Supreme Court Lists Factors To Be Considered For Granting Interim Injunction In Trademark Matters
The Supreme Court said that the grant of injunction - whether for infringement or passing off, is ultimately governed by equitable principles and is subject to the general framework applicable to proprietary rights.
Justice J.B. Pardiwala, Justice R. Mahadevan, Supreme Court
The Supreme Court in its Judgment, observed that the grant of an interim injunction in trademark cases requires the Court to consider multiple interrelated factors.
The Court observed thus while dismissing a Civil Appeal filed by Pernod Ricard India Private Limited which alleged trademark infringement by whiskey brand ‘London Pride’ against ‘Blenders Pride’.
The two-Judge Bench comprising Justice J.B. Pardiwala and Justice R. Mahadevan held, “In conclusion, the grant of an interim injunction in trademark matters requires the court to consider multiple interrelated factors: prima facie case, likelihood of confusion, relative merits of the parties’ claims, balance of convenience, risk of irreparable harm, and the public interest. These considerations operate cumulatively, and the absence of any one of these may be sufficient to decline interim relief.”
The Bench said that the grant of injunction - whether for infringement or passing off, is ultimately governed by equitable principles and is subject to the general framework applicable to proprietary rights.
Senior Advocate Neeraj Kishan Kaul represented the Appellants while AOR Ekansh Mishra represented the Respondent.
Legal Principles
The Supreme Court referred to the principles laid down in the case of American Cyanamid Co. v. Ethicon Ltd (1975), saying that the same continue to guide the Courts while determining interim injunction applications in trademark cases.
The Court, therefore, explained the following criteria for the aforesaid purpose –
(i) Serious question to be tried / triable issue: The plaintiff must show a genuine and substantial question fit for trial. It is not necessary to establish a likelihood of success at this stage, but the claim must be more than frivolous, vexatious or speculative.
(ii) Likelihood of confusion / deception: Although a detailed analysis of merits is not warranted at the interlocutory stage, courts may assess the prima facie strength of the case and the probability of consumer confusion or deception. Where the likelihood of confusion is weak or speculative, interim relief may be declined at the threshold.
(iii) Balance of convenience: The court must weigh the inconvenience or harm that may result to either party from the grant or refusal of injunction. If the refusal would likely result in irreparable harm to the plaintiff’s goodwill or mislead consumers, the balance of convenience may favor granting the injunction.
(iv) Irreparable harm: Where the use of the impugned mark by the defendant may lead to dilution of the plaintiff’s brand identity, loss of consumer goodwill, or deception of the public – harms which are inherently difficult to quantify – the remedy of damages may be inadequate. In such cases, irreparable harm is presumed.
(v) Public interest: In matters involving public health, safety, or widely consumed goods, courts may consider whether the public interest warrants injunctive relief to prevent confusion or deception in the marketplace.
Court’s Observations
The Court further noted that where actual infringement is established, that alone may justify injunctive relief; a Plaintiff is not expected to wait for further acts of defiance and as judicially observed, “the life of a trademark depends upon the promptitude with which it is vindicated.”
“The Trade Marks Act, 1999 does not prescribe any rigid or exhaustive criteria for determining whether a mark is likely to deceive or cause confusion. Each case must necessarily be decided on its own facts and circumstances, with judicial precedents serving to illuminate the applicable tests and guiding principles rather than to dictate outcomes”, it explained.
The Court also enunciated that as a general rule, a proprietor whose statutory or common law rights are infringed is entitled to seek an injunction to restrain further unlawful use, however, this remedy is not absolute.
“The considerations governing the grant of injunctions in trademark infringement actions broadly apply to passing off claims as well. That said, a fundamental distinction remains: while a registered proprietor may, upon proving infringement, seek to restrain all use of the infringing mark, a passing off action does not by itself confer an exclusive right. In appropriate cases, the court may mould relief in passing off so as to permit continued use by the defendant, provided it does not result in misrepresentation or deception”, it added.
Conclusion
The Court said that the Appellants’ attempt to combine elements from two distinct marks – ‘BLENDERS PRIDE’ and ‘IMPERIAL BLUE’ – to challenge the Respondent’s mark ‘LONDON PRIDE’, constitutes a hybrid and untenable pleading and, each mark must be assessed independently, and hence, cherry-picking generic or unregistered features from multiple marks to fabricate a composite case of infringement is not legally sustainable.
“In a market segment, where consumers are more discerning, the likelihood of confusion is negligible. … In view of the foregoing analysis, we find no ground to interfere with the concurrent findings of the Commercial Court and the High Court. The appellants have failed to establish a prima facie case of deceptive similarity that could justify the grant of interim injunction”, it concluded.
Accordingly, the Apex Court dismissed the Appeal and directed the Commercial Court to proceed with the trial and dispose of the Suit within four months.
Cause Title- Pernod Ricard India Private Limited & Another v. Karanveer Singh Chhabra (Neutral Citation: 2025 INSC 981)
