Court finds no prima facie case of passing off or prior goodwill in ASR's use of FITFEAST mark; upholds Fitship's bona fide adoption and registration for protein snack products
In a landmark judgment delivered on August 31, 2026, the Delhi High Court, presided over by Justice Jyoti Singh, dismissed the rectification petition filed by ASR Market Ventures Private Limited seeking cancellation of the trademark registration of the mark FITFEAST in Class 30, owned by Fitship Private Limited. The Court also rejected ASR's application for an interlocutory injunction restraining Fitship from using the said mark.
The dispute centered on the trademark FITFEAST, which ASR alleged it had been using since 2017 for nutrition and healthy food-related services, including customized meal plans, nutritionist services, and wellness tracking tools. ASR claimed that it had prior rights over the mark and that Fitship's registration and use for protein-rich snack products was dishonest, causing confusion and damage to ASR's goodwill and reputation.
Fitship, on the other hand, contended that it had bona fide adopted the mark in 2021 after comprehensive due diligence, including trademark and domain searches, and had built its own goodwill in the protein snack market. Fitship argued that ASR's use of FITFEAST was minimal, sporadic, and always under the umbrella of the more dominant FITPASS brand, which ASR primarily used in its fitness and wellness business.
The Court extensively analyzed the evidence, including revenue and marketing expenditure figures, social media presence, third-party collaborations, trademark applications, and the nature of goods and services offered by both parties. It drew upon settled legal principles relating to trademark law and passing off, referencing authoritative judgments including Reckitt & Colman Products Ltd. v. Borden Inc., Satyam Infoway Ltd. v. Siffynet Solutions, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., among others.
Key findings of the Court included:
- ASR's mark FITFEAST was not a registered trademark nor an "earlier trademark" under Section 11(1) of the Trade Marks Act, 1999, as its applications were pending and it had not filed opposition to Fitship's registration.
- ASR failed to establish use of FITFEAST as a standalone trademark functioning as a source identifier. The bulk of ASR's business and goodwill was shown to be under the FITPASS mark, with FITFEAST being used mainly as a sub-service descriptor.
- The essential elements of passing off-goodwill, misrepresentation, and damage-were not made out by ASR. The Court found no credible evidence of distinct goodwill or reputation in FITFEAST independent of FITPASS prior to Fitship's adoption of the mark.
- Fitship's adoption was bona fide and backed by due diligence. The mark had gained significant goodwill in the high-protein snack segment since 2021, supported by sales invoices, promotional campaigns, endorsements by public figures, and institutional investments.
- The Court held that the goods and services of the parties were related but discernible, targeting different consumer perceptions through distinct trade channels and brand identities, mitigating any likelihood of confusion.
- The absence of any concrete instance of actual confusion or deception further weighed against ASR's claim.
Consequently, the Delhi High Court dismissed ASR's petition for cancellation and its application for interlocutory injunction. The judgment reinforces the principle that mere prior use or reputation in a mark that is not a registered trademark and does not function independently as a source identifier is insufficient to succeed in a passing off action or to challenge a valid registration. It also underscores the importance of bona fide adoption and use, supported by proper due diligence and continuous commercial exploitation, in trademark disputes.
This decision serves as a significant precedent for businesses in the fitness and wellness sectors and related domains, emphasizing the need for clear and demonstrable trademark use as a source identifier and prompt registration to protect brand interests.
Bottom Line:
Trademark Law - Rectification petition filed under Section 57 of the Trade Marks Act, 1999 - Grounds of passing off, bad faith adoption, and likelihood of confusion rejected - Court held that prior user and goodwill must be established to succeed in a claim for cancellation of trademark registration.
Statutory provision(s):
Trade Marks Act, 1999 - Sections 9(2)(a), 11(1), 11(3), 11(4), 11(10)(ii), 12, 18, 36E, 57
