Asr Market Ventures Private Limited vs Fitship Private Limited

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
st
% Date of Decision: 31 August, 2026
# CNR No. DLHC010194022025
+ C.O. (COMM.IPD-TM) 93/2025

ASR MARKET VENTURES PRIVATE LIMITED .....Petitioner
Through: Ms. Abhilasha Nautiyal, Mr. Vignesh
T. Raj and Mr. Tarun Tripathi, Advocates.

versus

FITSHIP PRIVATE LIMITED & ANR. .....Respondents
Through: Ms. Vindhya S. Mani and Mr.
Kartikay Singhal, Advocates for R-1.
Ms. Arunima Dwivedi, CGSC with Ms. Himanshi
Singh, Advocate for R-2.

# CNR No. DLHC010194902025
+ CS(COMM) 320/2025
ASR MARKET VENTURES PRIVATE LIMITED .....Plaintiff
Through: Ms. Abhilasha Nautiyal, Mr. Vignesh
T. Raj and Mr. Tarun Tripathi, Advocates.

versus

FITSHIP PRIVATE LIMITED .....Defendant
Through: Ms. Vindhya S. Mani and Mr.
Kartikay Singhal, Advocates.

CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J.
1. This judgment will dispose of the rectification petition filed by the
Petitioner/ASR Market Ventures Private Limited against Respondent
No.1/Fitship Private Limited being C.O. (COMM.IPD-TM) 93/2025 as also
I.A. 9122/2025 in CS(COMM) 320/2025 filed under Order XXXIX Rules 1
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:02.09.2026
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and 2 CPC for interlocutory injunction. For the sake of convenience,
Petitioner is referred to as ‘ASR’ and Respondent No. 1 is referred to as
‘Fitship’, hereinafter.
C.O. (COMM.IPD-TM) 93/2025 and I.A. 9159/2025
2. By this petition, ASR seeks cancellation of registration of the
impugned mark
bearing Registration No. 5154387 in Class
30, registered in favour of Fitship with a further direction to Respondent No.
2/Registrar of Trade Marks to remove the entry of the mark from the
Register of Trade Marks.
3. To the extent relevant, case of ASR is that it is a private limited
company incorporated on 05.03.2012 and is engaged in fitness and lifestyle
business, offering a comprehensive platform providing wellness services and
products and running a network of gyms, fitness centres and personalized
fitness solutions, besides offering access to expert nutritionists and doctors,
AI-led coaching and customized wellness plans, thereby revolutionarizing
the health and fitness regime. ASR’s services and products are offered under
different and distinct trademarks including FITFEAST, FITPASS,
FITCOACH, FITHEAL, STOGA etc. Through its fitness portal
www.fitpass.co.in , dating back to 2015 and mobile app based platform, ASR
inter alia offers online membership pass for accessing over 8,100 fitness
centres, gyms, fitness studios and yoga studios spanning over 75 cities
across India, wherein members have the flexibility to choose from over
2,25,000 workout sessions, ranging from yoga to swimming to marshal arts
and pilates etc. ASR’s innovative approach and quality services, backed by
thorough research and investments from renowned institutional investors
such as Franchise India Holdings, Frost International, Shooting Star and
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Mumbai Angels, has made ASR a leader in fitness and lifestyle industry.
The diverse range of specialized services/products provided by ASR, as
detailed in the petition, are as follows:-
“A. FITFEAST : Nutrition and healthy food related services, including
customized meal plans with recipes, wellness plans, nutritionist services,
wellness information and tracking tools such as meal log, water tracker,
and calorie counter.
B. FITCOACH : AI-driven fitness coaching and workout companion.
C. FITPASS-TV : At-home live workout sessions led by expert trainers
from across the globe.
D. FITHEAL : Access to doctor e-consultations, health check-ups, and e-
pharmacy cash vouchers.
E. FITSHOP : One stop shop for premium fitness equipment and high-
quality nutritional supplements.
F. Goods offered in collaboration with third parties, such as the 'Noise x
Fitpass Pulse Grand 3' smart watch which includes a membership to, inter
alia, the Petitioner's FITFEAST.
G. The Petitioner is also using its trademarks such as BFF and STOGA for
goods such as food products (makhana and sattu flour), fitness equipment
and yoga mats.”

4. It is averred that ASR coined and adopted the trademark FITFEAST
in 2017 and has used the mark since then for providing nutrition and healthy
food related services, including customized meal plans with recipes,
wellness plans, nutritionist services, wellness information and tracking tools
such as meal log, water tracker and calorie counter. FITFEAST is an
invented word with no dictionary meaning and being arbitrary in relation to
the services for which it is used, the mark is entitled to high degree of
protection. Owing to long, continuous and extensive use of the FITFEAST
mark, it has cemented its place in the minds of customers and members of
trade as originating from ASR and none else.
5. It is stated that ASR provides extensive information about its
FITFEAST services, including pricing availability and key features on its
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website www.fitpass.co.in and its mobile app, available on Android and iOS
platforms. FITPASS app has gained widespread popularity with over six
million downloads and an impressive 4.5 star rating based on over 22,300
reviews on the Google Play Store. FITFEAST mark prominently features
across the website and mobile app and additionally, ASR also offers its
services under the FITFEAST mark on third party e-commerce platforms,
including Amazon.in, thereby expanding accessibility for users. Over the
years, ASR has entered into many collaborations with different entities
offering its services including those under the FITFEAST mark, such as
Agreements in 2019 with Bank of Baroda and State Bank of India as also
joint ventures with Aditya Birla Health Insurance, Amway, Air India,
Vistara Airlines, Advantage Club and ICICI Bank etc.
6. It is stated that the success and popularity of ASR’s FITFEAST
services is evident from the steady and continuous increase in number of
users over the years and consequently, the sales turnover albeit ASR is
unable to bifurcate the revenue earned from the services rendered under
FITFEAST from the overall turnover, since separate invoicing is not done.
The advertising, marketing and promotional expenses are also indicators of
the goodwill and reputation garnered by ASR over the years and the details
of eligible users, revenue earned and promotional expenses are as follows:-


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7. It is stated that ASR’s services have been consistently recognized by
peers in the fitness industry as also customers and lauded in many popular
business magazines. Illustrative list of awards received includes ET Now
Best Brands 2024; Mobile Health Application Award at the IHW Digital
Health Awards 2024; and Times 40 under 40 Awards 2023. ASR and its
trademarks have featured in leading publications, newspapers such as Times
of India as also on channels such as ABP News, CXO Today, Media News
4U. ASR promotes its services under FITFEAST marks through robust
online and social media presence and in addition to website
www.fitpass.co.in , ASR also operates official accounts, channels and
handles across various social media platforms, including YouTube,
Instagram, Facebook, X and LinkedIn, where the FITFEAST mark is
prominently displayed and advertised. ASR has a substantial online presence
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with over 79,0000 followers on Facebook, 73,500 on YouTube, over 32,000
on Instagram, over 2,600 on X and over 24,000 on LinkedIn. FITFEAST is
therefore synonymous and exclusively associated with ASR by members of
public and consumers. To secure statutory protection, ASR has filed
trademark applications seeking registration of FITFEAST mark, which are
currently pending and details are as follows:-

8. It is stated that Fitship is the registered proprietor of the mark
in Class 30 and registration was granted on 05.04.2022.
ASR learnt of the dishonest adoption and use of nearly identical/deceptively
similar mark by Fitship in 2024 but the extent of use was not known and
hence investigation was conducted, which revealed listings of its high
protein snacks including protien sachet, peanut butter, protien chips, dessert
protien bar and whey protien shake under the
mark on third
party platforms, which were being marketed as healthy snacks. Fitship was
also found advertising, promoting and offering for sale its products on its
own website www.fitfeast.in and third party e-commerce platforms such as
Amazon.in, Flipkar, Zepto, JioMart and Meesho. A WHOIS search of the
domain name www.fitfeast.in revealed that it was registered on 09.09.2021
through Hosting Concepts B.V. d/b/a Openprovider albeit the registrant
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details were and are masked by the Domain Name Registrar. Fitship has also
filed trademark application for a device mark
in Class
30 on 24.02.2025 on ‘proposed to be used’ basis, which is pending. Details
of impugned registration are as follows:-

Contentions on behalf of ASR:
9. ASR is an honest and prior adopter and owner of the coined and
arbitrary trademark FITFEAST and is aggrieved by the wrong entry of the
impugned mark
on the Register of Trade Marks, without
sufficient cause and is hence, the ‘person aggrieved’ as envisaged under
Section 57 of the Trade Marks Act, 1999 (‘1999 Act’) and entitled to file the
present petition. Impugned registration is liable to be cancelled as being
violative of Section 11(3) of 1999 Act. The mark FITFEAST was adopted in
2017 and has been used since then in relation to nutritional and healthy food
related services, which include customized meal plans, nutritionist services,
wellness information, tracking tools as also gyms and gym related services.
Having been in the same industry of health and fitness, Fitship was aware of
the goodwill and reputation of ASR and the mark FITFEAST at least from
2017 and yet it chose to adopt the mark
, which is
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phonetically identical and visually deceptively similar to ASR’s FITFEAST
mark and even obtained registration on 30.09.2021 on a ‘proposed to be
used’ basis, in violation of provisions of 1999 Act.
10. Owing to prior adoption and long, extensive and uninterrupted use of
the FITFEAST mark, ASR has acquired common law rights in the said mark
and is entitled to prevent third parties from using an identical or a
deceptively mark in relation to identical, similar and/or allied and cognate
services/goods. ASR has garnered enviable goodwill and reputation in the
FITFEAST mark, which is demonstrated by substantial revenues generated,
promotional expenditure incurred, social media presence, awards received,
collaborations entered into. Impugned products in respect of which Fitship
has obtained registration are ‘snack food products specifically including
extruded products, bakery products and savouries, chips (cereal products),
chocolates, flour and preparations made from cereals; bread, pastries and
confectionery, bakery products’ , which are closely related to the services
offered by ASR under the FITFEAST mark being nutrition and healthy food
related services, including customized meal plans with recipes, wellness
plans, nutritionist services, wellness information and tracking tools such as
meal log, water tracker and calorie counter. ASR also sells health related
products under other marks and it is common knowledge that persons
seeking health and wellness solutions, not only avail fitness services of
gyms, pilates etc. but also follow nutrition and dietary plans and thus on
seeing FITFEAST mark on the impugned products, will associate them with
ASR. Therefore, owing to rival marks being deceptively similar and rival
services and products being allied/cognate, confusion is inevitable. Fitship
has adopted the impugned mark only to come close to ASR to encash on its
immense goodwill and reputation. This misrepresentation to members of
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public that the goods sold by Fitship have an association with ASR is
causing irreparable damage to ASR’s reputation and goodwill and amounts
to passing off.
11. Likelihood of a false impression of association being created between
the products of Fitship and ASR’s fitness and wellness services is further
exacerbated by the fact that: (a) Fitship has adopted the nearly identical
mark subsequent to the adoption of FITFEAST by ASR and much after it
has built immense and substantial reputation and goodwill; (b) both parties
market their respective goods/services to the same demographic of health
conscious consumers including fitness enthusiasts and the trade channels
such as Amazon.in and online promotional platforms involving social media
influencers etc. are common; (c) as per prevailing market trend, many third
party entities provide both health and wellbeing services and dietary
products under a single brand; and (d) ASR constantly enters into
collaborations and joint ventures and consumers would assume that Fitship’s
products under FITFEAST are a result of another collaboration of ASR.

12. Dishonest adoption and use of
mark by Fitship is
resulting in significant dilution of ASR’s FITFEAST mark as also loss of its
distinctive character. The impeccable reputation enjoyed for past eight years
is now at risk of being injured and this is evident from the Instagram search
result ‘#FITFEAST’, which yields mixed results for ASR’s services and
Fitship’s goods. Fitship has no plausible reason or justification for adopting
a nearly identical mark, save and except, to pass off its goods. This is a
classic case of passing off and actionable under common law and
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registration of the mark
ought to be cancelled since Section
11(3) of 1999 Act proscribes registration of a mark, the use of which is
liable to be prevented by virtue of any law, in particular, the law of passing
off protecting an unregistered mark used in the course of trade.

