Delhi High Court Upholds Injunction Against NewGen IT Technologies In Trademark Dispute With Newgen Software
The Delhi High Court dismissed two appeals filed by Newgen IT Technologies Limited, upholding an interim injunction that restrained the company from using the mark “NEWGEN” or operating under the corporate name “Newgen IT Technologies Limited.”
The Court held that a party that has contractually acknowledged another’s exclusive trademark rights cannot later claim a bona fide right to use a similar mark once the business relationship between the parties has ended.
A Division Bench of Justice Navin Chawla and Justice Harish Vaidyanathan Shankar emphasized that the conduct of the appellant must be assessed in the context of the prior contractual relationship between the parties. The Court said, “The present case would necessarily have to be viewed in the context of the prior relationship between the parties. When viewed through that lens, the Appellant’s adoption of the mark ‘Newgen’ does not appear to be either innocent or entirely bona fide.”
Newgen Software Technologies, incorporated in 1992, is engaged in software development and has held registered trademarks for “NEWGEN” since 1999. In June 2023, it entered into a business collaboration with VCARE InfoTech, culminating in a formal partnership agreement signed on July 12, 2023.
Crucially, Article 14 of the agreement recorded VCARE InfoTech’s express acknowledgment of Newgen Software’s exclusive rights over the “NEWGEN” trademarks. The clause also clarified that any use of the mark “NEWGEN” by VCARE InfoTech would stem solely from the partnership and not from any independent claim of right.
However, despite this express acknowledgment, VCARE InfoTech changed its corporate name to “Newgen IT Technologies Limited” in July 2024, while the partnership agreement was still in force. Matters escalated when Newgen Software discovered that the renamed entity had filed for an IPO under the new name.
Newgen Software issued a cease-and-desist notice on September 15, 2024, terminated the partnership, and proceeded to initiate legal action seeking a permanent injunction against the alleged trademark infringement.
The trial court initially granted an ex-parte interim injunction, restraining the appellant from using the disputed name. This order was later upheld even after hearing the appellant’s plea for vacation of the injunction. Dissatisfied, the appellant challenged both orders before the Delhi High Court.
In its appeal, Newgen IT Technologies claimed prior use of the “NEWGEN IT” mark internationally since 2017 and argued that Newgen Software had acquiesced to this usage over a period of 1.5 years. The company alleged suppression of facts and asserted that the term “Newgen” was descriptive and commonly used, and that the injunction had caused significant harm to its IPO plans.
The High Court rejected these arguments, emphasizing that the explicit recognition of trademark rights in the agreement was sufficient to discredit the appellant’s claim of bona fide adoption.
On the question of acquiescence, the Court clarified that there was no evidence to support such a defense. The judges noted that the use of the disputed mark in India began only after the partnership ended, thereby undermining any claim of prolonged inaction or consent by Newgen Software.
“Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trademark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches.”
The Court added, “While judging the plea of acquiescence, this Court must also consider whether the adoption of the mark by the Appellant was bona fide. As noted herein above, in India, the Appellant adopted branding containing the term “NEWGEN”, which closely resembles the Respondent‟s Mark immediately after or around when the Partnership Agreement was terminated by the Respondent. Therefore, prima facie, the said adoption cannot be considered as a bona fide adoption. Moreover, immediately after the termination of the Partnership Agreement itself, the Respondent took various steps to protect its rights in the Subject Marks, including filing a rectification application before the Ministry of Corporate Affairs and even notifying SEBI about the said developments. In view thereof, the Respondent cannot be said to be sitting by, when the Appellant was invading its rights in the Subject Marks. Therefore, the plea of acquiescence taken by the Appellant is liable to be rejected.”
The Court affirmed the trial court’s application of the three-fold test for granting interim injunctions prima facie case, balance of convenience, and irreparable harm and held that no perversity or error had been demonstrated in its decision.
Ultimately, the High Court found that the appellant’s adoption of the “NEWGEN” mark was not in good faith and that allowing continued use would result in confusion and trademark infringement.
Cause Title: Newgen IT Technologies Limited v. Newgen Software Technologies Limited, [2025:DHC:4964-DB]
Appearance:
Appellant: Senior Advocates Rajiv Nayar and Malvika Trivedi, along with Anirudh Bakhru, Vaishali Mittal, Siddhant Chamola, Saurabh Seth, Prabhav Bahuguna, Pallavi Bhatnagar, and Saijal Arora.
Respondent: Senior Advocates Sandeep Sethi and Ankit Jain, briefed by JV Abhay, Dhruv Grover, Abhineet Kalia, Riya Kumar, and Rishabh Jain.
