies) to deny injunction on grounds of delay. The Division Bench distinguishes the situation here and harmonises this with Midas Hygiene (discussed next), concluding that:

• delay by itself cannot defeat an injunction where infringement is otherwise made out;
• allegations of acquiescence generally require a full trial, not mere inferences at the interim stage; and
• in the present case there is no acquiescence, as Saurabh had lodged oppositions to SPL’s applications – conduct inconsistent with consent.

3.1.6 Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia (2004) 3 SCC 90

The Supreme Court in Midas Hygiene held:

“In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.”

The Division Bench relies squarely on this to emphasise:

• where infringement is prima facie shown, delay alone cannot deprive the plaintiff of interim injunction;
• this principle holds particular force in clear cases of dishonest adoption.

However, having clarified the law on delay and acquiescence, the Bench ultimately finds that no prima facie infringement exists on the merits, making the delay/acquiescence argument ultimately irrelevant to the outcome.

3.1.7 Intex Technologies (India) Ltd v. AZ Tech (India), 2017 SCC OnLine Del 7392

This Delhi High Court decision, relied upon by the Commercial Court, was invoked on principles of acquiescence and delay. The Division Bench notes its reliance but essentially subordinates it to the Supreme Court dicta in Midas Hygiene and Power Control Appliances, and clarifies that mere passage of time without suit, particularly in the face of opposition proceedings, cannot be equated with acquiescence.

3.1.8 Quantum Hi‑Tech Merchandising Pvt Ltd v. L.G. Electronics India Pvt Ltd, 2025 SCC OnLine Del 8238

This more recent Delhi High Court decision is cited illustratively for the proposition that:

• in exceptional cases, courts at the interim stage can treat a trademark registration as prima facie invalid, e.g., where the mark applied for and the mark actually registered are materially different.

The Bench uses this example to contrast the ordinary rule under Section 31(1): registration is prima facie evidence of validity, and courts should normally proceed on that footing at the Order XXXIX stage.

3.2 Core Legal Reasoning

3.2.1 Anti‑Dissection and Dominant Part Tests: Confined to the Plaintiff’s Composite Mark

The most significant doctrinal clarification in this judgment concerns the proper ambit of the anti‑dissection rule in Section 17(2)(a) and the related dominant part test.

(a) Statutory Basis – Section 17

Section 17 provides:

• Section 17(1): registration of a trademark consisting of several matters confers exclusive right to use the mark “taken as a whole”.
• Section 17(2)(a)&(b) (non obstante clause):
  • where a registered mark contains a part which is not separately registered or applied for; or
  • contains matter common to trade or of a non‑distinctive character,
  registration shall not confer any exclusive right in such part.

The Bench draws crucial inferences:

1. Section 17(2)(a) is about the plaintiff’s entitlement to “claim exclusivity”.
   It addresses what the proprietor of the registered mark may or may not claim as his exclusive right. Consequently, Section 17(2) is directed at the plaintiff’s registered mark, not the defendant’s mark.
2. Application only where the plaintiff’s mark is “composite”.
   Anti‑dissection becomes relevant only when the plaintiff’s mark contains separable parts and the plaintiff attempts to claim exclusivity in one such part.

(b) Why Anti‑Dissection Was Inapplicable Here

Applying this reasoning to the present case:

• Saurabh’s registered mark is the single word “OPAL” – not a composite device with separately discernable parts.
• He claims exclusivity over OPAL as a whole, not over a sub‑part such as “PAL”.

Thus:

• There is no occasion to apply the anti‑dissection rule, because Saurabh is not attempting to monopolise an unregistered sub‑part of a composite mark.
• The Commercial Court erred by invoking anti‑dissection in relation to SPL’s mark SHEOPAL'S – i.e., the defendant’s mark. Section 17(2) does not empower courts to dissect the defendant’s mark and then attribute “dominant” portions to it for the purpose of conferring exclusivity on the plaintiff.

This is a pivotal holding: anti‑dissection under Section 17(2) operates as a limitation on what the plaintiff may claim in its own registration, not as a doctrine for mechanically carving up the defendant’s mark.

