Court Affirms Infringement Action Against "Malabar Fashion Jewellery"; Restricts Use of Deceptively Similar Marks
In a significant judgment, the Kerala High Court has upheld the trademark protection for "Malabar Gold," affirming the infringement action against "Malabar Fashion Jewellery." The court, presided over by Mr. Mohammed Nias C.P., J., emphasized the importance of safeguarding registered trademarks under the Trade Marks Act, 1999, and issued a decree modifying previous orders to ensure protection for "Malabar Gold" while recognizing the geographical term "Malabar" cannot be monopolized.
The case, RFA No. 7 of 2016, involved Malabar Gold Private Ltd., the plaintiff, accusing M. Manuel, the appellant, of infringing its trademark by using a deceptively similar mark, "Malabar Fashion Jewellery," in the jewelry business. The dispute centered on whether the term "Malabar," a geographical expression, could be monopolized and whether the appellant's use of the mark amounted to infringement and passing off.
The court determined that the plaintiff's registered trademark under Class 14, which pertains to goods like gold and diamonds, was infringed upon by the defendant who operated under Class 35 related to services. Despite both parties having registered marks, the court found that the defendant's activities fell within Class 14, thereby constituting infringement.
The judgment highlighted key provisions of the Trade Marks Act, including Sections 28(1), 29, and 34, which confer exclusive rights to registered trademarks. The court clarified that the statutory bar under Section 28(3) does not apply where registrations exist in different classes relating to goods and services. The court also emphasized the necessity of proving goodwill, misrepresentation, and damage to sustain a passing off action, which the plaintiff failed to conclusively establish.
Furthermore, the court acknowledged the defendant's argument that the term "Malabar" is a geographical term widely used, thus cannot be monopolized. However, the court upheld the protection of the composite mark "Malabar Gold" from infringement, restraining the appellant from using any mark deceptively similar to the plaintiff's registered trademark.
The judgment also addressed procedural aspects regarding territorial jurisdiction under Section 134(2) of the Trade Marks Act and Section 20 of the CPC, confirming the maintainability of the suit. The court rejected the appellant's plea of delay and acquiescence, asserting that mere passage of time cannot legitimize infringement of a registered trademark.
Ultimately, the Kerala High Court's judgment reinforces the rights of registered trademark proprietors while ensuring that geographical terms remain available for bona fide use by traders. The decision modifies the trial court's decree, restraining the appellant from using marks deceptively similar to "Malabar Gold" and underscores the importance of proving the classical trinity in passing off actions.
Bottom line:-
Trade Marks Act, 1999 - The term "Malabar" as a geographical expression cannot be monopolized, but protection is granted to the registered trademark "Malabar Gold" under Class 14.
Statutory provision(s): Sections 28(1), 28(3), 29, 34, 135 of the Trade Marks Act, 1999; Section 20 CPC.
M.Manuel v. Malabar Gold Private Ltd., (Kerala) : Law Finder Doc id # 2932494
