Kerala High Court
Taste Box vs Jsf Holdings Private Limited on 10 April, 2026
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IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE S.MANU
FRIDAY, THE 10TH DAY OF APRIL 2026 / 20TH CHAITHRA, 1948
FAO NO. 1 OF 2026
AGAINST THE ORDER DATED 17.09.2025 IN IA 1/2021 IN OS NO.48
OF 2021 OF II ADDITIONAL DISTRICT COURT, ERNAKULAM
APPELLANT/RESPONDENT/DEFENDANT:
TASTE BOX
M/S TASTE BOX, NEERUNGAL,NEAR RAJAGIRI POST OFFICE
KALAMASSERY,THRIKKAKARA NORTH,ERNAKULAM,, PIN - 683104
REPRESENTED BY ITS MANAGING PARTNER,SHIHAB N.A.
BY ADVS.SRI.BENOY K.KADAVAN
SMT.LAYA GEORGE
SRI.S.GOPAKUMAR
SHRI.SYRIAC T.V.
SMT.T.M.BINITHA
SMT.SREELAKSHMI S.J.
RESPONDENT/PETITIONER/PLAINTIFF:
JSF HOLDINGS PRIVATE LIMITED
M/S JSF HOLDINGS PRIVATE LIMITED,PLOT NO.6A,
1ST PHASE, INDUSTRIAL AREA,KUMBALGODE,BANGALORE-
560074,REPRESENTED BY ITS DIRECTOR JOHN FRANCIS
BY ADVS.
SRI.P.ABRAHAM CHERIAN
SHRI.JAISON S. ROZARIO
SMT.NIMMY K. JOSEPH
SHRI.JOE JOSEPH
SHRI.ARAVIND VARGHESE
SMT.POOJA JOSE
SHRI.V.VARUN
THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ADMISSION ON
05.03.2026, THE COURT ON 10.04.2026 DELIVERED THE FOLLOWING:
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S.MANU, J.
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F.A.O.No.1 of 2026
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Dated this the 10th day of April, 2026
JUDGMENT
Appellant is the defendant in O.S.No.48/2021 of the
Additional District Court-II, Ernakulam. Respondent/plaintiff filed
the suit alleging that it belongs to a group of companies
established in the year 1972 and is engaged in the business of
manufacture and sale of goods such as ice creams, frozen
desserts, milk products, non-alcoholic beverages, syrups and
other foodstuffs and services related to providing said goods by
way of establishing restaurants, parlours and kiosks in India and
various foreign countries. Goods and services of the respondent
are manufactured, sold and supplied under the trademarks
Lazza, Uncle John, Skei and I & U. According to the respondent,
the trademark Lazza has been in use since the year 1990 and
the word has become distinctive in relation to the goods and
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services and are being supplied and sold across the country and
in various foreign countries through a well established business
network. It is one of the most popular branches in south India
with regard to the above mentioned goods and services.
Through extensive advertisements the goods and services under
the trademark Lazza have been promoted. Trademark Lazza and
Lazza device marks are registered under the Trade Marks Act.
Hence, the respondent claimed that it has the exclusive right to
use the trademark Lazza and no other person has any right to
use the said trademark or any mark identical or deceptively
similar to it.
2. Further, the respondent claims that the trademark
Lazza has acquired goodwill and trade reputation and it is a
well-known trademark. On account of registration as also with
long, exclusive and extensive use, the respondent has acquired
legal, vested, statutory and common law rights to the exclusive
use of the trademark Lazza. The respondent claims that it has
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been vigilantly protecting the intellectual property rights
associated with the trademark.
3. The respondent contends that on 16.8.2021 its
lawyer came across an advertisement in the Trademark Journal
inviting objections against an application for registration of a
trademark ‘HAZZA’ in Class 43. The respondent immediately
filed notice of opposition against the said application before the
office of the Registrar of Trademarks at Chennai and the same is
pending. Thereafter it was noticed by the respondent that the
appellant has started a restaurant-cum-bakery under the
trademark ‘HAZZA’ at Kalamassery in Ernakulam District.
Respondent alleges that the essential, leading and prominent
feature in the trademark of the appellant is the word ‘HAZZA’,
derived by replacing the letter ‘L’ in the mark LAZZA with ‘H’.
The respondent uses colour combination of gold and black in the
trademark ‘LAZZA’. Similar colour combination has been used
by the appellant in its trademark ‘HAZZA’. Therefore, the
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appellant has adopted a phonetically, visually and structurally
similar trademark. The further allegation is that the appellant is
infringing the registered trademark of the respondent and
obviously the intention is to deceive and mislead consumers and
members of trade/public.
4. I.A.No.1/2021 was filed to pass an order of
temporary injunction restraining the appellant from using in any
manner the trademark ‘HAZZA’ and/or the device mark ‘HAZZA’
or any other trademark identical and/or deceptively similar to
the trademark ‘LAZZA’ registered in the name of the respondent
and also from using the sign board or hoarding with the
inscription/writing ‘HAZZA’ and/or the device mark ‘HAZZA’ so
as to pass off the appellant’s business as that of the respondent
or in some way connected with the respondent. The learned
Additional District Judge heard the parties and allowed the I.A.
by order dated 17.9.2025. The said order is under challenge in
this appeal.
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5. Heard the learned counsel for the appellant and the
learned counsel for the respondent.
6. The learned counsel for the appellant, Sri.Benoy
K.Kadavan, submitted that the impugned order was passed in
violation of the settled principles regarding infringement of
trademark and passing off. He submitted that the appellant is
using the trademark ‘HAZZA Kitchen’ in respect of running
restaurants falling in Class 43 and the major trademarks
obtained by the respondent are in Class 30. The learned
counsel submitted that the appellant and the respondents are
operating in different fields of services. The respondent is not
operating ordinary restaurants. Its registration under Class 43
is also for limited activities specifically mentioned in the
registration certificate. The appellant is running a restaurant
specialising in Malabar and Middle Eastern cuisine. The
respondent cannot be permitted to claim any monopoly in the
matter of running restaurant for the reason that it has obtained
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registration under Class 43. The appellant’s mark ‘HAZZA
Kitchen’ is distinctive, original and honestly adopted. The word
‘HAZZA’ is derived from Arabic and means ‘delight or pleasure’.
It is totally different from the trademark of the respondent. The
visual and conceptual impression given by the trademark
‘HAZZA’ is not in any way deceptively similar to ‘LAZZA’.
7. The learned counsel also submitted that the
respondent is not running any ordinary restaurants though
registration under Clause 43 was also obtained. There is no
case for the respondent that any consumer had any confusion
regarding the trademark of the appellant and there is no specific
pleading to that effect. Not even a single instance has been
pleaded. Since the field of activity of the appellant and the
respondent are different there is no scope for any confusion or
deception. He submitted that the matter is to be analysed from
the point of view of a layman and since the trademarks are
materially different, no confusion is created.
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8. The learned counsel for the appellant further
submitted that registration under Class 43 is not a conclusive
proof of use and reputation. The same is a matter of evidence
which can be considered only during the trial of the suit. The
learned counsel further submitted that the approach of the
learned Additional District Judge in analysing the dispute
involved in the instant case was totally erroneous. He
submitted that a reading of the impugned order would show
that the learned Judge proceeded in the matter ignoring the well
settled principles regarding anti-dissection and dominant
feature. He submitted that the learned Additional District Judge
analysed the comparability by dissecting the trademarks. The
learned Judge also failed to properly analyse whether the mark,
viewed as whole creates a deceptive similarity likely to mislead
an average consumer of ordinary intelligence and imperfect
recollection.
