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Introduction

On 30 June 2026, the Kerala High Court in M. Manuel v. Malabar Gold Private Limited (RFA No. 7 of 2016; 2026:KER:46835) delivered a significant judgment in Indian trademark law. It addressed the question of whether a trader can claim exclusive rights over a geographical word simply by building a brand around it. The dispute between “Malabar Gold” and “Malabar Fashion Jewellery” required the Court to examine statutory provisions, the doctrine of prior use, and the evidentiary requirements for passing off. The ruling ultimately draws a distinction between ownership of a word and ownership of a distinctive overall presentation, clarifying the scope of protection available to businesses that adopt geographical expressions in their marks.

Facts of the Case

The defendant claimed to have operated “Malabar Fashion Jewellery” in Delhi/NCR since 1990. However, his earliest verifiable records, including tax returns, advertisements, and registrations, dated from 2004 onward, with his Sales Tax registration obtained only in 2014. The plaintiff, Malabar Gold, began using its mark in 1993. The trademark was registered in 2005, with effect from 2002, in the name of its predecessor, Malabar Realtors (P) Ltd. (Registration No. 426657), and later assigned to the plaintiff.

In 2008, the defendant abandoned his application for registration under Class 14 (goods) and instead obtained registration under Class 35 (services). The plaintiff had issued a caution notice in 2006, which went unheeded, and thereafter filed a suit in 2009 before the Additional District Court, Kozhikode, alleging infringement and passing off.

In 2015, the Trial Court upheld the plaintiff’s exclusive rights, found the defendant’s mark deceptively similar, and granted a permanent injunction together with an order for destruction of infringing material. The defendant appealed to the High Court. By the time the appeal was heard, both parties had altered their logos, and the plaintiff was permitted to place additional turnover and advertising evidence on record.

Argument in Favour 

The appellant argued that since both parties held registrations, Section 28(3) of the Trade Marks Act barred any infringement claim. He relied on S. Syed Mohideen v. P. Sulochana Bai 2016 (2) SCC 683 to contend that where two registered proprietors hold similar marks, neither can assert exclusivity against the other. He further submitted that only the Registrar could resolve classification disputes under Section 7, and that since the validity of registration was effectively in question, Section 124 required the civil court to stay the suit pending rectification proceedings.

The defendant also argued that “Malabar” is a geographical term incapable of exclusive ownership under the proviso to Section 9(1) and Section 32, both of which require proof of acquired distinctiveness for descriptive or geographical marks. He pointed out that the plaintiff’s own registration carried a disclaimer denying exclusivity over the word.

On passing off, he contended that the plaintiff had failed to plead prior use and damage adequately, invoking Section 34, which protects genuine prior users. He argued that the delay since the 2006 caution notice amounted to acquiescence. In support of his submissions, he relied on Abros Sports International Pvt. Ltd. v. Ashish Bansal MANU/DE/3242/2025, Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018) 2 SCC 112, Parakh Vanijya Pvt. Ltd. v. Baroma Agro Products MANU/SC/0722/2018, and Shoranur Metal Industries LLP v. Metal Industries Ltd. 2025 KHC Online 2114.

Argument Against 

The plaintiff countered that the defendant had never pleaded invalidity of its registration or invoked Section 30(2)(e) or Section 124, and therefore those provisions were inapplicable. It emphasised that the defendant had admitted manufacturing and selling jewellery, which fell squarely within Class 14, while his registration was confined to Class 35 services. The defendant had abandoned his Class 14 application, thereby undermining his claim.

The plaintiff argued that “Malabar” had acquired a secondary meaning in relation to jewellery, specifically linked to its business. It relied on Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558, which held that a disclaimer on part of a mark does not erase rights in the whole, and Nilgiri Dairy Farm v. S.A. Rathnasabhapathy 1975 SCC OnLine Kar, which recognised that a geographical-plus-descriptive name can become protectable through use.

It also relied on Section 31, which made the assignment from Malabar Realtors prima facie valid since unchallenged. On delay, it invoked Express Bottlers Services Pvt. Ltd. v. Pepsico Inc. (1991) 11 PTC 296 (Bom) (DB), which held that mere delay does not prove abandonment, without proof of deliberate intent to abandon the mark.

