No Exclusive Monopoly Over Geographical Term 'Malabar' In Isolation; Protection Limited To Registered Composite Marks: Kerala High Court

"The term 'MALABAR' is a geographical expression, and no exclusive proprietary right can be claimed over the said word in isolation. The registration obtained by the plaintiff does not confer monopoly over the word 'MALABAR' per se," Kerala High Court, in a significant ruling, held that while a proprietor cannot claim an exclusive monopoly over a geographical term like "Malabar" in isolation, they are entitled to protection against deceptive similarity in the overall commercial presentation of their registered composite mark.

A bench of Justice Mohammed Nias C.P. observed that for a geographical or descriptive term to be protectable, the claimant must provide cogent evidence that the expression has acquired a secondary meaning identifying a particular source in the minds of the consuming public.

The litigation arose from a dispute between the respondent, Malabar Gold Private Ltd., and the appellant, M. Manuel, who operated under the name "Malabar Fashion Jewellery." The respondent alleged that the appellant’s use of a deceptively similar mark and name for gold and diamond jewellery constituted trademark infringement and passing off. The Additional District Court II, Kozhikode, had originally decreed the suit in favor of the respondent, restraining the appellant from using the mark.

The primary questions before the court were whether an infringement action is maintainable when both parties hold registrations in different classes and whether the term "Malabar" had acquired secondary meaning. The court was also called upon to determine if the respondent had successfully proved the "classical trinity" of passing off through independent and legally admissible evidence.

Action For Infringement Maintainable Despite Defendant’s Registration In Different Class

The Court addressed the appellant’s contention that under Section 28(3) of the Trade Marks Act, 1999, no infringement action can lie between two registered proprietors. The appellant held a registration under Class 35 (services), while the respondent was registered under Class 14 (goods).

Registration In Irrelevant Class Cannot Protect Infringing Activity

The Court clarified that Section 28(3) bars infringement actions only when registrations are in the same class for identical or nearly resembling goods or services. It held that if a party holds a registration for services under Class 35 but carries on business in goods falling under Class 14, they cannot seek immunity from an infringement action brought by the Class 14 proprietor.

"The protection under Section 28(3) is available only where concurrent registrations exist in respect of the goods or services in the same class."

No Exclusive Monopoly Over Geographical Term 'Malabar' In Isolation

Justice Mohammed Nias C.P. emphasized that geographical, descriptive, and laudatory expressions remain available for bona fide use by all traders unless a secondary meaning is established. The court noted that the respondent’s own registration (Ext.A7) was subject to a specific limitation that it gave no right to the exclusive use of the word "Malabar."

Evidence Of Secondary Meaning Requires More Than Sales Figures

The Court observed that the respondent failed to produce consumer surveys, brand recognition studies, or other cogent evidence to establish that "Malabar" exclusively identified its business. It ruled that mere duration of use, turnover figures, and advertising expenditure are insufficient to confer exclusivity upon a geographical expression.

"The respondent cannot claim a monopoly over the word 'Malabar' in isolation... acquired distinctiveness must be proved through evidence demonstrating that the relevant public associates the impugned expression exclusively with a single trade source."

Tests For Deceptive Similarity: The Average Consumer Standard

While denying a monopoly over the word "Malabar," the Court upheld the finding of infringement based on the overall commercial presentation of the marks. It applied the "likelihood of confusion" test, viewing the rival marks from the standpoint of an average consumer with imperfect recollection.

Comparison Must Focus On Overall Commercial Impression

The Court found substantial similarities in the visual emphasis, lettering style, color scheme, and the housing of the word "Malabar" in a "kinked square plank." It held that the appellant’s mark was not a mere coincidence but a conscious adoption of structural features associated with the respondent’s established business identity.

"The law requires that competing marks be compared as a whole and not by breaking them into isolated components. Deceptive similarity cannot be negated merely because one component, namely 'Malabar', is geographical in nature."

Classical Trinity Of Passing Off Must Be Proved By Independent Evidence

The High Court set aside the trial court’s decree regarding passing off, finding that the respondent failed to establish the necessary ingredients of goodwill, misrepresentation, and damage. It noted that the evidence produced was limited to the testimony of the respondent's own employees and unproved promotional materials.

Interested Witnesses And Unproved Statements Insufficient For Passing Off

Citing the Supreme Court’s decision in Brihan Karan Sugar Syndicate Private Limited v. Yashwantrao Mohite, the Court held that mere production of sales figures is not enough at the stage of final adjudication. It stressed that such documents must be proved by examining independent witnesses, such as customers, dealers, or the Chartered Accountant who certified the statements.

"The Trial Court recorded its finding on goodwill without the benefit of proved evidence relating to sales... and solely on the basis of interested witnesses and the plaintiff's own publicity materials."

Subsequent Change In Logo Does Not Render Suit Infructuous

The Court rejected the appellant's argument that since both parties had changed their logos during the pendency of the suit, the cause of action had vanished. It held that rights must be adjudicated with reference to the cause of action pleaded, although subsequent developments can be considered while moulding the final relief.

Modification Of The Trial Court's Decree

In conclusion, the High Court modified the decree of the trial court. While it affirmed that the appellant’s mark was deceptively similar, it explicitly ruled that the respondent holds no monopoly over the word "Malabar" per se. The appellant was restrained from using any presentation identical or deceptively similar to the respondent's specific composite mark under Ext.A7.

The appeal was allowed in part, setting aside the finding of passing off due to lack of independent evidence while maintaining the protection of the respondent's registered device mark to prevent consumer confusion in the jewellery trade.

Date of Decision: 30 June 2026