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9. The learned counsel also submitted that the appellant
has invested huge amounts to conduct the restaurant business
and it has been functioning for the past several years. On
account of the impugned order, the functioning of the restaurant
was affected causing huge loss to the appellant. He submitted
that the basic considerations in the matter of granting interim
injunction were not properly taken note of by the learned
Additional District Judge while passing the impugned order. He
contended that no prima facie case was established by the
respondent. Balance of convenience is in favour of the appellant.
He therefore submitted that the impugned order is liable to be
set aside and the I.A. is liable to be dismissed.
10. The learned counsel for the respondent Shri.Abraham
Cherian supported the impugned order. He submitted that the
order passed by the trial court is not liable to be lightly
interfered with by this Court in the appeal. He further submitted
that unless the order is illegal and perverse no interference is
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warranted. He also submitted that discretionary orders in the
nature of the impugned order passed by the trial court are not
liable to be substituted by the discretion of the appellate court.
He added that no ground sufficient to hold that the impugned
order is arbitrary, perverse or capricious is made out by the
appellant.
11. The learned counsel for the respondent submitted
that the trademark LAZZA has been registered for various
services and products. He submitted that the registration under
Class 43 obtained by the respondent covers all categories of
restaurants. He further submitted that it is immaterial as to
whether the respondent is actually running any restaurant or
not. He disputed the contention of the learned counsel for the
appellant in this regard and submitted that if it is insisted that
an action for infringement would lie only if the registered
trademark is put in use, the very purpose of registration as
provided under the Act would be defeated. He referred to the
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definition of trademark as also Section 18 of the Act in this
regard. He also referred to the law laid down in various
judgments in this connection. The learned counsel further
submitted that LAZZA is a well-known trademark. It has been
recognized as such. He alleged that the appellant by using a
similar trademark HAZZA and opening a restaurant on the
opposite side of a factory of the respondent has acted with
dishonest intention. He submitted that the trademark HAZZA is
similar in idea and it is deceptively similar to the trademark of
the respondent. He also pointed out that both entities are
involved in food industry.
12. The learned counsel submitted that the appellant has
not given any explanation for adopting the deceptively similar
trademark with a closely resembling colour scheme. He argued
that the apparent intention is to deceive the customers and to
make use of the goodwill of the respondent. He submitted that
the respondent has a case regarding infringement of trademark
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as also passing off. He pointed out that the trial court on
analysing the materials placed before it concluded prima facie
that the trademark HAZZA is deceptively similar. The learned
counsel further submitted that though the appellant contends
that it is offering Arabic food, in fact it is not dealing exclusively
with Arabic food.
13. The learned counsel submitted that on various
considerations, the order of injunction granted by the trial court
is perfectly justified. He pointed out that the trademark of the
respondent was registered long back. So also, the respondent
has been using the trademark continuously over a long period of
time. The trial court was convinced about the deceptively
similar nature of the trademark of the appellant. The court
therefore prima facie found that there is infringement of
trademark as well as passing off. Hence, the court restrained
the appellant by issuing the impugned order.
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14. The learned counsel also submitted that the intended
customers of both the appellant and the respondent are the
same. The use of the trademark HAZZA by the appellant is likely
to cause confusion to the customers. He further submitted that
the prominent feature in the trademark of the appellant, the
word HAZZA is coined by just replacing the first letter, ‘L’ in the
trademark LAZZA. The trademark HAZZA is phonetically,
visually and structurally is similar to the trademark LAZZA. The
respondent has been extensively advertising and promoting the
trademark LAZZA for the past several decades by spending huge
funds. He therefore submitted that if the appellant is permitted
to use the trademark HAZZA incalculable and irreparable
damage and injury will be caused to the respondent. He hence
prayed that the instant appeal may be dismissed, upholding the
impugned order.
15. I shall hereafter refer to the various precedents cited
by both sides. First, I shall refer to the judgments cited by the
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learned counsel for the appellant.
16. In Renaissance Hotel Holdings Inc. v. Vijaya Sai
[(2022) 5 SCC 1], the Hon’ble Supreme Court held as under;
“57. The perusal of sub-section (4) of Section 29 of the
said Act would reveal that the same deals with an
eventuality when the impugned trade mark is identical
with or similar to the registered trade mark and is used
in relation to goods or services which are not similar to
those for which the trade mark is registered. Only in
such an eventuality, it will be necessary to establish that
the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark. The
legislative intent is clear by employing the word “and”
after clauses (a) and (b) in sub section (4) of Section 29
of the said Act. Unless all the three conditions are
satisfied, it will not be open to the proprietor of the
registered trade mark to sue for infringement when
though the impugned trade mark is identical with the
registered trade mark, but is used in relation to goods
or services which are not similar to those for which the
trade mark is registered. To sum up, while sub-section
(2) of Section 29 of the said Act deals with those
situations where the trade mark is identical or similar
and the goods covered by such a trade mark are
identical or similar, sub-section (4) of Section 29 of the
said Act deals with situations where though the trade
mark is identical, but the goods or services are not
similar to those for which the trade mark is registered.”
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17. In Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd.[(2001) 5 SCC 73], the Hon’ble Supreme
Court held as under,
“35. Broadly stated, in an action for passing-off on the
basis of unregistered trade mark generally for deciding
the question of deceptive similarity the following factors
are to be considered:
(a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks i.e. both
words and label works.
(b) The degree of resemblances between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are
used as trademarks.
(d) The similarity in the nature, character and
performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they are
likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders
for the goods.
(g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the
competing marks.”
18. In Pernod Ricard India Private Limited and
Another v. Karanveer Singh Chhabra [2025 SCC OnLine SC
1701], the Hon’ble Supreme Court held as follows;
“31. Trademark protection – whether based on name,
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centres on a mark’s ability to distinguish the commercial
origin of goods or services in the minds of consumers.
The likelihood of confusion remains the cornerstone of
both infringement and passing off actions.
31.1. A registered trademark is infringed when a
person, in the course of trade, uses a mark that is
identical or deceptively similar to a registered
trademark in relation to similar goods or services.
Section 2(1)(h) of the Trade Marks Act, 1999 defines
‘deceptively similar’ to mean ‘a mark shall be deemed
to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or
cause confusion’.
31.2. Whether a trade mark is likely to deceive or
cause confusion is a question of fact. Courts have
consistently held that the broad and essential features
of the rival marks must be considered. The assessment
focuses on visual appearance, phonetic similarity, the
nature of the goods, the class of purchasers, and the
manner of sale.
31.3. As held in Parker – Knoll Ltd. v. Knoll
International Ltd. [1962 RPC 265], proof of an
intention to deceive is not required; a likelihood of
confusion is sufficient to establish infringement or
passing off. The evaluation must be made from the
standpoint of an average consumer with imperfect
recollection, emphasizing the overall commercial
impression rather than engaging in a minute or
mechanical comparison.
…………………………………………………………………..
32. A foundational principle in trademark law is that
marks must be compared as a whole, and not by
dissecting them into individual components. This is
known as the anti-dissection rule, which reflects the
real-world manner in which consumers perceive
trademarks – based on their overall impression,
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commercial impression. In Kaviraj Pandit Durga Dutt
Sharma v. Navratna Pharmaceuticals Laboratories
(supra), this Court underscored that the correct test for
trademark infringement is whether, when considered in
its entirety, the defendant’s mark is deceptively similar
to the plaintiff’s registered mark. The Court expressly
cautioned against isolating individual parts of a
composite mark, as such an approach disregard how
consumers actually experience and recall trademarks.
32.1. While Section 17 of the Trade Marks Act, 1999
restricts exclusive rights to the trademark as a whole
and does not confer protection over individual, non-
distinctive components per se, courts may still identify
dominant or essential features within a composite mark
to assess the likelihood of confusion. However, this
does not permit treating such features in isolation;
rather, they must be evaluated in the context of the
overall commercial impression created by the mark.
