[Cites 18, Cited by 0]
Bombay High Court
Ahmed Perfumes Llc vs Mohammed Faisal Rehman Sultan Ahmed ... on 7 May, 2026
2026:BHC-OS:11828
IA-1405-2026.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 1405 OF 2026
IN
COMMERCIAL IP SUIT NO. 711 OF 2025
1) Ahmed Perfumes LLC ]
A limited liability company organized and ]
existing under the laws of UAE having its ]
address at Shop No. 6, Aisha Abdullah, Al- ]
Badour Building, Deira Al-Buteen, Dubai, ]
UAE P.O. Box 60191 ]
2) M/s. Ahmed Al Maghribi Perfumes Trading ]
LLC ]
A limited liability company organized and ]
existing under the laws of UAE having its ]
address at Sabha Build, Plot No. 1414-0, ]
Jabal Ali Industrial First, Dubai, UAE P.O. Box ]
...Applicants/
78028 ]
Plaintiffs
Versus
1) Mohammed Faisal Rehman Sultan Ahmed ]
Shamsi trading as FRS India ]
nd
2 Floor, 425, Room No. 202, Ibrahim ]
Rehmatullah Road next to Pydhonie Police ]
Station,Pydhonie Mumbai City, Maharashtra, ]
400003 ]
Also at 426 X-cross lane, Kolsa Street, ]
Shireen Mansion 2nd floor Near Mohd Ali ]
Road, Mumbai 400003 ]
2) Al Ahmed India ]
nd
A partnership firm having its address at 2 ]
Floor, Shop No. 25, 14, Shirin Mansion, Kolsa ]
Street, Off. Nakhoda Street, Pydhonie, ]
Mandvi, Mumbai 400003 ]
3) Ahmed Al Maghribi LLP ]
A limited liability partnership Having its ]
registered office at 2nd floor, Shop No. 25, 14, ]
Shirin Mansion Mumbai, Maharashtra, ]
400003 ]
Arya Chavan 1/37
::: Uploaded on - 07/05/2026 ::: Downloaded on - 08/05/2026 15:07:14 :::
IA-1405-2026.doc
4) Salma Mohammed Faisal Shamsi ]
Designated partner of Ahmed Al Maghribi ]
LLP having its address at 2nd Floor, Shop. No. ]
25, 14, Shirin Mansion Mumbai, Maharashtra, ]
400003 ] ...Respondents/
]
Defendants
Mr. Venkatesh Dhond, Senior Advocate a/w. Mr. Hiren Kamod a/w. Mr.
Pratik Pansare a/w Mr. Anshul Saurastri a/w. Ms. Preeta Panthaki and Mr.
Atif Sayyed i/b. Krishna & Saurastri Associates LLP, Advocate for the
Plaintiff/Applicant.
Ms. Shagufta Ansari a/w. Mr. Khwaja Shaikh, Advocate for the
Defendant/Respondent.
CORAM : SHARMILA U. DESHMUKH
RESERVED ON : April 6th,2026
PRONOUNCED ON : May 7th,2026
--------------
ORDER :
1. By the present Interim Application, the Plaintiff seeks injunctive
reliefs against the Defendants restraining them from infringing the
Plaintiff's copyright in the artistic work comprised in the Plaintiff's logos
viz , , , and to restrain the
Defendants from using the impugned marks i.e. AHMED AL MAGHRIBI,
, , , 'Al Ahmed',
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, , BIN SHAIKH, OUD & ROSES, KAAF and
MARJ, and/or the impugned corporate name "Ahmed Al Maghribi LLP"
and/or the domain name www.ahmedindia.com so as to pass of its
impugned goods as that of the Plaintiff.
2. The Plaintiffs claim that in or around the year 2000, the the
Plaintiff No. 2 honestly adopted the name and trademark "Ahmed Al
Maghribi" as a trading name for manufacturing and marketing of
perfumes and secured a commercial license from Government of Dubai
to carry on the business under the said mark. On 6 th February 2009, the
Plaintiff No. 2 obtained registration of the domain name
"ahmedalmaghribi.com and launched a website on the said domain
name displaying the goods sold under the name and mark "Ahmed Al
Maghribi", which website was accessible from all parts of India and
around the world. Subsequently several sub brands were introduced
and some of the marks adopted by the Plaintiffs include "Bin Shaikh,
Oud and Roses, Kaaf and Marj" under the umbrella mark "Ahmed."
3. In 2015, the Plaintiff No. 2 adopted a distinctive label mark which
was a unique art work being an Arabic calligraphic symbol which
was designed by the employee of Plaintiff No. 2, in which the copyright
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subsists in the Plaintiffs. The plaint sets out the details of the
trademark registrations secured in respect of the symbol ,
symbol with Ahmed and symbol with Ahmed Al Maghribi obtained in
United Arab Emirates (UAE). In October, 2020, the Plaintiff adopted the
mark "Ahmed Perfumes" and commercial license was secured from the
Government of Dubai to carry on business under the name 'Ahmed
Perfumes LLC' and also obtained license from Plaintiff No. 2 to use the
marks "Ahmed Al Maghribi " , , and the sub
brand marks and a license to use the original art work.
