Rajasthan High Court Upholds Suit For Passing Off Despite Identical Registered Trademarks

Rajasthan High Court Upholds Suit For Passing Off Despite Identical Registered Trademarks

The Rajasthan High Court has ruled that a suit for passing off remains unaffected even if two proprietors hold similar registered trademarks, thus cannot be dismissed under Section 28(3) of the Trademarks Act, 1999.

According to Section 28(3) of the Act, when multiple persons hold identical registered trademarks, none of them can sue each other for Trademark Infringement.

Justice Vinit Kumar Mathur's further clarified that Section 28(3) applies only when the identical or closely resembling trademark pertains to the same class of goods or services. If trademarks belong to different classes, proprietors are not exempt from trademark infringement suits against each other.

The court heard an appeal challenging the additional district judge's dismissal of a suit for infringement and passing off. The judge had cited Section 28(3), Section 29, and Section 30(2)(e) of the Act, arguing that both parties held identical registered trademarks, making the suit unsustainable.

Section 29 of the Act defines infringement of registered trademarks, while Section 30(2)(e) states that using one of multiple identical registered trademarks is not infringement if exercised as a right.

The appellant argued that Section 28(3) should be interpreted alongside Section 28(1), which separately registers trademarks for goods and services. The appellant's trademark fell under Class 30 (goods), whereas the respondent's fell under Class 35 (services), rendering Sections 28(3), 29, and 30(2)(e) irrelevant. The appellant also contended that the right of passing off, derived from common law, is not affected by Section 28(3).

After considering arguments, the Court agreed with the appellant's counsel, noting that since Section 28(1) clearly distinguishes between "goods" and "services," overlapping does not occur. Therefore, as the identical trademarks were registered in different categories by the appellant and the respondent, Section 28(3) did not apply to the case.

“Sub Section (3) to Section 28 of the Act refers to a particular class and therefore, when two or more persons are registered proprietors of trademarks which are identical or nearly resemble with each other, will be taken to be in that particular class and, therefore, sub section (3) of Section 28 of the Act will not come in the way for maintaining the suit filed by the appellant-plaintiff against the respondent-defendant as both are holding registration in different classes,” it was held.

The Rajasthan High Court also noted that the appellant had filed both an infringement suit and a passing-off suit. According to Section 27 of the Trademarks Act, the latter cannot be dismissed by invoking Sections 28(3), 29, and 30(2)(e).

Citing the Supreme Court case of S. Syed Mohideen v. P. Sulochana Bai, the Court emphasized that Section 28(3) restricts rights solely concerning registration and does not affect rights related to passing off. The common law rights for passing off remain intact despite similarities in registered trademarks held by different proprietors.

Section 27(2) of the Act explicitly preserves the rights to take action for passing off against any person, regardless of trademark registration.

Based on this interpretation, the Court concluded that the dismissal of the suit invoking Sections 28(3), 29, and 30(2)(e) was inappropriate. Consequently, the appeal was upheld and allowed.