Bhole Nath Foods Ltd v. Kirorimal Kashiram Marketing and Agencies Pvt Ltd

(vii) The adoption of the CHEETAL mark by BNF was dishonest.

(viii) BNF had provided no explanation for registering the device mark CHEETAL with three deers, when it had earlier registered the plain word mark CHEETAL.

6. On the above reasoning, the learned Commercial Court has granted interlocutory injunction as sought by KKM and allowed the application of KKM under Order XXXIX CPC.

7. Aggrieved by the said decision, BNF is before us in appeal.

8. We have heard Mr. Junaid Alam, learned counsel for the BNF and Mr. Rishi Bansal, learned counsel for the KKM. Analysis and findings

9. In our view, the impugned order is ex facie unsustainable in law, for the reasons, which follow hereinafter. (2010) 44 PTC 293

10. BNF is the registered proprietor of the word mark CHEETAL. Section 28(1)9 of the Trade Marks Act, therefore, confers on BNF exclusive right to use the mark CHEETAL, even by the very aspect of its registration. Equally, Section 30(2)(e)10 entitles BNF to plead, as a defence to any allegation of infringement, the fact that it was merely exercising the right to use the mark CHEETAL, following on the registration of the mark in its favour.

11. No infringement action against registered trade mark 11.[1] Even otherwise, the definition of infringement, as contained in sub-sections (1) to (4) of Section 2911 of the Trade Marks Act

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.

30. Limits on effect of registered trade mark- ***** (2) A registered trade mark is not infringed where— ***** (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.

29. Infringement of registered trade marks. – (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person 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) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services 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. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and envisages the infringer being a person who is not the registered proprietor of the allegedly infringing mark or the permissive user thereof. Registered marks, therefore, cannot alleged to be infringing in nature. 11.[2] Though the judgment of a Division Bench of this Court in Raj Kumar Prasad v. Abott Healthcare (P) Ltd12 held that an infringement action could lie against a registered trade mark, the Supreme Court, subsequently, in Syed Mohideen v. P. Sulochana Bai13, authoritatively ruled to the contrary thus:

(2014) 60 PTC 51 (Del-DB) mark in the manner provided by this Act.

27. Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other. It, thus, postulates a situation where same or similar trade mark can be registered in favour of more than one person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act.

28. However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as the High Court have granted the injunction in favour of the respondent on the basis of prior user as well as on the ground that the trade mark of the appellant, even if it is registered, would cause deception in the mind of the public at large and the appellant is trying to encash upon, exploit and ride upon on the goodwill of the respondent herein. Therefore, the issue to be determined is as to whether in such a scenario, the provisions of Section 27(2) would still be available even when the appellant is having registration of the trade mark of which he is using.

29. After considering the entire matter in the light of the various provisions of the Act and the scheme, our answer to the aforesaid question would be in the affirmative. Our reasons for arriving at this conclusion are the following. *****

30.3. Section 28(3) of the Act provides that the rights of two registered proprietors of identical or nearly resembling trade marks shall not be enforced against each other. However, they shall be same against the third parties. Section 28(3) merely provides that there shall be no rights of one registered proprietor vis-à-vis another but only for the purpose of registration. The said provision 28(3) nowhere comments about the rights of passing off which shall remain unaffected due to overriding effect of Section 27(2) of the Act and thus the rights emanating from the common law shall remain undisturbed by the enactment of Section 28(3) which clearly states that the rights of one registered proprietor shall not be enforced against the another person.

30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in this Act shall entitle the registered proprietor or registered user to interfere with the rights of prior user. Conjoint reading of Sections 34, 27 and 28 would show that the rights of registration are subject to Section 34 which can be seen from the opening words of Section 28 of the Act which states “Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor….” and also the opening words of Section 34 which states “Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere….” Thus, the scheme of the Act is such where rights of prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of prior user. The overall effect of collective reading of the provisions of the Act is that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act. This proposition has been discussed in extenso in N.R. Dongre v. Whirlpool Corpn.14 wherein the Division Bench of the Delhi High Court recognised that the registration is not an indefeasible right and the same is subject to rights of prior user. The said decision of Whirlpool was further affirmed by the Supreme Court of India in N.R. Dongre v. Whirlpool Corpn.15.