32.2. This approach finds further support in the
observations of scholars such as McCarthy in
Trademarks and Unfair Competition, who note that
consumers seldom engage in detailed, analytical
comparisons of competing marks. Purchasing
decisions are instead based on imperfect recollection
and the general impression created by a mark’s sight,
sound, and structure. The anti-dissection rule thus
aligns the legal test for infringement with the actual
behaviour and perception of consumers in the
marketplace.
32.3. Consequently, in disputes involving composite
marks, the mere presence of a shared or generic word
in both marks does not, by itself, justify a finding of
deceptive similarity. Courts must undertake a holistic
comparison examining visual, phonetic, structural,
and conceptual elements, to assess whether the
overall impression created by the rival marks is likely
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to mislead an average consumer of ordinary
intelligence and imperfect memory. If the marks,
viewed in totality, convey distinct identities, the use of
a common element – particularly if it is descriptive or
laudatory – will not by itself amount to infringement.
…………………………………………………………………..
33. In determining whether a mark is deceptively
similar to another, courts often consider the dominant
feature of the mark – that is, the element which is
most distinctive, memorable, and likely to influence
consumer perception. While the anti-dissection rule
requires marks to be compared in their entirety,
courts may still place emphasis on certain prominent
or distinguishing elements, especially where such
features significantly contribute to the overall
commercial impression of the mark.
33.1. The principles of the anti-dissection rule and the
dominant feature test, though seemingly in tension,
are not mutually exclusive. Identifying a dominant
feature can serve as an analytical aid in the holistic
comparison of marks. In certain cases, an infringing
component may overshadow the remainder of the
mark to such an extent that confusion or deception
becomes virtually inevitable. In such instances, courts
– while maintaining a contextual and fact-specific
inquiry – may justifiably assign greater weight to the
dominant element. However, emphasis on a dominant
feature alone cannot be determinative; the ultimate
test remains whether the mark, viewed as a whole,
creates a deceptive similarity likely to mislead an
average consumer of ordinary intelligence and
imperfect recollection.
………………………………………………………………..
35. The average consumer test is a central standard
in trademark and unfair competition law. It assesses
whether there exists a likelihood of confusion
between two marks, or whether a mark lacks
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distinctiveness or is merely descriptive. The test is
grounded in the perception of the average consumer
– a person who is reasonably well informed,
observant, and circumspect, but not an expert or
overly analytical. As held by the European Court of
Justice in Lloyd Schuhfabrik Meyer v. Klijsen Handel
BV, the average consumer forms an overall
impression of a mark rather than dissecting it into
individual components.
35.1. A key feature of this test is the recognition that
consumers rarely recall trademarks with perfect
accuracy. For example, this Court in Amritdhara
Pharmacy v. Satyadeo Gupta (supra) emphasized
that the comparison must be made from the
perspective of a person of average intelligence and
imperfect recollection. Thus, minor phonetic or visual
similarities may cause confusion if the marks share
prominent or memorable features. The test also
considers that the degree of consumer attentiveness
may vary depending on the nature of the goods:
greater care may be exercised when purchasing
luxury items than in the case of everyday consumer
goods.
………………………………………………………………..
36. The Trade Marks Act, 1999 does not prescribe
any rigid or exhaustive criteria for determining
whether a mark is likely to deceive or cause
confusion. Each case must necessarily be decided on
its own facts and circumstances, with judicial
precedents serving to illuminate the applicable tests
and guiding principles rather than to dictate
outcomes.
36.1. As a general rule, a proprietor whose statutory
or common law rights are infringed is entitled to seek
an injunction to restrain further unlawful use.
However, this remedy is not absolute. The
considerations governing the grant of injunctions in
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trademark infringement actions broadly apply to
passing off claims as well. That said, a fundamental
distinction remains: while a registered proprietor
may, upon proving infringement, seek to restrain all
use of the infringing mark, a passing off action does
not by itself confer an exclusive right. In appropriate
cases, the court may mould relief in passing off so as
to permit continued use by the defendant, provided it
does not result in misrepresentation or deception.
36.2. The grant of injunction – whether for
infringement or passing off – is ultimately governed
by equitable principles and is subject to the general
framework applicable to proprietary rights. Where
actual infringement is established, that alone may
justify injunctive relief; a plaintiff is not expected to
wait for further acts of defiance. As judicially
observed, “the life of a trademark depends upon the
promptitude with which it is vindicated.”
36.3. The principles laid down in American Cyanamid
Co. v. Ethicon Ltd. continue to guide the Courts while
determining interim injunction applications in
trademark cases. The following criteria are generally
applied:
(i) Serious question to be tried/triable issue: The
plaintiff must show a genuine and substantial
question fit for trial. It is not necessary to establish a
likelihood of success at this stage, but the claim
must be more than frivolous, vexatious or
speculative.
(ii) Likelihood of confusion/deception: Although a
detailed analysis of merits is not warranted at the
interlocutory stage, courts may assess the prima
facie strength of the case and the probability of
consumer confusion or deception. Where the
likelihood of confusion is weak or speculative,
interim relief may be declined at the threshold.
(iii) Balance of convenience: The court must weigh
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party from the grant or refusal of injunction. If the
refusal would likely result in irreparable harm to the
plaintiff’s goodwill or mislead consumers, the
balance of convenience may favor granting the
injunction.
(iv) Irreparable harm: Where the use of the
impugned mark by the defendant may lead to
dilution of the plaintiff’s brand identity, loss of
consumer goodwill, or deception of the public –
harms which are inherently difficult to quantify – the
remedy of damages may be inadequate. In such
cases, irreparable harm is presumed.
(v) Public interest: In matters involving public
health, safety, or widely consumed goods, courts
may consider whether the public interest warrants
injunctive relief to prevent confusion or deception in
the marketplace.
36.4. In conclusion, the grant of an interim injunction in
trademark matters requires the court to consider multiple
interrelated factors: prima facie case, likelihood of
confusion, relative merits of the parties’ claims, balance of
convenience, risk of irreparable harm, and the public
interest. These considerations operate cumulatively, and the
absence of any one of these may be sufficient to decline
interim relief.
…………………………………………………………………………
41. It is a settled principle of trademark law that deceptive
similarity does not necessitate exact imitation. What is
material is the likelihood of confusion or association in the
minds of consumers arising from an overall resemblance
between the competing marks. The applicable standard is
that of an average consumer with imperfect recollection.”
19. The Hon’ble Supreme Court in Nandhini Deluxe v.
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Karnataka Cooperative Milk Producers [(2018) 9 SCC 183]
held as under :-
“32. Having arrived at the aforesaid conclusion, the
reasoning of the High Court that the goods belonging to
the appellant and the respondent (though the nature of
goods is different) belong to the same class and,
therefore, it would be impermissible for the appellant to
have the registration of the trade mark concerned in its
favour, would be meaningless. That apart, there is no
such principle of law. On the contrary, this Court in
Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.,
(1997) 4 SCC 201 has decided otherwise as can be
seen from the reading of paras 47 and 48 of the said
judgment: (SCC pp. 223-25)“47. The respondent Company got registration of
its brand name “Charminar” under the broad
classification “manufactured tobacco”. So long
such registration remains operative, the
respondent Company is entitled to claim
exclusive use of the said brand name in respect
of articles made of tobacco coming under the
said broad classification “manufactured tobacco”.
