The case involved a dispute between Wipro Enterprises Ltd., the registered owner of the trademark “Chandrika,” in respect of goods covered in class 3, and M/S Mariyas Soaps and Chemicals, the registered owner of the trademark “Chandra” in respect of goods covered in class 3. The court’s ruling sheds light on the rights and limitations of registered trademark owners and the grounds for seeking relief in cases of similarity between registered marks.

Wipro Enterprises Ltd., a well-known company, has been marketing ayurvedic soaps under the trademark “Chandrika” since 1940. In contrast, M/S Mariyas Soaps and Chemicals recently obtained registration for their washing soap and other related products under the trademark “Chandra.” Wipro alleged that the mark “Chandra” used by Mariyas Soaps and Chemicals was deceptively similar to their registered mark “Chandrika”.

This appeal was preferred by M/S Mariyas Soaps and Chemicals against the order of the VI Additional District Court, Ernakulam. The Kerala High Court addressed two fundamental questions in this case:

Can a registered trademark owner seek a prohibitory injunction if the opposite party also has a registered mark?
The court relied on the Supreme Court’s decision in S. Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683] that clarified that an owner of a registered trademark cannot sue for infringement if the opposite party also possesses a registered trademark. However, the owner is not rendered powerless as they can approach the Registrar or the High Court for rectification or cancellation of the offending trademark under the provisions of the Trade Marks Act.

Can the registered trademark owner seek relief based on passing off?
The court affirmed that the rights granted by trademark registration are not absolute but are subject to the provisions of the Trade Marks Act. To establish passing off, three elements must be proven:

Goodwill of the registered mark: The court recognized the immense goodwill and reputation that Wipro’s product “Chandrika” had garnered over the years.

Misrepresentation of a similar mark: The court agreed with the District Court’s finding that the appellants’ marketing of their product “Chandra” amounted to misrepresentation of Wipro’s products.

Damage to the goodwill of the registered mark: Despite the appellants marketing their products, the court noted that Wipro did not sustain any economic loss or damage to its market share.

The Court ruled that since the third element of passing off, which is the establishment of damage to the goodwill associated with the registered mark “Chandrika,” was not proven, Wipro is not eligible to obtain an injunction based on the passing off claims.

As a result, the High Court overturned the injunction order issued by the VI Additional District Court, Ernakulam, and upheld the appeal of M/S Mariyas Soaps and Chemicals.

This case underscores the importance for businesses to conduct comprehensive research prior to adopting a trademark, in order to proactively prevent potential disputes and legal entanglements in the future. It should also serve as a valuable reminder to businesses regarding the significance of monitoring similar brands entering the market and utilizing trademark journal-watching services to promptly identify applications for registration of similar marks, thereby enabling swift action before a registration is obtained for similar marks. The lesson for the trademark office (if at all they change their heart and decide to learn) is that it should exercise meticulous scrutiny and consideration when examining and accepting applications, that are similar to earlier registrations, prioritizing the order of filing, to avoid granting registrations to subsequent adopters before earlier adopters and applicants whose applications have been languishing for decades without any progress.