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Intellectual Property LawSupreme Court of India

Parakh Vanijya Private Limited v. Baroma Agro Product

Civil Appeal · 2018 INSC 602Decided 12 Jul 2018
Civil Appeal No. 6642 of 2018
Justice Ranjan Gogoi · Justice R. Banumathi

Background

The appellant, which had sold Biryani Rice under the mark "MALABAR" since 2001, sued the respondents for trademark infringement and passing off after the respondents began using a similar "MALABAR" label alongside their own "BAROMA" mark. An interim injunction originally restraining the respondents was later modified by the Single Judge (with party consent) to let the respondents use "MALABAR" in conjunction with "BAROMA" with a different get-up, and the Calcutta High Court's Division Bench upheld that modified order. The appellant appealed to the Supreme Court against this modification.

Decision Breakdown

The Supreme Court held that the appellant's own trademark registration carried an explicit disclaimer denying it exclusive rights over the word "MALABAR," and other traders already held similar registrations (e.g., "MALABAR MONSOON," "MALABAR COAST") with the same kind of disclaimer. Comparing the two labels, the Court found them substantially different with no deceptive similarity, given the differing get-up and the respondents' own established business turnover. The Court therefore saw no infirmity in the High Court's order and dismissed the appeal, while expressly leaving all contentious issues open to be resolved in the still-pending underlying infringement suit.

Lesson Learnt

A trademark registration that carries a disclaimer on a particular word (common for generic/geographic terms) does not give the registrant exclusive rights to that word, and courts assessing interim relief will weigh the actual visual similarity of marks as used, not just overlapping words.

Parakh Vanijya Private Limited v. Baroma Agro Product – Legal Case Shots | LegalAware