Precisely for the said reason, when the appellant
made application for registration of quiwam and
zarda under the same brand name “Charminar”,
such prayer for registration was not allowed. The
appellant, therefore, made application for
rectification of the registration made in favour of
the respondent Company so that the said
registration is limited only in respect of the
articles being manufactured and marketed by the
respondent Company, namely, cigarettes. In our
view, if a trader or manufacturer actually trades
in or manufactures only one or some of the
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articles coming under a broad classification and
such trader or manufacturer has no bona fide
intention to trade in or manufacture other goods
or articles which also fall under the said broad
classification, such trader or manufacturer should
not be permitted to enjoy monopoly in respect of
all the articles which may come under such broad
classification and by that process preclude the
other traders or manufacturers from getting
registration of separate and distinct goods which
may also be grouped under the broad
classification. If registration has been given
generally in respect of all the articles coming
under the broad classification and if it is
established that the trader or manufacturer who
got such registration had not intended to use any
other article except the articles being used by
such trader or manufacturer, the registration of
such trader is liable to be rectified by limiting the
ambit of registration and confining such
registration to the specific article or articles
which really concern the trader or manufacturer
enjoying the registration made in his favour. In
our view, if rectification in such circumstances is
not allowed, the trader or manufacturer by virtue
of earlier registration will be permitted to enjoy
the mischief of trafficking in trade mark. Looking
to the scheme of the registration of trade mark
as envisaged in the Trade Marks Act and the
Rules framed thereunder, it appears to us that
registration of a trade mark cannot be held to be
absolute, perpetual and invariable under all
circumstances. Section 12 of the Trade Marks Act
prohibits registration of identical or deceptively
similar trade marks in respect of goods and
description of goods which is identical or
deceptively similar to the trade mark already
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registered. For prohibiting registration under
Section 12(1), goods in respect of which
subsequent registration is sought for, must be (i)
in respect of goods or description of goods being
same or similar and covered by earlier
registration, and (ii) trade mark claimed for such
goods must be same or deceptively similar to the
trade mark already registered. It may be noted
here that under sub-section (3) of Section 12 of
the Trade Marks Act, in an appropriate case of
honest concurrent use and/or of other special
circumstances, same and deceptively similar
trade marks may be permitted to another by the
Registrar, subject to such conditions as may
deem just and proper to the Registrar. It is also
to be noted that the expressions “goods” and
“description of goods” appearing in Section 12(1)
of the Trade Marks Act indicate that registration
may be made in respect of one or more goods or
of all goods conforming a general description.
The Trade Marks Act has noted distinction
between description of goods forming a genus
and separate and distinctly identifiable goods
under the genus in various other sections e.g.
goods of same description in Section 46,
Sections 12 and 34 and class of goods in Section
18, Rules 12 and 26 read with Fourth Schedule
to the Rules framed under the Act.
48. The “class” mentioned in the Fourth Schedule
may subsume or comprise a number of goods or
articles which are separately identifiable and
vendible and which are not goods of the same
description as commonly understood in trade or
in common parlance. Manufactured tobacco is a
class mentioned in Class 34 of Fourth Schedule
of the Rules but within the said class, there are a
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number of distinctly identifiable goods which are
marketed separately and also used differently. In
our view, it is not only permissible but it will be
only just and proper to register one or more
articles under a class or genus if in reality
registration only in respect of such articles is
intended, by specifically mentioning the names of
such articles and by indicating the class under
which such article or articles are to be
comprised. It is, therefore, permissible to
register only cigarette or some other specific
products made of “manufactured tobacco” as
mentioned in Class 34 of Fourth Schedule of the
Rules. In our view, the contention of Mr
Vaidyanathan that in view of change in the
language of Section 8 of the Trade Marks Act as
compared to Section 5 of the Trade Marks Act,
1940, registration of trade mark is to be made
only in respect of class or genus and not in
respect of articles of different species under the
genus is based on incorrect appreciation of
Section 8 of the Trade Marks Act and Fourth
Schedule of the Rules.”
(emphasis supplied)
33. We may mention that the aforesaid principle of law
while interpreting the provisions of the Trade and
Merchandise Marks Act, 1958 is equally applicable as it is
unaffected by the Trade Marks Act, 1999 inasmuch as the
main object underlying the said principle is that the
proprietor of a trade mark cannot enjoy monopoly over the
entire class of goods and, particularly, when he is not using
the said trade mark in respect of certain goods falling
under the same class. In this behalf, we may usefully refer
to Section 11 of the Act which prohibits the registration of
the mark in respect of the similar goods or different goods
but the provisions of this section do not cover the same
class of goods.”
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20. Now I shall mention the judgments cited by the
learned Counsel for the respondent. In Corn Products
Refining Co. v. Shangrila Food Products Ltd., [1959 SCC
OnLine SC 11] the the Hon’ble Supreme Court held as under :-
“21. It is true that in both the abovementioned cases
the two competing trade marks were absolutely
identical which is not the case here. But that in our
opinion makes no difference. The absolute identity of
the two competing marks or their close resemblance is
only one of the tests for determining the question of
likelihood of deception or confusion. Trade connection
between different goods is another such test. Ex
hypothesi, this latter test applies only when the goods
are different. These tests are independent tests. There
is no reason why the test of trade connection between
different goods should not apply where the competing
marks closely resemble each other just as much as it
applies, as held in the “Black Magic” and “Panda” cases,
where the competing marks were identical. Whether by
applying these tests in a particular case the conclusion
that there is likelihood of deception or confusion should
be arrived at would depend on all the facts of the case.
22. It is then said that biscuits containing glucose are
manufactured with liquid glucose whereas the
appellant’s mark only concerns powder glucose. We will
assume that only liquid glucose is used in the
manufacture of biscuits with glucose. But there is
nothing to show that an average buyer knows with
what kind of glucose, biscuits containing glucose are or
can be made. That there is trade connection between
glucose and biscuits and a likelihood of confusion or
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deception arising therefrom would appear from the fact
stated by the appellant that it received from a
tradesman an enquiry for biscuits manufactured by it
under its mark ‘Glucovita’. The tradesman making the
enquiry apparently thought that the manufacturer of
‘Glucovita’ glucose was likely to manufacture biscuits
with glucose; he did not worry whether biscuits were
made with powder or liquid glucose. Then again it is
stated in one of the affidavits filed by the appellant
that the respondent’s director told the appellant’s
manager that the respondent had adopted the name
‘Gluvita’ to indicate that in the manufacture of its
biscuits glucose was used. Those statements on behalf
of the appellant are not denied by the respondent. So,
a trade connection between glucose and biscuits would
appear to be established. We are therefore of opinion
that the commodities concerned in the present case
are so connected as to make confusion or deception
likely in view of the similarity of the two trade marks.
We think that the decision of Desai, J., was right.”
21. In T.V. Venugopal v. Ushodaya Enterprises
Limited., [(2011) 4 SCC 85] the Apex Court held as extracted
hereunder:-
“28. The respondent Company has argued before this
Court that the descriptive nature of the mark has to be
determined with respect to the appellant’s goods. This
approach according to the appellant is completely
erroneous. While determining the nature of the mark–
for the purpose of registration or for the purpose of
passing off/infringement, the first inquiry which the
court ought to carry out is to determine whether the
applicant’s/plaintiff’s mark is invented,
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28arbitrary/suggestive, descriptive or generic. The nature
of the mark is always determined with respect to the
plaintiff’s/applicant’s goods. For example, if a person
applies for a trade mark called “Extra Strong”, the
Registrar of Trade Marks has to examine whether the
mark is descriptive or laudatory for the goods for which
it is applied i.e. the applicant’s goods. The inquiry does
not depend on the person opposing the use of the said
mark. Thus, to hold that the nature of the mark has to
be determined by the nature of the appellant’s goods is
stating the proposition in the reverse.
……………………………………………………………………
78. The learned counsel for the respondent Company
also submitted that the protection qua common field of
activity has now expanded and been interpreted to
mean extending to other product lines than what is
manufactured by the plaintiff and hence common field
of activity is not restricted to same or similar products
but extend to all other products. The test of common
field of activity now accepted is that of “common class
of consumers”. The reason for this is the likelihood of
such consumers identifying the defendant’s goods as
originating from the same source as the plaintiff. The
question therefore would be, whether from the factual
situation, an inference can be drawn that a purchaser of
the defendant’s product could assume such product as
originating from the plaintiff.”
