Bombay High Court Grants Injunction in Trademark Infringement and Passing Off Case — Defendant's Logo Held Deceptively Similar to Plaintiff's Registered Logo. Well-known mark entitled to protection across classes under Trade Marks Act, 1999.

High Court: Bombay High Court Bench: BOMBAY In Favour of Prosecution

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2026-05-19 08:42:02

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Case Note & Summary

The Plaintiff, Reliance Industries Ltd., filed a suit seeking injunctive reliefs against the Defendant, Concord Enviro Systems Pvt. Ltd., alleging infringement of its registered trade marks, infringement of copyright, and passing off. The Plaintiff claimed that the Defendant's logo was deceptively similar to its distinctive logo, which is registered under various classes including 7, 9, 11, and 40. The Plaintiff argued that its logo is a well-known trade mark under the Trade Marks Act, 1999, and therefore entitled to protection across all classes. The Defendant contended that the logos were not deceptively similar. The Court, after considering the submissions and comparing the logos, held that the impugned logo of the Defendant was deceptively similar to the Plaintiff's logo both visually and structurally. The Court applied the principles laid down in Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. and National Chemicals vs. Reckitt & Colman, emphasizing that the test of comparison is not side-by-side but based on the overall impression on an unwary purchaser. The Court also noted that the Plaintiff's logo is a well-known mark, thus entitled to protection in classes beyond those registered. Consequently, the Court granted an injunction restraining the Defendant from using its impugned logo or any other mark deceptively similar to the Plaintiff's logo.

Headnote

A) Trade Marks - Infringement - Deceptive Similarity - Sections 29, 2(1)(zb) Trade Marks Act, 1999 - The Plaintiff claimed that the Defendant's logo was deceptively similar to its registered logo. The Court held that for determining infringement, the marks must be compared as a whole, not side-by-side, and the test is whether an unwary purchaser would be deceived. The Court found the Defendant's logo visually and structurally similar to the Plaintiff's logo, leading to a likelihood of confusion. (Paras 1-3)

B) Trade Marks - Well-Known Mark - Protection Across Classes - Section 11(2) Trade Marks Act, 1999 - The Plaintiff's logo was held to be a well-known trade mark. The Court held that a well-known mark is entitled to protection not only in the classes in which it is registered but also in respect of goods and services in other classes where the Defendant uses or intends to use its impugned logo. (Para 2.3)

C) Passing Off - Deceptive Similarity - Common Law Remedy - The Plaintiff also claimed passing off. The Court, applying the principles of passing off, held that the Defendant's use of a deceptively similar logo would cause confusion and damage the Plaintiff's goodwill and reputation. (Para 1)

Issue of Consideration

Whether the impugned logo of the Defendant is deceptively similar to the Plaintiff's registered logo, thereby constituting infringement of trade mark, infringement of copyright, and passing off.

Final Decision

The Court allowed the Notice of Motion and granted an injunction restraining the Defendant from using its impugned logo or any other mark deceptively similar to the Plaintiff's logo.

Law Points

Infringement of registered trade mark
Passing off
Deceptive similarity
Well-known trade mark
Comparison of marks
Side-by-side comparison test
Overall impression test
Protection across classes

Case Details

2016:BHC-OS:8645

Notice of Motion No. 573 of 2015 in Suit No. 309 of 2015

2016-06-30

S. J. Kathawalla, J

2016:BHC-OS:8645

Dr. V.V. Tulzapurkar, Senior Advocate, along with Mr. Ashish Kamat, instructed by M/s. A.S. Dayal & Associates, for the Plaintiff; Mr. Rashmin Khandekar, along with Ms. Nidhi Tandon and Ms. Soniya Putta, instructed by M/s. Solomon & Co., for the Defendant

Nature of Litigation

Civil suit for infringement of registered trade marks, infringement of copyright, and passing off.

Remedy Sought

Injunctive reliefs restraining the Defendant from using its impugned logo or any other mark deceptively similar to the Plaintiff's registered logo.

Filing Reason

The Plaintiff alleged that the Defendant's logo was deceptively similar to its registered logo, causing infringement and passing off.

Issues

Whether the impugned logo of the Defendant is deceptively similar to the Plaintiff's registered logo. Whether the Plaintiff's logo is a well-known trade mark entitled to protection across classes. Whether the Defendant's use of the impugned logo constitutes infringement of trade mark and passing off.

Submissions/Arguments

Plaintiff submitted that its logo is registered under various classes and is a well-known mark; the Defendant's logo is deceptively similar visually and structurally; side-by-side comparison is not the correct test; the overall impression on an unwary purchaser must be considered. Defendant argued that the logos are not deceptively similar and there is no likelihood of confusion.

Ratio Decidendi

For determining infringement of a trade mark, the marks must be compared as a whole, not side-by-side, and the test is whether an unwary purchaser of average intelligence would be deceived. A well-known mark is entitled to protection across all classes of goods and services.

Judgment Excerpts

The Plaintiff claims injunctive reliefs on the basis of infringement of the Plaintiff's registered trade marks, infringement of copyright and passing off, on the ground that the logo of the Defendant is deceptively similar to the Plaintiff's registered trade marks. That the impugned logo of the Defendant is deceptively similar to the Plaintiff's logo, both visually and structurally. That it is a well settled principle that the test of comparisons of the marks side-by-side is not a sound one, because a purchaser will seldom have the two marks actually before him, when he makes his purchase.

Procedural History

The Plaintiff filed Suit No. 309 of 2015 along with Notice of Motion No. 573 of 2015 seeking interim relief. The Defendant filed an Affidavit-in-Reply dated 5th May, 2015. The Court heard the parties and delivered judgment on 30th June, 2016.