The HC sensibly protected distinct trademarks and prevented consumer confusion, but rejected monopolizing the common or place name MALABAR without proof of the public links the word alone to the appellant
In the recent trademark news of MALABAR GOLDS the Kerala HC set aside a finding of passing off against a delhi jeweller and held that Malabar gold cannot monopolize the use of the word MALABAR , the court declined to allow exclusive rights over the ordinary word and reversed the prior passing off (to prevent someone from using a mark in which goodwill subsists in a way which operates as a misrepresentation to consumers) finding. The court gave no exclusive rights to the Malabar word simply because a large jeweller uses it, so others may use the word subject to normal trademark use.
The trial court restrained the delhi jeweller and directed him to submit all hi documents and materials relating to the business. At last the court held that he had added that the delhi jeweller has passed off his goods.
But before the HC Manuel (appellant), argued that Malabar is a geographical expression that cannot be monopolized by a single trader. And also stated that in the registration it did not had exclusive rights over the word and it did not had any evidence that it has some different independent meaning of the word.
The court said Malabar is a place name and the Malabar gold’s trademark certificate clearly says they don’t have any exclusive rights over that word alone, and they could not prove that people connect to the word Malabar by itself, there was only the full name MALABAR GOLD, the court the found that there were many brands copying it more than just a word. But when they are compared to both the brands they were found deceptive similar and it would confuse the customers.
The court agreed that there was trademark infringement, but said Malabar court didn’t prove the separate claim of passing off. Passing off needs more than just similar looking brands, the court said 3 things that the brand has a goodwill, and that the other person has mislead the customers and that because of the other person he has suffered damage. MALABAR GOLD didn’t prove any of that during the trial, they did submit the sales and invoices later in HC but that didn’t count because it was not proven properly at trial.
So, the court cancelled passing off part of the lower court’s order. It still banned Manuel from using the logo, name, label, shop design, that looks deceptive similar to the MALABAR GOLD registered trademark and from acting like his business link to them. But the court made it clear again that nobody can claim exclusive rights over the word MALABAR by itself and the appeal was partly allowed.
Last but not the least in the end, the HC sensibly protected distinct trademarks and prevented consumer confusion, but rejected monopolizing the common or place name MALABAR without proof of the public links the word alone to the appellant. Rights holders must produce clear trial ready evidence of distinctiveness and goodwill to secure broader protection.