4 judgments of the Bombay High Court, the Madras High Court and 2 other courts applying Trade Marks Act s.27(2), from 2025–2026, each with a headnote by BRB Legal.
Appeal allowed and an injunction granted restraining passing off of the mark GERMINATOR and the plaintiff's trade dress. The Division Bench found the trifecta required under Order XXXIX Rules 1 and 2 made out, holding that the appellant had established a prima facie case, that the balance of convenience lay clearly in its favour, and that it would suffer irreparable prejudice if relief were refused.
Appeals dismissed and the refusal of registration upheld, though for different reasons than the Registrar gave. The judgment turns on what "intention to use" requires: an applicant must have a definite and present intention to deal in the goods at the time of registration, a resolve or settled purpose, not a mere general intention of extending the business at some future time to anything it might think desirable. That the applicant had applied in 1994 but had still not commenced business or sales in India by the time opposition proceedings began over a decade later in 2007 was an additional, though not decisive, factor weighing against it.
First appeal dismissed and a decree of permanent injunction in passing off upheld between two businesses trading under the same name. The defendant's claim to derive rights from an alleged prior user through an oral and later written authorisation failed because the purported executant was never examined and no witness spoke to the document's authenticity or execution, leaving it an unproved piece incapable of being read in evidence. The defendant's own trade mark application disclosed use only from 2009, an unequivocal admission of subsequent adoption. The Court applied the classical trinity of goodwill, misrepresentation and likelihood of damage, and the principle that prior use prevails over later adoption, registration or permission from third parties.
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.
