Trade Mark Act | No Statutory Bar On Registrability Of Names Of Hindu Deities: Bombay High Court

“Once Dishonest Adoption Is Established, Injunction Must Follow”, Bombay High Court granted an interim injunction against the Defendants from using the mark “Siyaram” as part of their corporate name or as a trade mark. Justice Arif S. Doctor held that the Plaintiff, as a long-standing registered proprietor of the word mark “SIYARAM”, had established a prima facie case of both infringement and passing off, while the Defendants’ adoption of the identical mark was “plainly dishonest”.

The judgment addresses significant legal issues under the Trade Marks Act, 1999, including statutory rights of registered proprietors, the defence of prior use without assignment of goodwill, the legitimacy of using names of Hindu deities, the effect of delay and acquiescence in IP suits, and the limits of registration under Section 28(3) when the mark is a composite label.

Plaintiff’s Longstanding Use and Statutory Rights Recognised

The Plaintiff, Siyaram Silk Mills Ltd., had been using the trade mark “Siyaram” since 1977–78, even prior to its incorporation in 1978. Its earliest trade mark registration dated back to 1984, with the registration of the word mark “Siyaram” in 1986. The Court held that these registrations, having never been challenged by the Defendants, carried with them “a strong presumption of validity”, citing the Full Bench ruling in Lupin Ltd. v. Johnson & Johnson (2015 MhLJ 501). Justice Doctor categorically ruled:

“The Defendants have admittedly not impugned any of these registrations... Thus, as held by the Full Bench of this Court in Lupin, a strong presumption of validity attaches to a registered trade mark.”

Accordingly, the Plaintiff was held to be entitled to statutory protection under Sections 28 and 29 of the Trade Marks Act, 1999.

Prior Use Claim Without Assignment Is Untenable

The Defendants argued that the father of Defendant Nos. 2 and 3 had been operating a business since 1992 under the name “Siyaram Fashion Store”. However, the Court found that this claim was devoid of legal merit. Not only was there no documentary evidence of any assignment of the trade mark along with its goodwill, but the business was, in fact, named “Mangaldeep Showroom”, with “Siyaram Fashion Stores” appearing only in brackets. The Defendants' own documents revealed that the store sold multiple brands, including Siyaram, thereby negating exclusivity of trade mark use.

Justice Doctor observed: “Reliance on prior use by a predecessor is permissible only where there is clear, cogent, and reliable evidence of assignment of the trade mark along with goodwill... In the absence of any such material, the Defendants would be disentitled from claiming any benefit on the basis of alleged prior user.”

The Court relied on its previous judgments in Yogi Ayurvedic Products Pvt. Ltd. v. Vaishali Industries and Lords Inn Hotels v. Vikas Seth to reiterate that continuity of goodwill and title is essential to assert prior user rights.

Entire Mark Subsumed—Dishonest Adoption Clear

The Court was unequivocal in its conclusion that the Defendants had adopted the mark “Siyaram” dishonestly, with full knowledge of the Plaintiff’s brand reputation. The Judge noted that the Plaintiff’s brand had become iconic, with a national presence and tagline “Come home to Siyaram” etched in public memory.

In powerful terms, Justice Doctor held: “The Defendants subsumed the entirety of the Plaintiff’s mark into their corporate name and trade mark... This adoption is clearly conscious and with full knowledge of the Plaintiff’s mark, and thus plainly dishonest.”

Once dishonesty was established, the law mandates injunctive relief, as per settled jurisprudence in Assam Roofing v. JSB Cement LLP, Volvo v. Volvo Steels, and Midas Hygiene Industries v. Sudhir Bhatia. The Court also rejected the argument that no confusion had been proved, holding:“Even though the Plaintiff has not set out specific instances of confusion, the likelihood of confusion is imminent... customers would, on seeing ‘Siyaram’ in the Defendants’ mark, immediately associate the same with the Plaintiff’s goods.”

Honest Adoption Is No Defence to Infringement or Passing Off

Even assuming, for argument’s sake, that the adoption was innocent, the Court reiterated the settled principle that honest adoption is irrelevant where infringement and passing off are otherwise established. Quoting precedents including F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners, Kirloskar Diesel Recon v. Kirloskar Proprietary Ltd., and Laxmikant Patel v. Chetanbhai Shah, the Court observed:

“The law is well settled that honesty of adoption is irrelevant once infringement or passing off is otherwise established... a Defendant cannot use a corporate or trading name that is identical with or deceptively similar to a registered trade mark.”

Composite Mark Registration No Shield Against Passing Off

The Defendants sought to rely on their registration of the composite label “Apricott – a Product of Stanford Siyaram Fashions Pvt. Ltd.” to claim protection under Section 28(3). The Court swiftly rejected this defence:

“The Defendants do not hold registration for the word mark ‘Siyaram’... Registration of a composite mark does not confer exclusivity over its individual components. Section 28(3) affords no defence to an action for passing off.”

The Court referred to Siyaram Silk Mills Ltd. v. Shree Siyaram Fab Pvt. Ltd. and Marico v. Zee Hygiene to hold that where dishonesty is established, the presence of a composite mark or separate registration does not provide immunity.

“Siyaram” Not Barred Merely Because It’s a Deity’s Name

Rejecting the argument that “Siyaram” being a name of a Hindu God could not be monopolised, the Court observed:

“There is no provision in the Trade Marks Act, 1999, prohibiting registration or enforcement of marks comprising names of Hindu Gods or Deities... ‘Siyaram’ bears no descriptive nexus with textiles and has acquired distinctiveness through decades of use.”

The Court found the defence of publici juris unsubstantiated and noted that none of the judgments cited by the Defendants (such as Lal Babu Priyadarshi, OM Logistics, GEBI, or Bhole Baba Milk) were applicable to the facts at hand. The Court also held that the Defendants were estopped from arguing lack of distinctiveness, having themselves sought registration incorporating “Siyaram”.

Delay and Acquiescence Rejected—Dishonest Adoption Overrides Laches

The Defendants extensively relied on procedural delays and alleged inaction on the part of the Plaintiff to defeat the interim injunction. However, the Court decisively held that in cases involving dishonest adoption of trade marks, delay is irrelevant. Citing Midas Hygiene, Charak Pharma, Sun Pharma, and Anglo-French Drugs, Justice Doctor observed:

“Where adoption is found to be dishonest, delay pales into insignificance... Acquiescence requires a positive act on the part of the Plaintiff by which the Defendant has been encouraged to use the impugned mark. No such act is even pleaded.”

Court Grants Interim Injunction—Use of “Siyaram” Prohibited

Upon examining the facts, legal submissions, and applicable precedent, the Bombay High Court granted the Plaintiff’s Notice of Motion and issued an interim injunction:

“The Notice of Motion is allowed in terms of prayer clauses (a) and (b). The balance of convenience lies clearly in favour of the Plaintiff... continued use by the Defendants would dilute the Plaintiff’s well-established mark and cause irreparable injury.”

Prayer clauses (a) and (b) effectively restrain the Defendants from using “Siyaram” in any capacity, whether as part of a corporate or trading name, or as part of a trade mark in relation to textile goods.

Date of Decision: January 13, 2026