Trademark Infringement | Concurrent Registrations in Different Classes No Bar to Action Under Trade Marks Act : Kerala HC

The Kerala High Court has delivered a nuanced judgment in a trademark dispute between Malabar Gold Private Ltd. and M. Manuel (Malabar Fashion Jewellery), clarifying that concurrent registrations under different classes of the Trade Marks Act, 1999 do not automatically bar an infringement action. The Court affirmed the trial court's finding of deceptive similarity and prior use but set aside the decree for passing off due to insufficient evidence of misrepresentation and damage. The judgment underscores the distinction between statutory infringement rights and common law passing off actions, offering critical guidance for trademark litigants.

Background & Facts

The Dispute

The respondent/plaintiff, Malabar Gold Private Ltd., filed a suit alleging trademark infringement and passing off against the appellant/defendant, M. Manuel (Malabar Fashion Jewellery). The plaintiff, a leading jewellery retailer, claimed exclusive rights over the trademark "Malabar Gold" with its logo, registered under Class 14 (precious metals and jewellery) since 08.03.2002. The plaintiff alleged that the defendant adopted a deceptively similar mark, "Malabar Fashion Jewellery", to encash upon its reputation and goodwill, causing consumer confusion.

Key Facts

• Plaintiff's Trademark:

  • Registered under Class 14 (Registration No. 426657, effective from 08.03.2002).
  • Claimed prior use since 1993, with extensive business operations in India and the UAE.
  • Turnover of Rs. 613 crores in 2008 and Rs. 8,850 crores in 2016-17; advertisement expenses of Rs. 11 crores in 2008 and Rs. 19.51 crores in 2016-17.
  • Registration subject to a limitation: no exclusive right over the word "Malabar".

• Defendant's Trademark:

  • Registered under Class 35 (advertising and business services) since 17.08.2008.
  • Claimed prior use since 1990, operating primarily in Delhi and the NCR region.
  • Admitted to manufacturing and selling jewellery (Class 14 goods) but argued its registration under Class 35 precluded infringement claims.
  • Changed its trade name to "Manuvel Malabar" during the pendency of the suit.

• Legal Notices and Litigation:

  • Plaintiff issued a desist notice in 2006, followed by the suit (OS No. 3/2009) on 12.06.2019.
  • Defendant contended that the plaintiff's registration was in the name of Malabar Realtors (P) Ltd., a separate entity, and that the plaintiff failed to prove the chain of title or assignment of goodwill.

Procedural History

• 12.06.2019: Suit filed before the Additional District Court-II, Kozhikode (OS No. 3/2009).
• 30.05.2015: Trial Court decreed the suit, granting:
  • Permanent prohibitory injunction restraining the defendant from using the impugned mark.
  • Mandatory injunction directing surrender of infringing materials for destruction.
• 22.07.2021: Defendant filed Regular First Appeal (RFA No. 7/2016) before the Kerala High Court.
• 01.06.2026: Appeal heard; judgment reserved.
• 30.06.2026: High Court delivered the judgment, modifying the trial court's decree.

Relief Sought

The plaintiff sought:

• Permanent injunction restraining the defendant from using the mark "Malabar Fashion Jewellery" or any deceptively similar mark.
• Mandatory injunction for surrender and destruction of infringing materials.
• Protection of its registered trademark under Class 14 and prior use rights.

The defendant sought:

• Dismissal of the suit, arguing:
  • Concurrent registrations under Section 28(3) barred infringement actions.
  • Its registration under Class 35 precluded liability for Class 14 goods.
  • Lack of evidence of misrepresentation, damage, or prior use by the plaintiff.

The Legal Issue

The central questions before the Court were:

1. Whether concurrent trademark registrations under different classes (goods vs services) preclude an action for infringement under Section 28(3) of the Trade Marks Act, 1999.
2. Whether the plaintiff established a valid passing off action, requiring proof of goodwill, misrepresentation, and damage.
3. Whether the defendant's adoption of a deceptively similar mark amounted to infringement or passing off, notwithstanding its registration under Class 35.

Arguments Presented

For the Appellant/Defendant

• Concurrent Registrations: Relied on Section 28(3) and S. Syed Mohideen v. P. Sulochana Bai to argue that concurrent registrations barred infringement actions. Contended that its registration under Class 35 immunised it from liability for Class 14 goods.
• Class 35 Registration: Argued that its business was confined to Class 35 services, and the plaintiff's Class 14 registration was irrelevant. Cited Section 30(2)(e) and Section 124 to argue that the civil court lacked jurisdiction to adjudicate infringement.
• Geographical Term: Contended that "Malabar" is a geographical term, and the plaintiff failed to prove secondary meaning or acquired distinctiveness.
• Prior Use: Claimed prior use since 1990 but failed to produce documentary evidence.
• No Misrepresentation/Damage: Argued that the plaintiff failed to prove misrepresentation, customer confusion, or damage.
• Delay and Acquiescence: Alleged delay in filing the suit constituted acquiescence, barring relief.