13. The impugned registration also falls foul of Section 11(1) of 1999
Act. ASR’s FITFEAST mark is an ‘earlier trade mark’ owing to its prior
adoption and continuous use since June, 2017. Fitship filed its application
for registration of its mark only on 30.09.2021 on ‘proposed to be used’ and
thus admittedly, the adoption and use of the impugned mark is post that of
ASR’s adoption and use. The mark
is deceptively similar
to ASR’s FITFEAST mark and the services offered by ASR under the said
mark and the high protein snack products meant for good health and
wellness sold by Fitship are related and/or have a trade connection and/or
are allied/cognate. Thus, there is likelihood of confusion amongst members
of public as also likelihood of association of the impugned mark with
ASR’s earlier trade mark FITFEAST and
ought not to have
proceeded for registration and its registration be cancelled under Section
11(1) of 1999 Act, to obviate any further chances of confusion or
association.
14. Fitship has adopted a deceptively similar mark being well aware of
the repute enjoyed by ASR in its FITFEAST mark, only to establish
association or a commercial nexus with ASR and encash on the goodwill
and reputation for unlawful gains. This is ‘bad faith’ adoption and the
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impugned mark is liable to be removed from the Register by virtue of
provisions of Section 11(10)(ii) of 1999 Act. Additionally, the impugned
mark is vulnerable owing to provisions of Section 9(2)(a), which explicitly
bars registration of any trademark which is of such nature as to deceive the
public or cause confusion. There is significant confusion amongst members
of public due to use of the deceptively similar mark by Fitship for
allied/cognate products and as a matter of fact, the Instagram search result
for ‘#FITFEAST’ is already yielding mix results. Potential customers are
being deceived into believing that health products offered under the
marks emanate from the house of ASR or have an
association or are sold under a new collaboration between ASR and Fitship.
Contentions on behalf of Fitship:
15. Rectification petition filed by ASR is misconceived and abuse of
process of law and deserves to be dismissed. Fitship is a dynamic and fast-
paced entity engaged in selling, marketing, distributing of and trading
generally in health-focused snack products having high protein content and
is driven by strong commitment towards promotion of nutrition and general
health and wellness.
mark was bona fidely adopted by
Fitship and the adoption has its genesis in the personal experiences of its
founder Mr. Aditya Poddar, who through sheer grit and determination
underwent a personal health transition in 2016 and his journey through
weight loss sparked a deep interest in nutrition, more particularly, role of
proteins in a diet. Over a course of time, Mr. Poddar identified that there was
a growing demand for health-friendly snacks amongst consumers, who were
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looking for a balance between high protein content and taste and hence, in
2021 he conceived the idea of starting a company which would cater to this
demand and this led to creation of Fitship Private Limited and adoption of
the mark
. Today, Fitship offers a diverse portfolio of
products including protein bars, chips, shakes and peanut butters, all of
which are healthy options and align with dietary needs. Fitship operates at
the intersection of health, convenience and taste, targeting a wide
demographic that includes fitness enthusiasts, athletes and working
professionals.
16. Fitship has been using the
mark extensively and
openly for its business, so much so that the mark has become synonymous
with Fitship and the public associates the mark with Fitship and none else.
ASR wrongly alleges that adoption of the impugned mark is dishonest or
mala fide . The decision to adopt the mark is a conscious decision taken after
significant research, precaution, care and due diligence. Prior to
commencement of the operations, the founder conducted comprehensive due
diligence to ensure that use of the FITFEAST (device) trademark does not
impinge on any third party’s intellectual property rights. Specifically, search
was conducted on publicly available data base of the Trade Marks Registry
for any third party trademark registrations or pending applications for the
FITFEAST marks. Search result revealed that there was no registration or
even a pending application for any FITFEAST mark, including that of ASR,
in any class of goods or services relevant to the business of Fitship or even
associated with the food and nutrition sector. Furthermore, an independent
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search to determine availability of the domain name constituting the
FITFEAST trademarks on public search platforms such as WHOIS etc., was
also undertaken, which did not reveal any such domain name registration. In
fact, as an exercise of abundant caution, an independent Google search
through Google powered tools such as Google Trends was also conducted to
ensure that FITFEAST was not in use even otherwise by any third party and
the data reflected that up until 2021, the search volume for the term
‘FITFEAST’ on Google was negligible. It was only after this entire exercise
was complete that Fitship applied for registration of the mark

on 30.09.2021 in Class 30 on ‘proposed to be used’ basis and registration
was granted.
17. Dishonesty in adoption of FITFEAST mark, if any, is on the part of
ASR, who was not using FITFEAST as a trademark till Fitship’s business
flourished, as all business operations of ASR were under its trademark
FITPASS. Interestingly, a significant uptick in search traffic occurred near
2022-2023, coinciding with proliferation of business of Fitship under the
FITFEAST marks and prior thereto, there was negligible search volume of
the word, indicative of minimal, if any, consumer attention towards any
offering under the term ‘FITFEAST’, including of ASR. At the time of
adoption of the mark by Fitship, there was no goodwill, reputation or brand
recognition in the trademark FITFEAST of any third party including ASR,
which could have been a hurdle in the adoption of the said mark by Fitship.
Moreover, the list of related topics and queries on Google Trends, both
pertain to products that are advertised, distributed and sold by Fitship
exclusively under the FITFEAST trademark, such as peanut butter i.e.,
‘Fitfeast-Health Food Store in Gurgaon’ . Clearly, this is indicative of
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goodwill and reputation of Fitship. Significantly, Mr. Poddar did not come
across any standalone use of the mark FITFEAST or any formative mark to
suggest prior adoption of the mark by any party, least of all ASR. In light of
all this due diligence prior to adoption of the mark, it can hardly be urged by
ASR that adoption of the impugned mark is dishonest and/or in bad faith and
hence, Section 11(10)(ii) of 1999 Act is not attracted in the instant case.
18. Fitship conceived the unique and distinctive device

in 2021 and began using it thereafter continously and extensively and today,
the brand has become a household name in the segment of nutritional
snacks, particuarly, for protien-based products. As a testament of the brand
awareness among public and the expanse of its portfolio, the trademark has
been registered and grants statutory protection to Fitship. The domain name
www.fitfeast.in is also registered since 09.09.2021 and the website provides
the consumers a one-stop window to peruse and purchase the products under
the FITFEAST marks. ASR took no steps for registration of its FITFEAST
marks for 8 years, fully conscious of the fact that the mark was not used and
that ASR’s identity, trademark or brand is FITPASS and it was only after
the registration of Fitship’s mark and its extensive use generating huge
goodwill, that ASR applied for registration on 31.03.2025.
19. The contention that registration of the impugned mark violates
Section 11(3) of 1999 Act is misplaced. ASR has been unable to make out a
case of passing off. In order to succeed in a claim for passing off, the trinity
test i.e., presence of goodwill and reputation, misrepresentation and damage
to goodwill and reputation, has to be satisfied, however, ASR has failed
miserably in establishing the three ingredients. Mere reputation in a mark is
not sufficient for passing off and goodwill, which is the advantage of a good
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name and connection of a business, must also be shown to exist. Documents
placed on record by ASR do not demonstrate that it used the mark
FITFEAST as a trademark or in a manner so as to generate any independent
goodwill or reputation thereunder and to the contrary evidence that ASR has
consistently advertised, promoted and predominantly used the mark
FITPASS for its services and that use of FITFEAST is so minimal and
mostly with FITPASS that it does not function as a source identifier, which
is the function of a trade mark. The use of FITFEAST is far from achieving
a position where a person of average intelligence and imperfect recollection
would recollect FITFEAST and/or associate any independent goodwill,
reputation or brand significance with the ASR brand per se . Moreover, there
are no standalone rights of ASR in the generic prefix ‘FIT’ and therefore, it
cannot restrain any other third party from using the same as part of its mark,
absent any secondary significance in it.
20. ASR has provided figures of sales and promotional expenditure,
however, none of these relate individually to FITFEAST and admittedly,
cover the entire business under the mark FITPASS. It is trite that goodwill
accrued over the entire business cannot be presumed to be goodwill
associated with a specific mark in the absence of standalone recognition.
FITFEAST, whenever scantly referred for ASR’s services, is under the
umbrella of FITPASS as part of subscription plans or advertisement
campaigns. There is lack of substantial material on record reflecting
independent advertisement, customer reviews or social media presence
exclusively with respect to FITFEAST and clearly, customers are never
directly exposed to the FITFEAST mark. The third party e-commerce
platform listings also relate to FITPASS as the source identifier and the
alleged user data of FITFEAST is unsubstantiated with documentary
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evidence. ASR’s business model depends purely on customer’s logins to
FITPASS service subscription and even the social media presence and
advertising media documents placed on record, predominantly show user of
FITPASS trademark and similar pattern is visible in Instagram and
Facebook platforms. It was only in the year 2024 that ASR became active in
using FITFEAST when realisation dawned that Fitship had garnered
immense reputation and goodwill. Furthermore, even the invoices on record
are issued under the mark FITPASS or some under FITSHOP but none is
under FITFEAST. It is trite that a sporadic or intermittent use is not enough
to prove goodwill and reputation of a threshold required to restrain a third
party in a claim of passing off. Sans existence of goodwill and reputation in
FITFEAST mark, no case of passing off is made out.
21. ASR has also failed to establish the alleged misrepresentation by
Fitship. The mark was adopted after due diligence including independent
search on Google and website of Trade Marks Registry as also after
verification of online and social media presence of any similar mark. At the
time of adoption of the FITFEAST mark by Fitship in 2021, there existed no
standalone use of FITFEAST mark on any website, social media account,
customer review etc., least of all of ASR, showing the mark as a source
identifier with any goodwill or reputation and therefore, there was no need
or reason for Fitship to even attempt to misrespresent to the public that its
products had any association with ASR as the objective of misrepresentation
is to encash on other party’s goodwill and reputation.
22. ASR has failed to establish any likelihood of confusion amongst
members of public, which is the fallout of misrepresentation by erring party
in a claim for passing off, owing to the alleged deceptive similarity between
the two marks of the rival parties. Courts have consistently laid down
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parameters to determine likelihood of confusion viz.: (a) nature of marks;
(b) degree of resemblance; (c) nature of goods and services; (d) nature,
character and performance of rival offerings; (e) class of
purchasers/consumers; and (f) mode of purchasing. Without prejudice to the
contention that ASR has never used FITFEAST in a trademark sense, none
of these factors stand satisfied in present case. The rival marks are not
deceptively similar and bare look shows that the overall commercial
impression is materially different inasmuch as Fitship’s mark is a stylized
and artistic device mark with distinctive visual elements, font, layout and
trade dress, whereas ASR’s mark is a simplicior word mark. Nature and
commercial character of services on one hand and products on the
other hand are different. ASR uses the mark FITFEAST for its digital
and platform-based services, including access to nutritionists, dietary
guidance and wellness tracking tools, while Fitship uses the mark
exclusively in relation to packaged food and protein snack products. ASR’s
services are accessed through subscriptions or digital platforms under the
brand FITPASS, whereas Fitship’s goods are purchased directly under the
FITFEAST mark, both online and through independent retail outlets and
there is no connection or overlap in the trade channels. ASR’s engagement
on Amazon.in occurred as late as in 2024. The mode of access to FITFEAST
services is exclusively through FITPASS subscription pass online and/or
through FITPASS app and consumers are discerning and well informed and
know what health and wellness plans/services they have to subscibe to
and/or whether the protein snacks of Fitship have any connection with ASR
and there is no scope of confusion.
23. The third essential ingredient of the tort of passing off i.e damage is
also not substantiated in the absence of use of FITFEAST as a trademark
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and existence of goodwill therein. Documents on record demonstrate the
enviable reputation and goodwill built by Fitship, owing to continuous and
extensive use of the mark
over the last almost five years by
focusing on the quality and effectiveness of high protien and tasteful snacks
and increase in its reach and presence in the market through strategic
marketing and effective distribution techniques. The mark FITFEAST is
today associated with Fitship alone and the company has built a loyal and
ever-growing customer base. The substantial goodwill, which the brand has
accumulated since its inception can be seen from the steady and phenomenal
increase in promotional expenditure as also sales figures from 2021-2022 to
financial year 2025 (until April), as below:-




