Bombay High Court: In a suit filed under the Trade Marks Act, 1999 (‘Trade Marks Act’), seeking an injunction against infringement and passing off of the registered “Siyaram” trade mark, a Single Judge Bench of Arif S. Doctor, J., held that the plaintiff had established a strong prima facie case. The Court emphasised that the plaintiff had been the registered proprietor of the word mark since 1986, with multiple registrations dating back to 1984, and found that the defendants’ adoption of “Siyaram” was dishonest and intended to exploit the plaintiff’s goodwill and reputation. Consequently, the Court granted interim relief, observing that the balance of convenience lay in favour of the plaintiff and that continued use of the mark would cause irreparable injury.
Background:
The plaintiff was incorporated in 1978 and converted into a public limited company in 1980. Since 1977, even prior to incorporation, the promoters had been engaged in the textile trade under the trade mark “Siyaram” and had continuously and extensively used it in relation to textile goods, securing registrations from 1984 onwards. The plaintiff became widely known across India, manufacturing over 30 million metres of fabric annually, marketed under the trade mark “Siyaram”, and actively promoted through advertisements and fashion events.
In 2007, the plaintiff discovered that the defendants had incorporated a company using the disputed name “Siyaram” and were using the mark in relation to textiles. A cease-and-desist notice was issued, but the defendants denied receipt. The plaintiff then filed the suit seeking injunction, damages, and consequential relief.
The plaintiff argued that the defendants’ adoption of “Siyaram” was dishonest, unsupported by documentary evidence of assignment or goodwill, and that prior user could not be claimed. It was argued that dishonest adoption warranted injunction and that honesty of adoption was irrelevant once infringement or passing off was established.
However, the defendants contended that no action for infringement lay since they were registered proprietors of a composite label, and at best, only passing off could be claimed. They argued that goodwill in “Siyaram” must be strictly proved, that no evidence of confusion or deception was shown, and that “Siyaram”, being the name of a Hindu God, could not be monopolised. They also raised defences of delay, acquiescence, and argued that the plaintiff’s conduct disentitled it to relief.
Analysis and Decision:
The Court emphasised that the plaintiff was the registered proprietor of the word mark “Siyaram” since 1986, with multiple registrations dating back to 1984, and that a strong presumption of validity attaches to a registered trade mark. It was noted that the defendants had not impugned any of these registrations nor alleged illegality or fraud.
The Court observed that the defendants’ reliance on prior use through their predecessor was legally untenable, as the material showed the store was a multi-brand outlet and there was no evidence of assignment or transfer of the trade mark “Siyaram” together with goodwill. It was highlighted that even if prior use were accepted, it dated only to 1992, subsequent to the plaintiff’s adoption and registration of “Siyaram”.
The Court further noted that the defendants’ adoption of “Siyaram” was dishonest and with the full knowledge of the plaintiff’s prior use and immense reputation and goodwill. It was further highlighted that the plaintiff’s reputation and goodwill was such that the plaintiff’s tagline, “Come home to Siyaram” was indelibly etched in public memory. Thus, for someone engaged in an identical trade as the plaintiff to suggest that the plaintiff lacked, or had failed to establish, goodwill was entirely untenable. It was held that once infringement or passing off was established, the honesty of adoption was irrelevant, and the likelihood of confusion was imminent given the identical trade.
The Court rejected reliance on Section 28(3) of the Trade Marks Act, clarifying that registration of a composite label does not confer exclusivity over individual components and affords no defence to passing off. It was observed that goodwill and reputation in “Siyaram” had been amply demonstrated through continuous use, statutory registrations, substantial sales, and certified advertising expenditure.
On the contention that “Siyaram” was the name of a Hindu God, the Court reiterated that there is no provision in the Trade Marks Act prohibiting registration or enforcement of marks comprising names of the Hindu Gods or Deities, and that distinctiveness had been acquired through decades of use.
Finally, the Court held that delay and acquiescence did not defeat relief in cases of dishonest adoption, noting that acquiescence requires a positive act of encouragement, which was absent. Interim relief was granted with the observation that the plaintiff had made out a strong prima facie case. The Court stated that the balance of convenience lay in favour of the plaintiff, since continued use of the impugned mark would dilute the well established mark and cause irreparable injury to goodwill, reputation, and monetary loss.
Accordingly, the Court allowed the notice of motion and disposed of it in terms of prayer.
[Siyaram Silk Mills Ltd. v. Stanford Siyaram Fashion (P) Ltd., 2026 SCC OnLine Bom 161, decided on 13-01-2026]
Advocates who appeared in this case:
For the Plaintiff: Rashmin Khandekar a/w Minesh Andharia, Anand Mohan & Jay Shah i/b Krishna & Saurastri Associates LLP
For the Defendants: Sandeep Parikh a/w Vighnesh Kamat a/w Hemang Engineer, Chetana Gaikwad i/b M/s. Gordhandas & Fozdar