15 judgments of the Delhi High Court, the Karnataka High Court and 4 other courts applying Trade Marks Act s.28, 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.
Appeals against a temporary injunction protecting the mark TULASI dismissed. The Court held that added matter on the defendant's packaging, such as depictions of a tulsi pot and tulsi leaves absent from the plaintiff's pack, cannot defeat a claim of infringement, following Kaviraj Pandit and Sun Pharmaceuticals, and rejected the argument that an injunction requires slavish imitation of the whole label and get up. It clarified that the defendant may still establish at trial that the added matter sufficiently distinguished its goods and avoided confusion in the mind of the average consumer.
Interim injunction refused. The plaintiff's case rested on a blank geometric pentagonal structure said to be a dominant element of its registered marks, but the Court found prima facie that it had not established this: the feature is not used separately and independently so as to create any association in the public mind, and no goodwill in the bare shape was proved. The extent of sales attributable to the shape as opposed to the BRITANNIA wordmark was left as a question for trial. The defendant had adopted its mark in October 2022 and the suit was filed only in May 2024, with no evidence that the plaintiff's sales had suffered.
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.
Rectification allowed and KREOFLAT removed from the Register in Class 5, the mark having been registered despite the prior existence of PANKREOFLAT in the same class and without properly considering the earlier mark. The judgment restates the rule that the tests of confusing similarity are modified for medicinal products: confusion between pharmaceutical preparations can produce physically harmful results, so greater protection is required and a lesser quantum of proof of confusing similarity is called for than in an ordinary case.
Appeal allowed and the injunction restraining use of the Kataria name, domain and corporate name set aside. The Division Bench found the fields of operation distinct, one party trading in insurance brokerage and the other in insurance of gems and jewellery, with no overlap and therefore no infringement under section 29. It weighed the continuous use of Kataria as a surname by a group of companies trading on goodwill built by predecessors, and the serious prejudice that restraining that use would cause. An undertaking not to enter the gems and jewellery insurance business was held sufficient to meet the apprehension raised. Whether the use was bona fide, continuous and prior remains for trial.
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.
The finding of the National Company Law Tribunal that the trade mark "Gloster" was an asset of the corporate debtor was set aside as perverse, in gross violation of natural justice, and beyond the scope of the enquiry, which concerned approval of the resolution plan. The Supreme Court held that a transaction sought to be brought within sections 43, 45, 46, 47 or 66 of the Insolvency and Bankruptcy Code requires specific material to be pleaded and an application moved by the Resolution Professional, with the party against whom relief is sought put on notice. The appellate tribunal's own finding on where title vested was equally beyond jurisdiction and was also set aside.
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.
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.
Operation of the judgment dismissing the suit stayed pending appeal, and the interim injunction that had run in the trial court since January 2012 continued. The Division Bench held that the trial court's finding that the defendants were the prior user was perverse, the plaintiff's mark having been registered abroad in 1954 and in India on April 25, 1979, against the defendants' adoption in 1992, with no justifiable explanation for that adoption. Questions on whether the person who affirmed the plaint had to enter the witness box, and whether the suit was maintainable for want of filing by an authorised person, were left to the hearing of the appeal.
Appeal allowed and the injunction restraining use of CHANDRA set aside. The Division Bench accepted the trial court's finding that the appellants' label, colour combination, writing style and design were deceptively similar to the respondents' CHANDRIKA, so misrepresentation was made out. The appeal turned on the third element of passing off, damage. The respondents sold Ayurvedic bath soap and the appellants washing soap and bleaching preparations, and the respondents' own market share table showed their share held steady at around 8% after the appellants entered in 2020. Since no economic loss was shown, the third element failed and no injunction could issue.