(c) Dominant Part Test as Explanatory, Not an Override

The Bench further clarifies that the dominant part test (as discussed in South India Beverages and reiterated in Pernod Ricard):

• is not an exception to anti‑dissection;
• is an explanatory tool within the framework of whole‑mark comparison, used where the plaintiff’s composite mark contains a distinctive, prominent element that dominates consumer perception; and
• becomes relevant only when that dominant element of the plaintiff’s mark is replicated in the defendant’s mark, thereby likely causing confusion when both marks are considered as wholes.

Because Saurabh’s mark is not composite and there is no claim of exclusivity over a subset, the dominant part analysis is simply out of place. The Court therefore holds that the Commercial Court fundamentally misapplied both anti‑dissection and the dominant part test.

3.2.2 Whole‑Mark Comparison: OPAL vs SHEOPAL'S

Having cleared the doctrinal ground, the Bench undertakes a straightforward, whole‑mark comparison guided by the average consumer test.

(a) Average Consumer Perspective

The question is whether a consumer of average intelligence and imperfect recollection, who has encountered Saurabh’s OPAL products on one occasion and later comes across SPL’s SHEOPAL'S products, is likely:

• to be confused, or
• to assume an association between the two, given the identity/similarity of goods under Section 29(2)(b).

The Court emphasises:

• Marks must not be compared “side by side” (Coca‑Cola principle).
• Human recollection of marks is imperfect and tends to capture the overall impression, not dissected parts.

(b) The Nature of the Mark “SHEOPAL'S”

The Court notes that:

• “Sheopal” is an Indian personal name (and a modernised variant of “Shivpal”),
• as a matter of linguistic and cultural context, Indian consumers are likely to perceive “SHEOPAL'S” as a single name, not as “SHE” + “OPAL’S”.

The Court reasons that:

• Even a consumer of average intelligence is unlikely to mentally parse the word “SHEOPAL'S” into “SHE” and “OPAL” and then recall Saurabh’s mark.
• Realistically, he would either remember the word as a whole (“SHEOPAL'S”) or not at all.

This leads to a key holding:

“The mere fact that OPAL happens to be a part of SHEOPAL'S is insufficient, to our mind, to cause confusion in the mind of the consumer.”

By way of contrast, the Bench notes that if SPL’s mark had been, for example, “BLUE OPAL” or “NEW OPAL”, the assessment might have been “decidedly different” – such marks more obviously evoke the registered mark OPAL.

3.2.3 Phonetic Similarity: Necessary but Not Sufficient

The Commercial Court had found that OPAL and SHEOPAL'S are phonetically similar “when kept side by side”. The Division Bench responds in two stages:

1. Side‑by‑side comparison is the wrong test (Coca‑Cola, Pernod Ricard).
2. Even accepting some degree of phonetic resemblance, phonetic similarity alone does not establish likelihood of confusion.

Applying the Pianotist framework (as adopted in Pernod Ricard), the Court considers:

• visual and aural impression of the marks,
• nature of the goods (cosmetics and personal care products),
• class of consumers (general retail consumers, but with increasing brand awareness),
• surrounding circumstances, and
• likely effect of normal use of OPAL and SHEOPAL'S in the market.

Within this multi‑factor frame, the Bench concludes:

“Though there is some degree of phonetic similarity between OPAL and SHEOPAL'S, … it cannot be said that the phonetic similarity if any between the two marks is such as is likely to result in confusion in the mind of the consumer of average intelligence and imperfect recollection.”

This is a subtle but important refinement: courts must separately analyse (i) whether marks are phonetically similar, and (ii) whether that similarity, in context, is likely to cause confusion. The latter does not automatically follow from the former.

3.2.4 Distinctiveness of OPAL: Common Words and Section 17(2)(b)

(a) SPL’s Argument: OPAL as Generic/Common

SPL had contended that:

• OPAL is the name of a semi‑precious stone – a common English word;
• therefore, the word is generic/common to trade and incapable of monopolisation by Saurabh; and
• as such, Saurabh should not be allowed exclusivity under Section 17(2)(b).

(b) Court’s Response: Distinctiveness is Goods‑Specific

The Bench carefully maps Section 17(2)(b) to Section 9(1)(a):

• Section 9(1)(a) prohibits registration of marks “devoid of any distinctive character”, elaborated as “not capable of distinguishing the goods or services of one person from those of another”.
• “Non‑distinctive character” in Section 17(2)(b) must be read in this sense.

