1. Appeal against dismissal of injunction and local commissioner applications in a suit for trademark infringement and passing off. (Para 1 , 2 , 3 , 4 )
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2026 Supreme(Telangana) 430
HIGH COURT FOR THE STATE OF TELANGANA AT HYDERABAD
Moushumi Bhattacharya, Renuka Yara, JJ.
M/s Sai Silks (Kalamandir) Limited - Appellant
Versus
SKP B Gopinath Private Limited and Others - Respondents
Civil Miscellaneous Appeal No.441 of 2025
Decided On : 08-09-2026
Important Points
A proprietor of a composite trade mark cannot claim exclusive rights over parts that are common to the trade or non-distinctive under Section 17(2)(b) of the Trade Marks Act, 1999. Consumer perception tests must evolve to account for informed, perceptive consumers in the digital age.
Subject
Intellectual Property Rights - Trade Mark Law
Act Referred
COPYRIGHT ACT : S.55
TRADE MARKS ACT : S.17, S.17(1), S.17(2)(b), S.2(1)(z)(b), S.27(2), S.29, S.29(2), S.9(1)
TRADE MARKS ACT : S.17, S.17(1), S.17(2)(b), S.2(1)(z)(b), S.27(2), S.29, S.29(2), S.9(1)
Headnote
(A) Trade Marks Act, 1999 - Sections 2(1)(zb), 9(1), 17, 27(2), and 29 - Copyright Act, 1957 - Section 55 - Trade mark infringement and passing off - Composite marks - Exclusive rights over non-distinctive parts - Likelihood of confusion - Consumer perception - Registration of a composite mark confers an exclusive right to use the mark taken as a whole; no exclusive right is conferred over parts that are not separately registered or are common to the trade or of a non-distinctive character (Paras 20-22).
(B) Trade mark infringement and passing off - Both actions share a common ground: the likelihood of confusion and deception among the relevant sections of the public/consumers (Para 12).
(C) Consumer Perception - In the age of digital and social media, the traditional test of a person of average intelligence and imperfect recollection should shift to a perceptive consumer with informed associations, especially for planned and leisure purchases where the buyer is mindful of source and brand (Paras 27-28).
Facts of the case:
The appellant, a registered proprietor of several trade marks for silk sarees, filed a suit for permanent injunction and infringement against the respondents who adopted a trade name for their business. The appellant sought the appointment of a Local Commissioner to seize infringing materials and an ex parte ad interim injunction to restrain the respondents from using a mark similar to the appellant's registered marks. The Trial Court dismissed both applications, leading to the present appeal.
Findings of Court:
The competing marks contain striking dissimilarities that outweigh any phonetic similarity. The appellant's mark is a composite mark containing words that are common to the trade or non-distinctive, such as geographical origins and references to deities, which cannot entitle the proprietor to exclusive use.
Issues: Whether the respondent's mark is deceptively similar to the appellant's registered composite mark and whether the appellant is entitled to an interim injunction based on the likelihood of confusion.
Ratio Decidendi: Under Section 17(2)(b) of the Trade Marks Act, 1999, a registered proprietor cannot claim exclusive rights over parts of a composite mark that are common to the trade or non-distinctive. Since the marks are visually distinct and the purchase of the goods in question is a planned activity by perceptive consumers, there is no likelihood of confusion or deception.
Result: Civil Miscellaneous Appeal dismissed.
(B) Trade mark infringement and passing off - Both actions share a common ground: the likelihood of confusion and deception among the relevant sections of the public/consumers (Para 12).
(C) Consumer Perception - In the age of digital and social media, the traditional test of a person of average intelligence and imperfect recollection should shift to a perceptive consumer with informed associations, especially for planned and leisure purchases where the buyer is mindful of source and brand (Paras 27-28).
Facts of the case:
The appellant, a registered proprietor of several trade marks for silk sarees, filed a suit for permanent injunction and infringement against the respondents who adopted a trade name for their business. The appellant sought the appointment of a Local Commissioner to seize infringing materials and an ex parte ad interim injunction to restrain the respondents from using a mark similar to the appellant's registered marks. The Trial Court dismissed both applications, leading to the present appeal.
Findings of Court:
The competing marks contain striking dissimilarities that outweigh any phonetic similarity. The appellant's mark is a composite mark containing words that are common to the trade or non-distinctive, such as geographical origins and references to deities, which cannot entitle the proprietor to exclusive use.
Issues: Whether the respondent's mark is deceptively similar to the appellant's registered composite mark and whether the appellant is entitled to an interim injunction based on the likelihood of confusion.
Ratio Decidendi: Under Section 17(2)(b) of the Trade Marks Act, 1999, a registered proprietor cannot claim exclusive rights over parts of a composite mark that are common to the trade or non-distinctive. Since the marks are visually distinct and the purchase of the goods in question is a planned activity by perceptive consumers, there is no likelihood of confusion or deception.
Result: Civil Miscellaneous Appeal dismissed.
Legal Category Hierarchy
- intellectual property
- practice and procedure
Advocates Appeared:
For the Petitioner: Mr.Basa Chanakya.
For the Respondent: Mr.Herur Rajesh Kumar.
For the Petitioner: Mr.Basa Chanakya.
For the Respondent: Mr.Herur Rajesh Kumar.
