Intellectual Property RightsTrademark In IndiaCalcutta High Court Eliminates the Dilemma between Trademark Infringement and Passing Off

October 18, 20210

In the present case of Biswanath Hosiery Mills Limited & Anr. v. Micky Metals Limited, I.A No. G.A/1/2020, the Hon’ble High Court of Calcutta has discussed the long-standing intertwined issue of similarity and distinctiveness of trademarks.


Biswanath Hosiery Mills Limited (hereinafter, the Plaintiff) is the registered proprietor of the trademark “LUX” under class 25. The said trademark was adopted by Plaintiff No. 1 in the year 1957. Moving forward, Plaintiff No. 1 also obtained copyright over “LUX” on August 8, 1972. On the other hand, Micky Metals Limited, (hereinafter, the Defendant) deals with TMT bars & rods under class 6 and uses the word mark “LUX” for its products. The Plaintiff filed a suit before the Hon’ble High Court of Calcutta (hereinafter, the Court), seeking interim protection against the Defendant for infringement of trademark, and passing off.


  1. Whether the suit filed by the Plaintiff is maintainable?
  2. Whether there is an infringement of trademark and passing off, which violates the rights of the Plaintiff seeking interim relief?


The Plaintiff submitted that the Plaintiff has a total of 22 registrations across India and that the Plaintiff has a market presence in over 47 countries around the world which shows public reliance, up to the mark sales, and superior quality of the product. All of this, collectively implied that the Plaintiff’s mark, “LUX” is a well-known mark.

The Plaintiff stated that the mark “LUX” was adopted by their founder in 1957 and ever since the Plaintiff has been using it to market its products for a considerable period of time.

The Plaintiff relied on S. Syed Mohideen v. P Sulochana Bai, 2016 (66) PTC 1 (SC), wherein the Supreme Court considered an interplay of Section 27(2) and 28(3) of the Trademarks Act, 1999 (the Act) and held that the rights of a prior user are superior to that of registration.

Referring to the affidavits in opposition to the Defendant’s application for trademark registration, the Plaintiff contended that the Defendant is a subsequent user of a similar and misleading mark as that of the Plaintiff.

The Plaintiff further submitted that the uninterrupted and continuous use of the word “LUX” by the proprietor has been recognized by the Intellectual Property Appellate Board in Biswanath Hosiery Mills Ltd. v Friends Hosiery and Another on July 15, 2020. Relying on the judgment of T.V. Venugopal v.  Ushodaya Enterprises Ltd. and Another, (2011) 4 SCC 85, the Plaintiff contended that even though the mark “LUX” is a generic word, it has acquired distinctiveness on being associated with Plaintiffs for a long time.

The Plaintiff relied on Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat, 1997 SCC Online Bom 578 and KalpataruProperties Private Ltd. Mumbai and Another v. Kalpataru Hospitality and Facility Management Services Private Limited,2011 (5) MhLJ 369, and submitted that for the action of passing off, it is not necessary that the parties have a common business market or category of product. The action of passing off can sustain even when the market or category is not in common.

The Plaintiff contended that the Defendant’s use of the mark is not just confusing and deceptive to the public but also dilutes the Plaintiff’s mark value in the market.

The Plaintiff relied on Section 29(4) of the Act and the judgment of Exxon Mobil Corporation v. Mr. P K Sen, 2018 Indlaw CAL 408 wherein the Calcutta High Court observed that protection is granted under Section 29(4) of the Act, based upon the Doctrine of Dilution.

On the other hand, the Defendant challenged the maintainability of the Plaintiff’s application under Order XXIX Rule 1 of the Code of Civil Procedure, 1908, and submitted that the application is not maintainable because the suit has been filed by an authorized representative and hence, it should be dismissed.

The Defendant submitted that the Plaintiff’s mark “LUX” was not published in the list of well-known marks released by the trademark registry, which implied that the Plaintiff’s mark has not acquired such distinctiveness and well-known character.

Relying upon the decision of IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt.  Ltd.2011 (47) PTC 129, the Defendant contended that because the Plaintiff’s mark has not acquired such high brand value and publicity, the use of the mark by the Defendants for unrelated goods doesn’t dilute the mark of the Plaintiff.

Submitting that the Defendant has already acquired registration for two of its marks in class 6, the Defendant referred to S. Syed Mohideen v. P Sulochana Bai,2016 (66) PTC 1 (SC) and stated that two registered proprietors can’t sue each other for infringement of trademark based on Section 28(3) of the Act.

Further, addressing the Plaintiffs’ contention pertaining to copyright, the Defendants brought to light the case of Hindustan Lever Limited v.  Biswanath Hosiery, 002 (25) PTC 86, wherein it appeared that the Plaintiff and Hindustan Lever Ltd. have a shared right over the word “LUX”.

 The Defendant highlighted the difference of class and category of products, and contended that no injunction should be granted as the Plaintiff had failed to establish the claims of dilution of the mark and relied on the judgment of Skol Breweries v. Unisafe Technologies, 2010 (44) PTC 209 for the same.

Lastly, in order to prove the generic character of the mark, the Defendant argued that the Plaintiffs’ mark has been registered in several classes and is marketed by different entities.


The Court observed that a mere difference in class and category of goods doesn’t frustrate the action of passing off by itself. In fact, the difference in class and category is one of the primary factors to be taken into consideration.

The Court held that the suit of passing off is maintainable even when the mark is generic in nature, provided, it has attained distinctiveness over time and has been in use for a reasonable period.

Herein, the Court observed that even though the Plaintiff is the prior user of the mark “LUX”, the word “LUX” is a generic term that has been used by different legal entities to market their products and that the word “LUX” is already registered in the favour of two parties

It was observed by the Court that the class and category of goods of the Plaintiff and that of the Defendants are very different. The Plaintiff deals in hosiery while the Defendant deals in TMT bars and rods. Hence, it was unlikely to cause any confusion and deception among the general public.

Moreover, the Court took into consideration that the registered mark of the Plaintiff “LUX” was not included in the list of well-known marks published by the trademark registry, which in turn frustrates the Plaintiff’s claims under Section 11(6) of the Act.

Addressing the question of maintainability, the Court identified that the filing of the suit by an authorized representative to be a curable defect and held that the Plaintiff can be given a chance to correct that.

Moving forward, on examining all the facts and circumstances, the Court held that the Plaintiff’s mark hasn’t attained the distinctiveness so as to allow interim protection.


The judgment on one hand deals with a long-standing issue of infringement of Intellectual Property Rights and on the other, deals with the maintainability of the suit involving the procedural aspect of the suit. The similarity of mark and distinctiveness are two issues that frequently make their way up to the Courts.

The mindful examination of facts, circumstances, and the inferences drawn, throws light on the aforementioned issues and clears the dilemma between infringement of rights and reasonable grant of rights.

Considering the generic quality of the mark “LUX” and the shared rights over the same, along with the fact that one of the marks of the Defendant including the word “LUX” had already been registered by the Trademarks Registry implies that there wasn’t any major infringement of trademark by the Defendant.

This judgment will pave the way further in resolving issues of similar nature and clear the dilemma of the Courts while dealing with the issues pertaining to the infringement of Intellectual Property and allocation of rights.

– Team AMLEGALS, assisted by Ms. Chhavi Sompura (Intern)

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