4. On 13th November, 2021, the Plaintiff No. 1 filed trademark
application for the mark "Ahmed Perfumes" " "with the
trademarks office UAE. The Plaintiff No 2 assigned to Plaintiff No 1 the
right title and interest in the trade marks and copyright in the artistic
work.
5. In so far as India is concerned, it is submitted that in or around
2018, Plaintiff No. 2 commenced exporting the goods to different
countries and has effected sales in several countries including India. The
Plaintiffs have created profiles on various social media platforms under
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the username 'Ahmed Al Maghribi', Ahmed Perfumes etc in 2013, 2014
and 2016, which are freely accessible in India. It is submitted that the
Plaintiff's marks and goods are prominently advertised on the social
media pages and the goods bearing the Plaintiff's mark have been
directly available for purchase in India since at least November 2021. It
is submitted that the Plaintiff's goods had a presence in India by reason
of the fact that they were brought in India by person who purchased
them over seas for sale or for gifting and the Plaintiff's goods enjoyed
reputation and goodwill amongst the members of the trade and public
even before Plaintiff No. 1 commenced selling the goods in India.
6. The Plaint further sets out the annual revenue of the Plaintiff No.
2 and also annexes the invoice issued by the Plaintiff and their licensees
to purchasers in India, showing the use of the Plaintiff's marks in India,
as well as the certificate of Chartered Accountant certifying the
statement of sales turnover. It is submitted that in or around July 2024,
the Plaintiff No. 1 entered into an agreement with an entity in India to
distribute its products in India and from July 2024, the Plaintiff has been
selling its products in India through its distributor and has also obtained
registration of the domain name www.ahmedalmaghribi.co.in in
November 2024.
7. It is submitted that in or about August, 2022, the Defendant No. 1
approached the Plaintiff's representative via email with request to
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purchase the Plaintiff's goods and be associated as a distributor of the
Plaintiff's goods in India. The said request was not acceded by the
Plaintiff, and despite the Plaintiff's refusal, Defendant No. 1 continued
to purchase the Plaintiff's goods. The copies of the invoice issued in
favor of Defendant No. 1 are annexed to the plaint.
8. It is submitted that in or about February, 2023, the Plaintiff No. 1
came across the trademark application filed by the Defendant No 1 on
14th September, 2022 for registration of identical mark " ",
"AHMED AL MAGHRIBI", " ". on a proposed to be used
basis. The Plaintiff's representative approached Defendant No. 1
through telephonic call as well as email dated 28 th February, 2023,
calling upon Defendant No. 1 to withdraw the impugned trademark
application to which the Defendant No. 1 through Whatsapp demanded
distributorship of the Plaintiffs in India. Despite the Plaintiff's
representative sharing a draft of the distributorship agreement with
Defendant No. 1, Defendant No. 1 refused to execute the agreement
and the Plaintiffs thereafter did not supply any goods to the
Defendant.
9. In or around June, 2023, the Plaintiff has filed application for
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registration of its mark in the trademark registry in India and also
opposed the registration of the Defendant's mark which are pending
adjudication. It is submitted that the Defendant No. 1 has filed several
trademark applications for the marks "Al Ahmed and Al Ahmed
" and " " and has associated the said
trademark application with its earlier trademark application of "Ahmed
Al Maghribi", which are also identical/deceptively similar to the
Plaintiff's registered mark.
10. The Defendant No 1 has also hosted the domain name
www.ahmedindia.com displaying the Defendant No. 1's "Al Ahmed"
mark and the social media profiles are created under the username 'Al
Ahmed India'. The Plaintiff learnt of the existence of Defendant No. 3
LLP incorporated on 10th July 2023 bearing the name Ahmed Al
Maghribi LLP in which Defendant No. 1 is a designated partner. The
Defendants also opened a physical retail shop in Mumbai by the name
'Al Ahmed Perfumes' and a trap purchase was effected and the invoice
revealed that the same was issued by Defendant No. 2, which is a
partnership firm called 'Al Ahmed India'.
11. It is submitted that in or about October, 2023, the Plaintiff came
across the Defendant's use of identical marks "Bin Shaikh", "Oud and
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Roses", "Kaaf and Marj" and the Defendant No. 1 had applied for the
registration of the trademark "Bin Shaikh" on 12 th May, 2023, which
trademark application is currently objected. The impugned marks are
stated to be Plaintiff's prior adopted trademark in which the copyright
subsists in the Plaintiff by virtue of International Copyright Order, 1999,
by which a reciprocal copyright protection is granted to the Plaintiff in
India in respect of the artistic work.
