Suit Against Passing Off Maintainable Even If Plaintiff And Defendant Have Identical Registered Trademarks: Rajasthan High Court

The Rajasthan High Court has held that a suit for passing off does not get affected by the two proprietors having similar registered trademarks and hence, it cannot be dismissed on account of Section 28(3) of the Trademarks Act, 1999.

Section 28(3) of the Act provides that when two or more persons are registered proprietors of identical trademarks, none of the registered proprietors can file a case against the other for infringement of that trademark.

A bench of Justice Vinit Kumar Mathur also ruled that Section 28(3) of the Act becomes relevant only when the identical or nearly resembling trademark in question belongs to a particular or same class of goods and services. If the trademark belongs to different classes, the registered proprietors are not immune from suits of trademark infringement against one another.

The Court was hearing an appeal against the order of an additional district judge that dismissed the suit for infringement and passing off filed by the appellant against the respondent for misusing the former's registered trademark. The dismissal was on the ground that since both the parties were holding the registered trademarks which were of identical nature, the suit for infringement and passing off was not maintainable owing to Section 28(3), Section 29 and Section 30(2)(e) of the Act.

Section 29 of the Act provides for situations that qualify as infringement of registered trade mark. Section 30(2)(e) of the Act says that a registered trademark is not treated as being infringed when the use of a registered trademark that is one of the two or more identical registered trademarks is in the exercise of the right to use that trademark.

It was argued by the counsel for the appellant that the suit could not have been dismissed because Section 28(3) needs to be read in conjunction with Section 28(1) in which the registration of a trademark has been provided separately for both goods and services. The Counsel argued that the trademarks of both parties were registered under different classes under the Act.

For the appellant, it was registered under Class 30 i.e. “goods” whereas, for the respondent, it was registered under Class 35 i.e. “services”. Hence, Sections 28(3), 29 and 30(2)(e) were not applicable. The counsel also argued that the right of passing off emanates from common law which remains immune to Section 28(3) of the Act.

After hearing arguments from both sides, the Court agreed with the argument put forth by the counsel for the appellant that since Section 28(1) clearly separates “goods” and “services”, these cannot overlap. Since the identical trademarks in question were registered in different categories by the appellant and the respondent, Section 28(3) could not be said to have any application in 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.

Furthermore, the Court also observed that the appellant had filed both the suit for infringement as well as for passing off and as per the mandate of Section 27 of the Act, the latter could not be dismissed by invoking Sections 28(3), 29 and 30(2)(e).

Reference was made to the Supreme Court case of S.Syed Mohideen v P. Sulochana Bai in which it was held that the provision of no right of one registered proprietor against the other under Section 28(3) was only for the purpose of registration. Nowhere does the section talk about the right of passing off which remains unaffected due to the overriding effect of Section 27(2) of the Act. Rights against passing off emanating from the common law remain undisturbed even if the two registered proprietors have similar trademarks, it said.

Section 27(2) of the Act provides that nothing in the Act affects the rights of action for passing off against any person.

In light of this analysis, the Court ruled that the suit could not have been dismissed by invoking Sections 28(3), 29 and 30(2)(e). Accordingly, the appeal was allowed.

Title: Kutbuddin Kanorwala v Zakir Hussain Kanorwala & Anr.

Citation: 2024 LiveLaw (Raj) 146

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