Bombay High Court Grants Interim Relief Protecting Ahmed Perfumes' Arabic Logo, Refuses Passing Off Relief

The Bombay High Court has granted an interim copyright protection to UAE-based Ahmed Perfumes against a Mumbai perfume trader over alleged copying of its Arabic calligraphic logo but refused interim passing off relief after finding the company had failed to show goodwill and a customer base in India.

In an order pronounced on May 7, Justice Sharmila U. Deshmukh restrained Mohammed Faisal Rehman Sultan Ahmed Shamsi and his associated entities, Al Ahmed India and Ahmed Al Maghribi LLP, from reproducing the plaintiffs' Arabic calligraphic logo, holding that it qualified as an original artistic work protected in India.

The court, however, declined to stop the defendants from using the disputed word marks, holding that the plaintiffs had not established the transborder reputation and goodwill in India required to maintain a passing off claim.

Ahmed Perfumes LLC and Ahmed Al Maghribi Perfumes Trading LLC claimed that the “Ahmed Al Maghribi” brand had been in use in the UAE since 2000 and that their perfumes had acquired global goodwill, including in India through sales to Indian customers, online visibility, and promotional activities.

According to the plaintiffs, in August 2022, Shamsi approached them over email seeking appointment as their Indian distributor. When that request did not materialise, he allegedly filed trademark applications in India in September 2022 for marks including “Ahmed Al Maghribi,” which the plaintiffs said were identical to their own.

The plaintiffs alleged that Shamsi subsequently registered the domain name 'ahmedindia.com', incorporated Ahmed Al Maghribi LLP, opened a physical perfume retail outlet in Mumbai, and adopted marks corresponding to the plaintiffs' sub-brands, including “Bin Shaikh,” “Oud and Roses,” “Kaaf,” and “Marj.”

The defendants contested the claims, arguing that “Ahmed” is a common Arabic name, that their adoption was inspired by the name of Shamsi's son and grandfather, that the sub-brand names are common perfume trade terms, and that they had been using the marks in India since 2020, before the plaintiffs established a direct commercial presence here.

Examining the passing off claim, the court held that the governing principle was territoriality, as laid down by the Supreme Court in Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries. The court said a foreign claimant must show actual customers and goodwill in India, not merely reputation abroad.

The plaintiffs relied on invoices showing sales from the UAE to Indian customers. But the court found this inadequate.

“There is not a single invoice produced to demonstrate sale to customers in India so as to establish goodwill in India through customers in India,” Justice Deshmukh observed.

The court also found the plaintiffs' claim of Indian market penetration through digital advertising unconvincing, noting that India-specific operating costs on Meta and Google advertising were negligible.

“With such operating costs for India, it is difficult to accept the contention of wide scale advertisements in India,” the court said.

The court further noted that the plaintiffs had not produced any distributorship agreement or invoices showing actual sales through an Indian distributor, despite claiming to have begun direct sales in India in July 2024.

As a result, the court held that the plaintiffs had failed to make out a prima facie case for passing off.

On copyright, however, the court reached a different conclusion. It accepted the plaintiffs' case that their Arabic calligraphic logo had been created in 2015 and was entitled to reciprocal protection in India under the International Copyright Order of 1999, as the UAE is a WTO convention country.

The court found that the defendants had offered no explanation for adopting an identical artistic work and had produced no material to establish prior use or independent creation.

Holding that the impugned logo was a “slavish reproduction” of the plaintiffs' artistic work, the court granted interim relief restraining the defendants from reproducing or using the logo or any substantial imitation of it pending final disposal of the suit.