Appeal allowed and the interlocutory injunction set aside. Beyond the shared element "Jeeva" and "Jiva", the Division Bench found no visual or conceptual similarity between the competing trade dresses: the appellants' mark features herbal plants while the respondents' consists of a lotus flower. The phrase "By Baidyanath" in the appellants' mark operates as a source identifying feature, and together with the prefix "Shatam" produces sufficient dissimilarity that confusion or association does not arise. Passing off failed independently for want of misrepresentation, which remains a crucial ingredient, and no material was placed on record showing actual or likely damage to goodwill. Having found no deceptive similarity, the Court did not examine goodwill and damage.
Appeal allowed and an injunction granted against use of a mark sharing the appellant's dominant textual element. Following the Supreme Court in the AMBAL and ANDAL case, the Division Bench held that where the main feature of rival composite marks is phonetically similar and likely to confuse the average consumer, visual dissimilarity between the whole logos does not mitigate infringement. It added that a word mark registration entitles the proprietor to injunct not only a deceptively similar word mark but also any device mark whose prominent feature is textual, where that text infringes. Once a prima facie case of infringement is made out, an injunction must follow under Midas Hygiene.
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.
Final orders deferred and four questions referred to a Larger Bench on an issue that affects a large number of cases: whether a suit for infringement lies at all against the proprietor of a registered trade mark in respect of the use of that mark; if it does, whether an interlocutory injunction can be granted against such use; whether such an injunction can issue without first proceeding through the sequence contemplated by section 124, namely a section 30(2)(e) defence, a plea of invalidity in response, the Court being satisfied that the plea is tenable, an issue being framed, the suit adjourned for three months, rectification initiated within that period and trial stayed pending its outcome; or whether a bare plea of invalidity in the plaint suffices. The Bench recorded a conflict between Raj Kumar Prasad, followed in Corza, and another view.
Appeal allowed and the order dismissing both the suit and the counter claim set aside. The trial court had thrown out the suit on an application under sections 28(3), 29 and 30(2)(e) of the Trade Marks Act, treating it as though it were an application under Order 7 Rule 11(d) CPC. The Court held that section 30(2)(e) protects the use of two registered marks against each other only where they are registered for the same or similar goods or services, and does not apply where the registrations are in different classes. In any event the suit was for infringement and passing off together, and by section 27 a passing off action is not affected by whether either side holds a registration, so it could not be dismissed on that footing. There is no provision barring a composite suit for infringement and passing off.
