Trade mark infringement and passing off: competing registrations defeated interlocutory infringement relief, but prima facie deception sustained interim protection.

Interlocutory restraint for trade mark infringement could not be sustained merely on the respondent's label registration where both parties held competing registrations in Class 30 for similar dhall products; Section 28(3) was treated as significant, and the disclaimer was read as limited to the device and descriptive expression rather than conferring an exclusive right to the word element. That part of the injunction was set aside. The passing off claim stood on prior user, goodwill and likelihood of deception, and the appellant's changed packaging using "GOLD WINNER" for dhall products prima facie suggested confusion and trading on the respondent's goodwill. Interim protection on passing off was therefore maintained for a limited period.

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Issues: (i) Whether the appellant was liable to be restrained at the interlocutory stage for infringement of the respondent's registered trade mark in relation to dhall products; (ii) Whether the respondent was entitled to continuance of interim protection on the passing off claim.

Issue (i): Whether the appellant was liable to be restrained at the interlocutory stage for infringement of the respondent's registered trade mark in relation to dhall products.

Analysis: The rival marks were examined in the context of the parties' respective registrations and prior use. The respondent's registration was a label mark in Class 30, while the appellant also held registration in Class 30 for its own composite mark. The Court treated Section 28(3) of the Trade Marks Act, 1999 as significant in a situation where both sides claimed registration over marks used for similar goods, and held that the respondent could not, at the interlocutory stage, obtain an infringement restraint on the basis of the registered mark alone. The disclaimer was read as extending only to the device and descriptive expression, not as creating an exclusive right to the word element in the manner asserted for interim relief.

Conclusion: The injunction was not sustainable insofar as it rested on infringement of the respondent's registered mark, and that part of the order was set aside.

Issue (ii): Whether the respondent was entitled to continuance of interim protection on the passing off claim.

Analysis: The Court held that the passing off claim stood on a different footing from infringement and depended on prior user, goodwill, and the likelihood of deception in trade. The materials indicated that the appellant had shifted from using the earlier wrapper style to a packaging prominently featuring "GOLD WINNER" for dhall products, which prima facie raised the possibility of confusion and an attempt to trade upon the respondent's goodwill. The Court therefore found that, despite the failure of the infringement limb, the passing off claim warranted continuation of interim protection for a limited period.

Conclusion: The restraint on passing off was maintained against the appellant for one year from the date of the impugned order.

Final Conclusion: The appeal succeeded only in part: the interlocutory restraint was removed to the extent it was founded on infringement, but it was retained on the passing off aspect, leaving the respondent with limited interim protection.

Ratio Decidendi: Where both parties claim trade mark rights in similar goods, an interlocutory infringement restraint cannot be sustained merely on the respondent's label registration if the appellant also has a competing registration, but a passing off restraint may still survive on a prima facie showing of prior user, goodwill, and likely deception.

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