Table of Contents
2. Appellant claimed phonetic similarity and association; respondents argued common/geographic words, dissimilar marks, and suppressed MoU. (Para 5 , 6 )
3. Dissimilarities between composite label marks outweighed similarities; common words 'Kancheepuram' and 'Vara Mahalakshmi' are non-distinctive and common to trade. (Para 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23 , 24 , 27 , 28 )
4. Under Section 17(2)(b) of the Trade Marks Act, 1999, a composite mark with common/non-distinctive parts confers no exclusive right over those parts. (Para 20 , 21 , 22 )
5. Civil Miscellaneous Appeal dismissed; trial court order affirming no deceptive similarity and no exclusive right over common parts upheld. (Para 31 , 32 )
6. Can a proprietor claim exclusive rights over common or non-distinctive parts of a composite trademark?
No. Under Section 17(2)(b) of the Trade Marks Act, 1999, a composite mark containing matter common to the trade or non-distinctive confers no exclusive right over those parts. (Para 20 , 21 , 22 )
7. What is the test for deceptive similarity between two composite label marks?
The marks must be compared as a whole, focusing on visual dissimilarities. Phonetic similarity is less determinative when common words and distinct visual elements are present. (Para 15 , 16 , 23 )
8. Is the traditional test of a person of average intelligence always applicable in trademark cases?
No. For high-involvement goods like sarees, the test shifts to a perceptive consumer with informed associations, mindful of source, brand, and quality. (Para 27 , 28 )
9. What are the essential elements for an interim injunction in a trademark infringement suit?
The plaintiff must satisfy the troika of a prima facie case, irreparable injury, and balance of convenience, along with the classical trinity of reputation, misrepresentation, and damage. (Para 13 )
JUDGMENT :
Moushumi Bhattacharya, J.
1. The Civil Miscellaneous Appeal has been filed against a Common Order dated 24.07.2025 passed by the learned II Additional Chief Judge, City Civil Court at Hyderabad (‘Trial Court’) dismissing I.A.Nos.2449 and 2450 of 2024 in O.S.No.296 of 2024 filed by the appellant.
2. The appellant is the plaintiff before the Trial Court in a Suit for permanent injunction and infringement of trade mark under the provisions of The Trade Marks Act, 1999 (‘the 1999 Act’) read with section 55 of The Copyright Act, 1957.
3. The appellant filed two interlocutory applications (‘I.As’) in the said Suit; I.A.No.2449 of 2024 for appointment of a Local Commissioner to visit the premises of M/s.Kanchipuram Varahi Lakshmi Silks and seize all infringing materials, packaging and raw materials bearing the appellant’s trade mark. I.A.No.2450 of 2024 was filed for an ex parte ad interim injunction restraining the defendants from using, selling, stocking or dealing with any goods or services under the trade mark, logo or word ‘Kanchipuram Varahi Lakshmi Silks’ or from infringing the appellant’s registered trade mark ‘Kancheepuram Vara Mahalakshmi Silks’, ‘Vara Mahalakshmi Silks Kancheepuram’ and ‘Vara Mahalakshmi’ or any other mark identical or deceptively similar to the appellant’s trade mark.
4. By the impugned Common Order, the Trial Court dismissed both the I.As, filed by the appellant, on the ground that the competing marks contain several striking dissimilarities which outweighed any phonetic similarity between the marks. The Trial Court also found that the appellant’s registered mark consists of a word which is in common use indicating geographical origin. The Trial Court also found that the respondents have not copied the core and peculiar features of the appellant’s mark.
5. Learned counsel appearing for the appellant/plaintiff submits that the appellant is the registered proprietor of several trade marks including ‘Kancheepuram Vara Mahalakshmi Silks’. Counsel submits that the appellant has expanded its business across South India by establishing numerous retail outlets by reason of which the mark ‘Vara Mahalakshmi’ has become exclusively associated with the appellant. Counsel submits that the respondents adopted the trade name, ‘Kanchipuram Varahi Lakshmi Silks’, which is phonetically, visually and structurally deceptively similar to the appellant’s distinctive trade dress. It is submitted that the respondent No.2 entered into a business Memorandum of Understanding (MoU) with the appellant to manage the day-to-day affairs of the appellant’s retail outlet situated in Chennai, Tamil Nadu but commenced their independent business under the offending trade name in 2024 in violation of the appellant’s intellectual property rights.
6. Learned counsel appearing for the respondents/defendants submits that the appellant suppressed material facts in its I.As. with regard to the Business MoUs executed on 27.09.2012 and 03.11.2014 between the parties, whereby the parties agreed to revenue-sharing agreements. Counsel submits that the appellant filed the Suit for trade mark infringement solely to evade its revenue-sharing obligations under the Business MoU. Counsel relies on section 17 of the 1999 Act to urge that the appellant cannot claim any exclusive right over a composite mark, and urges that there is no likelihood of confusion between the two marks.
7. The dispute brought to the Court in the present Appeal is of infringement of trade mark and passing off.
8. Trade Mark infringement is premised on a registered trade mark where the registration confers certain proprietary and exclusive rights on the registered proprietor of the trade mark. The essential function of a trade mark is to indicate origin as the trade mark offers a guarantee to the consumer that the quality of the goods or services will be that to which the consumer has become accustomed. Thus, any use of an identical or similar mark which may or may not have a correla