For the Respondent/Plaintiff

• Infringement Action: Argued that the defendant's admission to manufacturing jewellery (Class 14 goods) rendered its Class 35 registration irrelevant. Relied on Section 28(1) and Section 29 to assert exclusivity over its Class 14 mark.
• Deceptive Similarity: Contended that the rival marks were phonetically, visually, and structurally similar, applying the "likelihood of confusion" test. Cited Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra and Laxmikant V. Patel v. Chetanbhai Shah.
• Prior Use and Goodwill: Produced evidence of prior use since 1993, including invoices (Ext.A8 series), registration records (Ext.A7), and turnover figures. Argued that Section 31(1) created a prima facie presumption of validity.
• No Acquiescence: Argued that delay did not constitute acquiescence, citing Express Bottlers Services Pvt. Ltd. v. Pepsico Inc.
• Passing Off: Contended that the defendant's adoption of a similar mark was dishonest, designed to trade on the plaintiff's goodwill.

The Court's Analysis

Concurrent Registrations Under Different Classes

The Court examined Section 28(3), which bars infringement actions between registered proprietors of identical or similar marks in the same class. However, it held that Section 28(3) does not apply where registrations are in different classes (goods vs services). The Court distinguished S. Syed Mohideen, where the dispute involved identical classes, and held:

"Section 28(3) bars an infringement action between two registered proprietors only when two conditions are simultaneously satisfied: first, the marks are identical or nearly resemble each other; and second, the registrations relate to the same goods or services. Where the rival registrations belong to different classes relating to goods and services, Section 28(3) would not automatically preclude an infringement action."

The Court relied on A. Kumar Milk Foods Pvt. Ltd. v. Vikas Tyagi and Kutbuddin Kanorwala v. Zakir Hussain Kanorwala to hold that registrations under different classes operate in separate streams, and a proprietor cannot use its mark in relation to goods/services outside its registered class.

Defendant's Business Activities

The Court noted that the defendant admitted to manufacturing and selling jewellery (Class 14 goods) but argued its Class 35 registration protected it. The Court rejected this contention, holding:

"The appellant cannot seek complete immunity from an infringement action merely on the strength of a registration under Class 35 while simultaneously carrying on a jewellery business falling within the field occupied by the respondent's registered mark under Class 14."

The defendant's written statement and evidence failed to establish that its activities were confined to Class 35 services. DW1 admitted to manufacturing jewellery, and the defendant's Class 14 application was abandoned only after the suit was filed.

Jurisdiction Under Section 124

The defendant argued that Section 124 required the trial court to stay the suit pending rectification proceedings. The Court rejected this, holding that the defendant failed to raise a plea under Section 30(2)(e) or invite a prima facie finding on the validity of its registration. Citing Patel Field Marshal Agencies v. P.M. Diesels Ltd., the Court held:

"In the absence of a specific plea questioning the validity of the respondent's registration, the framing of an issue thereon, or a prima facie finding by the Trial Court as contemplated under Section 124, the statutory mechanism for rectification was never set in motion."

Deceptive Similarity: Tests Applied

The Court applied the following tests to determine deceptive similarity:

1. Anti-Dissection Rule: Marks must be compared holistically, not by isolating individual components. The Court found substantial similarities in the visual presentation, logo structure, lettering style, colour scheme, and overall commercial impression.
2. Dominant Feature Test: While "Malabar" was the dominant verbal element, the plaintiff could not claim exclusivity over it as a geographical term. However, the composite mark (including the logo, design, and presentation) was protectable.
3. Average Consumer Test: The Court considered the doctrine of imperfect recollection, holding that an average consumer would likely confuse the rival marks due to their visual and structural similarities.
4. Likelihood of Confusion: The Court found that the defendant's adoption of a similar mark was not coincidental but designed to trade on the plaintiff's goodwill.

The Court affirmed the trial court's finding of deceptive similarity, holding:

"Viewed from the standpoint of an average consumer possessing imperfect recollection, the likelihood of confusion is evident."

Passing Off: The Classical Trinity

The Court reiterated that passing off requires proof of:

1. Goodwill: The plaintiff's mark must have acquired a distinct commercial reputation.
2. Misrepresentation: The defendant's conduct must lead consumers to believe its goods/services are those of the plaintiff.
3. Damage: The plaintiff must suffer or be likely to suffer damage due to the misrepresentation.

