Calcutta High Court
Shankar Engineering Works And Ors vs Sankar Iron Engineering Works Pvt. Ltd. … on 25 August, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
2025:CHC-OS:160
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
In IP-COM/34/2024
IA NO. GA-COM/3/2025
SHANKAR ENGINEERING WORKS AND ORS.
Versus
SANKAR IRON ENGINEERING WORKS PVT. LTD. AND ORS.
For the plaintiff : Mr. Shuvasish Sengupta, Adv.
Mr. T. K. jana, Adv.
Mr. Gopal Das, Adv.
Mr. Sourav Jana, Adv.
Judgment on : 25.08.2025
RAVI KRISHAN KAPUR, J.:
1. This is an application under Order XIII A of the Code of Civil Procedure,
1908. The suit has been filed for passing off and damages. It is
submitted on behalf of the plaintiffs that they are not pursuing their
claim for damages.
2. Briefly, the plaintiffs are engaged in the business of manufacturing and
selling various types of cast iron suction hand pumps which are used for
domestic and irrigation purposes. In the course of business, the plaintiffs
had filed an application bearing no. 487545 dated 18 March, 1988 before
the Trade Marks Registry for registration of the mark “ASHA MAYA” in
class 7. Subsequently, the said mark had been duly registered and
continues to be valid and subsisting.
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3. In or about 2016, the plaintiffs had also adopted and coined an
associate or similar mark “ASHU MAYA” in the same category of goods.
Ever since the above change, the plaintiffs have been selling their goods
under the name “ASHU MAYA”. The above goods are sold in State of West
Bengal as well as other parts of the country. With the passage of time,
the said mark has acquired tremendous goodwill and reputation and also
has impressive sale figures. As such, in view of the uninterrupted,
continuous and extensive use of the said mark “ASHU MAYA”, the goods
of the plaintiffs have acquired immense goodwill and reputation.
4. In or about July, 2024 upon searches being made in the official website
of the Trade Marks Registry, the plaintiffs came to learn that the
defendant no. 1 had filed an application being No.6207137 dated 4
December, 2023 in class 8 under the Trade Marks Act, 1999 for
registration of an identical trade mark “ASHU MAYA” as “proposed to be
used”. Later, the defendant no. 1 filed another application being
no.6470304 in class 8 for registration of the trade mark “ASHU MAYA”
(word) per se which is still pending claiming user since 4th December,
2023.
5. In such circumstances, the plaintiffs have filed the instant suit claiming
reliefs against the defendants from using the impugned mark. Despite
repeated directions, the defendants have failed to appear. The matter
has been taken up in the third call, the defendants remain
unrepresented. Affidavit of Service filed by the plaintiffs be kept with the
records. There is also no prayer for adjournment made on behalf of the
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defendants. Service report relied upon by the plaintiffs demonstrates that
the time to file the Written Statement has long expired. In such
circumstances, it is evident that the respondents are not interested in
defending the instant suit and have no defence to the same.
For convenience, both the marks are set out hereinbelow:-
Plaintiff’s Mark Impugned mark
6. On a comparison of two marks, it appears that the impugned mark is
phonetically and structurally deceptively identical to that of the plaintiffs’
mark. Admittedly, the plaintiffs are prior bona fide adopters and users of
the mark. The plaintiffs have also openly, continuously and
uninterruptedly been using their mark. By a notice dated 17th August,
2024, the plaintiff had called upon the defendants to take necessary
steps to stop using the impugned mark. The respondent refused to
accept such cease and desist notice and the same was returned with the
postal endorsement “Refused”.
7. In Laxmikant V. Patel vs. Chetanbhai Shah & Anr. (2002) 3 SCC 65 it has
been held as follows:
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8. It is common in trade and business for a trader or a businessman to
adopt a name and/or mark under which he would carry on his trade or
business. According to Kerly (Law of Trade Marks and Trade Names,
12th Edn., para 16.49), the name under which a business trades will
almost always be a trade mark (or if the business provides services, a
service mark, or both). Independently of questions of trade or service
mark, however, the name of a business (a trading business or any
other) will normally have attached to it a goodwill that the courts will
protect. An action for passing-off will then lie wherever the defendant
company’s name, or its intended name, is calculated to deceive, and so
to divert business from the plaintiff, or to occasion a confusion between
the two businesses. If this is not made out there is no case. The ground
is not to be limited to the date of the proceedings; the court will have
regard to the way in which the business may be carried on in the
future, and to its not being carried on precisely as carried on at the date
of the proceedings. Where there is probability of confusion in business,
an injunction will be granted even though the defendants adopted the
name innocently.
