By SSR Trademark Team
In M. Manuel v. Malabar Gold Private Ltd.[1], the High Court of Kerala revisited a set of questions that sit at the centre of Indian trade mark practice: what a registration actually protects, when one registered proprietor may sue another, and what separates a winnable infringement claim from a winnable passing off claim. The judgment repays close reading precisely because it resists the easy narrative. The appeal was allowed in part: the plaintiff kept an injunction, but a narrower one, and lost both its passing off finding and its attempt to monopolise a geographical word.
The Dispute in Brief
Malabar Gold Private Ltd, the Kozhikode jeweller, sued M. Manuel, trading as Malabar Fashion Jewellery in Delhi, for infringement of its registered device mark “MALABAR GOLD” and for passing off. The plaintiff’s registration sits in Class 14 (jewellery), effective 8 March 2002, originally in the name of its predecessor, Malabar Realtors (P) Ltd, and, importantly, subject to an express limitation denying any exclusive right to the word “Malabar.” The defendant, meanwhile, held a registration in Class 35 (advertising and business services), obtained on 17 August 2008 after abandoning an earlier Class 14 application filed under mistaken advice. The trial court decreed the suit on both infringement and passing off. The appeal tested every plank of that decree.
Why the “I’m Registered Too” Defence Failed, and When It Actually Works
The defendant’s headline argument was structural: both sides were registered proprietors, so, relying on Section 28(3) of the Trade Marks Act, 1999 and the Supreme Court’s decision in S. Syed Mohideen[2], no infringement action could lie between them. The Court accepted the principle but denied its application, and the reasoning is the most useful part of the judgment.
Section 28(3) Protects Only Within the Same Class
Section 28(3), the Court held, cannot be read apart from Section 28(1), which confers exclusivity only for the goods or services actually registered. The bar on infringement actions between co-proprietors therefore engages only when two conditions coincide: the marks are identical or nearly resemble each other, and the registrations relate to the same goods or services. Where the rival registrations fall in different classes, one for goods and the other for services, Section 28(3) does not automatically bar an infringement action. S. Syed Mohideen, the Court noted, concerned rival claims over the same category of goods; it did not decide the cross-class situation. The reference order in Abros Sports[3] was, by its own nature, only a question referred for authoritative determination, and the Court declined to treat it as binding precedent.
A Class 35 Registration Will Not Cover a Class 14 Business
The factual finding sealed it. The defendant admitted, in its written statement and in reply to the caution notice, that it traded in gold jewellery, a Class 14 good, and DW1 conceded that it carried on no Class 35 activity at all. A registration in an irrelevant class, the Court reasoned, cannot protect a jewellery business that falls squarely within the plaintiff’s registered field. Because the defendant had never challenged the plaintiff’s Class 14 registration, the plaintiff’s exclusivity in that class stood protected under Section 28(1) read with Section 29, and infringement was made out. The related jurisdictional arguments under Section 30(2)(e) and Section 124 failed for the same want of pleading: no invalidity defence was raised, no issue was invited, and, per Patel Field Marshal Agencies[4], no prima facie tenability finding was ever sought, so no stay arose.
No Monopoly Over a Geographical Word, but the Whole Mark Still Counts
“Malabar” and the Secondary-Meaning Threshold
On the geographical objection, the Court found for the appellant. “Malabar” denotes a region of southern India, and geographical, descriptive and laudatory expressions remain open to honest traders unless shown to have acquired a secondary meaning identifying a single source. Two features told against the plaintiff: its own registration expressly disclaimed the word “Malabar,” signalling that no acquired distinctiveness had been recognised at registration, and no consumer surveys, recognition studies or comparable evidence were led to prove that “Malabar” standing alone had come to mean the plaintiff. Turnover and advertising spend, relevant to goodwill in the composite mark, could not by themselves confer a monopoly over the place name. Relying on Parakh Vanijya[5] and a line of Supreme Court authority, the Court held that the plaintiff could claim no exclusivity over “Malabar” in isolation.
The Anti-Dissection Rule and Trade Dress
That did not end the enquiry. Applying the anti-dissection rule and the tests distilled in Pernod Ricard India[6], the Court compared the marks as wholes. Beyond the shared word, it found substantial similarity in the manner of writing, the visual emphasis on the letters “M” and “R,” the lettering, colour scheme, layout, logo and even the captions: the word “Malabar” housed in a kinked square plank with “GOLD” set boldly beside it. Viewed through the eyes of an average consumer of imperfect recollection, the likelihood of confusion was real, and the defendant offered no honest justification for adopting so close a get-up. Deceptive similarity of the composite mark was therefore affirmed, even though the word itself remained free for use by others.
