13 judgments of the Delhi High Court, the Bombay High Court and 4 other courts applying Trade Marks Act s.135, from 2023–2026, each with a headnote by BRB Legal.
CALPOL declared a well-known trade mark for medicinal and pharmaceutical products under section 2(1)(zg), the Court finding the criteria in sections 11(6) and 11(7) satisfied. It relied on continuous use since 1991, sales exceeding Rs 300 crore in 2024 alone with more than 20 crore pack units sold, sustained marketing and advertising spend, extensive coverage in widely circulated publications, consistent visibility in pharmacies across the country and on third party e-commerce platforms, and a series of earlier injunctions and consent decrees obtained against infringers.
Interim injunction granted protecting the trade dress of HARPIC, COLIN and LIZOL. The Court accepted that no monopoly can be claimed in blue, red, white or yellow taken individually, but held that the distinctive combination, arrangement and presentation forming the overall ensemble had acquired secondary meaning through long use. Rights stem from the overall get up rather than the colours considered separately, so the fact that individual components are common to the trade does not defeat protection. Reliance on third party use did not assist the defendant, a proprietor not being required to sue every small infringer.
Appeals partly allowed in long-running litigation between two crocodile device proprietors. The Division Bench held that infringement of the trade mark and of copyright in the device was established and upheld the decree of permanent injunction, and found no acquiescence that would disentitle the plaintiffs to relief. The claim in passing off, however, was not maintainable because goodwill had not been established, which is a reminder that registration carries the infringement claim but not the common law action. The findings on costs were set aside: the suit had been partly decreed in favour of the defendants, and there had been an eleven year delay in examining a key witness, so it would not be just for the defendants to bear the entirety of costs.
Summary judgment and a permanent injunction granted against use of a whisky mark incorporating the plaintiff's registered element. The defendants did not controvert the pleadings, and the Court relied on continuous use since 1988, roughly 160 registrations covering the marks, labels and variants, and a body of earlier orders and judgments, to find reputation, goodwill, arbitrariness in the mark and distinctiveness with secondary meaning built over decades.
Suit decreed against an ex parte defendant that had organised a beauty pageant under a mark consisting of the plaintiffs' registered mark with a prefix added. On the test for infringement, the Court held that the duration of confusion is immaterial: the fact that a customer is confused even momentarily is enough, and that closer examination and enquiry might later dispel the confusion does not detract from the similarity that caused it. Initial interest confusion in the mind of an unwary customer was made out. Adoption was dishonest and intended to show an association, which also amounted to passing off.
Appeals dismissed and an injunction upheld in a dispute over a restaurant name. The appellants could not be treated as permissive users, the mark in question being the very mark registered in favour of the respondents, and the appellants' use for restaurants and like activities was allied and cognate to the registered specification. A prima facie case of infringement with likelihood of confusion under section 29(2)(b) was therefore made out, and following Midas Hygiene an injunction had to follow.
Interim injunction refused and an ex parte order vacated in a dispute over pharmaceutical marks built around two letters of the alphabet. The Court held that the plaintiff cannot claim protection against use of letters of the English language on the strength of a copyright registration in a stylised rendering of them, the letters in the impugned mark being written in a completely different manner. The overall impression of the competing trade dresses differed in font and colour scheme, so neither the marks nor the trade dress were deceptively similar and the plaintiff had no exclusive right in the letters themselves.
Interim application allowed with exemplary consequences for the defendants' conduct. The Court found that the defendants had made a patently false statement on oath and, despite undertakings given to the Court, had resumed their infringing activities, thereby profiting from a wilful breach and potentially imperilling unsuspecting consumers. Applying Ramjas Foundation, it held that courts must guard against unscrupulous litigants who pollute the stream of justice through falsehood, misstatement or suppression, and that those observations apply as much to a defendant who breaches solemn undertakings as to a plaintiff.
Appeal against refusal of interim relief dismissed. Where a rectification petition against the plaintiff's own registration is pending, section 124(1)(b)(i) requires the suit to be stayed until it is determined, and although section 124(5) preserves the power to grant interim relief, its exercise is discretionary. The District Judge was entitled to assess whether a sufficiently strong prima facie case had been made out and to find none, there being no sufficient material that the relevant class of consumers was likely to be confused. Authorities affirming the statutory presumption of confusion under section 29 were distinguished as decided where validity was not in issue.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
Appeal dismissed and the return of the plaint for want of territorial jurisdiction upheld. The plaintiff relied on an FIR lodged by the Excise Department within Chhattisgarh, under which goods bearing the impugned mark were confiscated. The Division Bench held that the plaint nowhere alleged that the FIR was made against any officer of the defendant company, that the defendant resided and carried on business at Indore, and that there was no plea that it had sought an excise licence to sell within Chhattisgarh. A bald statement about a seizure by the police was not enough to show that the defendant sold the goods there or that any part of the cause of action arose there.
Appeal dismissed and the injunction restraining use of MUSA KA GUL SUPER confirmed. The district court had recorded cogent findings on all three ingredients, noting that the plaintiff's registration subsisted and that the appellants held no registered mark or copyright of their own. Inter se family arrangements by way of dissolution of partnership and assignment, made while a Calcutta High Court injunction remained operative until publication of the arbitral award, could not be used to defeat the registered proprietor's rights, Article 261 requiring full faith and credit to be given to that order. Registration is prima facie evidence of validity under section 31. The court below was not required to hold a mini trial, and questions of pecuniary and territorial jurisdiction could be left to be decided after issues were framed.
Appeal allowed, the temporary injunction set aside and the application remanded for fresh consideration. The District Judge had rested the injunction on the plaintiff's registration alone, with no discussion of prior user, of sections 31 and 34 of the Trade Marks Act, or of the defendant's documents, and only a cryptic treatment of prima facie case, balance of convenience and irreparable loss. The Court held that while a mini trial is not justified at the injunction stage, that does not relieve the trial judge of the duty to analyse the ingredients. Order 41 Rules 23 to 27 CPC, including the powers of remand and to admit additional evidence, apply to appeals from orders through Order 43 Rule 2. The respondent's request that the injunction continue during the remand was refused: once the appeal is allowed setting the injunction aside, a contrary order on the same lines cannot be passed.
