Protection U/S 28(3) Trade Marks Act Available Only Where Concurrent Registrations Exist In Same Class: Kerala High Court Upholds Malabar Gold's TM Rights
Registration of composite mark 'Malabar Gold' confers no monopoly over geographical word 'Malabar' in isolation; modified passing off decree for want of independent evidence.
The Kerala High Court has held that the bar under Section 28(3) of the Trade Marks Act, 1999, which precludes an infringement action between two registered proprietors, operates only when the rival registrations relate to the same goods or services in the same class, and has no application where the competing registrations belong to different classes relating respectively to goods and services. Applying this principle, the Court upheld the trademark infringement claim of Malabar Gold Private Limited, one of India's leading jewellery brands, against a Delhi-based jeweller trading under the name Malabar Fashion Jewellery.
The Court held that the defendant carrying on a jewellery business cannot seek immunity from a trademark infringement claim merely on the strength of a registration obtained under Class 35 for services, while its actual business activities fall squarely within Class 14 covering gold jewellery goods, the class under which Malabar Gold holds registration. A registration in an irrelevant class, the Court held, cannot protect a gold jewellery business from an infringement action brought by the registered proprietor of the same class.
Justice Mohammed Nias C.P. observed, “…The appellant cannot seek complete immunity from an infringement action merely on the strength of a registration under Class 35 while simultaneously carrying on a jewellery business falling within the field occupied by the respondent's registered mark under Class 14. Since the rival registrations in the present case are under different classes, the statutory bar contained in Section 28(3) has no application…”.
“…Resultantly, I hold that the protection under Section 28(3) is available only where concurrent registrations exist in respect of the goods or services in the same class”, the Bench observed”.
Senior Advocate Shyam Padman appeared for the appellant and Advocate Cyriac Tom appeared for the respondent.
The suit arose from Malabar Gold's claim that the defendant's mark "Malabar Fashion Jewellery" infringed its registered trademark "Malabar Gold" and amounted to passing off.
The defendant, who had been carrying on jewellery business in Delhi, contended that both parties were registered proprietors, the plaintiff under Class 14 for jewellery goods and the defendant under Class 35 for services, and that Section 28(3) barred the infringement action. The defendant also argued that "Malabar" being a geographical expression could not be monopolised.
The Court rejected the Section 28(3) defence, finding that the defendant had admitted in its written statement and evidence that it carried on business in gold jewellery falling squarely within Class 14, had in fact initially applied for Class 14 registration which it later abandoned during the suit, and could not seek the protection of its Class 35 registration while conducting business outside that class. The Court held the protection under Section 28(3) is unavailable where rival registrations are under different classes.
On the geographical term argument, the Court held that "Malabar" being a geographical expression could not be claimed exclusively by the plaintiff, noting the registration itself was granted subject to a limitation expressly stating it conferred no right to exclusive use of the word "Malabar." However, the Court held this did not conclude the inquiry, finding substantial deceptive similarity in the overall commercial presentation, logo structure, design, lettering style, colour scheme and layout of the two marks viewed as a whole. The anti-dissection rule and average consumer test supported the finding that the overall impression of the marks was deceptively similar.
“…Therefore, deceptive similarity cannot be negated merely because one component of the mark, namely "Malabar", is geographical in nature. When the rival marks are viewed in their entirety, the overall impression created by them reveals substantial similarity. The evidence placed on record suggests not a mere coincidence, but a conscious adoption of several visual and structural features associated with the respondent's mark”, the Bench said.
However, while affirming the infringement finding, the Court set aside the passing off decree, holding that sales figures produced only as additional evidence before the High Court without being proved before the trial court, combined with the absence of any independent evidence of goodwill, misrepresentation or damage, could not sustain the classical trinity required for passing off.
The permanent injunction was modified to restrain the defendant from using any mark or commercial presentation deceptively similar to the plaintiff's trademark as evidenced by the registration certificate, without conferring any monopoly over the word "Malabar" in isolation.
Cause Title: M. Manuel, Malabar Fashion Jewellery v. Malabar Gold Private Limited (Neutral Citation: 2026:KER:46835)
Appearances:
Appellant: Shyam Padman, Senior Advocate, Boby M.Sekhar, John Thitheemos, A.Ranjith Narayanan, S.K.Saju, Laya Mary Joseph, Ashwathi Shyam, Swathy Sudhir, Advocates.
Respondent: Cyriac Tom with M. Jithesh Menon and M.P. Shameem Ahamed, Advocates.