Ex-Facie Illegality In Trademark Registration, Not Prima Facie Invalidity Is The Threshold For Interference In Infringement Suits: Bombay High Court

The Court was hearing a commercial intellectual property suit concerning allegations of infringement and passing off between two proprietors of camphor-based products. The plaintiff, the registered proprietor of the mark “CAMPURE,” sought injunctions against the defendant, who owned the marks “KARPURE” and “AIR KARPURE,” claiming that they were deceptively similar.

The Bench of Justice Sharmila U. Deshmukh observed: “It needs to be borne in mind that what is required to be ascertained is ex facie illegality in the registration of the Defendant’s mark and not prima facie arguable case of invalidity of registration.”

Advocate Hiren Kamod appeared for the plaintiff, while Advocate Rashmin Khandekar appeared for the defendant.

Background

The plaintiff had been using the mark “CAMPURE” for camphor-based products since 2017 and held registrations across multiple classes, including toiletries and deodorants. In 2020, the defendant secured registrations for the marks “KARPURE” and “AIR KARPURE” and subsequently began using them in 2022 for similar camphor products.

The plaintiff alleged that the defendant’s marks were deceptively similar to its registered mark and amounted to infringement and passing off. It further argued that the registration of the defendant’s marks was ex facie illegal and fraudulent, warranting interference by the Court.

The defendant, in turn, submitted that both parties were registered proprietors under the Trade Marks Act, 1999. Relying on Sections 28(3) and 30(2)(e) of the Act, the defendant argued that no action for infringement is maintainable against another registered proprietor and that use of its marks was statutorily protected. It was also argued that “Pure” is a descriptive term not capable of exclusive appropriation and that the plaintiff had failed to disclose its stand in earlier opposition proceedings involving another mark, thereby disentitling it from equitable relief.

Court’s Observations

The Court began by noting that the statutory scheme under Section 28(3) of the Trade Marks Act protects the right of use by a registered proprietor, even where rival registrations are identical or similar. Section 30(2)(e) further makes clear that such use does not amount to infringement. These provisions, the Court observed, establish a strong presumption in favour of registered proprietors, and interference by civil courts at an interlocutory stage is permissible only in exceptional cases.

Relying on the principles settled by the Full Bench of the High Court in Lupin Ltd. v. Johnson & Johnson, the Court reiterated that it is not enough for a defendant to show a prima facie arguable case of invalidity. Rather, the Court must be satisfied that the registration under challenge is ex facie illegal, fraudulent, or of such a nature as to shock the conscience of the Court. Unless this higher threshold is met, the statutory rights of a registered proprietor cannot be curtailed.

On comparing the rival marks, the Court found that the plaintiff’s mark “CAMPURE” and the defendant’s marks “KARPURE” and “AIR KARPURE” were not deceptively similar when considered in their entirety. The Court noted differences in visual presentation, stylisation, and trade dress, which would be apparent to an average consumer. It was observed that similarity cannot be judged by dissecting a part of the mark, such as the suffix “PURE,” which is descriptive and commonly used in trade.

With respect to passing off, the Court held that the plaintiff had not established goodwill or reputation sufficient to show that the defendant’s use of its marks was likely to mislead or deceive consumers. The Court emphasised that passing off requires proof of misrepresentation leading to confusion, and in the present case, the packaging and presentation of the defendant’s products were distinct enough to negate such a claim.

The Court further observed that the plaintiff had not approached the Court with clean hands. It noted that in earlier opposition proceedings, the plaintiff had taken a stand inconsistent with its present claim, which amounted to suppression of material facts. The Court held that such suppression disentitled the plaintiff from equitable relief, especially at the interlocutory stage where injunctions are discretionary.

The Court concluded that no case of ex facie illegality, fraud, or registration shocking the conscience was made out against the defendant. Accordingly, there was no justification for interference with the defendant’s statutory rights as a registered proprietor under the Trade Marks Act.

Conclusion

The Court dismissed the plaintiff’s interim application, holding that neither infringement nor passing off was established. It reaffirmed that the defendant’s use of its registered marks was statutorily protected and that interference by the Court was unwarranted in the absence of ex facie illegality.

Cause Title: Mangalam Organics Ltd. V. N Ranga Rao and Sons Pvt. Ltd. (Neutral Citation: 2025:BHC-OS:14413)

Appearances

Plaintiff: Advocate Hiren Kamod, Anees Patel, Usha Chandrasekhar, Avisha Mehta, and Rajamtangi i/by Suvarna Joshi.

Defendant: Advocate Rashmin Khandekar, Anand Mohan, Rahul Dhote, Shwetank Tripathi, Nipun Krishnaraj, and Vidit Desai i/by ANM Global.

Click here to read/download Judgment