24. The exponential growth of the goodwill in FITFEAST mark of Fitship
is corroborated by endorsement of the brand by Mr. Axar Patel in 2025, the
celebrated Indian cricketer who has also joined in as an investor. Several
other professionals including Mr. Apurva Chamariya, Mr. Tarun Bhargava,
Mr. Karan Jinal are part of ACLR8, an investor group, which has backed
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Fitship and invested in it. A testament to the brand value attained by Fitship
is that the company closed its seed-funding round, raising over Rs. 5 crore at
a valuation exceeding Rs. 26 crore. Fitship’s proactive market presence is
also evident through its participation in various industry exhibitions and
trade fares and engagements in market surveys as also wide media coverage
of its products under the FITFEAST trademarks in national newspapers such
as Times of India, Business Standard, The Print, The Tribune etc. With this
level of goodwill attained by Fitship, it cannot even be comprehended that
Fitship needs to encash on ASR’s goodwill and resultantly, there can be no
damage to its goodwill and none has been shown, even remotely. Once the
ingredients of passing off are not made out, case of ASR for cancelling
registration of Fitship’s mark under Section 11(3) of 1999 Act fails.
25. ASR has equally failed in substantiating its case under Section 11(1)
of 1999 Act. Firstly, ASR has not specifically pleaded as to whether it relies
on sub-Sections (1)(a) or (1)(b) of Section 11 and even otherwise, no case is
made out under either of the two provisions. In fact, ASR is not even
entitled to invoke the provisions of Section 11, which is premised on rights
flowing from an ‘earlier trademark’ inasmuch as ASR has not obtained any
trademark registration in any class for the mark FITFEAST nor it falls
within the purview of an applicant under Section 18 of 1999 Act.
Additionally, there is no similarity in the services of ASR and the products
of Fitship so as to cause any confusion. ASR has never used FITFEAST in a
trademark sense as a source identifier and predominantly uses FITPASS for
its business, invoices as also on social media platforms and on its own
website. The mere fact that both parties use online platforms or have an
overlap of health-conscious consumers cannot by itself lead to a conclusion
of likelihood of confusion and none has been shown, save and except, a
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solitary Instagram post which shows mixed search results. The third party
collaborations on which much has been emphasised by ASR, significantly
show use of the trademark FITPASS and not FITFEAST and therefore, no
challenge can be made to Fitship’s registration in FITFEAST under Section
11(1) of 1999 Act and most of Agreements are post-adoption and
registration of the mark by Fitship. Per contra, Fitship has placed on record
enough material to substantiate its honest adoption of the impugned mark
after due diligence and no case is made out for bad faith adoption under
Section 11(10)(ii) of 1999 Act. The mark
has been
registered after following due procedure and ASR did not file any opposition
at the relevant stage and time. Reliance on Section 9(2)(a) is equally
misconceived as the impugned mark is not inherently likely to cause
confusion or deception and having adopted FITFEAST, it is not even open
to ASR to raise this ground.
26. Learned counsel for Fitship relied on the following judgments:-
(a) Inder Raj Sahni Proprietor M/S Sahni Cosmetics v. Neha
Herbals Private Limited and Another, 2025 SCC OnLine Del
3341: To give rise to a protectible right, use of a mark must be
used in the legal sense contemplated under the trademark law such
that it identifies the source of the goods;
(b) BPI Sports LLC v. Saurabh Gulati and Another, 2023 SCC
OnLine Del 2424 ; Kia Wang v. Registrar of Trademarks and
Another, 2023 SCC OnLine Del 5844; Bhupinder Singh Vohra v.
The State of Haryana and Others, 1968 SCC OnLine P&H 74:
Bad faith adoption;
(c) Vishal Gupta and Others v. Rahul Bansal, 2025 SCC OnLine
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Del 4398 ; Vasundhra Jewellers Pvt. Ltd. v. Vasundhara Fashion
Jewellery LLP and Another, 2025 SCC OnLine Del 5660: Mere
priority of use is not enough to establish goodwill;
(d) Sanjay Gupta and Vinay Gupta v. Vineet Jain, Proprietor of
Vijaypal Vineet Kumar and Co, 2026 SCC OnLine Del 1862 ;
Starbucks (HK) Limited and another v. British Sky Broadcasting
Group and others, (2015) 1 WLR 2628: Mere reputation is not
sufficient and there must be both reputation and goodwill to prove
a claim of passing off;
(e) Pernod Ricard India Private Limited and Another. v. Karanveer
Singh Chhabra, 2025 SCC OnLine SC 1701; Harrods Limited v.
Harrodian School Limited, [1996] RPC 697; Reckitt & Colman
Products Ltd. v. Borden Inc., (1990) 1 WLR 491: Principles and
ingredients of passing off;
(f) Mountain Valley Springs India Private Limited v. Baby Forest
Ayurveda Private Limited (Formerly Known as M/s. Landsmill
Healthcare Private Limited) and Others, 2024 SCC OnLine Del
3665 ; Britannia Industries Ltd. v. Cremica Agro Foods Ltd.,
2008 SCC OnLine Del 881: Goodwill in the dominant mark
cannot be said to permeate every product under the brand; and
(g) Nandhini Deluxe v. Karnataka Cooperative Milk Producers
Federation Limited, (2018) 9 SCC 183 ; Vishnudas Trading as
Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd.,
Hyderabad and Another, (1997) 4 SCC 201; FDC Limited v.
Docsuggest Healthcare Services Pvt. Ltd. & Anr., 2017 SCC
OnLine Del 6381: Similarity or dissimilarity of goods/services,
uses of the rival goods, users of the rival goods, physical nature of
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the goods, trade channels etc. are important objective tests for
deciding the claim of passing off.

Rejoinder contentions of ASR:
27. ASR reiterated the submissions made during the initial arguments
with particular emphasis on the prior ownership and adoption of the
FITFEAST mark as also its status as a coined and arbitrary word for the
services offered by ASR. It was highlighted that ASR has been using
FITFEAST for its health and wellness services since June, 2017 and Fitship
had dishonestly adopted the nearly identical mark. To respond to the
contention of Fitship that the predominant mark of ASR is FITPASS and
there is a scant use of FITFEAST and that too not as a source identifier,
Court was taken through a plethora of documents, which allegedly,
demonstrate the use of FITFEAST mark from 2017 in the course of trade as
a trademark. Reference was made to documents such as: (a) email dated
12.06.2017 from ASR’s Director to FranCop for expansion of business;
(b) email from FranCop attaching a standee design for a physical event at
Pragati Maidan in 2017; (c) screenshot from ASR’s brochure shared with
investors in 2017; (d) promotional brochure in August, 2017; (e) news
article published by BW Disrupt in August, 2017 showing addition of
services under FITFEAST mark; (f) flyer attached with email dated
21.08.2017 from franchise India to ASR bearing the FITFEAST mark
endorsed by brand ambassador Mr. Abhinav Bindra; (g) email chain
between ASR and Paytm; and (h) photographs at a physical event,
purportedly, demonstrating use of FITFEAST as a trademark. For ready
reference, some of the screenshots are as follows:-

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28. Reliance was placed on the following judgments for different legal
propositions:-
(a) Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3
SCC 65: Passing off cases are cases of deliberate intention and
misrepresentation though fraud is not a necessary element of the
right of action and absence of intention to deceive is not a defence;
(b) Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC
145: It is not essential to prove long user to establish reputation in
a passing off action and misrepresentation does not mean that
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Plaintiff has to prove any mala fide intent on the part of the
Defendant and what has to be established is the likelihood of
confusion in the mind of actual or potential consumers;
(c) S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683: Prior
user is considered to be superior than any other right. Trademark
registration is no defence to a passing off action and passing off
right is a broader remedy than that of infringement. Trademark
registration merely recognises the rights which are already pre-
existing in common law and does not create any right;
(d) Marico Limited v. Agro Tech Foods Limited, 2010 SCC OnLine
Del 3806: Issue of prima facie validity of a trademark registration
can be considered at the interim stage;
(e) V Guard Industries Ltd. v. Crompton Greaves Consumer
Electricals Ltd., 2022 SCC OnLine Del 1593: The 1999 Act does
not recognise the concept of ‘sub-branding’;
(f) FMI Limited v. Midas Touch Metalloys Private Limited, 2025
SCC OnLine Del 4: It is settled position of law that whether a
mark is used as a brand or a sub-brand is immaterial as the 1999
Act does not recognise a sub-brand;
(g) Havells India Limited v. Cab-Rio Industries and Others, 2025
SCC OnLine Del 901: Even though the mark REO was used by
the Plaintiff with the house mark HAVELLS, if the former is used
on a standalone basis and not a sub-brand, the mere use of the
house mark will not distinguish the mark of Defendants;
(h) FDC Limited v. Docsuggest Healthcare (supra): Allied/cognate
goods or services are those which are not identical but can be said
to be related or similar in nature such as medicines being
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pharmaceutical preparations of the Plaintiff registered in Class 05
and the services rendered by the Defendants for booking of
appointments of doctors, diagnostics, spas and salons registered in
Classes 35 and 42. Classification of goods/services is not the
criterion for deciding the question of similarity in goods/services;
(i) Bourjois Limited v. Naunihal Singh & Ors., 2012 SCC OnLine
Del 5980 : Cosmetic products and spa and saloon services were
found to be allied and cognate to each other and Court also
considered the likelihood of diversification of services based on
market players providing both cosmetic products and saloon/spa
services;
(j) Wipro Enterprises Private Limited v. Himalaya Wellness
Company and Others, 2024 SCC OnLine Del 6859 : Ayurvedic
uterine tonic and intimate hygiene wash were found to be allied
and cognate and interim injunction granted by the learned Single
Judge was upheld by the Division Bench;
(k) Mayo Foundation for Medical Education & Research v.
Bodhisatva Charitable Trust and Others, 2023 SCC OnLine Del
3241: If the adoption of a mark is dishonest, delay alone cannot be
a ground to deny injunction. Defendants’ hospitals and educational
services were found to be allied and cognate to Plaintiff’s medical
journals and periodicals; and
(l) T.V. Today Network Limited v. COGNATE and Others, 2021
SCC OnLine Del 3244 : Court noted that the significant part of
the impugned tweet were the hashtags deployed as India Today
etc. and thus, the same will be shown in search results on Twitter,
if one was to use the said hashtag and/or any other hashtag listed in
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the tweet and therefore, directed blocking of the impugned
tweets.

29. Heard learned counsels for the parties and examined their rival
submissions.

30. By this petition, ASR seeks cancellation/removal of registration of the
mark
in Class 30 granted in favour of Fitship, on multiple
grounds under Section 11(1), 11(2), 11(3), 11(4), 11(10)(ii) and 9(2)(a) of
1999 Act. However, objections under Section 11(2) and 11(4) were not
seriously pressed during arguments. The petition is predicated on ASR’s
rights flowing from adoption and use of the mark FITFEAST, in relation to
services offered for nutrition and healthy food related services, including
customized meal plans with recipes, wellness plans, nutritionist services,
wellness information and tracking tools such as meal log, water tracker and
calorie counter.
31. Admittedly, ASR’s mark FITFEAST is not registered and
applications for registrations in Classes 09, 42 and 44 filed on 31.03.2025
with user claim from 12.06.2017, are pending. ASR has placed on record
details of revenue earned from 2017-2018 to 2023-2024 as also the
advertising and marketing expenses for the same years and the number of
eligible users, however, admittedly, figures pertaining to revenue and
marketing expenses are of the entire business of ASR and it is stated in the
petition that ASR is unable to bifurcate in respect of the mark FITFEAST as
the said services are invoiced along with other services.
32. On the other hand, the impugned mark
is registered
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in Class 30 and registration goes back to 30.09.2021 on a ‘proposed to be
used’ basis for products, which are protein rich snacks such as protein
sachets, peanut butter, protein chips, dessert protein bar and whey protein
shake. Fitship has placed on record its revenues and marketing expenses in
respect of sale of these products under the mark
for the
period 2021-2022 to Financial Year 2025 (until April).
33. Coming to the first ground of rectification raised by ASR under
Section 11(1) of 1999 Act, it is ASR’s case that impugned mark is identical
to ASR’s FITFEAST mark, which is an ‘earlier trademark’ and the rival
products being closely related or at least allied/cognate, there is every
likelihood of confusion on the part of public as also association with the
earlier mark of ASR. Prior adoption and user of FITFEAST is claimed from
June, 2017. Fitship has contested this position in law and on facts, urging
ASR has not obtained registration in any class for the FITFEAST mark and
does not fall within the purview of an applicant under Section 18 of 1999
Act and most importantly, ASR has never used FITFEAST in a trademark
sense and thus the said provision is inapplicable.

