Passing off requires prior standalone trademark use generating goodwill; priority of adoption alone is insufficient.

ASR Market Ventures Private Limited (“ASR”), a fitness and wellness company, claimed adoption and use of the mark FITFEAST since June 2017 for nutrition, healthy-food, wellness-plan and related services offered through its FITPASS platform.

Fitship Private Limited (“Fitship”) obtained registration of a stylised FITFEAST device mark in Class 30 on a “proposed to be used” basis, with registration dating from 30 September 2021, for protein snacks, peanut butter, protein chips, dessert protein bars and whey-protein shakes.

ASR therefore filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking cancellation of Fitship’s registration, and also filed an application under Order XXXIX Rules 1 and 2 CPC seeking an interlocutory injunction in the connected commercial suit.

Fitship denied ASR’s independent use and goodwill in FITFEAST, asserting that ASR’s business was conducted under the umbrella mark FITPASS and that Fitship had independently adopted FITFEAST after conducting searches and due diligence.

1. Whether ASR’s unregistered FITFEAST mark qualified as an “earlier trade mark” under Section 11(1) of the Trade Marks Act, 1999, so as to challenge Fitship’s registration on the ground of similarity and likelihood of confusion?

2. Whether Fitship’s use and registration of the FITFEAST device mark were liable to be prevented under the law of passing off, thereby attracting Section 11(3)(a)?

3. Whether Fitship had adopted the impugned mark in bad faith, attracting Section 11(10)(ii)?

4. Whether the impugned mark was inherently deceptive or confusing under Section 9(2)(a)?

5. Whether ASR had established a prima facie case of passing off warranting an interlocutory injunction under Order XXXIX Rules 1 and 2 CPC?

The Court applied Section 57 of the Trade Marks Act, 1999, concerning cancellation or rectification of a trademark registration; Sections 11(1) and 11(3)(a), which respectively address conflicts with an earlier trade mark and marks whose use is liable to be prevented by the law of passing off; Section 11(10)(ii), concerning bad-faith adoption; and Section 9(2)(a), concerning marks inherently likely to deceive or cause confusion.

For Section 11(1), an “earlier trade mark” must fall within the statutory definition, such as a registered mark, an application under Section 18, or a protected well-known mark; an unregistered mark not covered by these categories cannot ordinarily constitute an earlier trade mark under that provision.

Passing off requires the trinity of goodwill or reputation, misrepresentation, and actual or likely damage; goodwill must subsist in the mark as a source identifier and must exist before the defendant’s adoption.

Priority of adoption alone is insufficient without proof of prior use and consequential goodwill.

In assessing confusion, courts consider the nature and similarity of the marks, the goods and services, their character and use, the class of purchasers, purchasing channels and other surrounding circumstances, as stated in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.

An injunction requires a prima facie case, balance of convenience and likelihood of irreparable injury.

The Court held that ASR’s FITFEAST mark was neither registered nor covered by an application falling within Sections 18, 36-E or 154, and was not shown to be a well-known mark; it therefore could not be treated as an “earlier trade mark” for Section 11(1) purposes.

On passing off, the Court distinguished between ASR’s substantial business reputation in FITPASS and goodwill specifically generated in FITFEAST.

The evidence showed that ASR predominantly marketed and operated its business under FITPASS, that FITFEAST was generally presented as one of several services—often as “FITFEAST by FITPASS”—and that the relevant services were accessed through the FITPASS website or application.

ASR produced no standalone invoices, separate turnover figures, or separate advertising expenditure demonstrating that FITFEAST functioned as an independent badge of origin.

The documents relied upon by ASR, including internal emails, brochures, promotional material and collaboration agreements, did not establish sufficient independent commercial use or goodwill in FITFEAST as of Fitship’s adoption in 2021.

Consequently, the foundational requirement of passing off—prior goodwill and reputation in the asserted mark—was absent, making it unnecessary to examine misrepresentation and damage in detail.

The Court further found Fitship’s explanation of adoption, its searches of the Trade Marks Registry, domain-name databases and Google, and its subsequent commercial use sufficient to negate bad faith under Section 11(10)(ii).

Section 9(2)(a) was held inapplicable because ASR’s objection was based on alleged confusion with its own mark, a comparative inquiry falling under Section 11(1), rather than inherent deceptiveness in Fitship’s mark itself.

The Court also dismissed ASR’s application for interlocutory injunction under Order XXXIX Rules 1 and 2 CPC for failure to establish a prima facie case, while clarifying that the observations would not affect the final adjudication of the connected suit.

The connected suit was directed to be listed before the Joint Registrar on 25 September 2026.