2026 Supreme(Bom) 220

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
SHARMILA U. DESHMUKH, J.
Rajeev Prakash Agarwal – Appellant
Versus
Tata Play Limited and Others – Respondents
Interim Application (L) No. 597 of 2025, Commercial IP Suit (L) No. 257 of 2025
Decided On : 07-03-2026

Descriptive composite trademarks with disclaimers grant no exclusive rights over disclaimed words; infringement requires whole-mark comparison and specific service similarity pleadings; passing off needs secondary meaning proof and competitive fields.

Headnote:(A) Trade Marks Act, 1999 - Sections 9(1)(b), 17(2)(b), 28, 29(1), 29(2), 29(9), 30, 35 - Descriptive composite label mark registered with disclaimer that registration gives no exclusive right to descriptive matters and labels must be used together; plaintiff estopped from claiming distinctiveness in disclaimed words alone after asserting distinctiveness in entire combination before registry; words meaning “world of astrology” directly descriptive of services, not inherently distinctive or suggestive; no infringement where claim predicated solely on disclaimed portion. (Paras 33-42)

(B) Trade Marks - Infringement - Anti-dissection rule requires comparison of marks as wholes; dissimilar depiction, addition of prominent house mark, and subscription-only access via DTH platform distinguish marks and obviate confusion; disclaimers limit rights despite not travelling to market where services dissimilar. (Paras 43-45)

(C) Trade Marks - Services similarity under Section 29(2) - Assessed commercially considering uses, users, nature, channels, competition; personalized one-to-one astrological consultations (mainly financial predictions) not similar to mass-broadcast subscription DTH astrology channel content; specific pleadings required, initial interest confusion inapplicable across different channels. (Paras 56-61)

(D) Passing off - Requires goodwill, misrepresentation, damage; descriptive mark needs secondary meaning proof via market perception evidence, not shown by dubious self-certified sales/invoices tied to unregistered entity; no misrepresentation where services non-competitive and clearly sourced from DTH provider. (Paras 62-64)

Facts of the case:
Plaintiff, sole proprietor claiming use since 2005 of composite label mark for astrological/spiritual consultancy services, registered in class 45 with user claim from 2005 but applied 2021 post-defendant's adoption; seeks interim injunction against defendant DTH platform's use of similar words with house mark for subscription astrology TV channel launched 2020, alleging infringement and passing off.

Findings of Court:
No prima facie case of infringement or passing off; descriptive mark unprotected without secondary meaning; services dissimilar; balance of convenience against injunction after defendant's 5-year investment.

Issues: Whether disclaimed descriptive words in registered composite mark entitled to exclusive protection; similarity of services for infringement; goodwill/misrepresentation for passing off justifying interim relief.

Ratio Decidendi: Descriptive marks with disclaimers confer rights only to composite whole; infringement fails absent whole-mark similarity and pleaded service resemblance; passing off barred without proven actionable goodwill in non-competitive fields; appellate courts assess prima facie materials strictly.

Result: Interim application dismissed. (Para 65)

Table of Content
1. plaintiff's prior use and registration of 'astro dunia' mark. (Para 1 , 2 , 3 , 4)
2. defendants adopt similar mark; claim descriptive, bona fide use. (Para 5 , 6 , 7 , 8 , 9 , 10 , 11)
3. distinctive coined mark; identical services warrant injunction. (Para 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19)
4. descriptive mark; dissimilar services preclude confusion. (Para 20 , 21 , 22 , 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30)
5. defendants offer personalized services like plaintiff. (Para 31 , 32)
6. 'astro dunia' descriptive; disclaimer limits to composite whole. (Para 33 , 34 , 35 , 36 , 37 , 38 , 39 , 40 , 41 , 42)
7. marks dissimilar due to tata house mark, stylization. (Para 43 , 44 , 45)
8. no proof of continuous prior use since 2005. (Para 46 , 47 , 48 , 49 , 50 , 51 , 52 , 53 , 54)
9. services differ in nature, channels, competition. (Para 55 , 56 , 57 , 58 , 59 , 60 , 61)
10. no goodwill, misrepresentation for passing-off. (Para 62 , 63 , 64)
11. no prima facie case; injunction denied. (Para 65)

ORDER :

1. This is an action for infringement of trade mark and passing-off. The interim application seeks to restrain the Defendants from using the impugned mark (s) “ASTRO DUNIYA” and/or any trade name/mark comprising “Astro Dunia” or deceptively similar thereto.

2. The Plaintiff is an individual trading as sole proprietary concern in the name and style of M/s. Astro Dunia providing astrological and spiritual services since the year 2005 including inter alia consultancy and advisory services based on astrological principles under the mark “Astro Dunia”. It is stated that the mark is coined and arbitrary mark combining “Astro” taken from English language and “Dunia” taken from Hindi language. It is stated that the Plaintiff’s mark include the words Astro Dunia and also the label and device mark “Astro Dunia” conceived by the Plaintiff which is reproduced hereinbelow :

3. The Plaintiff is the registered owner of domain name www.astrodunia.com of which “Astro Dunia” forms an essential feature since August, 2005. The Plaintiff’s website is operated under the domain name and the website is freely accessible from locations across India and globally. The mark is used by the Plaintiff on various platforms including numerous TV shows which have been aired on Bhaskar TV, Sadhna and Dabang News and advertisement published in print media etc. The statement of sales as well as copy of specimen invoices have been set out at Exhibit-J of the Plaint and pleaded in Paragraph No. 8.6 of the Plaint. It is stated that several documents were lost to floods in 2015 and not readily available with the Plaintiff at the time of filing of suit.

4. It is submitted that the Plaintiff’s “Astro Dunia” mark is registered in class 45 with user claim of August, 2005 and the objection raised under Section 9(1)(b) of the Trade Marks Act, 1999 [for short, “the T.M. Act”] was replied by the Plaintiff asserting that the mark is an arbitrary mark and distinctive combination of words from English and Hindi language in addition to logo of star and none of three components i.e Astro, Dunia, device of star are sought to be individually monopolised. On 6^th March, 2023, the registration was allowed with disclaimer that the registration of the trade mark shall give no right to the exclusive use of all descriptive matters and that labels shall be used together. The Plaintiff has applied separately for copyright registration in respect of the artistic work being the device/label mark of the Plaintiff’s “Astro Dunia” mark. The Plaintiff has also applied on 30^th July, 2024 for registration of the Plainti mark “Astro Dunia” as word mark, which is pending.

5. Insofar as Defendants are concerned, it is stated that the Defendant No. 1 which is content distribution platform that offers inter alia Pay TV and Over the Top Services (OTT) had announced launch of services identical to Plaintiff’s services under “Astro Duniya” mark which is visually, phonetically and structurally identical to

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