Absence of Reputation in Standalone Mark and Target Audience Discernment Preclude Passing Off Injunction

The Appellant, a well-known civil services coaching institute, is the registered proprietor of the marks ‘VAJIRAM & RAVI’, ‘VAJIRAM & RAO’, and the word mark ‘VAJIRAM’

The Respondent, operating in the same field, uses the registered device mark ‘VAJIRAO & REDDY INSTITUTE’ and the word ‘VAJIRAO’ as a domain name

The Appellant filed a suit in 2019 seeking an interim injunction, alleging that the Respondent's use of ‘VAJIRAO’ is deceptively similar to their mark ‘VAJIRAM’ and acts as an abbreviation of their former mark ‘VAJIRAM & RAO’

The Appellant claimed they only discovered the Respondent in 2018

The Single Judge denied the injunction on 14.09.2023, citing lack of confusion and delay in filing the suit

1. Whether the Respondent’s composite mark ‘VAJIRAO & REDDY INSTITUTE’ is deceptively similar to the Appellant’s marks ‘VAJIRAM & RAVI’ or ‘VAJIRAM & RAO’ so as to constitute passing off

2. Whether the Appellant established sufficient goodwill in the standalone mark ‘VAJIRAM’ to restrain the Respondent’s use of ‘VAJIRAO’

3. Whether the Appellant’s delay in filing the suit and subsequent inaction in prosecuting the trial disentitles them to interim relief

The court applied the principles of passing off, requiring proof of goodwill, misrepresentation, and likelihood of confusion

It relied on Khoday Distilleries Ltd. v. Scotch Whisky Association regarding the "discerning consumer" test for target audiences

It applied the "anti-dissection" rule, comparing composite marks as a whole

Under Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, a plaintiff must provide sales and advertisement figures to establish reputation

Regarding delay, the court cited Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., holding that unexplained silence prejudices defendants using a mark extensively

Finally, the scope of appellate interference was governed by Wander Ltd. v. Antox India P. Ltd., which limits interference to cases where discretion is exercised arbitrarily or perversely

The Court observed that the rival composite marks, when viewed as a whole, are distinct due to different suffixes (‘RAVI’ vs. ‘REDDY’) and unique logos

It found that the target audience—aspirants for the Indian Civil Services—is highly educated and discerning; evidence from student interviews showed they recognized the institutes as separate entities

The Court noted that the Appellant failed to provide evidence of independent goodwill for the standalone word ‘VAJIRAM’

Critically, the Court found the Appellant’s claim of ignorance regarding the Respondent's existence until 2018 "unconvincing," as both had advertised in the same magazines since 2009

The Appellant’s subsequent failure to lead evidence since issues were framed in 2020 further weakened their case for urgent discretionary relief

The Court held that the marks are not deceptively similar and that the balance of convenience favors the Respondent due to their long-standing open use and the Appellant’s unexplained delay

The Court directed the Appellant to commence recording evidence in July 2026, stipulating that failure to conclude the trial expeditiously may result in the dismissal of the suit for non-prosecution