Court’s Decision

The High Court held that Section 28 confers exclusive rights only for the goods or services for which a mark is registered, and Section 28(3) removes exclusivity between two registered proprietors only when both hold marks for the same class. Since the defendant was registered under Class 35 but admitted to trading in Class 14 goods, Section 28(3) did not protect him. The Court distinguished S. Syed Mohideen, which involved identical goods, and followed A. Kumar Milk Foods Pvt. Ltd. v. Vikas Tyagi 2013 SCC OnLine Del 3439.

The Court further held that Section 124 was not triggered because the defendant had not pleaded invalidity or sought a prima facie finding. Following Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018) 2 SCC 112, the Court reiterated that a stay depends on such a finding being made first.

On the word “Malabar,” the Court agreed that it is a geographical term and incapable of monopoly without proof of acquired distinctiveness. The plaintiff had produced no independent evidence, such as consumer surveys, proving that the word alone had acquired distinctiveness. The plaintiff’s own registration disclaimer confirmed this. The Court relied on Parakh Vanijya Pvt. Ltd. v. Baroma Agro Products MANU/SC/0722/2018 and T.V. Venugopal v. Ushodaya Enterprises (2011) 4 SCC 85.

Despite rejecting exclusivity over the word, the Court found that the overall presentation of the defendant’s marks, its lettering, colour scheme, and layout was deceptively similar to the plaintiff’s. Applying the anti-dissection and dominant-feature tests, and the average-consumer/imperfect-recollection test discussed in Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra 2025 SCC OnLine SC 1701, the Court affirmed infringement. It cited Nilgiri Dairy Farm v. S.A. Rathnasabhapathy 1975 SCC OnLine Kar for the principle that a composite mark’s overall look can be protected.

The Court set aside the passing-off findings. It explained that the classical trinity of goodwill, misrepresentation, and damage must be proved, and relied on Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577, which held that goodwill figures must be properly proved through independent certification. Since the plaintiff’s goodwill evidence came only from its own employees and unproved figures produced late in appeal, the passing-off claim failed.

The Court upheld the plaintiff’s prior use, citing Section 34 and S. Syed Mohideen v. P. Sulochana Bai 2016 (2) SCC 683. It held that genuine prior use outweighs registration, and under Section 31, the unchallenged assignment from Malabar Realtors stood accepted. The plaintiff’s documented use from 1993–94 was preferred over the defendant’s unproven 1990 claim.

The Court rejected the defence of delay, following Express Bottlers Services Pvt. Ltd. v. Pepsico Inc. (1991) 11 PTC 296 (Bom) (DB), which held that mere delay does not amount to acquiescence.

The appeal was allowed only in part. Infringement, prior use, and jurisdiction findings were affirmed; the passing-off finding was set aside. The injunction was narrowed to restrain only the defendant’s deceptively similar overall presentation, not the word “Malabar” itself.

Conclusion

The Kerala High Court’s ruling provides important guidance on the treatment of geographical terms in trademarks. It establishes that a geographical word cannot be monopolised without independent proof of acquired distinctiveness. Traders cannot claim exclusivity over such terms merely by adopting them in their marks. However, the Court clarified that while the word itself remains free for use, the distinctive overall presentation built around it can still be protected against infringement.

The judgment underscores the principle that trademark protection lies not in the isolated word but in the composite mark’s distinctive identity. By applying the anti-dissection rule and focusing on the overall impression created by the mark, the Court ensured that consumers are protected from deception while preserving the openness of geographical terms.

Equally significant is the Court’s treatment of passing off. It emphasised that goodwill must be proved through independent and credible evidence, not merely through figures produced by the claimant itself. This reinforces the evidentiary rigour required in passing-off actions and prevents parties from relying on unverified claims of reputation.

The ruling also clarifies procedural aspects. Statutory defences under Sections 30(2)(e) and 124 must be specifically pleaded to be effective. A party cannot rely on these provisions without raising them in its pleadings. The Court’s insistence on proper invocation of statutory mechanisms strengthens procedural discipline in trademark litigation.