Registration is no defense to passing off where a proprietor deceptively stylizes marks to misrepresent goods.

The Plaintiffs, owners of the well-known and registered trademark "HAVELLS" (in use since 1942), filed a suit for trademark infringement and passing off

They alleged that Defendant No. 1, while having a registration for the mark "HAVAI" with a serifed 'I', was actually using a stylized version "HAVAI" where the 'I' was designed to resemble the letter 'L'

This was being used for identical electrical goods like air coolers and immersion rods

Plaintiffs further alleged that Defendants misrepresented themselves as authorized dealers by using the term "HAVELLS SPARES" on their website

The Defendants contended that as registered proprietors of "HAVAI," an infringement suit was barred under Section 28(3) of the Trade Marks Act, and that "HAV" was common to the trade

1. Whether an action for passing off is maintainable against a defendant who is also a registered proprietor of a deceptively similar trademark

2. Whether the Defendants' use of the stylized mark "HAVAI" (where 'I' resembles 'L') constitutes passing off and misrepresentation relative to the Plaintiffs' "HAVELLS" mark

The Court applied Section 27(2) of the Trade Marks Act, 1999, which provides that nothing in the Act affects the right of action against any person for passing off

It relied on the "Classical Trinity" of passing off—goodwill, misrepresentation, and damage—established in Reckitt & Colman Products Ltd. v. Borden Inc.

It further applied the principle from S. Syed Mohideen v. P. Sulochana Bai, holding that registration is not a defense to passing off as common law rights are superior to statutory registration

The Court also utilized the "Initial Interest Confusion" test and the "Anti-Dissection Rule," mandating that marks be compared as a whole rather than by individual syllables

The Court found that while the Defendants' registered mark "HAVAI" (with a serif) might be distinct, their actual use of the stylized mark "HAVAI" was a mala fide attempt to mimic "HAVELLS"

The Court reasoned that by removing the serif from the 'I', it was likely to be slurred or misread as 'L', leading to phonetic identity ("Ha-va-L") with the Plaintiffs' well-known mark

The Court observed that the Defendants "strained every nerve" to create an association, evidenced by copying the Plaintiffs' red-and-white and black-and-white color schemes and selling "HAVELLS SPARES"

Applying the Cadila factors, the Court noted the identity of goods (fans, coolers) and the likelihood of confusion among consumers of average intelligence and imperfect recollection

The Court held that the Defendants had deviated from their own registered mark specifically to encash on the Plaintiffs' formidable reputation

The Court granted an ad interim injunction, restraining the Defendants from selling, advertising, or offering for sale any goods under the impugned marks "HAVAI" and its device forms, or any mark deceptively similar to "HAVELLS", during the pendency of the suit