30.5. The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are AIR 1995 Del 300 unaffected by the registration rights under the Act.” (Emphasis supplied) 11.[3] Following Syed Mohideen, this Court, in Vaidya Rishi India Health (P) Ltd v. Suresh Dutt Parashar16 held that Raj Kumar Prasad could not be regarded as good law to the extent it held that an infringement action would lie against a registered trade mark. We reproduce, in this regard, the following passages from Vaidya Rishi: “19.[9] Thus, the Supreme Court, in S. Syed Mohideen, has clearly held that there can be no infringement action against the proprietor of a registered trademark and that no injunction can be granted against use, by the proprietor of a registered trademark, of the mark in the class in which it is registered in his favour, on the ground of infringement.

19.10 A passing off action, we may note, would lie even against the proprietor of a registered trademark, as the right to sue against passing off arises under common law, and is not a statutory tort. Syed Mohideen, therefore, clarifies that the view that there can be no injunction against the use of a registered trade mark is the position as it emerges from Section 28(3) of the Trade Marks Act. That would not, however, inhibit the Court from granting injunction against the use of a registered trade mark, by its proprietor, on the ground of passing off. Section 27(2) of the Trademarks Act expressly saves passing off actions.

19.11 However, as we have already noted, the impugned order has not been passed on the ground of passing off, but on the ground of infringement. Mr. Nagpal, learned counsel for the respondent is also candid in his submission that his case is one of infringement against the appellant.

19.12 Insofar as infringement is concerned, we are bound by the law laid down in Syed Mohideen. To reiterate, the Supreme Court has clearly held, in the afore-extracted passages, that no infringement action will lie at the instance of one registered proprietor of a trademark against another registered proprietor of a trademark, seeking an injunction against the use, by the latter, of the registered trademark, in the class(es) in which it is registered. The only exception, as Syed Mohideen itself holds, is in cases of 2025 SCC OnLine Del 6147 passing off. No injunction on the ground of infringement can therefore, be granted.

19.13 It is true that Syed Mohideen does not notice Section 124 of the Trade Marks Act. That, however, would not make any difference, for more than one reason.

19.14 Firstly, Section 124 does not, in express terms, state that an infringement suit would lie against a registered trade mark, or that the use of a registered trade mark could be injuncted on the ground of infringement. That is, at best, an inference which Raj Kumar Prasad draws, from Section 124(5)17. Thus, there is no reason to assume that, even if Section 124 were to be noticed, the decision in Syed Mohideen would be any different.

19.15 Secondly, we, as a hierarchically lower judicial authority vis-à-vis the Supreme Court, are bound, by Articles 141 of the Constitution of India, by the law declared by the Supreme Court. It is not within our remit to wish away the declaration of law by the Supreme Court on the ground that a particular provision was not noticed by it. In effect, that would amount to our holding the judgment of the Supreme Court in Syed Mohideen to be per incuriam, which, as the decision in South Central Railway Employees Cooperative Credit Society Employees Union v. B. Yashodabai18 categorically rules, no High Court can venture to hold.

19.16 Ergo, in view of Syed Mohideen, we find ourselves inhibited from following either Raj Kumar Prasad or Corza19. 11.[4] Mr. Bansal also did not also press the aspect of infringement. He, however, sought to submit that the impugned judgment was sustainable even on the ground of passing off.

12. No case made out of passing off (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

Corza International v. Future Bath Products (P) Ltd, 2023 SCC OnLine Del 153, which followed Raj Kumar Prasad. 12.[1] Comparison of the marks 12.1.[1] There is a fundamental difference between infringement and passing off, which the impugned judgment has overlooked. In fact, the impugned judgment has effectively applied the tests of infringement in an action which can lie only for passing off. 12.1.[2] The difference between infringement and passing off stands tellingly underscored in the following passages from Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories20:

1964 SCC OnLine SC 14 that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods" (Vide Section 21 of the Act21 ). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's, mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier The Trade Marks Act, 1940 words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff." 12.[2] Thus, while an infringement action requires only mark to mark comparison, and added matter is of no relevance, in a passing off action, added matter, as well as other circumstances, may make all the difference. 12.[3] Viewed from that perspective, it is clear that there is no similarity between the marks of BNF and KKM as would sustain a claim of passing off. The mere fact that both the marks contain images of deer as part of the marks would not render them visually similar. A bare glance at the two images does not convey any impression of likelihood of confusion between them even when viewed from the perspective of a consumer of average intelligence and imperfect recollection22. Refer Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449 12.[4] The learned Commercial Court has held that as deer constitutes the dominant feature of the rival marks, other visual dissimilarities such as colour, appearance, the positioning of the deer and other such aspects were rendered immaterial. This finding, to our mind, is directly contrary to the law enunciated in the afore-extracted paragraphs from Kaviraj Pandit Durga Dutt Sharma, which emphasizes the importance of “added matter” in passing off actions. 12.[5] There is no basis for the finding of the learned Commercial Court that an average consumer would only remember the rival marks by the common deer feature. When one views the marks in juxtaposition, it is clear that, except for the fact that deer figure in both the marks, there is no other similarity between them. 12.[6] Most prominently, in the case of BNF’s label, the word CHEETAL is clearly and boldly depicted on the face of the mark. This single feature even by itself is sufficient to disabuse any consumer, however average his intelligence and however imperfect his recollection might be, into presuming any kind of association between BNF’s and KKM’s marks. This fact has been completely overlooked by the learned Commercial Court. 12.[7] In fact, in para 42 of the impugned order, the learned Commercial Court has reversed the onus of proof by observing as under: “42....Though, it is true that the mark/label/device of defendant in the name of CHEETAL shows or contains three deers (sic deer) and they are shown in a different position than that of the two deers (sic deer) shown in label/device of plaintiff, but the same is not prima facie sufficient to hold that the rival marks/labels/devices being used by the parties are different or that there is no deceptive similarity or resemblance between the two marks…” (Emphasis supplied) The test applied in the aforesaid sentence by the learned Commercial Court is completely contrary to the basic principles of onus of proof in passing off actions. The onus to prove deceptive similarity, whether in an infringement or passing off action, is on the plaintiff who so pleads. It is the plaintiff who has to establish that the marks are deceptively similar. The legal position contained in the afore-extracted sentence from para 42 of the impugned judgment indicates that the learned Commercial Court has examined the marks from the point of view of whether they contain features which would render them dissimilar. This, to our mind, is a completely erroneous approach.

13. Misplaced reliance on Kirorimal Kashiram Marketing: The reliance, by the learned Commercial Court, on the earlier decision in Kirorimal Kashiram Marketing, is again misdirected. The rival marks under consideration in the said decision were GOLDEN DEER and DOUBLE DEER. There can obviously be no similarity between such a case and the present case in which the rival marks are CHEETAL and DOUBLE DEER. The word “deer” in fact forms no part of the mark of BNF.

14. In this context, reliance by the learned Commercial Court on the fact that CHEETAL happens to be a kind of spotted deer is again, to our mind, misconceived. The use of the mark DOUBLE DEER by the KKM did not afford it complete monopoly over the word “deer” in every known language.

15. Idea infringement 15.[1] Mr. Bansal sought to invoke the principle of idea infringement and relied, for that purpose, on the judgment of this Bench in Madan Lal Purshottam Dass Foods Pvt. Ltd v. B.L. Agro Industries Ltd.23 and of an earlier Division Bench in Shree Nath Heritage Liquor Pvt. Ltd v. Allied Blender & Distillers Pvt Ltd24. He also cited judgment of a Division Bench of this Court in KRBL v. Praveen Kumar Buyyani25. 15.[2] The principle of idea infringement is, to our mind, not applicable in the present case. 15.[3] Madan Lal Purushottam Das is a case which clearly explains the principle of idea infringement. The rival marks, in that case, were used for mustard oil. Both the marks reflected the figure of an ox tethered to a grinding wheel, using which oil was ground from mustard seeds. It was in these circumstances that the Court held that the idea of using the image of an ox tethered to the grinding wheel by

