Ecotone Systems Pvt. Ltd. & Anr. v. Preksha Interiors Pvt. Ltd.

1. After having heard Mr. J. Sai Deepak, learned Senior Counsel appearing for the appellant and Mr. Nikhil Chawla, learned Counsel for the respondents, with the consent of parties, these appeals are disposed of in terms of the following arrangement, put in place and to remain in force during the pendency of the CS (Comm) 2885/2024 and CS (Comm) 303/2024 presently pending before the learned Commercial Court, Saket:

(i) As the appellant has registrations for the device mark

ECOTONE in Classes 9, 17 and 20 for goods specified in the registration certificate, prior to which there is no evidence of user by the respondents for the mark ECOTONE for the said goods, the appellant would be entitled to use the device mark ECOTONE, in respect of the goods covered by the said registrations in Classes 9, 17 and 20. In order to avoid any confusion, we may reproduce the relevant portions of the registrations certificate: Registration in Class 9 Goods & Service Details [CLASS: 9] SCIENTILLC, NAUTICAL, SURVEYING, ELECTRIC, PHOTOGRAPHIC, CINEMATOGRAPHIC, OPTICAL, WEIGHING, MEASURING, SIGNALLING, CHECKING (SUPERVISION), LIFE SAVING AND TEACHING APPARATUS AND INSTRUMENTS; APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR INIAGES; MAGNETIC DATA CARRIERS, RECORDING DISCS; AUTOMATIC VENDING MACHINES AND MECHANISMS FOR COIN-OPERATED APPARATUS; CASH REGISTERS, CALCULATING MACHINES, DATA PROCESSING EQUIPMENT AND COMPUTERS; FIRE EXTINGUISHING APPARATUS. Registration in Class 17 Details [CLASS: 17] RUBBER, GUTTA PERCHA, GUM, ASBESTOS, MICA AND GOODS MADE FROM THESE MATERIALS AND NOT INCLUDED IN OTHER CLASSES; PLASTICS IN EXTRUDED FORM FOR USE IN MANUFACTURE; PACKING, STOPPING AND INSULATING MATERIALS; FLEXIBLE PIPES, NOT OF METAL IN CLASS Restrictions Mark to be used as whole. Registration in Class 20 Details [CLASS: 20] AUDITORIUM CHAIRS, FURNITURE, MIRRORS, PICTURE FRAMES; GOODS(NOT INCLUDED IN OTHER CLASSES) OF WOOD, CORK, REED, CANE, WICKER, HORN, BONE, IVORY, WHALEBONE, SHELL, AMBER, MOTHER- OF-PEARL, MEERSCHAUM AND SUBSTITUTES FOR MATERIALS, OR OF PLASTICS IN CLASS 20.

(ii) Pending disposal of the suit, therefore, the respondents would not use the mark ECOTONE for the goods covered by the aforesaid registrations held by the appellant.

(iii) Based on the invoices produced by the respondents before the learned Commercial Court, the respondents would, however, be entitled to use the mark ECOTONE in respect of the goods which are covered by the invoices dated 28 January 2013, 15 May 2013, 27 December 2013, 1 March 2014, 5 April 2014, 29 April 2014, 5 May 2014, 12 October 2014, 14 October 2014, 1 January 2015, 2 January 2015 and 22 June 2015, which are prior to the registration of the mark ECOTONE in favour of the appellant.

(iv) The appellant undertakes not to use the mark ECOTONE for the goods covered in the invoices dated 28 January 2013, 15 May 2013, 27 December 2013, 1 March 2014, 5 April 2014, 29 April 2014, 5 May 2014, 12 October 2014, 14 October 2014, 1 January 2015, 2 January 2015 and 22 June 2015 of the respondent, referred to supra.

2. It is made clear that this Court has not entered into any other aspect of the matter, including the claim of passing off which the respondents raised against the appellant. All issues of fact and law therefore would remain open to adjudication before the learned Commercial Court.

3. The appeals stand disposed of in the aforesaid terms.

C.HARI SHANKAR, J. OM PRAKASH SHUKLA, J. JULY 31, 2025