22. In Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd.,[(2001) 5 SCC 73] Hon’ble Supreme
Court held thus:-
“18. We are unable to agree with the aforesaid
observations in Dychem case [(2000) 5 SCC 573]. As
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29far as this Court is concerned, the decisions in the last
four decades have clearly laid down that what has to be
seen in the case of a passing-off action is the similarity
between the competing marks and to determine
whether there is likelihood of deception or causing
confusion. This is evident from the decisions of this
Court in the cases of National Sewing Thread Co. Ltd.
case [(1953) 1 SCC 794 : AIR 1953 SC 357], Corn
Products Refining Co. case [AIR 1960 SC 142 : (1960)
1 SCR 968], Amritdhara Pharmacy case [AIR 1963 SC
449], Durga Dutt Sharma case [AIR 1965 SC 980] and
Hoffmann-La Roche & Co. Ltd. case [(1969) 2 SCC
716]. Having come to the conclusion, in our opinion
incorrectly, that the difference in essential features is
relevant, this Court in Dyechem case [(2000) 5 SCC
573] sought to examine the difference in the two marks
“piknik” and “picnic”. It applied three tests, they being:
(1) is there any special aspect of the common feature
which has been copied? (2) mode in which the parts are
put together differently i.e. whether dissimilarity of the
part or parts is enough to make the whole thing
dissimilar, and (3) whether, when there are common
elements, should one not pay more regard to the parts
which are not common, while at the same time not
disregarding the common parts? In examining the
marks, keeping the aforesaid three tests in mind, it
came to the conclusion, seeing the manner in which the
two words were written and the peculiarity of the script
and concluded (at SCC p. 597, para 39) that “the above
three dissimilarities have to be given more importance
than the phonetic similarity or the similarity in the use
of the word picnic for piknik”.
19. With respect, we are unable to agree that the
principle of phonetic similarity has to be jettisoned
when the manner in which the competing words are
written is different and the conclusion so arrived at is
clearly contrary to the binding precedent of this Court
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in Amritdhara case [AIR 1963 SC 449] where the
phonetic similarity was applied by judging the two
competing marks. Similarly, in Durga Dutt Sharma case
[AIR 1965 SC 980] it was observed that: (AIR p. 990,
para 28)
“In an action for infringement, the plaintiff
must, no doubt, make out that the use of the
defendant’s mark is likely to deceive, but where
the similarity between the plaintiffs and the
defendant’s mark is so close either visually,
phonetically or otherwise and the court reaches
the conclusion that there is an imitation, no
further evidence is required to establish that
the plaintiff’s rights are violated.”
…………………………………………………………………………
35. Broadly stated, in an action for passing-off on the
basis of unregistered trade mark generally for deciding
the question of deceptive similarity the following
factors are to be considered:
(a) The nature of the marks i.e. whether the
marks are word marks or label marks or
composite marks i.e. both words and label
works.
(b) The degree of resemblances between the
marks, phonetically similar and hence similar
in idea.
(c) The nature of the goods in respect of
which they are used as trademarks.
(d) The similarity in the nature, character
and performance of the goods of the rival
traders.
(e) The class of purchasers who are likely to
buy the goods bearing the marks they
require, on their education and intelligence
and a degree of care they are likely to
exercise in purchasing and/or using the
goods.
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(f) The mode of purchasing the goods or
placing orders for the goods.
(g) Any other surrounding circumstances
which may be relevant in the extent of
dissimilarity between the competing marks.”
23. In Seematti Silks Vs. T. Beena
[MANU/KE/2463/2023], this Court held as follows:-
“10. In Wander Ltd. v. Antox India (P) Ltd.,
MANU/SC/0595/1990 : 1990 Supp SCC 727, in
paragraph No. 14, it was held as follows :
14. The appeals before the Division Bench were
against the exercise of discretion by the Single
Judge. In such appeals, the appellate court will not
interfere with the exercise of discretion of the court
of first instance and substitute its own discretion
except where the discretion has been shown to
have been exercised arbitrarily, or capriciously or
perversely or where the court had ignored the
settled principles of law regulating grant or refusal
of interlocutory injunctions. An appeal against
exercise of discretion is said to be an appeal on
principle. Appellate court will not reassess the
material and seek to reach a conclusion different
from the one reached by the court below if the one
reached by that court was reasonably possible on
the material. The appellate court would normally
not be justified in interfering with the exercise of
discretion under appeal solely on the ground that if
it had considered the matter at the trial stage it
would have come to a contrary conclusion. If the
discretion has been exercised by the trial court
reasonably and in a judicial manner the fact that
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32the appellate court would have taken a different
view may not justify interference with the trial
court’s exercise of discretion. After referring to
these principles Gajendragadkar, J. in Printers
(Mysore) Private Ltd. v. Pothan Joseph
[MANU/SC/0001/1960 : (1960) 3 SCR 713 : AIR
1960 SC 1156]:(SCR 721)
“… These principles are well established, but
as has been observed by Viscount Simon in
Charles Osenton & Co. v. Jhanaton [1942 AC
130] ‘…the law as to the reversal by a court
of appeal of an order made by a judge below
in the exercise of his discretion is well
established, and any difficulty that arises is
due only to the application of well settled
principles in an individual case’.”
11. The apex court has, a number of times cautioned
that the appellate court should not interfere with the
exercise of discretion of the court at the first instance
and substitute its own discretion except where the
discretion has been shown to have been exercised
arbitrarily, capriciously or perversely. The learned
Additional District Judge had exercised his discretion
and found that irreparable injury and hardship would be
caused to the respondent/plaintiff, if the
appellant/defendant is allowed to use the trade name
‘SEEMATTI SILKS’, which is very similar to the name of
plaintiff ‘SEEMATTI’. The learned District Judge also
found that since the suit is stayed under Section 124 of
the Act, the defendant if not restrained and will be
using the said name will cause irreparable injury,
hardship and loss to the plaintiff also. The learned
Judge also found prima facie case and balance of
convenience in favour of the plaintiff and irreparable
injury would be caused if an interim injunction is not
granted. Therefore, in view of the dictum laid down by
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the apex court in Wander Ltd. (supra) and also the fact
that the learned Judge found that the respondent will
be put to irreparable injury, hardship and loss will be
caused and the balance of convenience is in favour of
the respondent, I am of the view that the learned
Additional District Judge is perfectly justified in granting
interim injunction as prayed for. Therefore, the First
Appeal from Orders lacks merit and it is dismissed.”
24. In Kamal Raheja v. Hahnemann Pure Drug Co.
[2025 SCC OnLine Del 7718] the Delhi High Court held that
commercial use of the mark is not required for an infringement
action to lie. Once the registration of the mark is subsisting,
Section 28(1) grants to the registrant, the right to seek relief
against infringement. Infringement, as defined in the various
sub-sections of Section 29 of the Trade Marks Act, is not
dependent on use, but on registration. Each sub-section of
Section 29 commences with the words “a registered trade
mark”. Thus, the plaintiff’s trade mark is required to be
registered, and the registration subsisting; nothing more. As
such, commercial user of the registered mark is not a sine qua
non for an infringement action to lie. There is no provision, in
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the Trade Marks Act which can deem a registered trademark not
to be registered, or divest the proprietor of a registered trade
mark from the rights conferred by Section 28(1) as a
consequence of such registration, merely because the mark is
not in commercial use. The right to seek relief against
infringement under Section 28(1) read with Section 135(1) of
the Trade Marks Act cannot, in any event, be sacrificed at the
altar of use.
25. In Bayerische Motoren Werke Ag v. Om Balajee
Automobile (India) Private Limited [2020 SCC OnLine Del
484] the Delhi High Court held that the brand of the defendant
was visually and phonetically similar to the mark of the plaintiff.