Crucially, the Court stresses:

• Distinctiveness is context‑dependent. One cannot decide if a word is distinctive “in vacuo”.
• A common word may become distinctive when used as a trademark for goods or services with which it has no inherent or descriptive connection.
• The legal question is: does the mark, as used, distinguish the goods of one trader from those of another?

Applying this to OPAL:

• “Opal” undoubtedly denotes a semi‑precious stone.
• However, there is no real conceptual or descriptive connection between such stones and cosmetics (gels, soaps, shampoos, face packs, etc.).
• Using “OPAL” as a brand for cosmetics is therefore arbitrary in the trade mark sense and hence inherently distinctive for those goods.

The Court summarises:

“The lack of any connection between opals and cosmetics by itself renders the use of the mark OPAL, for cosmetics, distinctive.”

Accordingly, the Commercial Court’s characterisation of OPAL as “common” and thus non‑distinctive is found erroneous.

(c) Originality/Inventiveness Not Required for Trademarks

The Bench also makes a clarificatory point:

• The Trade Marks Act does not require that a mark be “original”, “inventive” or “coined” by the proprietor.
• Such requirements are proper to patent or design law, not trademark law.
• Even non‑coined, dictionary words can function as valid trademarks if they are distinctive in relation to the goods.

This undercuts SPL’s suggestion that OPAL’s pre‑existence as a word diminishes its protectability.

3.2.5 Section 31(1): Registration as Prima Facie Evidence of Validity

The Bench underscores the often‑overlooked significance of Section 31(1):

“In all legal proceedings relating to a trade mark registered under this Act … the original registration of the trade mark … shall be prima facie evidence of the validity thereof.”

This has direct implications for interim proceedings under Order XXXIX:

• At the interlocutory stage, the plaintiff need only show a prima facie case, alongside balance of convenience and irreparable injury.
• As regards validity of the registered mark, Section 31(1) itself supplies the prima facie evidence.
• The onus then rests heavily on the defendant to demonstrate exceptional circumstances that cast serious doubt on validity (e.g., the Quantum Hi‑Tech situation, where the registered mark varied materially from the applied‑for mark).

Transposed to this case:

• Saurabh’s mark OPAL is registered in Class 3.
• By virtue of Section 31(1), that registration is prima facie valid and is presumed to have overcome Sections 9 and 11 at the registry stage.
• Thus, at least at the interim stage, SPL’s plea that OPAL is non‑distinctive or generic cannot prevail against this statutory presumption, absent compelling contrary evidence (which was not shown).

The Court therefore treats OPAL as a valid, distinctive registered mark entitled to protection, even though on facts it ultimately finds no infringement by SHEOPAL'S.

3.2.6 Delay, Acquiescence and Defendant’s Expenditure

(a) Delay vs Acquiescence

The Commercial Court treated the following as dispositive:

• SPL’s first application for registration of SHEOPAL'S in 2018, and
• the filing of the suit only in August 2024,

and concluded that a six‑year delay disentitled Saurabh to injunction.

The Division Bench:

• rejects the computation of delay from the date of SPL’s application:
  • there is no evidence that Saurabh had knowledge on that date;
  • at earliest, knowledge can be presumed from Saurabh’s filing of opposition, not from SPL’s filing of the application per se.
• Affirms, in line with Midas Hygiene, that mere delay in approaching the court cannot defeat an injunction where infringement is otherwise made out.
• Explains, following Power Control Appliances, that acquiescence requires something more than delay – it implies conscious inaction amounting to consent, allowing the defendant to build goodwill.

Significantly, the Court holds there can be no acquiescence here:

• Saurabh had actively opposed SPL’s trademark applications in 2018 and 2022.
• Such opposition is the antithesis of consent; one cannot at once be opposing and acquiescing.
• Even if SPL continued to use SHEOPAL'S after such opposition, it did so “at its own risk and peril”.

The Bench thus sharply corrects the Commercial Court: even if infringement had been made out, Saurabh’s suit could not have been dismissed at the interim stage solely on grounds of delay or supposed acquiescence.

