SANJIB BANERJEE, J.

In this rolled up action for infringement and passing-off, the plaintiff asserts its exclusivity over the trade mark “Arati” in respect of edible oil on the strength of the plaintiff’s word mark registration in “Arati” and divers label registrations where the plaintiff claims that “Arati” is the dominant feature.

On the cause of action of infringement, the plaintiff insists that all it is required to demonstrate is that the defendants have used the plaintiff’s mark as a part of their mark in relation to similar goods as those covered by the plaintiff’s mark. The plaintiff says that the use of an additional word by the defendants would be of no relevance since in the defendants’ “Sandhya Arati” mark it is the “Arati” word that stands out and the word “Sandhya” is an embellishment or a distraction. On the additional cause of action of passing-off, the plaintiff suggests that the defendants’ coinage of their mark was with notice of the plaintiff’s rights in respect of “Arati” and was calculated to cause confusion with intent to trade upon the goodwill and reputation of the plaintiff’s mark and the established quality of its product.

By an agreement of October 1, 2003, the erstwhile owner of ten word and device marks agreed to assign such marks for valuable consideration to the plaintiff. The plaintiff claims that the assignment was completed upon the execution of a document in March, 2007. A copy of the relevant document of March, 2007 was made over to the defendants at the ad-interim stage. The plaintiff shows from the documents on record that the second defendant is an erstwhile director of the plaintiff and that both the defendants continue to be shareholders of the plaintiff company.

On the plaintiff’s application, GA No. 2662 of 2008, an ad-interim order was made on August 21, 2008. At such stage the defendants were permitted to rely on documents that they had produced to suggest that their use of the mark “Sandhya Arati” in connection with edible oil had been continuous from or about the year 2004. The ad-interim order noticed the defendants’ submission that the first defendant ran the business and the fact that the second defendant father of the first defendant was once a director of the plaintiff should not be counted against the first defendant’s use of the “Sandhya Arati” mark. The said order, prima facie, disbelieved the documents produced by the defendants that their use of the “Sandhya Arati” mark dated back to 2004.

After recording the defendants’ submission on the basis of Section 17 of the Trade Marks Act, 1999 and their argument as to the anomaly in the plaintiff’s case that though the assignment of the marks was effected in favour of the plaintiff in March, 2007 the plaintiff had obtained or applied for recording the plaintiff’s name as the registered owner in respect of some of them on the basis of the agreement to assign executed on October 1, 2003, the order dated August 21, 2008 recorded as follows:

“The word “Arati” may be part of the composite label but the word is neither common to the trade nor otherwise of a non-distinctive character. Implicit in the subsequent registration of the word “Arati” is the recognition of it being distinctive. Section 17 of the 1999 Act does not imply that a prominent feature of a label mark has to be altogether disregarded even if it appears that such prominent part has developed a secondary meaning or association with a product. Section 17(2) contains a non-obstante clause which qualifies the right conferred by sub-section (1). If the registered owner of a mark that consists of several matters is exclusively entitled to the use of the mark taken as a whole, there is some element of exclusivity conferred on the registered owner in respect of the prominent part of the composite mark. If such prominent part is per se not registrable or can be said to be generic to the associated product so as to rob such prominent part of the element of distinct