Why Passing Off Was Set Aside: Proving the Classical Trinity
Here the decree unravelled for the plaintiff. Deceptive similarity, the Court stressed, is not passing off. A passing off claimant must prove the classical trinity, namely goodwill, misrepresentation and damage, and must prove it properly. Following Brihan Karan Sugar Syndicate[7], sales and advertising figures must be established through admissible evidence: a statement is not proved merely by being filed. Yet the plaintiff’s turnover and advertising figures were not produced before the trial court at all, surfacing only later as additional evidence on appeal. The trial court had thus found goodwill on the strength of two interested employees, PW1 and PW2, and the plaintiff’s own brochures, with no independent witness: no customer, dealer or certifying accountant. Prior use was made out; misrepresentation and proved goodwill were not. The passing off finding was accordingly set aside.
Prior Use, Delay and Jurisdiction: The Other Findings
The remaining findings favoured the plaintiff. On prior use, the registration in the predecessor’s name (effective 8 March 2002, claiming user from 19 June 2001), the Section 31 presumption attaching to the recorded assignment, and invoices from 1994 outweighed the defendant’s unsupported claim of use from 1990. On delay, the Court applied Express Bottlers[8]: mere lapse of time is no defence absent proof of conscious, intentional abandonment, and acquiescence needs more than inaction. On jurisdiction, a composite suit for infringement and passing off was maintainable under Section 134(2) of the Trade Marks Act and Section 20 of the Code of Civil Procedure. The parties’ later change of logos did not render the matter infructuous; it went only to moulding relief.
What This Means for Brand Owners in India and Abroad
For domestic and international brand owners alike, the case is a compact tutorial. First, class discipline is not a formality: India follows the NICE classification, and a registration protects only the field it names, so businesses should file in the classes that match what they actually sell or do. Second, India’s dual system rewards different proofs: statutory infringement flows from a valid registration, while common-law passing off, and India’s prior-user rule, reward genuine use and goodwill. Third, evidence wins cases: goodwill must be proved through admissible material, a point overseas brand owners relying on group figures or in-house testimony too often overlook. Fourth, place names and other descriptive terms can anchor a strong composite brand, but not a monopoly over the word itself. How each of these plays out depends on the marks, the classes and the evidence in any given case, which is where tailored advice earns its place.
[1] M. Manuel v. Malabar Gold Private Ltd., RFA No. 7 of 2016, High Court of Kerala at Ernakulam, judgment dated 30 June 2026, neutral citation 2026:KER:46835.
[2] S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683.
[3] Abros Sports International Pvt. Ltd. v. Ashish Bansal and Ors., MANU/DE/3242/2025 (Delhi High Court, reference order).
[4] Patel Field Marshal Agencies and Another v. P.M. Diesels Limited and Others, (2018) 2 SCC 112.
[5] Parakh Vanijya Private Limited v. Baroma Agro Products and Ors., MANU/SC/0722/2018.
[6] Pernod Ricard India Private Limited and Another v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701.
[7] Brihan Karan Sugar Syndicate Private Limited v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577.
[8] Express Bottlers Services Pvt. Limited v. Pepsico Inc., (1991) 11 PTC 296 (Bom) (DB).
Frequently Asked Questions
Registration Is Not Immunity
Not necessarily. The Court confirmed that the protection given to co-owners of similar marks applies only where the registrations are in the same class, and that a registration in a class a business does not actually operate in will not shield it from a claim founded on someone else’s class. Whether a registration truly matches a business’s activities is a fact-specific question worth reviewing with counsel rather than assuming.
A business can build a protectable composite brand around such a word, but it generally cannot monopolise the word itself unless it proves the word has acquired a secondary meaning pointing only to that business, typically through robust evidence. Turnover and advertising alone are usually not enough.
No. Similarity may establish a likelihood of confusion, but passing off also requires proof of genuine goodwill and damage, established through admissible evidence rather than assertions or the claimant’s own employees’ testimony. In this case, the claim failed largely on proof.
Often it is the other way around. Indian law protects the prior user, whose rights can rank above a later registrant’s. Establishing prior use, however, requires continuous, documented use, such as invoices and business records, rather than mere assertion.
Three things stand out: file in the classes that match the business’s actual goods and services under the NICE system; keep proper, independent evidence of reputation, since Indian courts expect goodwill to be properly proved; and remember that prior use carries real weight in India.