12. In the affidavit-in-reply, it is contended that the Defendant No. 1
is carrying on business as sole proprietary concerned i.e. FRS India since
the year 2017 and as partnership firm of 'Al Ahmed India' since the year
2020. The Defendants have honestly adopted and conceived and used
the trademark "Al Ahmed ", " " for
Defendant No. 2 since the year 2020 and are prior users. The
explanation given for adoption of the name "Ahmed" is that it is the
name of son of Defendant Nos 1 and 4 and name of their grandfather. It
is contended that the words "Oud and Roses, Kaaf and Marj" are
common perfume substance names used by every perfume brand
including the perfume brands in India and the Defendant has a
trademark registration for "Bin Shaikh". The trademark MARJ is already
registered by some other person. It is submitted that the Plaintiff did
not conduct any business in India until 2024, whereas, the Defendant
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started his business of perfumes in the year 2020. The invoices annexed
to the plaint have been disputed as being fake invoices, and that only in
the year 2024-2025 the Plaintiffs attempted to explore the Indian
market to compete with the Defendant's trademark and threatened the
Defendants to withdraw its trademark. It is submitted that the
Defendants independently registered its trademark and copyright in
India and the Plaintiff have no registered business, trademark or
physical presence in India.
13. It is submitted that the Plaintiff has failed to produce on record
the custom duty challan or the octroi charges paid while trading in India,
which raises the doubt about the alleged invoices. It is submitted that
the only invoice annexed is of November 2022, which is also
questionable in the absence of any delivery challan or details of goods.
It is submitted that the impugned marks "Ahmed Al Maghribi" and
"Ahmed Perfumes" are visually, structurally and phonetically different
from the Defendant's registered trademark "AL- Ahmed" and the mark
"Ahmed Al Maghribi" in India was adopted by the Defendants since the
year 2020. It is submitted that the Defendants are prior adopter and
prior user of the trade mark " " in India.
14. It is submitted that the Defendant's product bear a distinct trade
dress and are visually different. The mark "Al Ahmed" is a common
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Arabic name, and the Plaintiff's cannot claim exclusive proprietary right
over the common name 'Ahmed' which is generic and commonly used in
Arabic and Islamic culture. It is submitted that the Defendant's product
branding, packaging and online content have been created
independently or sourced through local and licensed channels for their
promotion. The Defendants are the prior users in India and also
registered proprietor of the trademark "Al Ahmed India", "Ahmed Al
Maghribi", "Bin Shaikh" and "Ahmed".
SUBMISSIONS :-
15. Mr. Dhond, learned Senior Advocate for the Plaintiffs submits
that the Defendant No. 1 is a former purchaser of the Plaintiff's
perfumes, and had also expressed a desire to be distributor. He would
submit that the term "Ahmed Al Maghribi" has no meaning and is
inspired from the name of the erstwhile Emirati sponsor of Plaintiff No.
2. He would submit that in the year 2000, the Plaintiff No 2 adopted the
name and mark "Ahmed Al Maghribi" as a trading name/trade mark. He
submits that the term "Bin Shaikh"and Kaaf and Marj" are arbitrary and
not descriptive of the fragrances. He submits that the label mark of
Ahmed is a unique artwork being a calligraphic symbol comprising the
word 'Ahmed' in respect of which registrations have been obtained in
UAE. He submits that in or around 2018, the Plaintiff's commenced
exporting its goods to different countries including India and the goods
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have been directly available for purchase in India since November, 2021,
and even prior thereto, the Plaintiff had presence in India by persons
who purchased their goods overseas for sale or gifting. He submits that
the Plaintiff's reputation has permeated across borders and spilled
over in India much prior to 2021. He would further point out the
revenue generated by the Plaintiffs which for the year 2023-2024 was
approximately 682.95 crores and have also spent substantial funds
towards promoting and publicizing their goods.
16. He would draw attention of this Court to the invoices appended
to the plaint to contend that there were sales to Indian customers, the
earliest of which dates back to 11th November, 2021, which shows that
the Plaintiffs are prior users of the marks in India, whereas, the
Defendants have not produced any evidence to substantiate their claim
of having commenced use of the device mark in 2017 or in 2020. He
submits that the Defendants have produced only four invoices all of
which are of the year 2025, and even the trademark application where
the Defendants are of the year 2022 or 2023 on a proposed to be used
basis.
17. He would submit that the Defendants have sought to contend
that the sub brands are common perfume names and has produced
images or products of certain brands appearing to use the sub brands of
the Plaintiff. He submits that merely because there are other infringers,
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the same does not constitute a defence to an action for infringement or
passing off and the Defendants are bound to show the extent of sale of
such other products to claim defence of marks being commonly used in
trade.
18. He submits that, although now removed, in the past the
Defendants had unlawfully used the Plaintiff's marks and copyright in
the artistic work of the Plaintiff's logo under a tab titled UAE Brand.
19. He would submit that the explanation given by the Defendants
for adoption of the impugned marks is unaccceptable and they have
failed to show how they adopted the words"Ahmed Al Maghribi" or "Al
Ahmed" or "Ahmed Perfumes". He would submit that the Plaintiffs do
not claim any relief of infringement and have sought reliefs against the
Defendant for passing off their products as that of the Plaintiff as the
rival marks are clearly identical and even the variants adopted by the
Defendants are deceptively similar to the Plaintiff's mark.
