Shield Of Passing Off When Both Trademarks Are Registered

In a suit filed by Malcom India Limited, the Delhi High Court explored the legal complexities regarding passing off and trademark infringement, focusing on Section 28(3) of the Trade Marks Act, 1999. The Plaintiff, Mallcom India Limited, is primarily engaged in the business of manufacturing safety shoes under the trademarks "TIGER" for which they had secured several registrations as early as from the year 2010. The plaintiff alleged that the defendant had obtained registration for their trademark "CDTIGER" / in a dishonest and unlawful manner by adopting the dominant elements of the trademark, making it deceptively similar to the plaintiff's prior registered trademark "TIGER".

The plaintiff contended that in spite of the stylisation and addition of the letters "C" and "D", the overall impression created by the defendant's trademark is, in essence, the same which would create confusion amongst consumers as they identify the trademark "TIGER" as the plaintiff's,