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2025 Supreme(Online)(Del) 3239
IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, Ajay Digpaul, JJ
VIP INDUSTRIES LTD – Appellant
Versus
CARLTON SHOES LTD – Respondent
FAO(OS) (COMM) 151/2023 & FAO(OS) (COMM) 152/2023
For the Appellants/Petitioners: Mr Akhil Sibal, Sr. Adv., Mr. Nishad Nadkarni, Mr. Ankur Sangal, Mr. Ankit Arvind, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Mr. Shaurya Pandey, Ms. Rakshita Singh, Ms. Ridhie Baja
For the Respondents: Mr. Sandeep Sethi, Sr. Adv., Mr. Peeyoosh Kalra, Mr. C.A. Brijesh, Mr. Ishith Arora, Mr. Sumer Dev Seth, Ms. Simranjot Kaur
The court affirmed that in passing off actions, the essential criterion is establishing goodwill in relation to specific goods, rather than goodwill merely associated with the mark itself.
Headnote:(A) Trade Marks Act, 1999 - Section 28(3) - Passing off action arising from cross suits filed by two registered proprietors of the mark CARLTON. Court dismissed injunction application of one party and granted it to the other, finding that both parties had registered the mark CARLTON but that one party proved earlier goodwill in India as against the other. The Court held that both parties could not maintain a case of infringement due to equal rights under registration but could assert passing off claims. (Paras 9, 11-15, 62-65)
(B) Goodwill and reputation in respect of goods - The essential requirement in a passing off action is the establishment of goodwill, not merely the mark itself. Goodwill must manifest in the specific goods or services for that particular mark to be actionable against another user. (Paras 98-112)
(C) Trans-border reputation - The learned Single Judge ruled that a party must show goodwill exists in India for a passing off action, including evidence of advertising or presence in the Indian market. (Paras 29-35)
(D) Judicial discretion - The appellate court will not interfere with the discretion exercised by a lower court unless shown to be arbitrary or perverse. (Paras 124-125)
Result: Appeals dismissed.
| Table of Content |
|---|
| 1. overview of the case. (Para 1 , 2) |
| 2. claims for injunction regarding use of marks. (Para 3 , 4 , 5 , 8 , 9) |
| 3. impermissibility of infringing claims for registered trademarks. (Para 6 , 7) |
| 4. findings related to trademark registrations. (Para 10 , 11 , 12) |
| 5. establishing goodwill and trans-border reputation. (Para 31 , 33 , 50 , 51 , 60) |
| 6. final conclusions on goodwill and injunctions. (Para 62 , 64 , 66) |
JUDGMENT
01.07.2025
C. HARI SHANKAR, J.
1. These appeals arise out of a common judgment dated 17 July 2023, rendered by a learned Single Judge of this Court in CS (Comm) 730/2019, [ Carlton Shoes Ltd. v VIP Industries Ltd ] and CS (Comm) 52/2020, VIP Industries Ltd v Carlton Shoes Ltd.. As the cause title themselves would indicate, these were cross suits, instituted against each other by Carlton Shoes Ltd., [“CSL” hereinafter] and VIP Industries Ltd, [ Veri4 f i“eVdIP” hereinafter]
The lis
2. Once the air is cleared, the controversy has percolated down to only one issue, which is whether goodwill, for the purposes of a passing off action, is of a mark, or of a mark in respect of particular goods or category of goods.
3. CS (Comm) 730/2019, instituted by CSL against VIP and CS (Comm) 52/2020, instituted by VIP against CSL, were both seeking permanent injunction, restraining the opposite party from using the mark CARLTON, as a word mark or a device mark.
4. During the course of the arguments, Mr. Akhil Sibal, learned Senior Counsel for VIP, submits that the restraint that his client seeks against CSL is only against use of the mark CARLTON for luggage, bags and similar goods. He has no objection to CSL using the mark CARLTON for any other item.
5. As against this, CSL presses its claim for injunction against VIP in respect of the use of the mark CARLTON for any goods in Class 18.
7. By the impugned judgment, the learned Single Judge has dismissed IA 1369/2020 filed by VIP and has allowed IA 18443/2019 filed by CSL in the following terms:
“66. For all the aforesaid reasons, this Court comes to a prima facie conclusion that Carlton has made out a case for grant of injunction against VIP. Accordingly, I.A. 18443/2019 in CS(COMM) 730/2019 filed by Carlton is allowed to the extent of restraining VIP, its assigns, affiliates, relatives, successors-in- interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents and all other persons from marketing, selling or offering to sell bags and other allied goods falling in class 18 under its trademarks CARLTON (word mark) and 
and/or any other trade mark identical/ deceptively similar to Carlton’s trademarks CARLTON/CARLTON LONDON/ or any variants thereof singularly or in conjunction with any other word or monogram/logo or label or in any other manner, amounting to passing off. I.A. 1369/2020 in CS(COMM) 52/2020 filed by VIP against Carlton is dismissed.
67. It is however directed that Carlton shall maintain accounts of manufacture and sales of the impugned products under the marks CARLTON/CARLTON LONDON/ 
and shall file the same on affidavit on half-yearly basis in this Court.”
8. Aggrieved by the impugned judgment, VIP has, therefore, instituted the present appeals. FAO (OS) (Comm) 151/2023 challenges the impugned judgment insofar as it dismisses VIP’s IA and FAO (OS) (Comm) 152/2023 challenges the impugned judgment insofar as allows CSL’s IA.
The Impugned Judgment in a nutshell
9. CSL and VIP both possess registrations of the mark CARLTON, in Class 18, for various goods. CSL’s registration in Class 18 is w.e.f. 6 May 1994, whereas VIP possesses two registrations of the CARLTON mark in Class 18, w.e.f. 26 July 1995 (through its pre
