{"id":150036,"date":"2026-06-23T08:00:53","date_gmt":"2026-06-23T02:30:53","guid":{"rendered":"https:\/\/www.bananaip.com\/intellepedia\/?p=150036"},"modified":"2026-06-21T22:45:34","modified_gmt":"2026-06-21T17:15:34","slug":"flying-under-false-colours-trademark-passing-off-between-registered-mark-owners","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/flying-under-false-colours-trademark-passing-off-between-registered-mark-owners\/","title":{"rendered":"Flying Under False Colours: Trademark Passing Off between Registered Mark Owners"},"content":{"rendered":"

Background<\/strong><\/h2>\n

Where both contestants in a trademark dispute carry registration certificates for the same mark used on the same goods, trademark passing off between registered proprietors becomes the only available battleground: infringement claims neutralise each other, leaving priority of user as the decisive question.<\/p>\n

Reckitt Benckiser India Private Limited (“Reckitt”) is a subsidiary of the global Reckitt group, which traces the ROBIN brand and its associated bird device to 1899 and introduced both in India in 1936. In the 1990s, Reckitt commissioned a designer to reimagine the brand identity; the resulting Flying Bird device, a stylised robin in flight, was released nationally from November 1998. Reckitt obtained copyright registration for the Flying Bird device in 2001 (Registration No. A-59491\/2001) and is the registered proprietor of the Flying Bird device under the Trade Marks Act, 1999 (“Trade Marks Act”) across multiple classes, including in Class 3 for bleaching and laundry preparations with effect from April 7, 1998.<\/p>\n

Sauss Home Products Private Limited (“Sauss”), a manufacturer of washing soaps, powders, and detergent products based in Firozabad, Uttar Pradesh, also holds registered trademarks for a Flying Bird device in Class 35 (2019) and Class 3 (2021, with effect from September 17, 2021). Sauss claimed its predecessor, Sabun Oudyogic Utpadan Sahakari Samiti Ltd, had adopted the Flying Bird device on April 1, 1976, predating Reckitt’s registrations by over two decades. In May 2023, Sauss filed a suit against Reckitt at the Commercial Court, Agra, obtaining an ex parte interim injunction; the Allahabad High Court stayed that order and the proceedings continued before it.<\/p>\n

Reckitt then filed its own suit before the Delhi High Court (CS(Comm) 539\/2023) alleging trademark infringement, copyright infringement, and passing off. On August 14, 2025, a Single Judge granted Reckitt’s interlocutory injunction, restraining Sauss from using the Flying Bird device and from reproducing Reckitt’s copyrighted artistic work. The Single Judge also rejected Sauss’s application for return of the plaint on territorial jurisdiction grounds. Sauss appealed both decisions to the Division Bench (FAO(OS)(COMM) 145\/2025).<\/p>\n

Issues<\/h2>\n
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  1. \n
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    1. \n
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      1. Whether Sauss’s reliance on a prima facie fabricated 1997 newspaper article disentitled it to interim relief under the doctrine of unclean hands.<\/li>\n
      2. Whether the Delhi High Court had territorial jurisdiction given that Sauss was domiciled in Firozabad and its products were listed on IndiaMart, a B2B platform.<\/li>\n
      3. Whether, when both parties hold registrations for practically identical marks on identical goods, Section 27(2) of the Trade Marks Act preserves a right of action for passing off.<\/li>\n
      4. Whether Reckitt established prima facie priority of user and goodwill in the Flying Bird device mark sufficient to sustain an interlocutory injunction.<\/li>\n
      5. Whether the Division Bench could disturb the Single Judge’s discretionary interlocutory order.<\/li>\n<\/ol>\n<\/li>\n<\/ol>\n<\/li>\n<\/ol>\n

        Sauss’s Arguments<\/strong><\/h2>\n
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            • Reckitt’s principal address is in Gurugram and Sauss is based in Firozabad; the appellant’s goods were not sold in Delhi. IndiaMart is a B2B platform on which no retail transactions occur and cannot confer territorial jurisdiction.<\/li>\n
            • Both Sauss and Reckitt are registered proprietors of the Flying Bird device. Sections 28(3) and 30(2)(e) of the Trade Marks Act give each registered proprietor the right to use its own mark; no infringement action can lie against a fellow registered proprietor.<\/li>\n
            • The simultaneous co-existence of identical registrations for identical goods generates triable issues of honest and concurrent user that preclude a court from granting an injunction at the interlocutory stage.<\/li>\n
            • Reckitt became aware of Sauss’s use of the Flying Bird device by May 2017 and again by August 2022 but filed the suit only in August 2023. That delay disentitles Reckitt to urgent interim relief.<\/li>\n
            • The Sainik Newspaper article was produced in direct response to a court direction to file best evidence of prior user. Sauss had filed an application to summon the editor-in-chief of the newspaper to explain the apparent discrepancy; absent that testimony, a finding of fabrication was premature.<\/li>\n
            • Restraining Sauss from using its own registered mark is tantamount to civil death for an enterprise whose entire product range carries that mark.<\/li>\n<\/ul>\n<\/li>\n<\/ul>\n<\/li>\n<\/ul>\n

              Reckitt’s Arguments<\/strong><\/h2>\n