34. Section 11(1) of 1999 Act proscribes registration of a trademark if it
is identical with an ‘earlier trademark’ and there is similarity of
goods/services covered by the trademark or where the trademark sought to
be registered is similar to an earlier trademark, there being identity or
similarity with goods/services covered by the trademark, because of which
there is likelihood of confusion on the part of the public, which includes
likelihood of association with the earlier trademark. Admittedly, ASR’s
mark FITFEAST is not a registered mark albeit registration applications are
pending. FITFEAST is also not covered by an application relatable to
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Section 18 or Section 36E or Section 154 of 1999 Act. Therefore, ASR’s
FITFEAST cannot be classified as ‘earlier trademark’ for purpose of Section
11(1). In this context, I may allude to a judgement of this Court in BPI
Sports (supra), where a petition was filed under Section 57 of 1999 Act
seeking rectification of the Register of Trade Marks by removal of
trademark ‘BPI SPORTS’ registered in favour of Respondent No.1 therein
for health food supplements etc. and the Court denied the relief of
rectification, holding as under:-
“18. Without going into the niceties of the differences between these
expressions as employed in Section 57(2), it is clear that, into whichever
category the case may fall, the mark must be shown to be incapable of
registration on one of the absolute grounds envisaged by Section 9 or on
one of the relative grounds for refusal to register envisaged in Section 11.
Section 9 of the Trade Marks Act, admittedly, does not apply in the present
case. However, the plaint avers that the impugned mark is liable to be
removed from the register as it was not entitled to registration under any
of the clauses (1), (2) and (3) of Section 11 of the Trade Marks Act.
xxx xxx xxx
21. The plaint invokes sub-sections (1), (2) and (3) of Section 11 of the
Trade Marks Act.
22. In my view, none of these provisions would apply.
23. Sub-sections (1) and (2) of Section 11 are both applicable where the
mark, of which registration is sought, is identical with, or similar to, an
“earlier trade mark”. The expression “earlier trade mark” is defined, in
the Explanation following Section 11(4), for the purposes of the entire
Section 11, thus:
“Explanation.— For the purposes of this section, earlier trade mark
means—
(a) a registered trade mark or an application under Section 18
bearing an earlier date of filing or an international registration
referred to in Section 36-E or convention application referred to in
Section 154 which has a date of application earlier than that of the
trade mark in question, taking account, where appropriate, of the
priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for
registration of the trade mark in question, or where appropriate, of
the priority claimed in respect of the application, was entitled to
protection as a well-known trade mark.”
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24. The petitioner's BPI SPORTS trade mark is neither a registered trade
mark, nor a trade mark covered by an application relatable to Sections 18,
36-E or Section 154 of the Trade Marks Act. Nor does the petition so aver.
xxx xxx xxx
26. There is, admittedly, no declaration of the petitioner's mark as a “well-
known trade mark”. Given the fact that the petitioner has entered the
Indian market only in 2019, it is extremely questionable as to whether the
petitioner's BPI SPORTS mark qualifies as a well-known trade mark on
the basis of criteria that envisaged in Section 11(6).
27. The petitioner's marks, therefore, do not qualify as “earlier trade
marks” for the purposes of Section 11. Sub-sections (1) and (2) of Section
11 would not, therefore, apply in the present case.”


35. In Kia Wang (supra), Petitioner sought rectification/cancellation of
registration of the trademark ROCKPAPA (device) on the ground that
Respondent had adopted a similar mark for similar/identical goods.
Observing that Petitioner’s mark ROCKPAPA (device) could not be
classified as earlier trademark since the mark was neither a registered
trademark in India nor a trademark covered by application under Sections
18/36E/154 of 1999 Act, Court denied the relief on this ground albeit the
Petitioner succeeded on other grounds. Therefore, ASR cannot succeed in
seeking cancellation of registration under Section 11(1) as ASR’s
FITFEAST mark is not an ‘earlier trademark’ within the meaning of Section
11(1) of 1999 Act.
36. The next ground for cancellation raised by ASR is under Section
11(3)(a) of 1999 Act, which prescribes that a trademark shall not be
registered if or to the extent its use in India is liable to be prevented by
virtue of any law in particular the law of passing off protecting an
unregistered trademark used in the course of trade. It is on this ground that
extensive arguments were canvassed on behalf of the respective parties. It is
imperative at this stage to note, at the cost of repetition, that the main plank
of defence of Fitship is that ASR has failed to demonstrate that it has used
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the mark FITFEAST in the sense of a trademark indicating trade origin and
consequently, failed to demonstrate that it has generated any independent
goodwill or reputation thereunder. It was asserted that the documents filed
by ASR clearly demonstrate that it has consistently advertised, promoted
and predominantly used the mark FITPASS for its services and if at all, the
use of the mark FITFEAST is as one of the many other services that it offers
and renders under other marks such as FITSHOP, FITCOACH etc. In the
absence of use of the mark as a trademark and goodwill and reputation
therein, the main ingredient of the tort of passing off is not met and hence,
Section 11(3)(a) cannot be invoked by ASR. ASR, on the other hand, has
strenuously contested this position and urged that the mark FITFEAST has
been continuously, uninterruptedly and openly used at least since June,
2017, as a trademark for its services pertaining to customized meal plans,
wellness information, nutritional plans, tracking tools etc. and the use is
independent of the use of the mark FITPASS. Therefore, the neat question
that arises for consideration is whether ASR has successfully made a case of
passing off so as to seek cancellation of impugned mark

under Section 11(3)(a).
37. The history of passing off litigation is generally traced to the
judgment of the House of Lords in Reckitt & Colman (supra), wherein it
was held that the law of passing off can be summarised in one short general
proposition i.e., no man may pass off his goods as those of another and three
elements of the tort were delinated as: goodwill or reputation attached to the
goods or services which he supplies, in the mind of the purchasing public;
misrepresentation by the Defendant leading or likely to lead the public to
believe that goods or services offered by him are those of the Plaintiff; and
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Plaintiff must demonstrate that he suffers or in a quia timet action, that he is
likely to suffer damages by reason of the erroneous belief engendered by
Defendant’s misrepresentation. In Toyota Jidosha Kabushiki Kaisha v.
Prius Auto Industries Limited and Others, (2018) 2 SCC 1 albeit dealing
with a trans-national passing off action, the Supreme Court held as follows:-
“27. The following passage from Kerly's Law of Trade Marks and Trade
Names [Kerly's Law of Trade Marks and Trade Names Thomson, 14th
Edn., Sweet & Maxwell South Asian Edn., 2005.] noticed in S. Syed
Mohideen [S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 :
(2016) 2 SCC (Civ) 201] may be reiterated herein for a clear exposition of
the principles laying down the test for judging an action of passing-off in
the Indian jurisdiction. The provisions in the Indian Trade Marks Act,
1999 incidentally are analogous to those in the U.K. Trade Marks Act,
1994
“15-034. Subject to possibly one qualification, nothing in the Trade
Marks Act, 1994 affects a trader's right against another in an action
for passing-off. It is, therefore, no bar to an action for passing-off that
the trade name, get up or any other of the badges identified with the
claimant's business, which are alleged to have been copies or imitated
by the defendant, might have been, but are not registered as, trade
marks, even though the evidence is wholly addressed to what may be a
mark capable of registration. Again, it is no defence to passing-off
that the defendant's mark is registered. The Act offers advantages to
those who register their trade marks, but imposes no penalty upon
those who do not. It is equally no bar to an action for passing-off that
the false representation relied upon is an imitation of a trade mark
that is incapable of registration. A passing-off action can even lie
against a registered proprietor of the mark sued upon. The fact that a
claimant is using a mark registered by another party (or even the
defendant) does not of itself prevent goodwill being generated by the
use of the mark, or prevent such a claimant from relying on such
goodwill in an action against the registered proprietor. Such
unregistered marks are frequently referred to as ‘common law trade
marks’.”
(emphasis supplied)”
38. In Turning Point & Anr. v. Turning Point Institute Private Ltd.,
2018 SCC OnLine Del 10257, the Division Bench of this Court captured the
legal position pertaining to an action based on the common law right of
passing off as follows:-
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“12. “Passing off” is, therefore, a specie of unfair trade competition, in
which one person seeks to pass of his goods, or services, as those of
another, by using the trademark, or name, of the letter, or a mark, or
name, which is deceptively similar to that of the latter. It is an act
calculated to lead to deception, aimed at obtaining an economic benefit,
by capitalising on the reputation and goodwill amassed by the other
person over a period of time. It is regarded as an action for deceit. In
order to succeed in a “passing off” action, the plaintiff has necessarily to
establish, apart from prior user of the trademark or name in question, the
“trinity” of misrepresentation (deliberate or otherwise), goodwill and
damage. Relief, in a passing off action, is always against the later user of
the mark, or name, and never against the prior user thereof.
13. Establishment of the existence of “goodwill”, as an ingredient to
sustain an action for passing off, necessarily requires the plaintiff to
demonstrate that the trade name, or mark has become so closely
associated with his goods, or services, as to acquire a secondary meaning,
specifically relatable to the goods or services of which he, and he alone, is
the source. “Goodwill” has to be established by proving that the public
associates the name, or mark, with the goods or services provided by the
person bringing the action of passing off. “Reputation” is different, and
distinct, from “goodwill”. “Goodwill” would have to be established by
referring to an existing customer base, sales and advertisement. The length
of user is not strictly relevant, where the question of goodwill is involved.
14. In cases where the area of activity of the plaintiff and the defendant is
the same, and the mark or name adopted by them similar, the only
question required to be examined, in order to assess whether a case of
“passing off” is, or is not, made out, is that of prior user.
15. While examining whether, in a case of alleged passing off, an
interlocutory injunction requires to be granted, the court is required to
bear in mind the competing considerations of protection, i.e. the need to
protect the plaintiff against the defendant passing off its goods, or
services, as those of the plaintiff, by adopting the mark or name of the
plaintiff, and the opposing need to protect the defendant against injury
resulting from his having been prevented from exercising his own legal
rights for which he could not be adequately compensated. The balance of
convenience has to be assessed by weighing these two factors, one against
the other. Also, the court is required to be mindful of the fact that the
considerations that would prevail would be different, wherein injunction is
sought against a running entity, which has already commenced its
business, as against a case in which injunction is sought against an entity
which is yet to start functioning.”

39. In the same judgment, the Division Bench referred to the words of
Lord Macnaghten in Inland Revenue Commissioners v. Muller & Co.s’
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Margarine Ltd., [1901] A.C. 217: “ It is the benefit and advantage of the
good name, reputation, and connection of a business. It is the attractive
force which brings in custom .”. It is now settled that the three essential
ingredients of passing off action are goodwill and reputation,
misrepresentation and damage. To succeed in a claim of passing off, the
Plaintiff must establish that Defendant has used a deceptively similar/similar
trade mark/trade dress/packaging for similar/identical/allied and cognate
goods in which Plaintiff has a formidable goodwill and reputation and has
made a misrepresentation in the course of trade to members of public,
calculated to injure and damage the goodwill and reputation. In the heart of
the action for passing off is the use of mark/trade dress/packaging of the
Plaintiff and existence of a protectible goodwill, which the Plaintiff has been
able to generate by using the mark/trade dress in question in the course of its
business dealings as a source identifier and although long user is not a sine
qua non but a prior adoption and user indicating formidable goodwill and
reputation is. In Toyota Jidosha (supra), the Supreme Court relied on a
decision of the UK Supreme Court in Starbucks (supra), where it was held
that mere reputation was not enough to constitute goodwill and claimant has
to show that goodwill exists in the form of customers, which would imply
user. The principles that emerge from judicial precedence in respect of
passing off were summarised by a Coordinate Bench of this Court in FDC
Limited v. Faraway Foods Pvt. Ltd., 2021 SCC OnLine Del 1539, as
follows:-
“75. From the aforenoted decisions, the following clear principles emerge:
(i) Passing off, though an action based on deceit, does not require the
establishment of fraud as a necessary element to sustain the action.
Imitation or adoption, by the defendant, of the plaintiffs trade mark, in
such manner as to cause confusion or deception in the mind of prospective
customers, is sufficient.
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(ii) The principles for grant of injunction, in passing off actions, are the
same as those which govern the grant of injunctions in other cases, i.e. the
existence of a prima facie case, the balance of convenience, and the
likelihood of irreparable loss in issuing to the plaintiff, were injunction not
to be granted.
(iii) Proof of actual damage is not necessary, to establish passing off.
However, proof of misrepresentation is necessary, even if intent to
misrepresent is not approved. The question of intent may, nevertheless, be
relevant, when it comes to the ultimate relief to be granted to the plaintiff.
(iv) Passing off may be alleged by a claimant who owns sufficient
proprietary interest in the goodwill associated with the product, which is
really likely to be damaged by the alleged misrepresentation.
(v) Grant of injunction, in cases where passing off is found to exist, is
intended to serve two purposes, the first being preservation of the
reputation of the plaintiff, and the second, safeguarding of the public
against goods which are “passed off as those of the plaintiff.
(vi) The ingredients/indicia of the tort of passing off are the following:
(a) There must be sale, by the defendant, of goods/services in a
manner which is likely to deceive the public into thinking that the
goods/services are those of the plaintiff.
(b) The plaintiff is not required to prove long user to prove established
reputation. The existence, or otherwise, of reputation, would depend
upon the volume of the plaintiffs sales and the extent of its
advertisement.
(c) The plaintiff is required to establish
(i) misrepresentation by the defendant to the public, though not
necessarily mala fide,
(ii) likelihood of confusion in the minds of the public (the public
being the potential customers/users of the product) that the goods
of the defendant are those of the plaintiff, applying the test of a
person of “imperfect recollection and ordinary memory”,
(iii) loss, or likelihood of loss, and
(iv) goodwill of the plaintiff, as a prior user.
Elsewhere, the five elements of passing off have been identified as
(a) misrepresentation, (b) made by the trader in the course of trade,
(c) to prospective customers or ultimate consumers of the goods or
services supplied by him, (d) calculated to injure the business or
goodwill of another (i.e. that such injury is reasonably foreseeable)
and (e) actual damage, or the possibility of actual damage, to the
business or goodwill of the plaintiff.
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(vii) In cases of alleged passing off, the Court, while examining the
likelihood of causing confusion, is required to consider, in
conjunction, inter alia,
(a) the nature of the market,
(b) the class of customers dealing in the product,
(c) the extent of reputation possessed by the plaintiff,
(d) the trade channels through which the product is made available to
the customer and
(e) the existence of connection in the course of trade. The Supreme
Court has also held that, in passing off action on the basis of
unregistered trade marks, the Court is required to assess the
likelihood of deception or confusion by examining
(i) the nature of the marks, i.e. whether there were demands/label
marks/composite marks,
(ii) the degree of similarity between the competing marks,
(iii) the nature of the goods,
(iv) the similarity in nature, character and performance of the
goods of the rival parties,
(v) the class of purchasers, and the degree of care which they
would be expected to exercise while purchasing the goods, and
(vi) the mode of purchasing the goods and placing orders.
(viii) That the defendant is not producing the goods manufactured by the
plaintiff may not be relevant, where the plaintiff' s mark is found to have
sufficient reputation.
(ix) Courts are required to be doubly vigilant where passing off is alleged
in respect of pharmaceutical products, in view of the possibility of adverse
effects resulting from administration of a wrong drug. For the said reason,
the degree of proof is also lower, in the case of alleged passing of
pharmaceutical products.
(x) Passing off differs from infringement. Passing off is based on the
goodwill that the trader has in his name, whereas infringement is based on
the trader's proprietary right in the name, registered in his favour. Passing
off is an action for deceit, involving passing off the goods of one person as
those of another, whereas an action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for
vindication of its exclusive right to use the trade mark in relation to the
goods in respect of which registration has been granted. Use of the trade
mark by the defendant is not necessary for infringement, but it is a sine
qua non for passing off. Once sufficient similarity, as is likely to deceive, is
shown, infringement stands established. Passing off, however, may be
resisted on the ground of added material, such as packing, procurement
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through different trade channels, etc., which would distinguish the goods
of the defendant from those of the plaintiff and belie the possibility of
confusion or deception…..”


