Court rules that common and non-distinctive elements in composite trademarks cannot confer exclusive rights; phonetic similarity insufficient to establish infringement amid visual dissimilarities.
In a significant judgment delivered on September 8, 2026, the Telangana High Court (Division Bench comprising Justices Moushumi Bhattacharya and Renuka Yara) dismissed the Civil Miscellaneous Appeal No. 441 of 2025 filed by M/s Sai Silks (Kalamandir) Limited, upholding the trial court's order rejecting interlocutory applications seeking injunctions against SKP B Gopinath Private Limited and others for alleged trademark infringement and passing off.
The appellant, M/s Sai Silks, had claimed exclusive rights over the composite trademark “Kancheepuram Vara Mahalakshmi Silks” and sought to restrain the respondents from using the deceptively similar mark “Kanchipuram Varahi Lakshmi Silks.” The appellant contended that the respondents' use of a phonetically and visually similar mark infringed their trademark rights under the Trade Marks Act, 1999, and amounted to passing off, also invoking Section 55 of the Copyright Act, 1957.
The appellant’s plea included appointing a local commissioner to seize infringing materials and an ex parte ad interim injunction restraining the respondents from using the allegedly infringing mark.
The trial court, however, found that the competing marks exhibited several striking dissimilarities which outweighed any phonetic similarities. It also noted that the appellant’s mark contained common words such as “Kancheepuram” (a geographical indication) and “Silks,” which are descriptive and non-distinctive elements that cannot be monopolized exclusively. The respondents were also found not to have copied the core or peculiar features of the appellant’s mark.
The High Court extensively analyzed the legal principles under the Trade Marks Act, 1999, particularly sections 17, 27, and 29, which govern composite trademarks, trademark infringement, and passing off. The Court reiterated that:
- Composite trademarks containing common or generic elements, especially geographical names or culturally significant terms, do not grant exclusive rights over those parts (Section 17(2)(b)).
- Exclusive rights attach only to the mark as a whole, and the proprietor cannot claim monopoly over common or descriptive words unless they have acquired distinctiveness.
- Mere phonetic similarity between two marks is insufficient to establish infringement or passing off when visual and structural dissimilarities are substantial enough to avoid consumer confusion.
- Passing off requires proof of reputation/goodwill, misrepresentation, and consequential damage. The absence of a dominant distinctive feature in the plaintiff’s mark weakens claims of exclusive rights.
The Court highlighted that “Kancheepuram” is a well-known geographical origin for silk sarees in Tamil Nadu, and “Vara Mahalakshmi” refers to the Goddess of wealth, a common cultural term. The respondents' use of “Varahi Lakshmi” was considered a legitimate variation with distinct visual elements.
Further, the Court underscored evolving consumer behavior, noting that saree shopping is typically a planned activity where consumers exercise informed choice, and mere phonetic similarity would not mislead a perceptive buyer exposed to modern media and marketing.
The Court concurred with the trial court's approach that the balance of convenience and the possibility of irreparable injury did not favor granting interim relief to the appellant. The appeal was dismissed with no order as to costs.
This judgment reinforces the principle that trademark protection does not extend to common or descriptive elements within composite marks and that courts must consider the overall impression created by the mark, including visual and structural features, before finding infringement or passing off.
Bottom Line:
Trade Marks Act, 1999 - Composite trademark containing common or non-distinctive elements such as geographical locations or generic terms does not confer exclusive rights over those elements. Mere phonetic similarity between two trademarks is insufficient to establish infringement or passing off in cases where visual and other dissimilarities outweigh potential confusion.
Statutory provision(s): Trade Marks Act, 1999 Sections 17, 27, 29; Copyright Act, 1957 Section 55