20. He would submit that the Defendant No 3 has been incorporated
on 10th July, 2023 and not in the year 2020 as claimed. He submits that
there is no specific denial to the invoices raised by the Plaintiff upon the
Defendant No 1. He would submit that in its trade mark registration
application, the name of Defendant No. 1 is recorded as FRS India which
was made by the Defendant No. 1 as Defendant No. 1 was expecting
delivery of products from the Plaintiff. He submits that the invoices
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were issued to Defendant No. 1, who was then trading as FRS India. In
support he relies upon the following decisions :-
(i) Ramdev Food Products (P) Ltd. vs Arvindbhai Rambhai Patel
And Ors.1
(ii) Empire Spices And Foods Limited vs Sanjay Bhimraoji
Deshmukh Trading as M/s Sanskriti Spices2
(iii) F. Hoffmann-La Roche & Co. Ltd. vs Geoffrey Manner & Co.
Pvt. Ltd.3
(iv) M/s Hiralal Prabhudas vs Ganesh Trading Company And
Others4
(v) Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd.5
(vi) Badat And Co. Bombay vs East India Trading Co.6
(vii) Lohia Properties (P) Ltd., Tinsukia, Dibrugarh, Assam vs
Atmaram Kumar7
(viii) Thangam And Another vs Navamani Ammal8
(ix) Century Traders vs Roshanlal Duggar And Co. 9
(x) Marico Limited vs Zee Hygine Products Pvt. Ltd. And
Others.10
1 (2006) 8 SCC 726
2 2025 SCC Online Bom 2559
3 1969(2) SCC 716
4 1984-PTC-155
5 (2001) 5 SCC 73
6 AIR 1964 SC 538
7 (1993) 4 SCC 6
8 (2024) 4 SCC 247
9 ILR (1977) II Delhi
10 2025:BHC-OS:9444
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(xi) Corn Products Refining Co. vs Shangrila Food Products Ltd. 11
(xii) National Bell Co. And Anr. vs Metal Goods Mfg. Co. (P) Ltd.
And Anr.12
(xiii) Pidilite Industries Ltd. vs S.M. Associates & Ors.13
(xiv) Jagdish Gopal Kamath And Ors. vs Lime & Chilli Hospitality
Services14
(xv) N.R.Dongre And Ors. vs Whirlpool Corporation And Anr. 15
(xvi) Milmet Oftho Industries And Ors. vs Allergan Inc16
(xvii) Starbucks (HK) Ltd. And Anr. vs British Sky Broadcasting
Group And Ors.17
(xviii) Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries
Ltd. And Ors.18
(xix) Bolt Technology OU vs Ujoy Technology Pvt. Ltd. And Anr.19
(xx) Carlton Shoes Ltd. And Anr. vs VIP Industries Ltd. 20
(xxi) Daiwa Pharmaceuticals Co. Ltd. vs Daiwa Pharmaceuticals
Pvt. Ltd. And Ors.21
(xxii) Midas Hygiene Industries (P) Ltd. And Anr. vs Sudhir
11 AIR 1960 SC 142
12 1970 (3) SCC 665
13 2004 (28) PTC 193 (Bom)
14 2015 (62) PTC 23 (Bom)
15 (1996) 5 SCC 714
16 (2004) 12 SCC 624
17 (2015) 1 WLR 2628
18 (2018) 2 SCC 1
19 (2023) 96 PTC 155
20 2023 SCC Online Del 4223
21 2024 SCC Online Bom 1078
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Bhatia And Ors.22
(xxiii) Amritdhara Pharmacy vs Satya Deo Gupta23
(xxiv) Parle Products (P) Ltd. vs J.P. & Co.24
21. Per contra, Ms. Ansari, learned counsel for the Defendants would
point out the different dates in the pleading about the Plaintiff's
presence in India. She would submit that the license issued in the year
2000 to the Plaintiffs is in UAE, and though, the partners were of Indian
origin the Plaintiff did not come to India till 2024, after the Defendant
had started his business. She would further submit that the invoices
annexed at page 435 onwards are created for the purpose of filing of
the suit as it does not make any mention of the custom duty paid or any
details of the customers and there is no delivery challan produced. She
would further submit that the Chartered Accountant's certificate
certifying the sales turnover has been obtained on 8 th August, 2024,
which certifies sales of the year 2019 in India about which there is no
pleading. She would further submit that the invoices produced by the
Plaintiff of the year 2021 does not match with the sales turnover of the
year 2021.
22. She would further submit that the domain name of Ahmed Al
Maghribi was registered on 20th November, 2024. She would further
point out the promotional material placed on record from page 479
22 (2004) 3 SCC 90
23 AIR 1963 SC 449
24 (1972) 1 SCC 618
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which does not make any mention about any promotion being carried
out in India. She would further point out that the regulatory operating
cost in so far as India is concerned is almost negligible being AED 0.19.