40. Some other facets in the context of passing off and to the extent
relevant to the present petition are required to be captured. The Division
Bench of this Court in Vishal Gupta (supra), relying on an earlier judgment
of the Division Bench in Satyam Infoway (supra), held that if goodwill or
reputation is not established by the Plaintiff, no other issue would need
further examination and also that priority of user by itself and sole ground
cannot sustain a finding of passing off or justify injunction on that basis.
Relevant paragraphs are as follows:-
“9. For passing off, the primary ingredients that have to be satisfied are
the existence of goodwill, the attempt of the defendant to pass off the
defendant's product as the product of the plaintiff and resultant damage
that has resulted to the plaintiff. We may refer, in this context, to a recent
judgment of the Supreme Court in Brihan Karan Sugar Syndicate (P)
Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, which
sets out the ingredients of passing off in the following paragraphs:
12. There is a finding recorded by the High Court in the impugned
judgment that the labels used on the bottle of country liquor sold by
the appellant and the labels on the bottle of country liquor sold by the
respondent are similar. At this stage, we may note the legal position
regarding the factual details which are required to be proved in a
passing off action. Firstly, we may refer to a decision of this Court
in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. Paras 13 to 15 of
the said decision read thus:
“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
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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 (Pty) Ltd. v. PUB Squash Co. (Pty) Ltd., Erven Warnink
Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd.. 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”.
15. The third element of a passing off action is loss or the
likelihood of it.”
(emphasis supplied)
13. Thus, the volume of sale and the extent of advertisement made by
the appellant of the product in question will be a relevant
consideration for deciding whether the appellant had acquired a
reputation or goodwill.
14. At this stage, we may also refer to the decision of this Court
in Toyota Jidosha Kabushiki Kaisha. In this decision, this Court
approved its earlier view in S. Syed Mohideen v. P. Sulochana
Bai that the passing off action which is premised on the rights of the
prime user generating goodwill, shall remain unaffected by any
registration provided in the Act. In fact, this Court quoted with
approval, the view taken by the House of Lords in Reckitt & Colman
Products. The said decision lays down triple tests. One of the tests laid
down by the House of Lords was that the plaintiff in a passing off
action has to prove that he had acquired a reputation or goodwill
connected with the goods. Thereafter, in para 40 of Toyota case, this
Court held that if goodwill or reputation in a particular jurisdiction is
not established by the plaintiff, no other issue really would need any
further examination to determine the extent of the plaintiff's right in
the action of passing off.”
(Italics in original; underscoring supplied)
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10. We find that the impugned order does not examine any of these aspects
at all. There is, in particular, no specific finding regarding the acquisition,
by the respondent-plaintiff, of sufficient goodwill, as could sustain a claim
of passing off.
11. The impugned order proceeds on the mere premise that the respondent
would be entitled to an injunction as the user, by the respondent, of the
mark OM AMAR SHAKTI/SARKAR OM AMAR SHAKTI is prior to the
user, by the appellant, of the mark MATA AMAR SHAKTI. Priority of user
by itself cannot sustain a finding of passing off or justify grant of
injunction on that basis.”

41. Significantly, in Sanjay Gupta (supra), the Division Bench observed
that the party alleging passing off must establish accumulation of goodwill
by use of marks asserted and that too, prior to the adoption of the rival mark
by the opposite party, to sustain a case of passing off, a legal position settled
earlier in Toyota Jidosha (supra). In this context, I may also refer to the
judgments in Vasundhra Jewellers (supra) and Kedar Nath Mishra v.
Invision Medi Sciences Pvt. Ltd., 2026 SCC OnLine Del 3635, where the
same proposition of law was highlighted. In fact, in Sanjay Gupta (supra),
Court also observed that even if the two rival trade dresses in question were,
arguendo, to be treated as similar to each other, Appellant would
additionally have to establish accumulation of goodwill by use. The manner
in which goodwill has to be established, both at the prima facie stage and the
final stage in a suit also stands authoritatively settled by the Supreme Court
in Brihan Karan Sugar Syndicate Private Limited. v. Yashwantrao Mohite
Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577, as follows:-
“12. There is a finding recorded by the High Court in the impugned
judgment [Yashwantrao Mohite Krushna Sahakari Sakhar
Karkhana v. Brihan Karan Sugar Syndicate (P) Ltd., 2021 SCC OnLine
Bom 14020] that the labels used on the bottle of country liquor sold by the
appellant and the labels on the bottle of country liquor sold by the
respondent are similar. At this stage, we may note the legal position
regarding the factual details which are required to be proved in a passing
off action. Firstly, we may refer to a decision of this Court in Satyam
Infoway Ltd. v. Siffynet Solutions (P) Ltd. [Satyam Infoway Ltd. v. Siffynet
Solutions (P) Ltd., (2004) 6 SCC 145] Paras 13 to 15 of the said decision
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read thus : (Satyam Infoway case [Satyam Infoway Ltd. v. Siffynet
Solutions (P) Ltd., (2004) 6 SCC 145] , SCC pp. 150-51)
“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 (Pty)
Ltd. v. PUB Squash Co. (Pty) Ltd., 1981 RPC 429 : (1981) 1 WLR
193; Erven Warnink Besloten Vennootschap v. J. Townend & Sons
(Hull) Ltd., 1979 AC 731 : (1979) 3 WLR 68 : 1980 RPC 31 (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
Ltd. v. Rysta Ltd., 1945 AC 68 (HL)] .
15. The third element of a passing off action is loss or the likelihood of
it.”
(emphasis supplied)
13. Thus, the volume of sale and the extent of advertisement made by the
appellant of the product in question will be a relevant consideration for
deciding whether the appellant had acquired a reputation or goodwill.
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14. At this stage, we may also refer to the decision of this Court in Toyota
Jidosha Kabushiki Kaisha [Toyota Jidosha Kabushiki Kaisha v. Prius
Auto Industries Ltd., (2018) 2 SCC 1 : (2018) 1 SCC (Civ) 567] . In this
decision, this Court approved its earlier view in S. Syed Mohideen v. P.
Sulochana Bai [S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683
: (2016) 2 SCC (Civ) 201] that the passing off action which is premised on
the rights of the prime user generating goodwill, shall remain unaffected
by any registration provided in the Act. In fact, this Court quoted with
approval, the view taken by the House of Lords in Reckitt & Colman
Products [Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR
491 (HL)] . The said decision lays down triple tests. One of the tests laid
down by the House of Lords was that the plaintiff in a passing off action
has to prove that he had acquired a reputation or goodwill connected with
the goods. Thereafter, in para 40 of Toyota case [Toyota Jidosha
Kabushiki Kaishav. Prius Auto Industries Ltd., (2018) 2 SCC 1 : (2018) 1
SCC (Civ) 567] , this Court held that if goodwill or reputation in a
particular jurisdiction is not established by the plaintiff, no other issue
really would need any further examination to determine the extent of the
plaintiff's right in the action of passing off.
xxx xxx xxx
17. For establishing goodwill of the product, it was necessary for the
appellant to prove not only the figures of sale of the product but also the
expenditure incurred on promotion and advertisement of the product.
Prima facie, there is no evidence on this aspect. While deciding an
application for a temporary injunction in a suit for passing off action, in a
given case, the statements of accounts signed by the Chartered Accountant
of the plaintiff indicating the expenses incurred on advertisement and
promotion and figures of sales may constitute a material which can be
considered for examining whether a prima facie case was made out by the
appellant-plaintiff. However, at the time of the final hearing of the suit, the
figures must be proved in a manner known to law.”

42. This judgment will be incomplete without reference to the landmark
judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd., (2001) 5 SCC 73, where essential ingredients for
determining a claim for passing off were elucidated as follows:-
“35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of deceptive
similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or
label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
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(c) The nature of the goods in respect of which they are used as trade
marks.
(d) The similarity in the nature, character and performance of the
goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing
the marks they require, on their education and intelligence and a
degree of care they are likely to exercise in purchasing and/or using
the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks.
36. Weightage to be given to each of the aforesaid factors depending upon
facts of each case and the same weightage cannot be given to each factor
in every case.”

43. Another proposition, which is now well settled is that goodwill which
is required to be established is in the mark/trade dress or the name and no
doubt, in connection with the goods or services which the party alleging
passing off provides. [Ref.: VIP Industries Limited v. Carlton Shoes
Limited And Another, 2025 SCC OnLine Del 4620]. The ‘use’ of the mark
must be in the legal sense under the provisions of the Trade Marks Act such
that it functions as a source identifier and a badge of origin, which the
consumers and members of public recognise.
44. Coming back to the instant case, it needs to be determined whether
ASR has succeeded in establishing that Fitship has indulged in passing off
its goods as those of ASR and for which, the three ingredients goodwill and
reputation, misrepresentation and damage will have to be established. ASR
has placed on record several documents to show that it has used the mark
FITFEAST as an independent mark in the trademark sense for services
relating to nutritional and wellness plans etc. and user dates back at least to
June, 2017. Per contra, Fitship has attempted to establish that ASR has been
predominantly doing business under the mark FITPASS and FITFEAST has
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been very sporadically used and that too, only to showcase it as one of its
many services under the names FITCOACH, FITSHOP etc.
45. From a perusal of the documents placed on record by ASR, this Court
finds merit in the contention of Fitship. As noted above, use of a mark
cannot be in abstract or vacuum and should be demonstrably of a kind which
identifies the source of the goods of the proprietor i.e., serves as a source
identifier and distinguishes them from those of the others, which means that
it is a ‘use in the trademark sense’. A party alleging passing off by the other
party must show that through the use of the mark as a badge of origin, it has
generated goodwill to an extent that it needs to be protected and the use
must be prior and continuous, though it may not be very long but
importantly, sufficient goodwill must exist on the date of adoption of the
mark by the rival party. The mere fact of being a senior user i.e. priority of
adoption is not enough for a passing off action sans actual use and
consequent generation of sufficient goodwill on the relevant date, as held in
Vishal Gupta (supra) and Vasundhra Jewellers (supra).
46. The documents demonstrate that ASR has been consistently
advertising, selling and promoting its services under the umbrella mark
FITPASS and reference to the mark FITFEAST is scant and not in the
manner of source identification and perhaps, it is for this reason that ASR is
unable to provide separate figures of revenues earned and marketing
expenditure in respect of the FITFEAST mark. As rightly flagged by Fitship,
services under FITFEAST have never been offered as standalone services
and have always been bundled with FITPASS subscription plans. As a
testament to this, I may refer to few screenshots from the documents on
record hereunder:-
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47. In fact, the documents heavily relied upon by ASR also demonstrate
that FITPASS is the actual trademark under which, it conducts its business
activities and FITFEAST serves only as reference to characterise one of the
many services it provides. Fitship has categorically stated in the reply that
the reference to ASR’s website in the entire petition is as FITPASS website,
accessible at www.fitpass.co.in and FITPASS mobile application, as a
means to access ASR’s offering under the FITFEAST mark. In fact, a stand
is also taken that the FITFEAST services are accessible to public only
through FITPASS portals and therefore, any consumer bearing an initial
interest in the said services will have to recall FITPASS and not FITFEAST.
It is also stated that even the collaboration for sale of smart watch ‘ Noise x
Fitpass Pulse Grand 3 ’ involves FITPASS trademark and not FITFEAST
and therefore, even third party collaborations are centred around the mark
FITPASS. The page concerning the FITFEAST mark on its website
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mentions ‘FITFEAST by FITPASS’. If the consumer is to subscribe to the
nutritional plan services, they are redirected to a page on ASR’s website,
which has no mention of FITFEAST and in this context, reference is made
in the reply to a screenshot, which is as follows:-

