When both sides own registered trademarks, neither can sue the other for infringement — but a passing-off action is still available. The Kerala High Court applied exactly that logic in a dispute over soap marks “Chandrika” and “Chandra,” and it cost the bigger brand its injunction.
The dispute
Wipro Enterprises Ltd. (mark: Chandrika) sued M/s Mariyas Soaps and Chemicals (mark: Chandra), both in the soap category. Both marks were registered.
The two key holdings
1. No infringement suit between two registered marks. A registered proprietor cannot sue another registered proprietor for infringement. The route against a conflicting registration is to seek its rectification or cancellation before the Registrar or the High Court — not an infringement action.
2. Passing off remains available. Registration does not close off the common-law remedy of passing off, which protects the goodwill in a mark regardless of the defendant’s registration. To succeed, a claimant must prove the classic trinity:
- Goodwill in the mark,
- Misrepresentation by the defendant, and
- Damage (or its likelihood) to the claimant.
Why Wipro still lost
Here is the sting. The court accepted that Wipro had an established reputation and that misrepresentation had occurred — but it dismissed the claim because Wipro failed to prove actual damage to its market position. Missing one leg of the trinity was fatal, and the High Court set aside the lower court’s injunction in Mariyas’s favour.
The practical lessons
- Clear before you adopt. Two registrations can coexist on the register and still fight — a thorough trademark search before adoption avoids the collision.
- Watch the journal. Monitoring for similar applications lets you oppose early, before a conflicting mark is registered — see trademark opposition.
- In passing off, damage is not a formality. Reputation and misrepresentation are not enough; you must evidence loss or a real likelihood of it.
- Against a registered conflicting mark, plan for rectification/cancellation plus passing off, not an infringement suit.
Frequently asked questions
Can one registered trademark owner sue another for infringement? No. Between two registered proprietors, infringement does not lie; the remedy is to seek rectification or cancellation of the conflicting registration.
Is passing off still available if the defendant’s mark is registered? Yes. Passing off protects goodwill independently of registration, so it survives even where both marks are registered.
What must a passing-off claimant prove? The classic trinity — goodwill, misrepresentation, and damage (or a real likelihood of damage).
Why did Wipro lose despite proving reputation and misrepresentation? Because it did not establish actual damage to its market position — the third, essential element of passing off.
Useful official resources
- The Trade Marks Act, 1999
- IP India public trademark search