Goodwill

The Court held that the plaintiff failed to prove goodwill independently. While the plaintiff relied on PW1 and PW2's testimony and Exts.A10/A11 (promotional materials), it did not produce independent evidence (e.g., customer surveys, trade witnesses, or audited financial records). The Court distinguished Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, where the Supreme Court held:

"The volume of sale and the extent of advertisement will be the relevant consideration for deciding whether the appellant had acquired a reputation or goodwill."

The plaintiff's sales figures and advertisement expenses were produced only as additional evidence in the appeal, not before the trial court, and thus could not be relied upon.

Misrepresentation and Damage

The Court held that the plaintiff failed to prove misrepresentation or damage. While deceptive similarity was established, there was no evidence that consumers were misled into believing the defendant's goods were those of the plaintiff. The Court set aside the trial court's finding on passing off, holding:

"Though the respondent has succeeded in establishing prior user and the deceptive similarity between the rival marks, those findings by themselves are insufficient to sustain a decree for passing off."

Prior Use and Section 34

The Court upheld the plaintiff's prior use claim, holding:

• The plaintiff's predecessor (Malabar Realtors) registered the mark in 2002, claiming use since 19.06.2001.
• The mark was assigned to the plaintiff, and Section 31(1) created a prima facie presumption of validity.
• The plaintiff produced Ext.A8 invoices and business records showing use since 1994.
• The defendant failed to produce contemporaneous evidence of use since 1990, relying only on oral assertions.

The Court held:

"The respondent has produced documentary materials tracing the use of the mark from the year 1993 and registration records recognising such use, the appellant has failed to place corresponding evidence to substantiate their alleged use from 1990."

Acquiescence and Delay

The Court rejected the defendant's acquiescence argument, holding that mere delay does not bar relief where dishonest adoption is established. Citing Express Bottlers Services Pvt. Ltd. v. Pepsico Inc, the Court held:

"Mere delay in taking action against an infringer is insufficient to conclude that the proprietor has abandoned or relinquished its rights unless such delay is accompanied by a conscious and intentional abandonment thereof."

The Verdict

The Court modified the trial court's decree as follows:

1. Affirmed the finding of deceptive similarity and prior use by the plaintiff.
2. Set aside the decree for passing off, holding that the plaintiff failed to prove misrepresentation and damage.
3. Modified the injunction to restrain the defendant from using any mark, label, logo, or commercial presentation deceptively similar to the plaintiff's registered trademark (Ext.A7) or likely to cause consumer confusion.
4. No costs were awarded.

What This Means For Similar Cases

Concurrent Registrations Do Not Immunise Infringement

• Key Takeaway: Registration under one class (e.g., Class 35) does not immunise a proprietor from infringement claims for goods/services outside that class (e.g., Class 14).
• Practical Implication: Proprietors must ensure their business activities align with their registered class. If they manufacture/sell goods outside their registered class, they risk infringement liability.
• Actionable Step: Conduct a class-wise audit of trademark registrations to ensure alignment with business activities.

Passing Off Requires Rigorous Proof

• Key Takeaway: Deceptive similarity alone is insufficient to sustain a passing off action. Plaintiffs must prove:
  • Goodwill: Through independent evidence (e.g., customer surveys, trade witnesses, audited financial records).
  • Misrepresentation: Evidence that consumers are actually or likely to be misled.
  • Damage: Proof of actual or likely damage to goodwill.
• Practical Implication: Plaintiffs should lead robust evidence beyond mere sales figures or promotional materials. Independent witnesses (e.g., dealers, customers) strengthen claims.
• Actionable Step: Maintain contemporaneous records of goodwill, misrepresentation, and damage (e.g., consumer complaints, market surveys).

Geographical Terms: Limited Protection

• Key Takeaway: Geographical terms (e.g., "Malabar") are not protectable unless they acquire secondary meaning through extensive use and reputation.
• Practical Implication: Proprietors using geographical terms must prove acquired distinctiveness through consumer recognition studies or brand association evidence.
• Actionable Step: Avoid relying solely on geographical terms in trademarks; combine them with distinctive elements (e.g., logos, designs) to enhance protectability.

Prior Use: Documentary Evidence is Critical

• Key Takeaway: Prior use must be proved through contemporaneous documentary evidence (e.g., invoices, advertisements, tax records).
• Practical Implication: Oral assertions or delayed evidence (e.g., produced only in appeal) are insufficient.
• Actionable Step: Maintain dated business records from the inception of use to establish prior rights.

Delay Does Not Constitute Acquiescence

• Key Takeaway: Delay in filing a suit does not bar relief if dishonest adoption is established.
• Practical Implication: Proprietors need not rush to court but must act promptly upon discovering infringement to avoid waiver arguments.
• Actionable Step: Issue legal notices upon discovering infringement to interrupt delay claims and demonstrate active enforcement of rights.