She would deny that any invoices have been raised upon Defendant No
1.
23. She would further submit that Defendant No. 1 applied for
registration of its device mark of "Ahmed Al Maghribi" on 14 th
September, 2022 and in so far as the user detail of proposed to be used
in concerned, an application is made for correction of the user detail as
the same was incorrectly mentioned. She would further point out to the
invoices annexed at page 794 onwards to demonstrate the sales under
the impugned marks. She would further point out the certificate issued
under the MSME shows the date of incorporation of the Defendant as
1st July, 2017. She would further point out the affidavit of evidence in
support of the application filed before the trademark registry
specifically stating that the Defendants are carrying on the business
since the year 2020. She would further point out that the Defendants
had applied on 12th May, 2023 for registration of the mark "Bin Shaikh"
which has been accepted and advertised. She would further point out
that the sub-brands are common to the trade and have been in
extensive use by pointing out to the photographs annexed to the
affidavit-in-reply. She would further point out to the Instagram page of
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the Defendants as well as the other promotional material in order to
demonstrate the Defendant's presence since 2022, whereas, the
Plaintiff has joined the social media platforms in January, 2023/2024.
She would further point out to the whatsapp chat to demonstrate that
the threats were made by the Plaintiff and not by the Defendants. She
would further point out that domain name has been registered by the
Defendant on 26th August, 2022. She would further point out to the
trade dress of the Defendant to demonstrate that the packaging is
different and there is no question of any confusion and of passing off.
24. She would further point out to the income tax return filed in the
name of "Al Ahmed India" which shows the extent of sales. She would
further submit that the trademark "MARJ" has been registered in the
name of some third party and points out to the application at page 861.
She would submit that the Defendants have bonafidely adopted the
mark containing the name 'Ahmed' as the same is the name of their son
and grandfather. She submits that the name "Al Ahmed" means the
family of 'Ahmed' and there is a bonafide explanation for adoption of
the mark by the Defendant.
25. In rejoinder, Mr. Dhond submits that the Defendants have not
produced any evidence to show their user since 2020 and the
subsequent correction in their trademark application is immaterial. He
would submit that the Plaintiffs have not taken any contrary stands, as
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there are specific pleadings that the products were purchased by Indian
customers since November, 2021 which refers to the sales made in
middle east to Indian customers and July 2024 refers to the sales made
in India by the Plaintiff's distributors. He would further submit that the
date of February 2023 was for the purpose of exploring the possibility
of expanding operations which means the Plaintiff were looking to
enter Indian market directly. He would further submit that the doubt
sought to be cast over the Plaintiff's invoices is misconceived as the
Plaintiffs sold the goods to the Indian buyer who then took delivery, and
it is immaterial that there is no mention of the country or state. He
submits that the preparation of Chartered Accountants certificate in the
year 2024 was in anticipation of filing of the present suit and the
invoices which have been produced are representative in nature and are
not required to tally with the figures mentioned in the Chartered
Accountant's certificate. He submits that the Defendants have failed to
notice the social media presence in India through Facebook, Twitter and
other social media handles. He submits that the promotional expenses
at Exhibit W of the plaint are the overall promotional expenses incurred
by the Plaintiffs in the course of promoting their products bearing their
trademark. He submits that the web pages of the Plaintiffs are
accessible from India and can therefore be viewed by any person sitting
anywhere in India. He would further submit that purchase of the
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Plaintiff's products by Defendant No 1 is substantiated by the emails
and whatsapp exchanges. He submits that the Defendant's application
for registration of the impugned mark is made in September 2022 after
the Defendant No. 1's request in August 2022 to be appointed as an
Indian distributor. He submits that the invoices produced by the
Defendants are fabricated invoices. He submits that the Defendants do
not have any registered trademark as the application has only been
accepted for the purpose of advertisement. He submits that the social
media profiles of the Defendants evidencing presence in India is post
August 2022. He submits that even the domain name has been
registered on 26th August, 2022.
26. He would further submits that the aspect of the packaging being
different of the rival products is immaterial as the perfumes are
primarily bought by reference to the brand and the Defendants are
using the same brands as well as the sub-brands. He submits that, in any
event, the brand and the sub-brand on the packaging is very prominent
and forms part of overall packaging.
27. He submits that the income tax returns filed by the Defendant
No. 2 in the name of "Al Ahmed" do not show any sale or promotional
expenses and could constitute a source of income from selling any
goods. He submits that the income for the year 2023-2024 is about Rs.
66,860/- which does not show any significant presence and goodwill of
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the Defendants in India. He submits that the opening of the bank
account in 2021 with the name "Al Ahmed India" cannot imply use of the
trademark by the Defendants since 2021. He submits that the
Defendants have failed to produce any Chartered Accountant's
certificate and supporting document evidencing the extent of sale and
or promotional expenditure incurred by them. He submits that the
invoices purportedly relating to the advertisement and promotional
expenses do not show that they relate to any advertisement of the
products bearing the impugned mark.