(b) Promotional Expenditure by the Defendant

The Commercial Court additionally relied on SPL’s:

• substantial marketing and promotional spend, and
• growing turnover,

to deny injunction, reasoning that injunction would cause irreparable loss to SPL.

The Division Bench is emphatic that this is “completely foreign” to trademark law:

• Money spent advertising or promoting an infringing mark does not create an equity in favour of the infringer.
• A defendant always remains free to continue business under a non‑infringing mark.
• Expenditure on building goodwill under an infringing mark is a risk the defendant chooses to take and cannot bind the court’s hands when infringement is shown.

This is an important practical message to businesses: investing heavily in a mark whose clearance is doubtful will not immunise you from injunctive relief.

That said, in the present case, these considerations become academic because the Bench’s principal finding is that there is no deceptive similarity and hence no infringement.

3.3 Impact of the Judgment

3.3.1 Re‑Focusing Anti‑Dissection and Dominant Part Analysis

The judgment is likely to have a substantial impact on how Indian courts – especially Commercial Courts – approach composite marks and overlapping elements. It:

• Restricts the use of anti‑dissection and dominant part tests to the plaintiff’s composite mark under Section 17(2).
• Disapproves of the widespread practice of dissecting the defendant’s mark, identifying overlapping portions, and then mechanically concluding deceptive similarity.
• Re‑emphasises whole‑mark comparison and the true function of the dominant element concept – as a mental shorthand for how consumers perceive the plaintiff’s composite mark, not as an analytical tool to be misapplied to the defendant’s mark in isolation.

For practitioners, this means:

• Pleadings must be clear about whether the plaintiff’s mark is composite and if exclusivity is claimed in a particular element.
• Arguments based merely on shared syllables or fragments will carry less weight unless tied to a dominant feature of the plaintiff’s mark that genuinely drives consumer recall.

3.3.2 Common Word Marks: Strengthened Protection When Goods Are Unrelated

By holding that “OPAL” is distinctive for cosmetics despite being a common word for a stone, the Court:

• confirms that arbitrary use of dictionary words for unrelated goods can create strong trademarks;
• discourages defendants from casually labelling such marks as “generic” or “common” under Section 17(2)(b); and
• reminds lower courts to always test distinctiveness in relation to the goods/services.

Brand owners using English words for Indian consumer products (cosmetics, food, apparel, etc.) stand reinforced in their position, provided the words have no descriptive nexus with the goods.

3.3.3 Interim Relief: Section 31 Presumption and Limits of Delay/Acquiescence Defences

The judgment reaffirms key principles for interim injunctions:

• Registration gives the plaintiff:
  • a prima facie presumption of validity (Section 31(1)), and
  • corollary rights under Section 28 to exclusivity and relief for infringement.
• Challenges to validity (genericness, common to trade etc.) must overcome the Section 31(1) presumption, which is not easily displaced at the interim stage.
• Delay alone is not a defence against infringement‑based injunctions.
• Acquiescence requires clear evidence of knowing tolerance or encouragement, not merely the passage of time.
• Ongoing opposition to registration is strong evidence against acquiescence.
• Defendant’s marketing and advertising spend is irrelevant to whether the mark infringes, and cannot morally or legally bar an injunction if infringement is shown.

Future defendants will be well advised not to place excessive reliance on delay or expenditure as shields at the interim stage unless they can genuinely show acquiescence coupled with ambiguous conduct by the plaintiff.

3.3.4 Guidance on Name‑Based Marks

While not elaborated at length, the Court also touches – via its treatment of “SHEOPAL'S” – on marks derived from personal names:

• Adoption of a mark from a family member’s name does not automatically immunise it from infringement scrutiny.
• The core test remains likelihood of confusion, assessed through the Pianotist lens, irrespective of the internal rationale for choosing the mark.

That said, the Court’s assessment that Indian consumers will recognise “Sheopal” as a proper name rather than as “She + Opal” shows how cultural and linguistic context will influence the confusion analysis for name‑based marks.

4. Complex Concepts Simplified

4.1 Anti‑Dissection Rule

When a trademark consists of multiple parts (e.g., “ABC GOLD PLUS”), the law says:

• You must compare marks as a whole, not piece by piece.
• The proprietor cannot claim exclusive rights over a part (e.g., “GOLD”) unless that part is also separately registered or applied for.

