Synopsis

The respondents (plaintiffs) sued the appellants (defendants) for trademark infringement and passing off, alleging that the defendants’ mark “SHATAM JEEVA” (used for a wellness retreat) was deceptively similar to their registered “JIVA” marks. The Commercial Court granted an interim injunction restraining the defendants from using the impugned mark. The Division Bench allowed the appeal, holding that the marks were not deceptively similar when compared as wholes. The court applied the anti‑dissection rule, emphasized that composite marks must be assessed in their entirety, and found that the presence of the prefix “Shatam” and the disclaimer “By Baidyanath” clearly distinguished the defendants’ mark. The court also held that the plaintiffs failed to establish a prima facie case of passing off, as there was no misrepresentation or likelihood of confusion. The injunction was set aside, leaving the parties to agitate the issues at trial.

Court: High Court of Delhi

Coram: Honourable Mr. Justice C. Hari Shankar and Honourable Mr. Justice Om Prakash Shukla

Date of Judgment: 21st April 2026

Citation: FAO (COMM) 334/2025 (2026:DHC:3302-DB)

Core Law: Trade Marks Act, 1999 – Sections 29(2)(b) (infringement), 17 (exclusive rights in composite marks), 28(3), 30(2)(e); Code of Civil Procedure, 1908 – Order XXXIX Rules 1 and 2 (interim injunction); passing off

2. Legal Framework

Major laws and provisions involved

• Trade Marks Act, 1999 – Section 29(2)(b) (infringement by deceptive similarity); Section 17 (exclusive rights in composite marks); Section 28(3) and 30(2)(e) (both marks registered – defence)

• Code of Civil Procedure, 1908 – Order XXXIX Rules 1 and 2 (interim injunction)

• Principles of passing off – goodwill, misrepresentation, damage

Key legal principles applied

Anti‑dissection rule: Marks must be compared as a whole, not by dissecting individual components. Consumers perceive marks based on overall impression – appearance, sound, structure, and commercial impression. Courts may identify dominant features as an analytical aid, but the ultimate test is whether the marks, viewed in totality, create a likelihood of confusion.

Infringement under Section 29(2)(b): The plaintiff must show: (a) registered trademark; (b) defendant’s mark is deceptively similar; (c) used for identical/similar goods/services; (d) likelihood of confusion or association.

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