48. None of these averments have been categorically traversed by ASR
despite filing a detailed rejoinder to the reply. In fact, Fitship has also stated
in its reply that ASR itself takes a position that its features such as ‘ expert
nutritionist and diet plan ’ are part of their ‘FITPASS 360’ and ‘FITPASS
180’ plans and there is no denial to this position.
49. A similar trend emerges with respect to social media presence of
ASR. All pages on Facebook, Twitter, LinkedIn, etc. operate under the mark
FITPASS and not FITFEAST and any consumer with average intelligence
will be able to arrive at ASR’s page only be searching ‘FITPASS’ and the
use of FITFEAST, as noted above, as a standalone use is scanty, sporadic
and intermittent and as rightly urged by Fitship, the graph went up only after
sales of Fitship under FITFEAST increased. There is no sales invoice on
record, which indicates commercial use of FITFEAST by ASR and it bears
repetition to state that the sales figures as also marketing expenses pertain to
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the entire operation as an entity and not for FITFEAST, standalone. It is
unfathomable that ASR is unable to produce a single invoice under
FITFEAST, demonstrating use as a trademark if it has been offering services
under the said mark allegedly from the year 2017 and/or the revenues earned
or marketing expenses related thereto. The strength of the services provided
by ASR, therefore, lies in the mark FITPASS and not FITFEAST and
neither the pleadings nor the documents, support the claim of ASR of
exclusivity of association of the mark FITFEAST in the minds of
consumers. In the absence of any goodwill independently generated from the
FITFEAST mark, the claim of passing off fails.
50. Coming to the documents relied on by ASR to show its goodwill and
reputation in the FITFEAST mark, I am of the view, that none of these
documents support the case of ASR. ASR has attempted to show user of
FITFEAST from 2017 and in that context, has illustratively referred to a few
documents in the rejoinder, which one presumes will be ASR’s best case
forward. Document-1 is an email dated 12.06.2017 to Director of one
FranCorp/Franchise India, merely stating that FITPASS is missing in the
Exclusive Services section and the core product is the ability to workout
anywhere, anytime and FITFEAST, FITCOACH etc. are additional services
that enable the user to stay fit. This document is a mere internal
communication between two parties and does not demonstrate any
commercial activity or sale or advertisement. Document-2 is a screenshot of
a standee to the aforesaid email and prominently mentions ‘Fitpass’
Exclusive Services’, under which, there is a reference to five services
rendered by ASR and one of them includes FITFEAST. Documents-3, 4 and
5 are brochures attached to an email dated 16.06.2017 and do not reflect the
purpose for which they were sent or used and significantly, reference is
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‘FITFEAST by FITPASS’. The corporate poster does not bear any imprinted
date and it is not known, when and in what context, the same was published
or used, if at all. Similarly, the news article titled ‘ New-age Techfirst Fitpass
to Add More Services ’ shows that ASR added several inept features as
FITFEAST and FITCOACH and does not further its case of use of the mark.
51. ASR has placed on record agreements executed with third parties.
Save and except, 5 agreements of which 3 are of the year 2019 and 2 of the
year 2020, all other agreements are executed between 2022 to 2025. One
agreement is dated 30.06.2021. Therefore, only 6 agreements are prior to the
date of adoption of the impugned mark by Fitship and the date of its
application for registration, however, even these agreements do not support
the case of ASR that FITFEAST was used as a trademark. The other
agreements are post-adoption on the mark as also the date of registration and
are inconsequential to support the claim of passing off. Reliance of ASR on
number of awards received in the course of business is also of no avail since
all of these pertain to the services offered under FITPASS and bear no
reference to FITFEAST. In this context, I may refer to the observations of
the Division Bench in VIP Industries (supra), that the goodwill and
reputation resides in the mark, of course, in relation to the goods albeit it
may be mentioned that the case essentially pertained to transborder
reputation. Relevant passages are as follows:-
“112. With great respect to Mr Sibal, we find no legal basis for this
submission. While, as Judges, it is always a pleasure to develop the law,
the law cannot be allowed to develop in directions which are opposed to
the law as it exists today. The development of the law cannot be
labyrinthine. We cannot distinguish between goodwill as applicable to
“reputed” marks, as compared to goodwill as applicable to less reputed
marks, for the purposes of passing off. The law does not recognise, or
envisage, such distinct categories of goodwill. Goodwill either exists, or it
does not exist. The ingredients which are required to be established, in
order for a court to arrive at a finding that the name or mark carries the
requisite goodwill in the minds of the public, are well established. There
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is, needless to say, no straitjacket formula in this regard, and the issue of
whether, in a particular case, the requisite degree of goodwill does, or
does not, exist, must necessarily depend on the facts and circumstances of
that case. In all cases, however, the goodwill that is required to be
established is in the mark, or name, no doubt when used in connection
with the goods or services which the plaintiff provides. This principle
applies, as much to marks such as Mercedes-Benz or Mont Blanc, as to
“humbler” marks.
113. As Mr Sethi correctly pointed out, Laxmikant V. Patel
case [Laxmikant V. Patelv. Chetanbhai Shah, (2002) 3 SCC 65 : (2002)
110 Comp Cas 518] was concerned with the use of the mark “Muktajivan”
when used for a modest colour studio, having no more than a reputation in
the area, or the city, in which it was located. Nonetheless, the Supreme
Court protected the mark against passing off.
114. We, therefore, cannot accept Mr Sibal's submission that, for a
passing off action, the goodwill that is required to be proved is in the name
or mark when used in connection with particular goods or services.
Though, in every case, the name or mark would undoubtedly be used for
providing goods are rendering services, the goodwill has to reside in the
name or mark per se. So long as the plaintiff's name or mark carries
goodwill, it is entitled to protection against passing off, and against every
other person using the same, or a deceptively similar name, or mark, as
would result in the consuming public regarding the goods or services
provided by such other person as those provided by the plaintiff.
xxx xxx xxx
117. We have already reproduced, supra, the tests of passing off which we
have found to emerge from a cohesive reading of the various authorities
on the point, in the decision of this Court in FDC case [FDC
Ltd. v. Faraway Foods (P) Ltd., 2021 SCC OnLine Del 1539] . Without
reiterating the said principles, it is clear that, where a plaintiff is seeking
to establish goodwill, in the territory in which it alleges the tort of passing
off to have been committed, on the basis of a mark or name which is
otherwise used outside that territory, it has to show actual percolation of
reputation and goodwill in that mark or name into the territory in which it
alleges passing off to have taken place. While it may not be necessary for
the plaintiff to have an office in that particular territory or country, it must
have customers within such territory. Those customers must purchase the
goods of the plaintiff, or avail the services of the plaintiff, rendered under
such mark or name, when situated within that territory. It is not enough to
show that such customers, when they proceeded abroad, were customers of
the plaintiff. Thus, the plaintiff must be “present through its mark in the
territorial jurisdiction” of the country of the defendant, even if the
existence of a “real market” in that country is not necessary. This
“presence” may be merely by reputation also, as in a situation in which
the mark or name is extensively advertised in that country.
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118. The concept is actually elementary, when one keeps in mind the basic
principle of passing off. Passing off takes place when a defendant, by using
the mark or name of the plaintiff, seeks to pass of his goods, or services as
the goods, or services, of the plaintiff. The issue of trans-border reputation
arises where the plaintiff is situated outside the territorial jurisdiction in
which the defendant is located. Even in such a case, if the reputation and
goodwill which is commanded by the plaintiff's mark is of such a degree
that it has percolated into the territory of the defendant, and is “well-
known” in that territory, the defendant is still seeking to capitalise on the
reputation of the mark or name. This is because, if consumers within the
defendant's territory are consciously aware of the reputation of the mark
or name in question, even though it is exclusively, or even essentially, used
outside the territory, they may presume, when such mark or name is used
by the defendant, that the plaintiff has now established a presence in that
territory. When dealing with India, for example, many reputed brands, and
names, which earlier had no presence in India, though they commanded a
global reputation, have now established a presence within India.
119. One may, for example, consider a mark such as Burger King. Till a
decade or so ago, Burger King had no presence in India. Even so, it had a
global reputation, and many consumers in India, who were fond of
burgers, were aware of the existence of the Burger King franchise. If,
therefore, some adventurous entrepreneur, in India, decided to set up a
Burger King outlet, before Burger King officially established a presence in
this country, it might have amounted to passing off, given the fact that
Burger King had a global reputation, and that reputation had percolated
into India, through promotional material, literature, advertisements, and
the like, even if there was no physical Burger King outlet within this
country. Of course, if Burger King were to bring a passing off action
against such entrepreneur, the onus would be on Burger King to prove
that its global reputation had percolated into India so that it could be said
to enjoy trans-border reputation within this country.
120. We, therefore, entirely agree with the learned Single Judge that “the
existence of goodwill and reputation has to be shown to exist in India and
worldwide or global goodwill and reputation, sans any evidence of
territorial goodwill and reputation, will be insufficient to succeed in a
claim of passing off and thus yardstick to judge the claim of passing off
will be “prior user” in India”. Of course, mere priority of user in India
may not be sufficient to sustain a claim of passing off unless the plaintiff
ascertaining the claim is able to establish that such prior user has resulted
in accumulation of goodwill and reputation in the mark that it seeks to
assert.
xxx xxx xxx
122. Having returned the aforenoted findings on law, the impugned
judgment proceeds to apply these principles to the facts. The learned
Single Judge has, in this context, held that:
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(i) neither CSL, nor VIP, was able to make out a case of trans-border
reputation, prior to the commencement of the use, by them, of the
CARLTON mark in India;
(ii) within India, CSL had priority of user, of the CARLTON mark;
and
(iii) CSL had been able to prove, prima facie, existence of sufficient
goodwill and reputation as would justify injuncting VIP from use of
the CARLTON mark in respect of goods covered by Class 18.
xxx xxx xxx
125. The learned Single Judge holds in paras 57 to 61 (reproduced in para
37 supra) of the impugned judgment [Carlton Shoes Ltd. v. VIP Industries
Ltd., (2023) 6 HCC (Del) 741] , that VIP has not been able to make out a
case of sufficient trans-border reputation, prior to the commencement of
the use, by it, in India, of the CARLTON mark. In so holding, the learned
Single Judge notes that:
(i) there was nothing to indicate that the promotional material, relied
upon by VIP, was extensively and widely published or circulated in
India, so as to result in spillover of the goodwill and reputation of the
CARLTON mark, as used by CIPLC, into India;
(ii) prior to the use, by VIP, of the CARLTON mark for travel luggage
in 2006, there was no material to indicate that any goods bearing the
CARLTON mark, manufactured by VIP or CIPLC, had a customer
base in India;
(iii) nor was there any indication that CIPLC or, prior thereto,
Raxvale, had any presence in India or in the Indian market;
(iv) VIP had referred to certain advertisements and price lists dating
back to the 1980s and 1990s, but there was no material to show that
customers in India were aware of these advertisements or price lists;
and
(v) there were no documents to evidence sales, in India, by CIPLC or
Raxvale, of goods bearing the mark CARLTON, such as invoices,
bills, delivery documents or photographs of stores.
The learned Single Judge observes that the earliest sales invoice placed on
record by VIP, is dated 11-8-2006. She also notes that the invoices of 2006
and 2007 make no observation or reference to CARLTON. Even if VIP's
stand that the AIRTEC Mark was a sub-brand of CARLTON, was to be
accepted, it would indicate goodwill only as of 22-12-2006. Inasmuch as
the use, by CSL, of the CARLTON mark was of 1992-1993 vintage, the
learned Single Judge holds that there was no evidence, led by VIP, to show
accumulation of any trans-border reputation or goodwill, in the
CARLTON mark, prior to 1992-1993. Thus, she concludes, “absence or
negligible presence of VIPs goods in question under the trademark
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CARLTON in the Indian market space when Carlton started to occupy the
space, defeats VIPs claim of passing off against Carlton”.
126. We have already set out Mr Sibal's submissions hereinbefore, and we
do not find any submission which would serve to dent these findings of the
learned Single Judge in the impugned judgment [Carlton Shoes Ltd. v. VIP
Industries Ltd., (2023) 6 HCC (Del) 741] .
xxx xxx xxx
F. Priority of user, and goodwill, established by CSL
128. As against this, the impugned judgment [Carlton Shoes Ltd. v. VIP
Industries Ltd., (2023) 6 HCC (Del) 741] holds, in para 62 (reproduced in
para 37), that CSL had placed material on record to indicate
accumulation of goodwill of the CARLTON mark, as used by it in India,
prior to the commencement of user of the CARLTON mark by VIP in 2006.
The learned Single Judge refers, in this context, to:
(i) sale invoices of the years 2003 to 2005 along with the list of 24
outlets of CSL, across Delhi, Gurgaon, Noida and Chandigarh;
(ii) certificates of sales figures of the revenue earned by use, by CSL,
of the CARLTON mark in India during the period 1993 to 2018;
(iii) articles extensively figuring in high-profile magazines and
newspapers widely published and circulated in India such
as Cosmopolitan, Femina, Fashion Bloom, Apparel, Society, Outlook,
The Tribune, The Pioneer, HT City, Business Standard, The Hindu,
etc, dating back to March 2004;
(iv) presence on various e-commerce platforms;
(v) VAT registrations dating back to 1993; and
(vi) master data of production under the CARLTON marks by CSL
from 2003.
129. In response thereto, Mr Sibal submits that the material, to which the
impugned judgment [Carlton Shoes Ltd. v. VIP Industries Ltd., (2023) 6
HCC (Del) 741] alludes in para 62, reference the use of the CARLTON
mark, by CSL, for footwear or, at the best, handbags and purses, which
were not allied, cognate or similar to travel luggage. The submission
would apply, equally, to the master data, in which Mr Sibal submits that
there is a sole entry pertaining to luggage, which, too, is of Chinese origin
and is of 2010.
130. In view of our finding, earlier in this judgment, that the goodwill that
is required to be established in order to sustain a claim of passing off is
goodwill in the mark, and not goodwill in the mark as used for any
particular goods or services, the submission of Mr Sibal must, of necessity,
fail. Even if CSL had established goodwill, in respect of the CARLTON
mark, for footwear, that by itself would suffice to maintain a plea for
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injunction against VIP using the CARLTON mark, even if it was for travel
luggage.
131. We, moreover, are not in agreement with Mr Sibal that handbags and
purses are not allied and cognate, or similar goods, vis-à-vis travel
luggage. There is no real basis for this submission, except Mr Sibal's
insistence that handbags and purses are fashion accessories. To our mind,
handbags and purses are also receptacles in which persons carry items for
use by them, though on a much smaller scale than travel luggage. Not
everyone, it is obvious, uses a handbag as a fashion accessory, nor are all
handbags, for that matter, capable of, or even meant for, such use. At least
at a prima facie stage, keeping in mind the circumspection which the
judgment of the Supreme Court in Wander Ltd. case [Wander Ltd. v. Antox
India (P) Ltd., 1990 Supp SCC 727] requires us to maintain while sitting
in appeal, we certainly cannot set aside the judgment of the learned Single
Judge by accepting Mr Sibal's contention that handbags and purses are
not allied and cognate to luggage. Even on merits, the submission appears
to be highly debatable.
132. The finding of CSL having proved the existence of goodwill and
reputation of the CARLTON mark, as used by it for more than 13 years
prior to the commencement of user of the CARLTON mark by VIP for
travel luggage, therefore, does not brook interference.”