28. He would submit that the trade mark "MARJ" is pending
registration and in any event, the present action by the Plaintiff is for
passing off.
29. Rival contentions now fall for determination:
30. The Plaintiff Nos. 1 and 2, are entities incorporated under the
laws of UAE and the Defendants are located within the jurisdiction of
this Court. The Plaintiffs are the registered owners of the trademark,
which registrations have been secured in Dubai. The position in so far as
India is concerned is that the Plaintiffs have applied for registration of
its device mark in June, 2023 with user claim of November, 2021 and the
Defendants have applied for registration of its mark in February, 2023
on proposed to be used basis, which user is later sought to be corrected.
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31. The rival marks are reproduced herein below for the purpose of
comparison.
PLAINTIFF'S MARKS DEFENDANT'S MARKS
(IMPUGNED)
1. AHMED AL MAGHRIBI A. AHMED AL MAGHRIBI
2.
B.
3. C.
4.
D.
E.
5.
6. AHMED PERFUMES F. AL AHMED
6A.
G.
7.
8. BIN SHAIKH H. BIN SHAIKH
9. OUD & ROSES I. OUD & ROSES
10. KAAF J. KAAF
11. MARJ K. MARJ
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32. As the marks are unregistered, there is no issue of infringement
of trade mark and submissions canvassed was in respect of passing off
action. To sustain an action for passing off, the well settled tests of
goodwill and reputation, misrepresentation and damage remain
undisturbed. As the Plaintiffs allege passing off and are foreign entities,
the requirement is to show spill over of the goodwill and reputation of
its trade marks in India. The judicial pronouncements have settled the
tests for passing off and trans border reputation, which can be looked
into:
(a) In N.R.Dongre And Ors. vs Whirlpool Corporation And Anr. (supra),
the Plaintiff did not make out case of actual sales in India, however, had
advertised its products in international magazines having circulation in
India. The Hon'ble Apex Court approved the findings of the Hon'ble
Division Bench that even advertisement of the trade mark without
existence of goods in the market is also to be considered as use of the
trade mark.
(b) In Milmet Oftho Industries And Ors. vs Allergan Inc (supra), the
Hon'ble Apex Court in context of medicinal preparations noted its
agreement with the view in N.R.Dongre And Ors. vs Whirlpool
Corporation And Anr. (supra), observing that medical literature is freely
available in India, goods are widely advertised in newspapers,
periodicals, magazines and other media available in India which results
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in products acquiring worldwide reputation.
(c) The decision of Toyota Jidosha Kabushiki Kaisha vs Prius Auto
Industries Ltd. And Ors. (supra) is an authoritative pronouncement on
the subject and the Hon'ble Apex Court favoured the territoriality
principle over the universality principle. It held that the Courts have to
determine if there has been a spillover of the reputation and goodwill
of the mark used by the Claimant who has brought the passing off
action and to ascertain the existence of not necessarily a real market
but the presence of the claimant through its mark within a particular
territorial jurisdiction. The Hon'ble Apex Court further held in paragraph
32 as under:
"32. Prof Christopher Wadlow's view on the subject appears to be that the
test of whether a foreign claimant may succeed in passing off action is
whether his business has a goodwill in a particular jurisdiction, which
criterion is broader than the "obsolete" test of of whether a claimant has a
business/place of business in that jurisdiction. If there are customers for a
claimant's products in that jurisdiction, then the claimant stands in the same
position as a domestic trader."
The Hon'ble Apex Court noted the decision in Starbucks (HK) Ltd. And
Anr. vs British Sky Broadcasting Group And Ors. (supra) , where the UK
Supreme Court observed as under:
"52. As to what amounts to a sufficient business to amount to goodwill, it
seems clear that mere reputation is not enough.... The claimant must show
that it has a significant goodwill, in the form of customers, in the
jurisdiction, but it is not necessary that the claimant actually has an
establishment or office in thus country. In order to establish goodwill, the
claimant must have customers within the jurisdiction, as opposed to people
in the jurisdiction who happen to be customers elsewhere. Thus where the
claimant's business is carried out abroad, it is not enough for a claimant to
show that there are people in this jurisdiction who happens to be its
customers when they are abroad. However, it could be enough if the
claimant could show that there were people in this jurisdiction, who by
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booking with, or purchasing from, an entity in this country, obtained the
right to receive the claimant's services abroad. And, in such a case, the
entity need not be part or branch of the claimant;it can be someone acting
for or on behalf of the claimant." (Emphasis supplied)
The Hon'ble Apex Court noted the decision in Athlete's Foot Marketing
Associates Inc v Cobra Sports Ltd.25 as under:
"...no trader can complain of passing off as against him in any territory ..in
which he has no customers, nobody who is in trade relations with him. This
will normally shortly be expressed by stating that he does not carry on any
trade in that particular country....but the inwardness of it will be that he has
not customers in that country..."
