Court rules no prima facie case for passing off or trademark infringement as plaintiff fails to prove prior use and registration of mark on products
In a significant judgment delivered on November 6, 2026, the Division Bench of the Jammu & Kashmir and Ladakh High Court, comprising Justices Sindhu Sharma and Sanjay Dhar, dismissed the appeal filed by Bardana Super Hi-Tech Agro Tonic Pvt. Ltd. challenging the refusal of interim injunction against Amcons IPL (Agro Industrial Expansion) Pvt. Ltd. The dispute centered around alleged infringement and passing off of the trademark "SUPER HI-TECH AGRO TONIC" and associated trade dress used by the plaintiff in fertilizers and allied agro products.
The plaintiff, Bardana Super Hi-Tech Agro Tonic Pvt. Ltd., claimed that it had been using the marks "HI-TECH AGRO TONIC," "SUPER HI-TECH AGRO TONIC," and related labels since 2001, asserting that they had acquired distinctiveness, goodwill, and public recognition. The company alleged that the defendants had adopted the deceptively similar mark "SUPER AGRO-TECH" and similar trade dress, including apple imagery and color schemes, to mislead consumers and benefit unfairly from the plaintiff's established reputation.
However, the trial court, before which the suit was eventually transferred, held that the plaintiff had failed to establish a prima facie case for passing off and trademark infringement. The court noted that the plaintiff did not provide documentary evidence, such as invoices or business records, to prove continuous use of the trademark on its products prior to 2017. The plaintiff's incorporation in 2017 did not sufficiently prove prior use dating back to 2001 or 2011 as claimed. Moreover, the plaintiff's trademark registration application for the relevant mark in Class 1 (fertilizers and allied goods) was still pending and objected to, and thus no statutory protection existed for the mark on the products themselves. While the plaintiff held trademarks registered in Class 35 (business management and advertising), those did not extend to the actual goods.
The court emphasized that, as per Section 27(1) of the Trade Marks Act, 1999, an action for infringement cannot be maintained for unregistered trademarks. The plaintiff's inability to prove prior use and registration meant that an injunction for infringement could not be granted. Similarly, the passing off claim failed as the plaintiff could not demonstrate acquired distinctiveness or sufficient public recognition of the mark, nor actual misrepresentation or likelihood of confusion caused by the defendants.
The defendants contended that the marks used by the plaintiff were descriptive and common in the agricultural industry and that no exclusive rights could be claimed over such generic terms. They also submitted that the plaintiff's comparison of packaging and marks was selective and exaggerated, lacking credible evidence of consumer confusion or diversion of trade.
The High Court, upon hearing both parties and reviewing the evidence, found no illegality or perversity in the trial court's order and held that the appellate court's scope to interfere with interim injunction orders is limited to cases of arbitrariness or error of law, which was not established here.
The plaintiff's application to produce additional invoices for 2017-18 was also considered insufficient to establish prior use over a sufficiently long period, as required to prove acquired distinctiveness for a passing off claim.
Consequently, the High Court dismissed the appeal, affirming the refusal of interim injunction and upholding the principle that protection under the Trade Marks Act is contingent on registration of the mark in relation to the goods. The judgment reiterates the necessity for plaintiffs to provide clear documentary evidence of prior use and registration to succeed in trademark infringement and passing off cases.
This ruling serves as a cautionary precedent to businesses relying on unregistered marks or insufficient evidence of prior use in intellectual property disputes within the Jammu & Kashmir and Ladakh jurisdiction.
Bottom Line:
Trade Marks Act, 1999 - Interim injunction sought for alleged trademark infringement and passing off - Plaintiff must establish prior and continuous use of the trademark, distinctiveness, and public recognition to succeed in passing off claims - Action for infringement cannot lie for an unregistered trademark under Section 27(1) of the Trade Marks Act, 1999.
Statutory provision(s):
Trade Marks Act, 1999 Section 27(1), Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908