52. A similar view was taken by the Coordinate Bench of this Court in
Khadi & Village Industries Commission v. Girdhar Industries and
Another, 2023 SCC OnLine Del 8446, where Defendant No.1 had adopted
the mark GIRDHAR KHADI in 2001 with respect to soaps and detergents in
Class 03 and Plaintiff sought interim injunction being a proprietor of the
mark KHADI. Stand of Defendant No.1 was that there was no evidence of
use of KHADI mark by Plaintiff prior to 2001 or even prior to 2005, when
GIRDHAR KHADI was registered in its favour and the documents on
record did not evidence actual use of KHADI mark for soap or detergents.
Holding that existence of pre-existing goodwill and reputation, prior to
commencement of user of the impugned mark by the Defendant is an
indispensable sine qua non for a passing off action, Court on a prima facie
view that KHADI was unable to demonstrate goodwill and reputation of the
KHADI mark for soaps or detergents prior to 2005, Court declined
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interlocutory injunction claimed on ground of passing off.
53. It would be useful to allude to another judgment of the Division
Bench in Crocodile International Pte. Ltd. v. LA Chemise Lacoste and
Another, 2026 SCC OnLine Del 923. Defendants’ trademark was first
registered in India in 1952 and then in 1990 and subsequently, they
commenced used in India around 1998. Disputes arose when Defendants
began using the standalone saurian device mark without the word mark
CROCODILE and according to the Plaintiffs, the impugned mark was
deceptively similar to their registered CROCODILE device mark. While the
Division Bench found that a case of infringement of trademark and
copyright was made out but claim for passing off was not, due to failure of
the Plaintiffs to establish goodwill and reputation. Relevant passages are as
follows:-
“17.96 In Laxmikant V. Patel v. Chetanbhai Shah, the Supreme court
further elaborated on the concept of passing off. It was held that the
essential elements of a passing off action are the establishment of
goodwill, misrepresentation, and damage or likelihood of damage to the
plaintiff's goodwill, as follows:
“7. Though there is overwhelming documentary evidence filed by the
plaintiff in support of his plea that he has been carrying on his
business in the name and style of Muktajivan Colour Lab since long
we would, for the purpose of this appeal, proceed on the finding of
fact arrived at by the trial court and not dislodged by the High Court,
also not seriously disputed before this Court that the plaintiff has been
doing so at least since 1995. Without entering into controversy
whether the defendants had already started using the word
“Muktajivan” as a part of their trade name on the date of the
institution of the suit we would assume that such business of the
defendants had come into existence on or a little before the institution
of the suit as contended by the defendants. The principal issue
determinative of the grant of temporary injunction would be whether
the business of the plaintiff run in a trade name of which
“Muktajivan” is a part had come into existence prior to
commencement of its user by the defendants and whether it had
acquired a goodwill creating a property in the plaintiff so as to
restrain the use of the word Muktajivan in the business name of a
similar trade by a competitor i.e. the defendants.
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*
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 ….”
(emphasis added)
17.97 Similarly, in Toyota Jidosha Kabushiki Kaisha (supra), the Court
emphasized that the likelihood of confusion is a key factor in determining
whether an action for passing off can be made out. The plaintiff must
demonstrate substantial goodwill in the territory where the action is
sought. If such goodwill is not established, further examination is
unnecessary.
17.98 Adverting to the facts of the present case, Lacoste provided both
documentary and oral evidence to establish its goodwill and reputation in
India. The following evidence was presented:
(i) Ex. PW 1/15 - Electronic evidence of advertisements and articles in
magazines and newspapers was rightly deemed inadmissible due to
the lack of a certificate under Section 65B of IEA, as per the
principles laid down in Arjun Panditrao Khotkar v. Kailash
Kushanrao Gorantyal. Additionally, there were no witnesses to
provide the necessary foundational evidence for such records and
maintenance of the device concerned.
(ii) Ex. PW 1/16 - The Survey Report was rejected for two reasons: (a)
it pertained to 2004, whereas reputation needed to be shown as of
1998, and (b) it lacked information regarding the methodology,
sample size, and other relevant details.
(iii) Ex. PW 2/5 - The CA certificate was held to be inadmissible
because it lacked the accompanying invoices, documents, ledgers, etc.
hence, the same were not verified or cross-examined and because the
concerned CA was also not summoned. Instead, the plaintiffs
attempted to prove the authenticity through PW 2, who is admittedly
not a CA.
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17.99 Hence, following the principles laid down in Laxmikat V. (supra), to
sustain a passing off claim, Lacoste was required to establish goodwill or
reputation in India prior to and at the time of commencement Crocodile
International's use of the impugned mark in 1998.
17.100 The learned Single Judge rejected Lacoste's claim for passing off,
primarily due to the failure to prove, with admissible and reliable
evidence, that Lacoste had substantial reputation or goodwill in India as
of 1998.
17.101 The learned Single Judge held that press articles, advertisements,
photos, and the survey report were produced as electronic records without
the mandatory certificate required under Section 65B of IEA, therefore,
rendering them inadmissible and ineffective.
17.102 Regarding the survey report (Ex. PW 1/16), it was held that it
reflected public perception in 2004, whereas Lacoste was required to
establish its reputation as of 1998. Additionally, the CA certificate
pertaining to turnover and advertising was treated as insufficient because
it lacked the necessary supporting documents, and the CA was not made
available for examination or cross-examination.
17.103 Lacoste contended that requiring the CA certificate to be supported
by all the underlying documents would defeat its purpose. However, the
learned Single Judge rightfully held that the Supreme Court, in CBI v. V.C.
Shukla, had affirmed that such documents must be corroborated to be
considered credible evidence. It was held that “even correct and authentic
entries in books of account cannot without independent evidence of their
trustworthiness, fix a liability upon a person”.
17.104 Furthermore, the learned Single Judge rightly observed that, at the
final stage of trial, the evidence must be scrutinized more rigorously, as it
directly impacts the final determination of the rights and liabilities of the
parties. The court cannot rely solely on prima facie evidence at the final
stage but must ensure that evidence complies with relevant procedural
laws.
17.105 This Court concurs with the learned Single Judge's finding
regarding the issue of passing off. Since the evidence presented by Lacoste
relating to goodwill and reputation was found inadmissible, the Court
does not need to examine the other elements of passing off, as per the
decision in S. Syed Mohideen (supra).
17.106 Therefore, it is held that Lacoste has failed to establish a case for
passing off.
17.107 This issue is decided in favour of the defendants and against the
plaintiffs.”

