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Introduction

In N.Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods (O.S.A.(CAD) No.3 of 2022), the Madras High Court, on 28 July 2026, held that a trademark with strong reputation in one line of business can be protected even when another trader uses the identical mark for entirely different goods. The dispute involved the incense-stick brand “CYCLE” and an edible oil trader using the same word and a similar device. Reversing the Trial Court’s dismissal, the Division Bench restrained the oil company despite the products being unrelated, holding that the incense-stick maker’s decades of goodwill in “CYCLE” extended beyond incense sticks. The judgment shows how Indian trademark law can protect a reputed mark – short of formal “well-known mark” status – beyond the goods it is used for.

Facts of the Case

Manufacturing incense sticks since 1948 and among India’s largest exporters, the plaintiff became a private limited company in 2014. It adopted the mark “CYCLE” in 1954, registered it under several classes including 29 and 30 (food products), and claims “well-known trademark” status under Section 2(1)(zg) of the Trade Marks Act, 1999.

The plaintiff discovered the defendant using the identical mark “CYCLE” for edible oil products under Class 29, and filed suit seeking a permanent injunction restraining infringement and passing off, with accounts of profits and surrender of offending labels, blocks and dies.

The defendant claimed to have used “CYCLE” for edible oils since 2009, argued that the plaintiff’s Classes 29/30 registrations were only “proposed to be used” and liable to cancellation for non-use, that “CYCLE” is an ordinary dictionary word incapable of monopoly, and that edible oils and incense sticks are neither allied nor cognate goods.

By judgment dated 17.08.2021, the Trial Court dismissed the suit with costs, holding that the plaintiff’s reputation was confined to “Cycle Brand Agarbathies”, that “CYCLE” is a common dictionary word, that the goods were neither allied nor cognate, that actual use on food products was unproven, and that the defendant had adopted the mark arbitrarily and was the prior user for edible oils. The plaintiff appealed.

Argument in Favour

The appellant argued that the Trial Court had misread the pleadings and evidence, wrongly confining “CYCLE”‘s reputation to “Cycle Brand Agarbathies” and ignoring the Classes 29/30 registrations, when its documentary evidence – registration certificates, invoices, advertisements and awards – showed nationwide reputation and a “secondary meaning” transcending the word’s dictionary sense. Under Section 29(4), it was enough to show reputation in India and that the respondent’s use, without due cause, took unfair advantage of that reputation – not reputation in the respondent’s specific class of goods. The respondent had given no explanation for adopting the identical mark and device, warranting an adverse inference rather than a finding of honest adoption. A side-by-side comparison showed the marks differed only trivially (oval versus rectangular device), and courts have held that an average consumer, lacking the mental acumen of a Sherlock Holmes, is guided only by overall impression – reinforced here by both products being FMCG sold in the same kirana stores. The appellant also disputed the finding that no dilution had been pleaded.

Argument Against

The respondent maintained it had used “CYCLE” for edible oils since 2009 and was the prior user for that category; the appellant’s Classes 29/30 registrations were only “proposed to be used” and liable to cancellation absent actual commercial use. “CYCLE” being an ordinary dictionary word, the appellant could not monopolise it, and since agarbathies and edible oils are neither allied nor cognate, there was no real possibility of confusion. It denied any dishonest intent or attempt to ride on the appellant’s goodwill, and supported the Trial Court’s dismissal.

Court’s Decision

The Division Bench framed the real question as not who used the mark first, but whether the respondent could use an identical mark on different goods once the appellant had already built substantial reputation.

Disagreeing with the Trial Court, the Bench held the appellant’s evidence – registration certificates, invoices, advertisements and awards – proved reputation extending beyond agarbathies to the mark “CYCLE” itself, drawing support from three of its own earlier “CYCLE” rulings: Mahendra T.Thakkar and another v. N. Ranga Rao & Sons Pvt. Ltd. (25.10.2019, C.S.No.296 of 2018), recognising the brand’s decades-old reputation; N. Ranga Rao and Sons Private Ltd. v. Sriman Industries (04.11.2019, C.S.No.260 of 2017), extending that reputation to “pooja products”; and N. Ranga Rao and Sons Private Ltd. v. M/s. Shyam Detergents and another (16.11.2021, C.S.No.101 of 2006), holding the “CYCLE” brand well known, with goods used by consumers “from all walks of society”. The Court found “CYCLE” had acquired a “secondary meaning” despite being a dictionary word – applying the Supreme Court’s reasoning in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147 (upholding an interim injunction for “Mahindra” after five decades’ use) and T.V. Venugopal v. Ushodaya Enterprises Ltd. and Another, (2011) 4 SCC 85 (protecting the descriptive word “Eenadu” against a dishonest adopter, for unrelated goods).

On protection across dissimilar goods, the Court relied on the Calcutta High Court Full Bench in Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills, (2009) SCC OnLine Cal 531, which held that differing goods alone do not defeat a passing-off claim where confusion is otherwise likely, holding Rustom Ali Molla v. Bata Shoe Co. Ltd., AIR 1957 Cal 120, “no longer good law”. It had weighed the Privy Council’s “Elephant Cigarettes” ruling (Thomas Bear & Sons (India) Ltd.), where no confusion was found, against the Delhi High Court’s protection of “Benz” against unrelated hosiery goods.

Applying Section 29(4) – which protects a reputed mark against use on dissimilar goods where the use, without due cause, “takes unfair advantage of or is detrimental to” its distinctive character or repute – the Court held all three requirements met: the mark’s reputation predated 2009; the respondent gave no credible explanation for choosing “CYCLE” despite admittedly using several other brand names over the years; and the unexplained adoption was likely to unfairly benefit from and dilute the mark. Proof of actual confusion or loss was not required. The “prior user” defence failed, since the burden to prove honest, independent adoption was not discharged. Section 2(1)(zg) formed only the background; the operative findings rested on Section 29(4).

The appeal was partly allowed, the Trial Court’s judgment set aside, and a permanent injunction granted restraining use of “CYCLE” or the cycle device on edible oils or any other goods, with surrender of offending labels, blocks and dies within eight weeks. Passing off and accounts of profits were refused for want of evidence, with no order as to costs.

Conclusion

The judgment shows how Indian trademark law can protect reputation built over decades in one product category even when a trader adopts the identical mark for unrelated goods, provided the conditions of Section 29(4) are satisfied. An “ordinary dictionary word” does not, by itself, defeat such protection: sustained commercial use can transform it into a source identifier deserving legal safeguard. Yet the ruling is fact-sensitive – passing off and accounts of profits were declined where evidence fell short, showing that Section 29(4) protection is not automatic. For businesses with an established brand, this is a reminder that such investment can be defended beyond the immediate product line; for new entrants adopting an existing mark, a caution that failing to explain the choice can prove costly.