Further, the plaintiff’s mark was a well-known trade mark and
use of the aforesaid mark by the defendant on its product
constituted infringement within the meaning of Section 29(4) of
the Trade Marks Act. The defendant was obviously seeking to
encash upon the brand quality and goodwill which the mark
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BMW enjoys in the market. Such use by the defendant was held
detrimental to the reputation of the registered mark BMW of the
plaintiff company. The defendant was therefore held prima facie
guilty of infringement of the trade mark of the petitioner.
26. In FDC Limited v. Docsuggest Healthcare
Services Pvt. Ltd. & Anr [2017 SCC OnLine Del 6381] the
Delhi High Court held that While the Act is silent on the factors
to be considered for similarity in goods/services, the Courts in
India – relying upon international cases and literature, have
consolidated the guiding principles and factors found relevant in
ascertaining the similarity between goods/services. These
principles were outlined in detail.
27. In Metro Playing Card Co. v. Wazir Chand
Kapoor [1972 SCC OnLine Del 109] the Delhi High Court held
that no doubt registration may be granted for concurrent user
as provided by the law but till registration is granted there can
be no doubt that the respondent’s trade mark is infringed by
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the appellant and that the statutory right which the respondent
has under Section 28 of the Act is violated.
28. In Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd. [(2004) 6 SCC 145], the Hon’ble Supreme Court held as
under:
“13. The next question is, would the principles of trade
mark law and in particular those relating to passing off
apply? An action for passing off, as the phrase “passing
off” itself suggests, is to restrain the defendant from
passing off its goods or services to the public as that of
the plaintiff’s. It is an action not only to preserve the
reputation of the plaintiff but also to safeguard the
public. The defendant must have sold its goods or offered
its services in a manner which has deceived or would be
likely to deceive the public into thinking that the
defendant’s goods or services are the plaintiff’s. The
action is normally available to the owner of a distinctive
trade mark and the person who, if the word or name is
an invented one, invents and uses it. If two trade rivals
claim to have individually invented the same mark, then
the trader who is able to establish prior user will
succeed. The question is, as has been aptly put, who
gets these first? It is not essential for the plaintiff to
prove long user to establish reputation in a passing-off
action. It would depend upon the volume of sales and
extent of advertisement.
14. The second element that must be established by a
plaintiff in a passing-off action is misrepresentation by
the defendant to the public. The word misrepresentation
does not mean that the plaintiff has to prove any mala
fide intention on the part of the defendant. Of course, if
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37the misrepresentation is intentional, it might lead to an
inference that the reputation of the plaintiff is such that it
is worth the defendant’s while to cash in on it. An
innocent misrepresentation would be relevant only on the
question of the ultimate relief which would be granted to
the plaintiff [Cadbury Schweppes v. Pub Squash, 1981
RPC 429 : (1981) 1 All ER 213 : (1981) 1 WLR 193 (PC);
Erven Warnink v. Townend, 1980 RPC 31 : (1979) 2 All
ER 927 : 1979 AC 731 (HL)]. What has to be established
is the likelihood of confusion in the minds of the public
(the word “public” being understood to mean actual or
potential customers or users) that the goods or services
offered by the defendant are the goods or the services of
the plaintiff. In assessing the likelihood of such confusion
the courts must allow for the “imperfect recollection of a
person of ordinary memory” [Aristoc v. Rysta, 1945 AC
68 : (1945) 1 All ER 34 (HL)].
15. The third element of a passing-off action is loss or the
likelihood of it.”
29. In Gujarat Bottling Co. Ltd. And Others v. Coca
Cola Co. and Others [(1995) 5 SCC 545], the Apex Court
analysed the provisions and scheme of the Trade Marks Act. It
was held that in respect of a trade mark registered under the
provisions of the Act certain statutory rights have been
conferred on the registered proprietor which enable him to sue
for the infringement of the trade mark irrespective of whether or
not the mark is used.
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30. In American Home Products Corporation v. Mac
Laboratories Pvt. Ltd. and Another [(1986) 1 SCC 465], the
Apex Court held as follows:-
“36………………………………………………………………………………………
When a person gets his trade mark registered, he
acquires valuable rights by reason of such registration.
Registration of his trade mark gives him the exclusive
right to the use of the trade mark in connection with the
goods in respect of which it is registered and if there is
any invasion of this right by any other person using a
mark which is the same or deceptively similar to his trade
mark, he can protect his trade mark by an action for
infringement in which he can obtain injunction, damages
or an account of profits made by the other person. In
such an action, the registration of a trade mark is prima
facie evidence of its validity. After the expiry of seven
years from the date of the registration a trade mark is to
be valid in all respects except in the three cases set out in
Section 32. The proprietor of an unregistered trade mark
whose mark is unauthorisedly used by another cannot,
however, sue for the infringement of such trade mark. His
only remedy lies in bringing a passing-off action, an
inconvenient remedy as compared to an infringement
action. In a passing-off action the plaintiff will have to
prove that his mark has by user acquired such reputation
as to become distinctive of the plaintiff’s goods so that if
it is used in relation to any goods of the kind dealt with
by the plaintiff, it will be understood by the trade and
public as meaning that the goods are the plaintiff’s
goods. In an infringement action, the plaintiff is not
required to prove the reputation of his mark. Further,
under Section 37 a registered mark is assignable and
transmissible either with or without goodwill of the
business concerned while under Section 38, an
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39unregistered trade mark is not assignable or transmissible
except in the three cases set out in Section 38(2).”
31. In Ruston & Hornsby Ltd. v. Zamindara
Engineering Co. [(1969) 2 SCC 727], Hon’ble Supreme Court
held as under:-
“5. The action for infringement is a statutory right. It is
dependent upon the validity of the registration and
subject to other restrictions laid down in Sections 30, 34
and 35 of the Act. On the other hand the gist of a passing
off action is that A is not entitled to represent his goods
as the goods of B but it is not necessary for B to prove
that A did this knowingly or with any intent to deceive. It
is enough that the get-up of B’s goods has become
distinctive of them and that there is a probability of
confusion between them and the goods of A. No case of
actual deception nor any actual damage need be proved.
At common law the action was not maintainable unless
there had been fraud on A’s part. In equity, however, Lord
Cottenham, L.C., in Millington v. Fox [ (1838) 40 ER 956 :
3 My & Cr 338] held that it was immaterial whether the
defendant had been fraudulent or not in using the
plaintiff’s trade mark and granted an injunction
accordingly. The common law courts, however, adhered to
their view that fraud was necessary until the Judicature
Acts, by fusing law and equity, gave the equitable rule the
victory over the common law rule.
6. The two actions, however, are closely similar in some
respects. As was observed by the Master of the Rolls in
Saville Perfumery Ltd. v. June Perfect Ltd. [ (1941) 58
RPC 147 at 161]:
“The statute law relating to infringement of trade marks
is based on the same fundamental idea as the law
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40relating to passing-off. But it differs from that law in two
particulars, namely (1) it is concerned only with one
method of passing-off, namely, the use of a trade mark,
and (2) the statutory protection is absolute in the sense
that once a mark is shown to offend, the user of it cannot
escape by showing that by something outside the actual
mark itself he has distinguished his goods from those of
the registered proprietor. Accordingly, in considering the
question of infringement the Courts have held, and it is
now expressly provided by the Trade Marks Act, 1938,
Section 4, that infringement takes place not merely by
exact imitation but by the use of a mark so nearly
resembling the registered mark as to be likely to deceive.
7. In an action for infringement where the defendant’s
trademark is identical with the plaintiff’s mark, the Court
will not enquire whether the infringement is such as is
likely to deceive or cause confusion. But where the
alleged infringement consists of using not the exact mark
on the Register, but something similar to it, the test of
infringement is the same as in an action for passing off.
