Gujarat High Court
Utolish Ali Amir vs M/S Sumo Digital Incorporation on 9 September, 2025
Author: Sunita Agarwal
Bench: Sunita Agarwal
NEUTRAL CITATION
C/AO/185/2025 ORDER DATED: 09/09/2025
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 185 of 2025
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2025
In R/APPEAL FROM ORDER NO. 185 of 2025
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UTOLISH ALI AMIR
Versus
M/S SUMO DIGITAL INCORPORATION
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Appearance:
MR. VISHAL DAVDA, ADV. FOR AADITYA D BHATT(8580) for the
Appellant(s) No. 1
CHANDNI S JOSHI(9490) for the Appellant(s) No. 1
MR DHAIRYA A SHAH(12544) for the Respondent(s) No. 1
MR MONAAL J DAVAWALA(6514) for the Respondent(s) No. 1
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CORAM:HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE SUNITA
AGARWAL
and
HONOURABLE MR.JUSTICE D.N.RAY
Date : 09/09/2025
ORAL ORDER
(PER : HONOURABLE THE CHIEF JUSTICE MRS. JUSTICE SUNITA AGARWAL) Having heard the learned counsels for the parties and perused the record, pertinent is to note that the present Appeal is directed against the judgment and order dated 16.05.2025 passed by the Judge, Commercial Court, City Civil Court, Ahmedabad in granting ad-interim injunction while allowing the application Exh. Nos. 7 and 8 under Order XXXIX Rule 1 of the Code of Civil Procedure, 1908. The application Exh. 54 filed under Order XXXIX Rule 4 of the Code of seeking to vacate the ex-parte interim injunction dated 04.11.2023 has been rejected by the same order.
Page 1 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined
2. While granting the interim injunction, the Commercial Court has proceeded to take note of the provisions contained in Sections 28 and 29 of the Trade Marks Act, 1999, the three tests for grant of interim injunction in relation to the Trademark and applying the primary test on the impugned trademark being identical and/or so similar to the registered trade mark as well as the impugned trade mark being used in relation to the goods and services to which the registered trade mark is being used, formed the following opinion :-
"12.Thus, as per the provisions as aforesaid, to see whether a trademark is infringed or not, there are different tests.
Primary Test:-
Whether the impugned trademark is so identical and/or so similar to the registered trademark?
Secondary Test:-
Whether the goods or services in relation to which the impugned trademark is used are identical or similar to the goods or services in relation to which registered mark is used?
Depending on the finding of the above two tests, third test would be whether the impugned trademark is likely to cause confusion in the minds of public or likely to have association with the registered trademark.
13.If all the three tests are replied or answered in affirmative, then it has to be prima-facie believed that the registered trademark is infringed.
14.In light of the above principle, let us consider the first test and see whether the Page 2 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025 NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined impugned trademark of the Defendant is identical or deceptively similar to the Plaintiff's registered mark or not.
15.Now the legislative text uses two phrases "identical" or "deceptively similar". The word "deceptively similar" is defined u/s 2(h) of the Act, which means "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." The word "Identical" means "where mark is reproduced without any modification or additions, all elements constituting the trade mark or where, viewed as a whole it contains differences so insignificant that they may go unnoticed by an average consumer".
16.In case of 'Identical mark' the impugned mark is 'replica' of the registered mark, with insignificant and unnoticeable difference.
Whereas, in case of 'deceptively similar' trademark, though impugned trademark may not be 'replica' of the registered trademark, however the impugned trademark resembles the registered trademark in a substantial degree on account of extensive use of the main and prominent features of registered mark.
17.There are umpteen judicial precedents which have laid down and reiterated test for comparison of marks. The test laid down by landmark judicial precedent can be summarized as underf -
i. The whole word/mark is to be considered. An ordinary man would not split a word or name, in a trade mark, into its components, but would go by the overall structural and phonetic similarity of the marks at the nature of the goods previously purchased, or of which he has been told and which he wants to purchase. It has to be examined whether the totality of the trademark of the defendant is likely to cause deception or Page 3 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025 NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.
ii. In assessing deceptive similarity, the class of the customer who would purchase the product is relevant.
iii. The Court is required to examine whether the essential features of the plaintiff's mark are to be found in the mark of the defendant.
iv. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.
v. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The Court is required to apply both the phonetic and the visual tests.
Structural similarity in both the mark
has also to be compared.
vi. "Confusion" refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question should be of first impression.
vii. Phonetic similarity has to be kept in mind. The possibility of careless pronunciation and speech, both on the part of the buyer walking into the shop, as well as the shop assistant, is also required to be factored into consideration.
viii.