2025 SCC Online Del 198 which the oil was extracted from mustard seeds, i.e., using the pictorial depiction of the process of extraction of the oil as the logo under which the oil was manufactured and sold, was conceived by the plaintiff (in that case) and that, by adopting an identical idea of the ox tethered to the grinding wheel as the label under which the defendant was marketing and selling its oil, the idea conceived by the plaintiff had been infringed. For a claim of idea infringement to sustain, therefore, the plaintiff would have to establish that the idea reflected in its asserted mark was unique, and that the defendant had adopted the same idea as the basis for its mark. 15.[4] Similarly, the judgment in Shree Nath Heritage Liquor has no similarity to the case at hand. The Court in that case was concerned with rival marks used for whisky. The marks were Officer’s Choice and Director’s Choice. The Division Bench held that though Officer and Director were not synonyms, keeping in view the fact that the Director is also a senior officer, the depiction of the whisky, in the marks, as the choice of a Director in one case and of an Officer in the other, was likely to result in confusion as the average consumer could remember in each case that the beverage was the favoured drink of a person in authority and would not be likely to differentiate between the marks, by remembering that the personal authority in one case was a Director and the other case was an Officer. 15.[5] KRBL, again, is completely distinguishable. The rival marks, in that case, were also used for rice. The marks, however, were INDIA GATE and BHARAT GATE. India is a synonym for Bharat, as the opening words of our Constitution teaches us. Indeed, the expression BHARAT GATE has no etymological meaning. In these circumstances, this Court held that the adoption, by the defendant, in that case, of the mark BHARAT GATE, for rice, with an image of the India Gate on the face of the mark, was an obvious attempt at confusing the consumer with the plaintiff’s INDIA GATE mark. 15.[6] These cases cannot, in any way, be analogised to the case before us. There is no visual similarity between the two marks. The fact that deer happen to be part of the image in each case cannot be of significance, as the very positioning of the images of the deer is different. If one views the rival marks as a whole, there are enough added features in each mark which could differentiate one from the other. As we have earlier noted, the most visible and prominent distinguishing feature is the very name of the product, which is also prominently displayed on the label. 15.[7] In no way, to our mind, can it be said that BNF adopted or borrowed the idea contained in KKM’s mark while conceiving its CHEETAL word or device mark.

16. Ergo, no case of passing off 16.[1] We, therefore, are of the opinion that there is no similarity between the rival marks, whether phonetic, visual, conceptual or structural. The learned Commercial Court has held that the mere fact that the DEER in the rival marks are in different positions is not sufficient to indicate that the marks are not deceptively similar. This finding, as we have noted, is fundamentally unsound, as it reverses the onus of proof. That apart, we would hold, rather, that the mere fact that DEER form part of the rival marks before us is insufficient to make out a case of confusing or deceptive similarity between them. 16.[2] In returning these findings, we clarify that we have examined the matter from the point of view of passing off. BNF is a registered proprietor of the word mark CHEETAL. It cannot, therefore, be restrained from using the mark CHEETAL, on the ground of infringement. Inasmuch as the device mark of BNF also prominently uses the word “CHEETAL”, there can be no injunction against use of the device mark, either, on the basis of a finding of infringement. 16.[3] The material on record does not make out any case of deceptive similarity between the rival marks, as can sustain a finding of passing off, even prima facie.

17. No finding of goodwill 17.[1] There is yet another glaring error in the impugned judgment, which we have come across in several orders emanating from learned Commercial Courts in passing off cases. There is no finding of goodwill. The most fundamental requirement, in any case of passing off, is the existence of goodwill in the plaintiff’s mark. Goodwill, misrepresentation and damage are the three classical ingredients of passing off. Goodwill has to be established by empirical data. Even at the prima facie stage, the plaintiff is required to produce the details of all the expenses incurred by it in promoting its mark and of the sales figures relating to sale of goods bearing the marks asserted in the plaint. The manner in which goodwill has to be established in cases of passing off has most recently been explained by the Supreme Court in the following passages from Brihan Karan Sugar Syndicate Pvt Ltd v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana26:

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 misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff [Cadbury-Schweppes (Pty) Ltd. v. PUB Squash Co. (Pty) Ltd.28; Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd.29]. What has to be established is the likelihood of confusion in the minds of the public (the word “public” being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the “imperfect recollection of a person of ordinary memory” [Aristoc Ltd. v. Rysta Ltd.30 ].

