26 judgments of the Delhi High Court, the Karnataka High Court and 7 other courts applying Trade Marks Act s.29, 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.
Rectification allowed and MLOGRAND removed from the Register. Two independent grounds. First, the petition pleaded non-use and went unanswered, so the averment was deemed admitted and removal followed under section 47(1)(a) on that ground alone. Second, MLOGRAND is a colourable imitation of LEGRAND: the letter E was merely replaced by O, the dominant element GRAND was subsumed whole, the prefix M is insignificant, and the French pronunciation of the two is identical. The respondent had also applied for a device mark and abandoned it once opposed, which the Court read as evidence of mala fide intent to associate with the petitioners.
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 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.
Appeal allowed and an interim injunction granted restraining use of "Lotus Splash" and other Lotus derivative marks for cosmetics and beauty products. Applying the anti-dissection rule, the dominant feature test, overall similarity and the perspective of the average consumer as explained by the Supreme Court in Pernod Ricard, the Division Bench held that an injunction was warranted at the prima facie stage. It disagreed with the Single Judge that the respondents' use fell within the exception in section 30(2)(a).
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.
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.
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.
Appeal allowed and an injunction set aside for want of any finding on goodwill. The Division Bench held that in passing off the plaintiff must establish sufficient goodwill and reputation in the asserted mark before the defendant's user commenced, a position crystallised by the Supreme Court in Toyota and Pernod Ricard, and that the Commercial Court had made no examination of goodwill at all. It declined to remand for a finding, holding that no case was made out even on misrepresentation or deceptive similarity.
A carefully split outcome on a composite mark. The Court held that the word element was suggestive rather than descriptive but had not acquired distinctiveness, so the plaintiff had no exclusivity in it and the defendant remains free to use the word for its news programme. The device mark was another matter: the defendant's label was deceptively similar, the globe behind the word remaining very similar even in the defendant's revised version, and its use for the same service, class of consumers and trade channels amounted to infringement and passing off.
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.
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.
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.
Summary judgment under Order XIII-A CPC and the suit decreed against six defendants dealing in counterfeit NEW ERA caps. Four Local Commissioners had found infringing products at the defendants' premises, all operating from the same area. The registration certificates stood admitted in the absence of any affidavit of admission or denial of documents. The Court held the use to be a wilful and deliberate imitation with no plausible explanation offered, amounting to infringement under section 29 and to passing off, and apportioned damages and costs defendant by defendant according to the quantity of counterfeit goods found with each.
Suit decreed under Order VIII Rule 10 CPC with a permanent injunction and costs of Rs. 1,50,000, the defendant having filed no written statement. On the merits the Court held that the defendant was applying the plaintiff's registered X-Ribs mark to its own TMT bars, which infringed under section 29(4), and that the use of an identical mark also made out passing off on the Erven Warnink and Cadila tests. On procedure the Court held that a commercial suit is meant to be decided expeditiously and not allowed to linger, so where a defendant fails to pursue his case or does so in a lackadaisical manner by not filing a written statement, the court should invoke Order VIII Rule 10 and decree the suit. No damages were allowed for want of pleadings to quantify them.
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.
Appeal allowed, the refusal of a temporary injunction set aside and the application remanded to the District Judge. The Judge below had exercised discretion arbitrarily and perversely in two respects. He did not look at the Commissioner's report or the application forms it produced from the defendant's office, which bore directly on whether the two businesses overlapped, both parties advancing loans. He also construed the device in front of the defendant's SAAF mark as the letter S when the defendant's own case was that it depicted a phoenix bird. The comparison required is whether an unwary person of average intelligence with imperfect recollection would be likely to think the defendant was part of the plaintiff.
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.
Summary rejection of an application under Rule 124 for inclusion in the list of well-known marks, for want of an affidavit, set aside. Rule 124 speaks of evidence and documents, and evidence under the Evidence Act includes both oral and documentary evidence, so section 129 cannot be read to confine it to affidavits. An affidavit is therefore not mandatory where there is sufficient documentary evidence; conversely affidavits without supporting documents may not establish well-known status at all. Some matters, such as the reasons for adoption of a mark, the manner of its coining or a family history of use, may be capable of proof only by affidavit, and an applicant may file both. Where the Registrar considers particular documents need to be supported by affidavit, Rule 124(3) allows him to give the applicant an opportunity to file one rather than rejecting the application summarily, and non-filing is not fatal. The Court also set out the documentary evidence that establishes well-known status.
