Although emphasising that Malabar Fashion Jewellery (plaintiff) cannot claim exclusive proprietary right over the geographical word “Malabar” by itself, the Kerala High Court (Ernakulam Bench) has restrained Malabar Gold (defendant) from using any mark, label, logo, artistic work, trade dress or commercial presentation deceptively similar to the plaintiff’s trademark and business identity, or from carrying on business in a manner likely to make consumers believe that the defendant’s business, goods or services are associated with, connected with, sponsored by, or emanate from the plaintiff.
The Court held that a registered proprietor under one class cannot claim immunity from infringement merely because it also holds a registration, if that registration is in a different class and the party is in fact using the mark for goods or services falling within the plaintiff’s registered field. Section 28(3) protects concurrent registered proprietors only where the competing registrations operate in respect of the same goods or services; it does not shield a defendant who uses a mark in a class outside the scope of his registration.
The Court further reiterated that no monopoly can be claimed over a geographical word like “Malabar” in isolation without proof of acquired distinctiveness, but a composite mark and its overall trade dress, logo, style and presentation can still be protected if the rival mark is deceptively similar on a holistic comparison. It also drew a clear line between infringement and passing off, and clarified that prior user and deceptive similarity may support infringement protection in the facts of a case, but passing off requires separate proof of goodwill, misrepresentation and damage through cogent evidence. In effect, the decree for trademark protection on the basis of deceptive similarity and infringement was maintained in modified form, while the finding on passing off was set aside.
A Single Judge Bench of Justice Mohammed Nias C.P. observed that the defendant could not avoid an infringement action merely because he held a registration under Class 35 when, on his own pleadings and evidence, he was actually carrying on jewellery business falling in Class 14, the field occupied by the plaintiff’s registration. The Bench clarified that Section 28(3) of the Trade Marks Act, 1999 does not automatically bar infringement actions where rival registrations are in different classes relating to different fields, and that a registration in an irrelevant class cannot protect business activities actually carried on in another class. The Court also held that the defendant could not rely on Sections 30(2)(e) and 124 because he had neither specifically pleaded invalidity of the plaintiff’s registration nor obtained any prima facie finding from the trial court to trigger the statutory rectification mechanism.
On the mark comparison, the Bench accepted the defendant’s contention only to the limited extent that “Malabar” is a geographical expression and the plaintiff could not claim monopoly over that word in isolation, especially when the registration itself carried a limitation that it gave no exclusive right over the word “Malabar”. At the same time, the Bench found that the dispute did not turn on the word alone.
On a visual and overall comparison of the rival marks, logos, style of writing, lettering arrangement, colour scheme, layout and get-up, the Bench found substantial similarity extending beyond the common geographical word. Applying the anti-dissection rule, dominant feature test, and average consumer with imperfect recollection test, the Bench held that the defendant’s mark was deceptively similar and likely to cause confusion in the minds of consumers.
On passing off, however, the Bench parted ways with the trial court. It held that while the plaintiff had proved prior user through registration records, assignment entries, invoices and business materials showing use from 1993–1994 onwards, that alone was not enough to sustain a decree for passing off. The Bench found that the plaintiff had failed to adduce cogent independent evidence proving the classical trinity of goodwill, misrepresentation and damage. The trial court had mainly relied on the testimony of the plaintiff’s own employees and its promotional materials, without properly proved independent evidence of goodwill or misrepresentation in the market. For that reason, the finding of passing off was set aside, even though the findings on deceptive similarity and prior user were affirmed.
The Bench also rejected the defence of delay and acquiescence, holding that mere delay does not defeat relief where continuing infringement and dishonest adoption are established, absent proof of conscious waiver or abandonment.
Briefly, Malabar Gold Private Ltd. sued M. Manuel, proprietor of “Malabar Fashion Jewellery”, before the Additional District Court, Kozhikode alleging trademark infringement and passing off. The plaintiff claimed rights over the mark and logo “Malabar Gold” for jewellery and allied goods under Class 14, pleaded use from 1993, and asserted that the defendant had dishonestly adopted a deceptively similar trade name, logo, colour scheme and overall presentation to ride on its goodwill.
The defendant, on the other hand, claimed that he had been carrying on business in Delhi/NCR since 1990 under “Malabar Fashion Jewellery”, argued that “Malabar” is a geographical term over which no monopoly can be claimed, and contended that his registration under Class 35 protected his use. The trial court decreed the suit and granted permanent and mandatory injunctions.