A meticulous comparison of the words, syllable by syllable, should not be done.
ix. The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade Page 4 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025 NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.
x. At times, ocular similarity may be sufficient to find possibility of confusion/deception, even if the marks are visually dissimilar, though ocular similarity, by itself, may not, generally, be the decisive test.
18.Looking to the nature of the suit, it is necessary and apposite to reproduce the mark of the plaintiff as well as the defendant so as to appreciate the case of both the sides lucidly.
Plaintifffs Trade Mark Defendantfs Trade Mark
19.Along with the above particulars of trademark, the claim of both the sides are also required to be taken into consideration.
Page 5 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined Plaintifffs Claim ➔ The plaintiff claiming to be in the business since 2002.
Applied for SUMO DIGITAL on 01.09.2003 and got registration on 11.10.2022, which is valid up to 01.09.2033 (Mark 32/1).
➔ SUMO DIGITAL INCORPORATION applied on 2.2.2012 and got registration on 02.08.2018, which is valid up to 2.2.2032 (Mark 51/1).
➔ SUMO DIGITAL INCORPORATION registered with copyright Registry on 08.04.2021 (Mark 4/4).
Defendantfs Claim The defendant claiming in the market since 2022.
20.Now, on comparing both these marks, the plaintiff is in the business of electronic weighing scales and weighing bridges since 2002, whereas the defendant entered in the said business in the year 2022. Apart from this fact, the plaintiff has got registration with the concerned trademark Registry as well as having Copyright Registration Certificate as mentioned in the above tabulated information. The main grudge of the defendant's side is that the plaintiff has proprietary over the joint name i.e. SUMO DIGITAL, SUMO DIGITAL Page 6 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025 NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined INCORPORATION, not only the word "SUMO". But on scanning the marks, in the eyes of prudent man, specifically who are using an instrument i.e. traders, local salesmen, Lariwalas (Ferias), the word itself suggests that the same instrument is being manufactured by the plaintiff by adding PRO. The visual effect is to be seen the same and ultimately it seems the ditto copy/identical to the plaintiff's mark, which is observed by the then Hon'ble Court at the time of passing interim relief in favour of the plaintiff. The defendant neither claims to be prior user nor is having any registration, and therefore, it is undisputed that the SUMO marks are used by other various stake holders irrespective of the weighing scales. Therefore, the plaintiff and the defendant are being in the same business, no possibility can be denied to have confusion in the minds of the user and mark of the defendant is so deceptive mark as adopted by the defendant which is similar to the plaintiff. So far as the argument qua the word SUMO is raised by the defendant that it is distinctive, has no any substance in view of the facts of the case."
3. Taking note of the impugned trademark of the defendant/appellant herein and the plaintiff's trademark as compared by the Commercial Court in paragraph No.18 noted hereinbefore, no error can be said to have been committed by the Commercial Court in arriving at the conclusion that the plaintiff is in Page 7 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025 NEUTRAL CITATION C/AO/185/2025 ORDER DATED: 09/09/2025 undefined the business of electronic weighing scales and weighing bridges since 2002, whereas the defendant had entered in the said business only in the year 2022. Plaintiff's trademark is a registered trademark and certified with the concerned trademark registry, which is evident from the relevant documentary evidences brought on record. On scanning the two trademarks with the eyes of prudent man, specifically with the point of view of the consumers, it can be seen that the defendant's trademark is ditto copy/identical to that of the plaintiff's trademark. The defendant neither claims to be the prior user nor is having registration of the impugned trademark. The fact that the word 'SUMO' is being used in various other businesses irrespective of the business of weighing scales, would be of no relevance. The possibility of creation of confusion in the minds of the users for the marks of the defendant being deceptively similar to that of the plaintiff's registered trademark, cannot be ruled out.
4. Taking note of the above findings drawn by the Commercial Court for grant of interim injunction till the final decision in Trademark Suit applying the principles incorporated in Sections 28 and 29 of the Trade Marks Act, 1999, cannot be said to suffer from any error of law.
5. No error can be attached to the order impugned. The appeal is dismissed, accordingly. The Civil Application for stay stands disposed of.
(SUNITA AGARWAL, CJ ) (D.N.RAY,J) C.M. JOSHI Page 8 of 8 Uploaded by C.M. JOSHI(HC01073) on Thu Sep 11 2025 Downloaded on : Mon Sep 15 22:10:36 IST 2025