In other words, the test as to likelihood of confusion or
deception arising from similarity of marks is the same
both in infringement and passing off actions.”
32. In National Garments, Kaloor, Cochin v. National
Apparels, Ernakulam, Cochin [1989 SCC OnLine Ker 115],
this Court made the following observations:-
“6…………………………………………………………………………………………
The plaintiff in an action for passing off therefore has to
establish that his products have derived from the
advertising a distinctive character recognised by the
market. Plainly stated the principle of law is that
“nobody has any right to represent his goods as the
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41goods of somebody else” and sell it in the market for his
own aggrandisement. This rule has been treated as a
special instance carved out of the general rule that any
misrepresentation calculated to give one trader the
benefit of another’s goodwill is actionable. Generally
stated any misrepresentation calculated to injure
another in his trade or business can be regarded as
passing off (See Burberrys v. Cording, (1909) 26 RPC
693 at 701). Nonetheless in an action for passing off, a
plaintiff need not prove any malice unlike the plaintiff in
a tortious action for injurious falsehood. Likewise proof
of damage as such is not essential to enable the plaintiff
to maintain an action for passing-off. Why it is said so is
that the confusion brought about by the action of the
defendant puts the plaintiff’s goodwill at risk. To put it
briefly “the plaintiff in an action for passing off must
show, if not that he has some sort of business which is
threatened by the defendant’s activities, at least that his
interest is something akin to that of the owner of a
business”. (See Kean v. Mc Given, (1982) FSR 119).”
33. In Ashok Leyland Limited v. Blue Hill Logistics
Pvt. Ltd. [2010 SCC OnLine Mad 6126], the Madras High Court
held that the reputation of a trade mark has to be assessed on
the basis of several factors, such as the publicity that preceded
and succeeded the launch of the product carrying the mark, the
volume of turnover and the impact that the mark has created in
the minds of the public, enabling them to associate the mark
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with the product. The reputation of the mark need not always be
reflected by the volume of turnover alone. The goodwill of a
business depends upon a variety of circumstances or a
combination of them. The location, the service, the standing of
the business, the honesty of those who run it, and the lack of
competition and many other factors go individually or together
to make up the goodwill, though locality always plays a
considerable part. Shift the locality, and the goodwill may be
lost. At the same time, locality is not everything. The power to
attract customers depends on one or more of the other factors
as well. In the case of a theater or restaurant, what is catered,
how the service is run and what the competition is, contribute
also to the goodwill. It was also held that there are two distinct
features in Section 29(4)(c). One is with regard to the
reputation of the mark in contra-distinction to the reputation of
its maker. The other is that Section 29(4)(c) deals only with the
reputation of the mark and not the reputation of “well known
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trade mark”. The Act defines a well-known trade mark under
Section 2(1)(zg). The lawmakers have been careful enough not
to incorporate the expression “well known trade mark” in
Section 29(4)(c), though they chose to use the expression
“reputation”. In other words, Section 29(4)(c) does not expect
the registered trade mark of the Plaintiff to have become a ‘well
known trade mark’ within the meaning of Section 2(1)(zg).
Section 29(4)(c) requires the registered trade mark only to have
acquired a reputation in India.
34. In Crompton Greaves Consumer Electricals
Limited v. V-Guard Industries Limited [2024 SCC OnLine
Del 1838] the Delhi High Court held that Section 29(4) of the
Trade Marks Act essentially relates with the dilution principle
which does not require the presence of deception and confusion.
The provision was inserted by way of amendment in the year
1999. However, the doctrine of anti-dilution was recognised
through judicial precedents. The law recognised the protection
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of those marks which are reputed in character. It is important to
note that the Trade Marks Act provides a definition of a well-
known trade mark in Section 2(1)(zg) and the factors that are
required to be considered while determining a mark as a well-
known mark are provided in Section 11(7) of the Trade Marks
Act. However, Section 29(4) of the Trade Marks Act uses the
expression “reputation” and not “well-known mark”. Thus, it is
not required for the proprietor of the registered mark to show
that the mark is a well-known mark as defined in Section 2(1)
(zg) of the Trade Marks Act but has to prima facie satisfy that
the mark has a reputation in India. (Ref. : Bloomberg Finance LP
v. Prafull Saklecha [2013) SCC OnLine DEL 4159]). At the stage
of deciding the application under Sections 39(1) and (2) of the
CPC, the plaintiff has to prima facie satisfy about the existence
of reputation in India. It is recognised that the prima facie
indicator of the reputation of the mark can be sales figure and
the promotional expenses qua a particular product on which the
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registered trade mark is applied. The court has to consider
whether the plaintiff has built up a goodwill where a damage will
be caused to it in case the mark is allowed to be used by a third
party. The law, therefore, recognises that even in case where
there is no likelihood of confusion, the use of the trade mark by
a third party can be protected in case it is shown that the
registered mark has a reputation and a distinctive character. The
law, in fact, affords a stronger protection to such marks and,
therefore, protects even if the same is used on goods and
services which are not similar. The proprietor does not have to
demonstrate the likelihood of any confusion.
35. In an appeal arising from an interim order, the
appellate court shall be careful to analyse whether the lower
forum has exercised its discretion in an arbitrary, capricious or
perverse fashion. If no such vitiating factor exists, the appellate
court will not be justified in interfering with the discretion
exercised by the lower forum. Substituting the view adopted by
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the lower forum with its own views by the appellate forum,
without any vitiating factors established, would not be a proper
exercise of the appellate powers. Keeping in mind these
principles, I shall now analyse the contentions of both sides.
36. The learned counsel for the appellant had submitted
that the respondent, though obtained registration under Class
43 is not actually running any restaurants. He submitted that
merely for the reason that the respondent has obtained
registration under Class 43, it cannot claim monopoly and on
account of non-user, it cannot be permitted to object to the
appellant being granted registration for its trademark and
running of the restaurant. Heavy reliance was placed by the
learned counsel for the appellant on the judgment of the Hon’ble
Supreme Court in Nandhini Deluxe (Supra). It was held
therein that proprietor of a trademark cannot enjoy monopoly
over the entire class of goods particularly when he is not using
the said trademark in respect of certain goods falling under the
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same class. The learned counsel for the respondent, on the
other hand, maintained that user is not a relevant factor when
infringement is alleged. He relied on the judgment of the
Hon’ble Supreme Court in Gujarat Bottling Co. Ltd. And
Others(Supra). The Apex Court held explicitly that registration
of a trademark confers certain statutory rights on the registered
proprietor, enabling him to sue for infringement irrespective of
whether or not that mark is used. In American Home
Products Corporation (Supra) the Hon’ble Supreme Court
held that registration of a trademark gives the proprietor
exclusive right to use the trademark and if there is any invasion
of this right by any other person using a mark which is identical
or deceptively similar, the registered proprietor can protect his
right by resorting to an action for infringement. As rightly
pointed out by the learned counsel for the respondent, in
Nandhini Deluxe (Supra) the Hon’ble Supreme Court was
considering an appeal pertaining to an application for
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registration of a trademark. Context of the case considered by
the Hon’ble Supreme Court being totally different, I am of the
view that the judgment in Nandhini Deluxe (Supra) cannot be
of any support to the appellant in this regard. On the contrary,
in view of the law laid down in Gujarat Bottling Co. Ltd. And
Others(Supra) the contention of the appellant is liable to be
rejected.
