Malabar Gold Cannot Monopolise 'Malabar'; Kerala High Court Sets Aside Passing Off Finding Against Delhi Jeweller

The Kerala High Court has partly allowed an appeal filed by the proprietor of Delhi-based Malabar Fashion Jewellery, setting aside a trial court's finding that the business had passed off its goods as those of Malabar Gold.

It, however, retained the injunction restraining the jeweller from using a deceptively similar trademark and clarified that no exclusive rights can be claimed over the geographical expression "Malabar" by itself.

Justice Mohammed Nias C.P. held that Malabar Gold's trademark registration itself was subject to a disclaimer over the word "Malabar".

The court found there was neither any pleading nor evidence that the word had independently acquired a secondary meaning. At the same time, it concluded that the competing marks were deceptively similar when viewed as a whole. It therefore upheld the finding of trademark infringement.

"The fact that the registration itself was granted subject to a limitation in respect of the word 'Malabar' demonstrates that, as on the date of registration, no finding of acquired distinctiveness or secondary meaning had been made in favour of the respondent. Consequently, I hold that the respondent cannot claim a monopoly over the word 'Malabar' in isolation.", the court observed. 

The appeal arose from a 2015 judgment of the Additional District Court, Kozhikode, in a suit filed by Malabar Gold against M. Manuel, proprietor of Malabar Fashion Jewellery. Manuel runs the business from Mohan Singh Market in Delhi.

The trial court had restrained him from using the trade name and logo. It had also directed him to surrender labels, brochures, advertisements and other material bearing the infringing mark. In addition, it held that he had passed off his goods as those of Malabar Gold.

Before the High Court, Manuel argued that "Malabar" is a geographical expression that cannot be monopolised by any single trader. He also contended that Malabar Gold's registration did not confer exclusive rights over the word and that there was no evidence showing it had acquired an independent secondary meaning.

The court accepted those submissions in part. It noted that "Malabar" is a geographical expression and that the registration certificate itself carried a limitation denying exclusive rights over the word. It further observed that Malabar Gold had neither pleaded nor proved that "Malabar", independent of the composite mark "Malabar Gold", had acquired distinctiveness through use.

The court nevertheless found that the rival marks were deceptively similar. After comparing their lettering style, colour scheme, logo and overall commercial presentation, it concluded that the similarities extended beyond the shared use of the word "Malabar".

"The resemblance is not confined to a single word but extends to the overall commercial presentation, design, style, and get-up.", the court held.

While affirming the finding of trademark infringement, the court took a different view on the passing-off claim. It observed that deceptive similarity by itself is insufficient to establish passing off. A claimant must independently prove goodwill, misrepresentation and resulting damage.

The court found that Malabar Gold had failed to establish those ingredients before the trial court. Although the company later produced material relating to its turnover and advertising expenditure before the High Court, those documents had not been proved during the trial and could not support the decree on passing off.

"Goodwill and reputation being questions of fact, they must be established by cogent and independent evidence.", it observed.

Holding that the essential ingredients of passing off had not been proved, the court set aside that part of the trial court's decree. It modified the decree by restraining Manuel from using any mark, label, logo, or trade dress deceptively similar to Malabar Gold's registered trademark.

The court also restrained him from carrying on business in a manner suggesting an association with Malabar Gold. At the same time, it clarified that no exclusive rights can be claimed over the word "Malabar" in isolation. The appeal was allowed in part.