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07 October 2016

Trademarks – Opposition or non-grant of trademark registration immaterial in case of passing off

Delhi High Court on 16-9-2016 has made absolute the interim injunction granted by it to restrain the defendant from copyright infringement in the trade label along with a device and for passing off its trademark with device of “Taj Mahal” used on the rice. Rejecting the application of the defendant seeking to vacate the interim injunction, the Court observed that plaintiff was the prior and continuous user in relation to the goods (rice), and that the trademark “Taj Mahal” with the device of “Taj Mahal” was in toto adopted by the defendants for the same product.
 
The Court in the case of Khushi Ram Behari Lal v. P.V Kanakaraj Trading as Kalpatharu Trading Co. was of the view that in relation to such product the trade mark “Taj Mahal” with device can be said to be an arbitrary mark with a degree of distinctiveness that enables the consumer to associate the product with the producer of the product. It was held that the mark and label used by the defendant was prima facie bound to cause deception and confusion in the mind of the average person who is the purchaser of rice. The High Court also earlier observed that the fact that plaintiff’s application for registration was opposed or was not granted or that others were holding registration, was of no consequence in case of passing off.