33. In Starbucks (HK) Ltd. And Anr. vs British Sky Broadcasting
Group And Ors. (supra), the UK Supreme Court considered the issue as
to whether a claimant who is seeking to maintain an action for passing
off need only establish a reputation among a significant section of the
public within the jurisdiction, or whether such a claimant must also
establish a business with customers within the jurisdiction. It noted that
Goodwill as subject of proprietary rights is incapable of subsisting by
itself having no independent existence apart from the business to which
it is attached. It held in paragraph 47 as under:
"47. ....In other words, I consider that we should reaffirm that the law is that
a claimant in passing of claim must establish that it has actual goodwill in
this jurisdiction, and that such goodwill involves the presence of clients or
customers in the jurisdiction for the products or services in question. And,
where the claimant's business is abroad, people who are in the jurisdiction,
but who are not customers of the claimant in the jurisdiction, will not do,
even if they are customers of the claimant when they go abroad."
34. In Bolt Technology OU vs Ujoy Technology Pvt. Ltd. And Anr.
(supra), the Delhi High Court summarised the principles of Toyota
Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd. And Ors.
25 [1980] RPC 343
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(supra) in passing off and transborder reputation as under:
"72. Several important principles emerge from these passages, which may be
enumerated as under:
(I) The territoriality principle applies: not the universality doctrine. Existence
of goodwill and reputation has, therefore, to be shown to exist in India.
Universal or world wide goodwill and reputation sans any evidence of
territorial goodwill and reputation, is not sufficient.
(ii) Mere reputation is not enough. The claimant/plaintiff must show that it
has significant goodwill.
(iii) The actual existence of an office of the plaintiff in the country of the
defendant is not necessary.
(iv) However, the claimant must have customers within the country of the
defendant, as opposed to persons in the defendant's country who are
customers elsewhere. Thus where the claimant's business is carried on
abroad, it is not enough for the claimant to show that there are people in
the defendant's country who happen to be his customers when they are
abroad.
(v) However, it would be enough if the claimant could show that there were
people in the defendant's country who, by booking with, or purchasing from
an entity in the defendant's country obtained the right to receive the
claimant's service abroad. The person from whom such booking or purchase
took place could be the claimant or its branch office or someone acting for
or on behalf of the claimant.
(vi) The claimant must be "present through its mark in the territorial
jurisdiction" of the country of the defendant' though the existence of "real
market" was not necessary.
(vii) Such presence could, for instance, be shown by extensive advertisement
which had been circulated and seen, or read, in the country of the
defendant.
(viii) Once the existence of transborder reputation and goodwill was thus
established, the claimant was not required, further, to prove the existence of
actual confusion. The likelihood of the customer of average intelligence and
imperfect recollection being confused, by the use of the impugned mark of
the defendant, that the goods or services by the defendant were those of
the claimant-plaintiff was sufficient."
35. In Daiwa Pharmaceuticals Co. Ltd. vs Daiwa Pharmaceuticals
Pvt. Ltd. And Ors. (supra), this Court held in paragraph 86 as under:
"86. A relevant factor to be borne in mind is that the Plaintiff's mark is in
respect of pharmaceutical products. It has been held by the Supreme Court
in Milmet (Supra) which has been followed by the Delhi High Court in Mayo
Foundation (Supra), decisions relied upon by the Plaintiff that in the event
the material relied upon by the Plaintiff prima facie shows that the
Plaintiff's product was advertised before the Defendant entered the filed,
the Plaintiff being the first to adopt the mark, is then able to maintain an
action for passing off.The mere fact that the Plaintiff has not been using the
mark in India would be irrelevant if they were first in the world market. Thus
there does appear to be special segment carved out for pharmaceutical
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products and the test of transborder reputation would in my view have to be
liberal and such reputation may be derived from advertisement and publicity
of the Plaintiff's mark and cited in Indian newspapers, magazines and online
publications..."
36. The applicable tests in case of passing off action based on
transborder reputation stands crystallized. The requirement is of
establishing that the claimant have customers within the country of the
defendant as opposed to persons in defendant's country who are
customers elsewhere and even if there is no existence of real market,
the claimant must establish the presence through its mark in the
territorial jurisdiction of the country of the defendant.
37. It is firstly essential for the Plaintiffs to prima facie prove the spill
over of its goodwill and reputation in India and only thereafter an
occasion would arise to consider the defences as regards honest
adoption, prior user etc. The essence of passing off action is that no
trader shall pass off its goods as that of another trader and be unjustly
enriched by the goodwill and reputation of the other trader. If there is
no goodwill and reputation proved, there is no question of passing off.
The Plaintiffs being foreign entities and the unregistered proprietors of
the marks in India have to essentially pass the test of transborder
reputation.
38. The claim of the Plaintiff is that though it is not located in India, it
has business exposure in India inasmuch as it has customers within the
jurisdiction of this Court part from the fact that before directly selling
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the goods in India it had customers who were purchasing the goods
abroad, which were brought in India. It is further the claim that its mark
has presence in India through advertisement and promotions.