13. In an action for passing-off it is usual, rather essential, to seek an
injunction, temporary or ad interim. The principles for the grant of such
injunction are the same as in the case of any other action against injury
complained of. The plaintiff must prove a prima facie case, availability
of balance of convenience in his favour and his suffering an irreparable
injury in the absence of grant of injunction. According to Kerly (ibid,
para 16.16) passing-off cases are often cases of deliberate and
intentional misrepresentation, but it is well settled that fraud is not a
necessary element of the right of action, and the absence of an intention
to deceive is not a defence, though proof of fraudulent intention may
materially assist a plaintiff in establishing probability of deception.
Christopher Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states
that the plaintiff does not have to prove actual damage in order to
succeed in an action for passing-off. Likelihood of damage is sufficient.
The same learned author states that the defendant’s state of mind is
wholly irrelevant to the existence of the cause of action for passing-off
(ibid, paras 4.20 and 7.15). As to how the injunction granted by the
court would shape depends on the facts and circumstances of each
case. Where a defendant has imitated or adopted the plaintiff’s
distinctive trade mark or business name, the order may be an absolute
injunction that he would not use or carry on business under that name
(Kerly, ibid, para 16.97).
8. In Satyam Infoway Ltd. vs. Sifynet Solutions (P) Ltd (2004) 6SCC 146 it
has been held as follows.
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13. The next question is, would the principles of trade mark law and in
particular those relating to passing off apply? An action for passing off,
as the phrase “passing off” itself suggests, is to restrain the defendant
from passing off its goods or services to the public as that of the
plaintiff’s. It is an action not only to preserve the reputation of the
plaintiff but also to safeguard the public. The defendant must have
sold its goods or offered its services in a manner which has deceived
or would be likely to deceive the public into thinking that the
defendant’s goods or services are the plaintiff’s. The action is normally
available to the owner of a distinctive trade mark and the person who,
if the word or name is an invented one, invents and uses it. If two
trade rivals claim to have individually invented the same mark, then
the trader who is able to establish prior user will succeed. The
question is, as has been aptly put, who gets these first? It is not
essential for the plaintiff to prove long user to establish reputation in a
passing-off action. It would depend upon the volume of sales and
extent of advertisement.
14. The second element that must be established by a plaintiff in a
passing-off action is misrepresentation by the defendant to the public.
The word misrepresentation does not mean that the plaintiff has to
prove any mala fide intention on the part of the defendant. Of course, if
the misrepresentation is intentional, it might lead to an inference that
the reputation of the plaintiff is such that it is worth the defendant’s
while to cash in on it. An innocent misrepresentation would be relevant
only on the question of the ultimate relief which would be granted to
the plaintiff [Cadbury Schweppes v. Pub Squash, 1981 RPC 429 :
(1981) 1 All ER 213 : (1981) 1 WLR 193 (PC); Erven
Warnink v. Townend, 1980 RPC 31 : (1979) 2 All ER 927 : 1979 AC
731 (HL)] . What has to be established is the likelihood of confusion in
the minds of the public (the word “public” being understood to mean
actual or potential customers or users) that the goods or services
offered by the defendant are the goods or the services of the plaintiff.
In assessing the likelihood of such confusion the courts must allow for
the “imperfect recollection of a person of ordinary memory”
[Aristoc v. Rysta, 1945 AC 68 : (1945) 1 All ER 34 (HL)] .
15. The third element of a passing-off action is loss or the likelihood of
it.
9. The impugned mark is deceptively similar and strikingly identical to the
mark of the plaintiffs. Misrepresentation is an essential ingredient for
any action of passing off. There is every likelihood of confusion and
deception. The use of the impugned mark is also certain to dilute the
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goodwill and reputation being enjoyed by the plaintiffs. Upon filing of the
suit by an order dated 3 October, 2024, a Co-ordinate Bench had
granted an order of restraint, inter alia, restraining the respondents from
dealing with the impugned mark. Thereafter, by an order dated 14
January, 2025, this Court had confirmed the ad interim order of
injunction.
10. In the above circumstances, the plaintiffs have been able to make out a
strong case of passing off. The ingredients for maintaining an action of
passing off are admitted and incontrovertible. In view of the deceptive
similarity of the impugned mark there is every chance of confusion and
deception. The defendants are obviously trying to ride on the goodwill of
the petitioners with mala fide intent.
11. In view of the above, there shall be an order in terms of prayers (a) and
(b) of the Notice of Motion.
12. With the above directions, GA-COM/3/2025 stands allowed. As a
consequence, IP-COM/34/2024 stands decreed, in terms of the above.
13. The Department is directed to draw up the decree expeditiously.
(RAVI KRISHAN KAPUR, J.)
S.Bag/Arsad
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