In this case, OPAL is itself a single word mark – not made up of separately identifiable elements for Section 17(2)(a) purposes – so anti‑dissection is not even engaged.

4.2 Dominant Part Test

Sometimes, especially in a long composite mark, one element stands out in consumers’ minds (e.g., “NIKE” in “NIKE AIR MAX”). That is the “dominant part”. Courts may:

• look at whether the dominant part of the plaintiff’s mark has been copied into the defendant’s mark, and
• use that as a factor – not the only factor – to infer confusion when the marks are compared as wholes.

It is not a licence to reverse‑engineer the defendant’s mark or to treat the shared element alone as decisive.

4.3 Distinctiveness vs Genericness

• A mark is distinctive if it helps consumers identify that the goods come from a particular source and not others.
• A mark is generic if it is the common name of the goods themselves (e.g., “Soap” for soap) and cannot distinguish one trader’s goods from another’s.
• Between these extremes lie descriptive and suggestive marks.

OPAL is not the name of cosmetics. It is a stone. When used for cosmetics, it is “arbitrary” and therefore inherently distinctive.

4.4 Section 31(1) Presumption

Once a trademark is registered, the law presumes, on a prima facie basis, that:

• it is valid,
• it is distinctive, and
• it has overcome any absolute/relative grounds for refusal.

At the interim stage, courts generally accept this presumption unless there is something extraordinary that shakes this foundation.

4.5 Average Consumer Test

Courts imagine a typical customer:

• not a legal expert or language specialist,
• with average intelligence,
• with imperfect memory,
• who encounters the marks in real‑world conditions, not in a courtroom chart.

The question is: would such a consumer likely be confused or assume a commercial connection between the two marks? This is assessed using the Pianotist criteria.

4.6 Delay vs Acquiescence

• Delay: Plaintiff waits some time before suing. By itself, this does not bar injunction in an infringement case.
• Acquiescence: Plaintiff knows about the defendant’s use, accepts it in some way (by inaction or conduct), and lets defendant build goodwill, then tries to stop it later. This can sometimes bar relief, but must be shown by clear facts, usually at trial.

Opposing the defendant’s trademark registration is usually a strong indicator that the plaintiff has not acquiesced.

5. Conclusion

The Delhi High Court’s decision in Saurabh Gupta v. Sheopals Pvt Ltd is notable less for its ultimate result – refusal of interim injunction – and more for its careful re‑articulation of several core principles of Indian trademark law.

Key takeaways include:

• Anti‑dissection under Section 17(2) and the dominant part test apply only to the plaintiff’s composite mark. They cannot be misapplied by carving up the defendant’s mark to locate overlap.
• Marks must be compared as wholes from the vantage of the average consumer; side‑by‑side comparison is inappropriate.
• Phonetic similarity is not enough by itself; it must be evaluated within the broader Pianotist framework, considering goods, consumers, and market context.
• Common dictionary words can be distinctive trademarks when used arbitrarily for unrelated goods. Distinctiveness is always goods‑specific.
• Section 31(1) gives registered marks a strong prima facie presumption of validity, which should guide interim relief unless exceptional facts suggest otherwise.
• Delay alone does not bar injunction in infringement cases; acquiescence is a distinct and fact‑intensive defence that was not established here, particularly in light of the plaintiff’s opposition to registration.
• Defendant’s marketing expenditure and turnover cannot legitimise an infringing mark or preclude injunction; such costs are the defendant’s own commercial gamble.

On applying these principles, the Court ultimately holds that OPAL and SHEOPAL'S are not deceptively similar as whole marks, and that even some phonetic resemblance does not translate into a likelihood of confusion in the minds of the relevant consumers. Consequently, Saurabh fails to establish a prima facie case of infringement, and the refusal of interim injunction is upheld, though on a doctrinally far more rigorous basis than that adopted by the Commercial Court.

The judgment will likely be cited extensively in future cases to curb over‑expansive use of the dominant part rhetoric, to reinforce context‑sensitive confusion analysis, and to remind courts and practitioners alike of the statutory architecture governing distinctiveness, validity, and interim relief in trademark disputes.