54. In Rexcin Pharmaceuticals P Ltd. v. Rekin Pharma P Ltd. and
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Another, 2026 SCC OnLine Del 3159, Coordinate Bench of this Court was
dealing with a rectification petition filed under Section 57 of 1999 Act for
cancellation of registration of the mark REKIN-SP at the instance of the
Petitioner who was using the mark REXCIN and in which it had certain
registrations, with user claim dating back to 16.12.2003. Defence of
Respondent No.1 was that it was a bona fide and prior adopter of the mark,
having used the same since 2017 in the course of trade for pharmaceuticals
sold directly to end consumers and was also the registered proprietor of the
mark in Class 05, whereas Petitioner had no registration in the mark
REXCIN in Class 05 as also that there was no overlap in goods and services.
Examining the documents placed on record by the respective parties, Court
first took note of the fact that Petitioner’s mark REXCIN was not registered
in any class and no application for registration was pending and therefore,
the mark was not an earlier trademark as contemplated under Section 11 of
1999 Act. On the user of the mark REXCIN, Court held that there was no
material on record to demonstrate use of the mark REXCIN in relation to
any pharmaceutical products. Sample invoices placed on record showed that
the products sold through the invoices did not refer to the trademark
REXCIN but merely reflected trading transactions with a third party and
Petitioner’s trade name. Similarly, the Chartered Accountant’s certificates
only showed the turnover of the Petitioner but did not evidence use of the
trademark REXCIN for its products and in fact, the products produced for
inspection by the Court during the course of hearing also did not show the
mark REXCIN. In light of these observations, Court returned a finding that
material on record unequivocally established that Petitioner had not used the
mark REXCIN as a source identifier in relation to pharmaceutical products
nor was it selling the products under the said mark at the time of adoption of
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the impugned mark REKIN-SP by Respondent No.1 in 2017 and even
thereafter.
55. Significantly, the Court also found that Petitioner had not placed on
record any details of expenses incurred on advertisement and promotion of
the trademark REXCIN, as none would exist and this would be relevant to
show that Petitioner was not using the mark as a trademark and therefore,
there was no evidence of reputation and goodwill in the mark REXCIN in
2017, when Respondent No.1 adopted the impugned mark as a trademark for
its products in Class 05. Noting the three essential ingredients of passing off
action being goodwill, misrepresentation and damage, Court held that
existence of goodwill generated by the claimant through the use of the mark
as a source identifier in the course of business was central to a claim of
passing off and it is only when the proprietor establishes such goodwill by
prior and continuous use of the mark, it can maintain an action for passing
off, of course, with the other two ingredients being fulfilled. It was further
observed that in the absence of any use of the mark REXCIN as a badge of
origin recognizable by consumers, the foundational element of passing off
i.e. misrepresentation was wholly absent. Reiterating that Petitioner was
unable to show use of the mark REXCIN as a trademark in relation to its
pharmaceutical products and Respondent No.1 was the prior adopter of the
impugned mark, Court held that claim of passing off was devoid of merit
and accordingly, the objection raised by the Petitioner under Section
11(3)(a) of 1999 Act was held to be untenable.
56. The judgments relied upon by ASR do not further its case. There can
be no quarrel with the proposition of law in Laxmikant V. Patel (supra) that
in a passing off action, fraud is not a necessary element and absence of
intention to deceive is not a defence albeit passing off cases are often cases
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of deliberate and intentional misrepresentation and to this extent, reliance on
the judgment is correct. However, it is not understood how this furthers the
case of ASR. For succeeding in the case of passing off, ASR was required to
show goodwill, misrepresentation and damage, but as noticed above, it has
failed in proving goodwill in the mark FITFEAST and therefore, it is
unnecessary to delve into the issue of misrepresentation and/or intent.
Again, reliance on Satyam Infoway (supra) is correct to the extent that it is
not essential to prove long use to establish reputation, however, in the
instant case, ASR has not established reputation in the mark in question, for
reasons aforesaid and therefore, the length of use is irrelevant to the present
controversy.
57. Judgment of the Supreme Court in S. Syed Mohideen (supra),
undoubtedly lays down the law that rights of a prior user are superior to any
other right including the right of a registered proprietor but in the present
case, prior use of FITFEAST as a trademark has not been established and
therefore, the judgment is inapplicable. Judgment of the Division Bench of
this Court in Marico Ltd. (supra), also does not apply to the present case as
ASR has failed to prove that the registration of
in favour of
Fitship is violative of relative grounds or absolute grounds of refusal of
registration under Section 9 and Section 11 of the 1999 Act, respectively.
Judgment of this Court in V. Guard (supra), deals with sub-branding and
does not help ASR, as it is neither parties’ case that FITFEAST is used by
ASR for its nutritional plan services as a sub-brand of FITPASS and for the
same reason, judgment in FMI Limited (supra), also does not apply.
Judgment in Havells India (supra), pertains to use of the mark REO with
the house mark HAVELLS and issue in the said case was whether the use of
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the house mark was enough to distinguish the rival marks and does not help
ASR since the rival marks in the present case are FITFEAST and
and there is no use of a house mark.
58. In FDC Limited v. Docsuggest (supra), this Court held that
allied/cognate goods/services are those which are not identical but can be
said to be related or similar in nature and returned a finding that medicines
in Class 05 and services pertaining to booking of appointments for doctors,
diagnostics etc. were allied and cognate. In the instant case, the
classification of goods is not relevant sans the existence of goodwill and
reputation of ASR in the marks in question albeit this Court has held in
earlier part of the judgment that the services of ASR under FITFEAST and
the products of Fitship were in two different classes and the consumers in
question are discernable with no scope of confusion, particularly, owing to
the fact that subscribers of ASR can access the services under FITFEAST
either through the mobile application under the trademark FITPASS or
through website operating under the FITPASS trademark through the
domain www.fitpass.co.in . Any consumer searching for such services online
would be able to avail the services of ASR only once it is able to access the
website or mobile app through FITPASS and such a consumer when
confronted with the impugned products being high protein snacks under
will be able to recall only the mark FITPASS and not the
mark FITFEAST, under which ASR renders its services relating to nutrition
plans etc. and there will be no likelihood of confusion in the mind of such a
discerning consumer. Therefore, even assuming that the services of ASR
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and goods of Fitship are allied and cognate, for the sake of argument, sans
likelihood of confusion and existence of goodwill in the mark FITFEAST,
no case of passing off can be made out and the judgment does not help ASR.
For the same reason, judgments in Bourjois Limited (supra) and Wipro
Enterprises (supra), dealing with allied and cognate goods will be
inapplicable to the present case. The judgment in Mayo Foundation
(supra), reinforces the principle laid down in Midas Hygiene Industries (P)
Ltd. and Another v. Sudhir Bhatia and Others, (2004) 3 SCC 90, that delay
alone cannot be a ground to deny injunction if the adoption of the mark is
dishonest. In the instant case, Court has come to a finding that adoption of
the mark
by Fitship is not dishonest and the judgment is
thus inapplicable. The judgment in T.V. Today (supra), cited by ASR deals
with hashtags and its relevance to the present case is not understood.

59. In light of the judicial precedents and the factual foundation of the
instant case, I am of the view that there is no material on record, which
evidences use of the mark FITFEAST as a standalone mark by ASR
indicating that it is a source identifier and consequentially, ASR is unable to
establish the existence of goodwill and reputation in the said mark in 2021,
when Fitship adopted the mark
for its products being
protein rich snacks. Hence, in the absence of goodwill and reputation in the
mark FITFEAST, one of the essential ingredients of claim of passing off,
ASR is unable to make out a case for cancellation of registration of the
impugned mark under Section 11(3)(a) of 1999 Act.
60. There is also merit in the contention of Fitship that ASR is unable to
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make out a case under Section 11(10)(ii). Fitship has detailed reasons for
adopting the mark
for its protein rich snacks. It is stated that
the adoption of the mark has its genesis in the personal experiences of its
founder Mr. Aditya Poddar, who through grit and determination underwent a
personal health transition in 2016, wherein his journey through weight loss
sparked a deep interest in nutrition awareness and role of protein and hence,
in 2021, he conceived the idea of starting a company, which would cater to
this need and the mark
was adopted. Fitship offers a diverse
portfolio of products under the mark
and operates at the
intersection of health and taste targeting a wide demographic. The mark was
registered in 2021 after following the due procedure with the Trade Marks
Registry. It is also brought forth that before adopting the mark, due diligence
was exercised to ensure that adoption of the mark does not impinge on the
intellectual property rights of a third party. Specifically, search was
conducted on publicly available database of Trade Marks Registry for any
third party trademark applications or registrations for FITFEAST trademarks
and the search revealed that there were no registered marks or pending
applications for FITFEAST mark including that of ASR, in any class of
goods or services. An independent search was carried out to determine
availability of any domain name constituting FITFEAST trademarks on
public search platforms such as WHOIS etc., which also showed that there
were no domain name registrations subsuming the FITFEAST mark. In fact,
as an exercise of abandoned caution, an independent Google search through
Google power tools such as Google Trends was also conducted to ensure
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that FITFEAST trademarks were not otherwise in use by any third party and
the data indicated that up until 2021, the search volume for the term
FITFEAST was negligible. It is also averred by Fitship that a significant
uptick was observed in search traffic near 2022-2023 after Fitship’s business
expanded and proliferated considerably. In my view, this justifies the
adoption of
mark by Fitship as all possible due diligence
was exercised before adopting the mark.
61. It is a matter of fact that in 2021, when Fitship adopted the mark, ASR
had not even applied for registration of the FITFEAST mark and admittedly,
the applications for registrations were filed only on 31.03.2025, well after
the adoption and registration of the mark by Fitship. There is also substance
in the contention of Fitship that if the mark was genuinely adopted and used
by ASR in 2017 and was continuously used, why an application for
registration was not filed for eight long years. This failure of ASR brings to
my mind an observation of the Supreme Court in Pernod Ricard (supra),
where it was observed that “ the life of a trademark depends upon the
promptitude with which it is vindicated. ”. While it is settled that it is not
necessary for a passing off action to have registration, however, this is an
added factor, which points to the fact that even ASR did not believe that
FITFEAST was a trademark under which it was rendering services of
nutrition plans etc. It may also be noted that admittedly, after Fitship applied
for registration, ASR did not file any opposition for reasons best known to
ASR and this reinforces the case of Fitship. Therefore, it is held that Fitship
has not adopted the mark
in bad faith and ASR has failed to
make out a case under Section 11(10)(ii) of 1999 Act.
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62. Be it noted that while ASR has pleaded grounds under Sections 11(4)
and 12, none of them were pressed during course of hearing. Insofar as
Section 9(2)(a) is concerned, ASR has wrongly understood and pleaded its
case as one of confusion/deception arising out of its allegedly identical
FITFEAST mark and has confused the objection under Section 9(2)(a) with
an objection under Section 11(1). Section 9(2)(a) applies only where the
mark is inherently confusing or deceiving and does not permit the Court to
travel outside the mark for comparative analysis with an earlier mark, a
determination envisaged under Section 11(1). There is no pleading that the
impugned mark is inherently confusing/deceiving and perhaps, this is for the
reason that ASR’s own claim in the present petition is based on the mark
FITFEAST. Therefore, there is no merit in the objection under Section
9(2)(a).
63. For all the aforesaid reasons, this petition for cancellation and
rectification is dismissed and disposed of.
64. Pending application also stands disposed of.
I.A. 9122/2025 in CS(COMM) 320/2025
65. This is an application under Order XXXIX Rules 1 and 2 read with
Section 151 CPC filed by ASR seeking restraint against Fitship from using
the impugned mark
.
66. The impugned mark of Fitship is registered and hence, interlocutory
injunction is sought only on ground of passing off. While deciding the
aforesaid rectification petition, this Court has taken a view that ASR has
failed to make out a case of existence of goodwill and reputation in the mark
FITFEAST, basis which it seeks restraint against Fitship from use of the
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mark
and has dismissed the rectification petition. In fact, a
finding is rendered that ASR is unable to substantiate its claim that
FITFEAST is used in the trademark sense. The three essential ingredients of
tort of passing off are goodwill, misrepresentation and damage. In the
absence of existence of goodwill in the mark FITFEAST in relation to
ASR’s services of nutrition and wellness plans etc. on the date when Fitship
adopted the impugned mark
, no prima facie case of
passing off is made out by ASR. In the plethora of documents filed by ASR
along with the plaint, there is no cogent material which even suggests prima
facie that ASR was rendering services under FITFEAST mark as a
standalone mark with an independent goodwill and reputation and as noted
above, save and except, for some scant use of FITFEAST independently,
most documents reflect that ASR operated predominantly under the mark
FITPASS. ASR has not placed on record any sales invoice or CA certificate
showing sales figures or marketing expenses separately for services under
FITFEAST and in fact, there is a candid admission in the pleadings that
ASR is unable to bifurcate and provide separate data for revenues earned
and expenses incurred under the FITFEAST mark. On the other hand,
Fitship has filed documents demonstrating adoption of the trademark
from 2021 as also its use through bills and invoices, which
reflect sales and payments received as also made to third parties towards
promotional activities. Screenshots have been placed on record showing
social media accounts and LinkedIn, Instagram and Facebook pages with the
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impugned mark, promotional campaign by one of the celebrated cricketers
who is also an investor, listings on third party e-commerce websites such as
Amazon, Flipkart, Zepto and listings on Blinkit, JioMart, Meesho etc., all of
which clearly showcase the use of the mark
in relation to
Fitship’s products i.e. high protein snacks etc., which are subject matter of
this suit. Additionally, Fitship has also placed on record photographs of
actual products being sold in the retail stores and advertisement library on
Meta online records and e-mails pertaining to marketing campaigns apart
from Diwali catalogues and copies of agreements with third parties such as
Amazon, M/s Poptech Growth Private Limited and Shiprocket Limited, in
respect of products under the impugned mark. Fitship has also placed on
record screenshot of YouTube post by Shark Tank India and most
importantly, Fitship has filed a CA certificate dated 27.06.2025 certifying
the turnover from Financial Year 2021-2022 to May, 2025 under the mark
. Articles in popular newspapers such as Times of India and
magazines such as Business Standards have been filed evidencing actual
sale of products under the
mark. No evidence of actual
confusion has been filed by ASR depsite the fact that Fitship is using the
mark from 2021, save and except, a solitary Instagram post claiming that
owing to the adoption of the impugned mark, there is mixed reaction
amongst members of public, which to my mind, is not enough to grant
injunction against Fitship in the absence of making out a case of goodwill
and reputation even prima facie , in the mark FITFEAST. Therefore, it is
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held that ASR has been unable to prove one of the essential ingredients of
passing off as also one of the requirements under the trinity principle of
establishing of prima facie case for grant of interlocutory injunction against
Fitship.
67. In light of the aforesaid, it is held that ASR is not entitled to
interlocutory injunction, as prayed for and the application is dismissed with
the usual mantra that any observation or finding in this judgment will have
no bearing on the final adjudication of the suit.
CS(COMM) 320/2025
68. List before the Joint Registrar on 25.09.2026.



JYOTI SINGH, J.
S.Sharma/YA
AUGUST 31 , 2026 /
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