Mr. Saikrishna Rajagopal, Mr. Kunal Khanna, Mr. Nitin Sharma, Mr. Krtin Bhasin and Mr v. RAHUL BANSAL

1173/2024. The appellants before us were the defendants in the said suit and the respondent before us was the plaintiff.

2. The order under challenge disposes of an application filed by the respondent-plaintiff under Order XXXIX Rules 1 and 2 of the Signature Not Verified 1 “learned Commercial Court” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:14.05.2025 15:46:01 FAO (COMM) 103/2025 Code of Civil Procedure, 19082 as well as the applications by the appellant-defendant under Order VII Rule 11 of the CPC and Order VII Rule 10 of the CPC.

3. Mr. Saikrishna Rajagopal, learned Counsel for the appellant- defendant before the learned Commercial Court, submits that the present appeal is restricted to the impugned order to the extent it decides the application under Order XXXIX Rules 1 and 2 of the CPC.

4. The impugned order suffers, in our considered opinion, from a basic error of law.

5. The learned Commercial Court has injuncted the appellant as well as all others acting on behalf of the appellant from dealing in edible oils/mustard oils under the trademark/label OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI, on the ground that it is deceptively similar to the trademark MATA AMAR SHAKTI of the respondent-plaintiff, thereby resulting in the infringement of the trademark.

6. The respondent’s trademark is admittedly not registered, though the respondent has a copyright registration for the label. The injunction, as granted by the impugned order is, however, not against use of a similar label, but use of the trade mark OM AMAR SHAKTI/ SARKAR OM AMAR SHAKTI. 2 “CPC” hereinafter Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:14.05.2025 15:46:01 FAO (COMM) 103/2025

7. As such, there can be no question of any claim for infringement being maintainable against the appellant-defendant, as Section 28(1) and (3)3 read with Section 294 of the Trademarks Act envisages infringement being maintainable only by holder of a registered trademark.

8. This position is candidly acknowledged by Mr. Vidhani, learned Counsel appearing for the respondent. However, Mr. Vidhani submits that a case of passing off would nonetheless lie against the appellant- defendant.

9. For passing off, the primary ingredients that have to be satisfied are the existence of goodwill, the attempt of the defendant to pass off the defendant’s product as the product of the plaintiff and resultant 3 28. Rights conferred by registration.— (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. ***** Where two or more persons are registered proprietors of trade marks, which are identical with or (3) nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. A registered trade mark is infringed by a person who, not being a registered proprietor or a person 4 29. Infringement of registered trade marks.— (1) using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) using by way of permitted use, uses in the course of trade, a mark which because of— A registered trade mark is infringed by a person who, not being a registered proprietor or a person its identity with the registered trade mark and the similarity of the goods or services its similarity to the registered trade mark and the identity or similarity of the goods or (a) covered by such registered trade mark; or (b) services covered by such registered trade mark; or (c) covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to its identity with the registered trade mark and the identity of the goods or services Signature Not Verified (3) cause confusion on the part of Digitally Signed By:AJIT KUMAR Signing Date:14.05.2025 15:46:01 FAO (COMM) 103/2025 damage that has resulted to the plaintiff. We may refer, in this context, to a recent judgment of the Supreme Court in Brihan Karan Sugar Syndicate (P) Ltd. v Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana5, which sets out the ingredients of passing off in the following paragraphs:

12. There is a finding recorded by the High Court in the impugned judgment that the labels used on the bottle of country liquor sold by the appellant and the labels on the bottle of country liquor sold by the respondent are similar. At this stage, we may note the legal position regarding the factual details which are required to be proved in a passing off action. Firstly, we may refer to a decision of this Court in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.6 Paras 13 to 15 of the said decision read thus : “13. The next question is, would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase “passing off” itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.

14. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word “misrepresentation” does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the to an intentional, misrepresentation it might Signature Not Verified