37. It was vehemently argued by the learned counsel for
the appellant that the appellants’ trademark ‘HAZZA’ is an
Arabic word having no similarity with the registered trademark
of the respondent LAZZA. The respondent has no case that the
marks are identical. However, it contends that the mark of the
appellant is deceptively similar. It is pointed out that the said
word is coined by substituting letter ‘L’ in the trademark of the
respondent with letter ‘H’. It is also alleged that the two marks
are phonetically similar. Moreover, it is contended that the colour
scheme of both marks are identical with black and golden
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colours. It is trite law that the test in this regard shall be as to
whether any deception and confusion is likely to be created. The
trial court on a detailed analysis held that the trademark
‘HAZZA’ of the appellant is likely to cause deception and
confusion. The learned counsel for the appellant contended that
the trial court has violated anti-dissection rule in analysing the
marks and arriving at the conclusion. On perusal of the
impugned order, I am not in a position to agree with the
submission of the learned counsel for the appellant in this
regard. What is relevant is the overall impression created by
the mark. In Pernod Ricard India Private Limited and
Another(Supra), the Hon’ble Supreme Court held that, in an
infringement analysis, the test is whether there is likelihood of
confusion or association in the mind of the public. It is not a
matter dependent on testimonial evidence. It is a matter of
judicial determination. There is no requirement to prove actual
deception or damage. Trademarks are remembered by their
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overall commercial impression and even minor variations may
be perceived by consumers as brand extensions or sub-brands.
When the marks of the appellant and the respondent are
compared, keeping in mind the above principles, on account of
phonetic similarity, adoption of similar colour scheme, and the
fact that the variation is minor, involving the change of a single
alphabet, there is very high likelihood of the mark of the
appellant being perceived as a sub-brand or brand extension of
the respondent. Though the learned Counsel for the appellant
submitted that the trademark of the appellant is unique and
distinct with a graphic design and the word kitchen below the
word “HAZZA” , the prominent feature of the mark is the word
“HAZZA” and the graphic design and addition of the word
“kitchen” in comparatively small fonts are not sufficient to
weaken the visual and phonetic similarity.
38. It is to be kept in mind that the Court need not look
into as to whether there is proof of an intention to deceive. A
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likelihood of confusion is sufficient to establish infringement or
passing off. The overall commercial impression is what matters.
Engaging in a minute or mechanical comparison is not a right
approach. The court has to keep in mind that consumers seldom
engage in detailed and meticulous comparisons of different
marks. Impression created by the visual appearance, structure
and sound may influence the decision of the consumer. Phonetic
or visual similarities may cause confusion to average
consumers. It is well accepted that alertness of the consumer
may not be at a higher degree when involving in purchasing as
part of daily affairs. If the trademarks of the appellant and the
respondent are compared keeping in mind the above aspects
the inevitable conclusion is that the trademark of the appellant
is deceptively similar to that of the respondent.
39. It is very significant in this regard to note that the
appellant chose to open the restaurant on the opposite side of
the road in the same locality where the factory of the
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respondent is functioning. Appellant is not operating an eatery
anywhere else in the same trade name and using the same
trademark. Hence there is every reason to prima facie assume
that the intention was not honest.
40. In the case at hand, the respondent has two
contentions in the suit: infringement of the rights under the
Trademark Act as well as passing off. In Ruston & Hornsby
Ltd. (Supra), the Hon’ble Supreme Court held as under:-
“7.In an action for infringement where the defendant’s
trade mark is identical with the plaintiff’s mark, the
Court will not enquire whether the infringement is such
as is likely to deceive or cause confusion. But, where
the alleged infringement consists of using not the exact
mark on the Register, but something similar to it, the
test of infringement is the same as in an action for
passing off. In other words, the test as to likelihood of
confusion or deception arising from similarity of marks
is the same both in infringement and passing off
actions.”
41. Respondent contends that the action of the appellant
in using the allegedly deceptively similar trademark amounts to
infringement of trademarks under Section 29(1) and 29(2)(b) of
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the Trademarks Act, apart from constituting passing off. It is
also contended that ‘LAZZA’ is a well-known trademark included
in the list published by the Trademark Registry. For the reasons
already discussed in the preceding paragraphs, in my view, the
appellant, by adopting and using the mark ‘HAZZA’ that is
similar to the registered trademark ‘LAZZA’ of the respondent in
Class 43, for running a restaurant close to the factory of the
respondent, has prima facie infringed the registered trademark
of the respondent. It is also to be noted that the trial court, in
the impugned order, has held that infringement under Section
29(4) is also involved. Since the respondent’s trademark is
included in the list of well-known trademarks, it must be prima
facie assumed that it has acquired a reputation. Even if the
contention of the appellant that it is engaged purely in running a
restaurant, that the respondent, though having obtained
registration in Class 43, is not actually engaged in running any
restaurant, and that both are engaged in the business of
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different sets of products is accepted, the circumstances
mentioned under Section 29(4) of the Act are still satisfied.
42. The respondent has a case that the appellant is liable
to be proceeded against also for passing off. In Satyam
Infoway Ltd.(Supra), the Hon’ble Supreme Court held that the
action for passing off is intended not only to preserve the
reputation of the plaintiff, but also to safe-guard the public. The
defendant must have sold its goods or offered its services in a
manner that has deceived or would be likely to deceive the
public into thinking that the defendant’s goods or services are
those of the plaintiff. The second element to be established by
the plaintiff is misrepresentation by the defendant to the public.
The third element of a passing off action is loss or likelihood of
it. It is also relevant to keep in mind the factors delineated by
the Hon’ble Supreme Court in Cadila Health Care Ltd.(Supra).
If the facts and circumstances of the instant case, as noted
already are analysed, keeping in mind the parameters laid
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down by the Hon’ble Supreme Court, it must be held that the
respondent has prima facie established a strong case for action
against passing off also.
43. In Pernod Ricard India Private Limited and
Another(Supra), the Hon’ble Supreme Court held that the
principles laid down in American Cyanamid Co. v. Ethicon
Ltd. [(1975) AC 396] continue to guide the Courts while
determining interim injunction applications in trademark cases.
It was pointed out that the following criteria are generally
applied:-
“36.3. ………………………………………………………………………….
(i) Serious question to be tried / triable issue: The
plaintiff must show a genuine and substantial
question fit for trial. It is not necessary to establish a
likelihood of success at this stage, but the claim must
be more than frivolous, vexatious or speculative.
(ii) Likelihood of confusion / deception: Although a
detailed analysis of merits is not warranted at the
interlocutory stage, courts may assess the prima
facie strength of the case and the probability of
consumer confusion or deception. Where the
likelihood of confusion is weak or speculative, interim
relief may be declined at the threshold.
(iii) Balance of convenience: The court must weigh
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party from the grant or refusal of injunction. If the
refusal would likely result in irreparable harm to the
plaintiff’s goodwill or mislead consumers, the balance
of convenience may favor granting the injunction.
(iv) Irreparable harm: Where the use of the
impugned mark by the defendant may lead to
dilution of the plaintiff’s brand identity, loss of
consumer goodwill, or deception of the public harms
which are inherently difficult to quantify the remedy
of damages may be inadequate. In such cases,
irreparable harm is presumed.
(v) Public interest: In matters involving public health,
safety, or widely consumed goods, courts may
consider whether the public interest warrants
injunctive relief to prevent confusion or deception in
the marketplace.”
44. In the case on hand, definitely, substantial issues
arise for trial. The suit claim is not frivolous or vexatious. As
found already, there is a real likelihood of consumer confusion
or deception. Since the respondent is a reputed entity having
its trademark registered long ago, the balance of convenience is
in its favour. If the appellant is not restrained by an interim
injunction during the pendency of the suit, irreparable harm is
likely to be caused to the respondent. So also, the services of
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the appellant are likely to be perceived by the general public as
an extension or sub-brand of the respondent. Hence, permitting
the appellant to continue its business under the impugned
trademark would be against public interest also. Therefore, the
case on hand is an eminently fit one for the grant of an interim
injunction.
In the light of the afore discussion, I uphold the impugned
order. The appeal is accordingly dismissed. No costs.
Sd/-
S.MANU
JUDGE
skj