15. The third element of a passing off action is loss or the likelihood of it.” (emphasis supplied)

13. Thus, the volume of sale and the extent of advertisement made by the appellant of the product in question will be a relevant consideration for deciding whether the appellant had acquired a reputation or goodwill.

14. At this stage, we may also refer to the decision of this Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.31. In this decision, this Court approved its earlier view in S. Syed Mohideen that the passing off action which is premised on the rights of the prime user generating goodwill, shall remain unaffected by any registration provided in the Act. In fact, this Court quoted with approval, the view taken by the House of Lords in Reckitt & Colman Products Ltd. v. Borden Inc.32. The said decision lays down triple tests. One of the tests laid down by the House of Lords was that the plaintiff in a passing off action has to prove that he had acquired a reputation or goodwill connected with the goods. Thereafter, in para 40 of Toyota, this Court held (1981) 1 WLR 193 (1979) 3 WLR 68 1945 AC 68 (HL)

(1990) 1 WLR 491 (HL) that if goodwill or reputation in a particular jurisdiction is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff's right in the action of passing off. *****

17. For establishing goodwill of the product, it was necessary for the appellant to prove not only the figures of sale of the product but also the expenditure incurred on promotion and advertisement of the product. Prima facie, there is no evidence on this aspect. While deciding an application for a temporary injunction in a suit for passing off action, in a given case, the statements of accounts signed by the Chartered Accountant of the plaintiff indicating the expenses incurred on advertisement and promotion and figures of sales may constitute a material which can be considered for examining whether a prima facie case was made out by the appellant-plaintiff. However, at the time of the final hearing of the suit, the figures must be proved in a manner known to law.” (Italics in original; underscoring supplied)

18. Even assuming that the allegation of deceptive similarity in the labels used by the respondent was established by the appellant, one of the three elements which the appellant was required to prove, has not been proved. Therefore, we find that the High Court was justified in staying that particular part of the decree of the trial court by which injunction was granted for the action of passing off.” 17.[2] In the present case, there is no examination, by the learned Commercial Court, of the aspect of goodwill at all. There is no finding that the data produced by KKM made out a case of existence of goodwill or reputation in the mark DOUBLE DEER, whether as a word mark or a device mark. In this context, we may also note, that, in passing off cases, the plaintiff has to establish the existence of sufficient goodwill and reputation in the asserted marks prior to commencement of user of the marks by the defendant. This position stands crystallised by the judgments of the Supreme Court in Toyota and Pernod Ricard India Private Limited v. Karanveer Singh Chhabra33. 17.[3] There is no finding, by the learned Commercial Court, that KKM had amassed sufficient goodwill or reputation, in its asserted DOUBLE DEER mark, prior to commencement of user of BNF CHEETAL word and device marks, as would sustain a plea of passing off.

18. Mr. Bansal prays that, if the impugned judgment of the learned Commercial Court suffered from the absence of any finding on the aspect of goodwill, the matter could be remanded to the learned Commercial Court to return a finding in that regard.

19. We are not inclined to adopt the said approach as, to our mind, even on the aspect of misrepresentation or deceptive similarity, there is no case made out, to sustain even a prima facie finding of passing off, by BNF, of its goods as those of KKM. Conclusion

20. Having heard learned Counsel for the parties and for the aforesaid reasons, we are of the considered opinion that the impugned judgment is unsustainable in law and on facts.

21. Accordingly, the impugned judgment dated 6 November 2024 is quashed and set aside.

22. The application filed by the respondent under Order XXXIX Rules 1 & 2 before the learned Commercial Courts shall stand dismissed.

23. Needless to say, the above findings in this judgment are only intended to dispose of the Order XXXIX Rules 1 and 2 application of the respondent and would have no binding effect on the learned Commercial Courts while adjudicating the suit.

C. HARI SHANKAR, J.

OM PRAKASH SHUKLA, J. JANUARY 9, 2026/At/aky/yg