8 judgments of the Delhi High Court, the Bombay High Court and 3 other courts applying Trade Marks Act s.34, from 2023–2026, each with a headnote by BRB Legal.
Appeals dismissed. The Division Bench applied the settled rule that an appeal against the exercise of discretion in granting or refusing an interlocutory injunction is an appeal on principle: the appellate court will not reassess the material and substitute its own view where the conclusion reached below was reasonably possible, and will interfere only where the discretion was exercised arbitrarily, capriciously or perversely, or settled principles were ignored. Observations were expressly prima facie and not a binding determination of rights.
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.
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.
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.
Appeals partly allowed and an interim injunction in a passing off counterclaim set aside. The Division Bench held that the Commercial Court had done no more than catalogue the documents and recite sales figures without analysing whether those figures translated into goodwill or reputation in the mark, and without determining whether such goodwill had been acquired before the appellant's adoption. Following Pernod Ricard, that finding is the foundational requirement for passing off, and in its absence the injunction could not stand.
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 dismissed and the interim injunction restraining use of SVT HOTEL SPECIAL for asafoetida confirmed. A registered mark is prima facie valid under section 31, and to displace that at the interlocutory stage the defendant must show that the registration is ex facie impermissible or was granted in gross violation of the Act, a high threshold not met here. Whether HOTEL SPECIAL merely denotes the intended purpose of bulk sale to hoteliers, and so attracts section 30, is a matter of evidence and not a ground to refuse an injunction against a mark registered after ten years of use. The defendant's use of the registered symbol on an unregistered mark supported the restraint against passing off. The trial court's reasoning that a claim of prior use amounted to an admission of distinctiveness was wrong, but did not warrant interference given the limited scope of Order XLIII Rule 1.
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.