39. In the plaint, the initial paragraphs are devoted to the goodwill
and reputation obtained by the Plaintiffs globally. In paragraph 23, it is
pleaded that in or around 2018, the Plaintiff No. 2 commenced
exporting its products to different countries around the world,
including but not limited to India and have annexed at Exhibit N the
copies of specimen sale invoices evidencing large quantum of sale under
the Plaintiff's mark in various jurisdictions. The invoices are annexed
from page 330 onwards, and shows sales in various countries from the
year 2018 except India. The pleading is that the invoices which are
readily available were annexed to the plaint, which explanation is
unacceptable as the Plaintiffs were aware of the case of transborder
reputation, which they had to satisfy. The claim of effecting sales in
India in the year 2018 is unsubstantiated from the record.
40. In paragraph 25, it is claimed that the Plaintiff's marks have been
directly available for purchase in India since at least November 2021,
and even prior to the commencement of export of the Plaintiff's goods
to India, the Plaintiff's goods had a presence in India, including by
reason of the fact that they were brought into India by person who
purchased them overseas for sale or gifting. The law is well settled that
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the claimant has to show customers in the jurisdiction of this Court as
opposed to persons in this jurisdiction who may the customers of the
Plaintiff in other jurisdictions. In paragraph 26, it is pleaded that the
Plaintiffs have licensed its marks to other group entities for sale of
Plaintiff's goods to various countries including India. There are no
details of the licensees in India through whom the goods were sold to
customers in India and no document of license placed on record.
41. To substantiate the plea of sale to customers in India, sales
invoices have been annexed at Exhibit "P" from pages 435 onwards
stating the same to have been issued by the Plaintiff and their licensees
to purchasers in India for showing user of the Plaintiff's marks in India.
The tax invoices which are about 24 in number are for the years 2021,
2022 and 2023. The tax invoices reflects the address of the sales office
of UAE and majority of the invoices only mentions the names of the
customers without address or other details and few invoices mentions
the name of the city and State. In response to the Defendant's
contention that the invoices are created as no delivery challan/custom
duty receipts are produced, in the written submissions, the Plaintiffs
have contended that the Plaintiffs have sold the goods to an Indian
buyer who then took delivery thereof. It means that the Plaintiff's
goods were sold in UAE to Indian customers, who brought them to India
and not that the Plaintiffs have effected direct sales to the customers in
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India.
42. The sales invoices from Pages 568 to 575 purportedly raised upon
the Defendant No 1 is issued from the sales office of UAE and evidently,
the purchase was effected in UAE and the goods were brought in India.
There is not a single invoice produced to demonstrate sale to
customers in India so as to establish goodwill in India through customers
in India. It is clear from Starbucks (HK) Ltd. And Anr. vs British Sky
Broadcasting Group And Ors. (supra) and Toyota Jidosha Kabushiki
Kaisha vs Prius Auto Industries Ltd. And Ors. (supra) that the Plaintiff
has to show that its goods were purchased by customers in India and
not by customers who had purchased goods abroad and brought them
into India.
43. In paragraph 27, it is pleaded that in or around July 2024, the
Plaintiff No. 1 entered into an agreement with an entity in India to
distribute its product in India and that from July 2024, the Plaintiff No. 1
has been selling its product in India, through its distributor as well.
There is not even a mention of the name of the Indian distributor. There
is no distributorship agreement produced and neither any invoices have
been produced showing sales through the purported Indian distributor.
44. Reliance has been placed on the chartered accountant's
certificate to show sales in India including for the year 2019 when it is
the Plaintiff's case that the sales in India took place in November, 2021.
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The chartered accountant's certificate shows that for the year 2020
there are nil sales in India, for the year 2021 the sales have been shown
as 22,959 AED and for the year 2022, it is shown as 5472 AED. As
compared to UAE for the same period the sales is 34,648,451 AED and
22,182,877 AED respectively, which shows insignificant sales in India.
Taking the exchange rate at Rs 24/ as taken by the Plaintiffs in the
written submission, the sales turnover in India would be approximately
Rs 5,51,016 for the year 2021 and Rs 1,31,328/ for the year 2022, which
is insignificant. In Toyota Jidosha Kabushiki Kaisha vs Prius Auto
Industries Ltd. And Ors. (supra) , while denying the relief of passing off,
the Court had observed the minimal sales by Toyota in India.
45. Let us now test whether the Plaintiff's mark has disseminated
through media and advertisements, indicating its presence in India even
without a real market in India. The Plaintiff's claim is premised on :
(a) launch of domain name bearing the trademark, webpages
of Plaintiff No 2's website for the year 2014 to 2024.
(b) profiles created on Twitter in September, 2013, Instagram
in September, 2014, Facebook under user name "Ahmed Al
Maghribi on 18th September, 2016, and LinkedIn.
(c) photographs of fairs, exhibitions, kiosks set up to promote
Plaintiff's products
(d) publicity material, advertisements, publications and
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magazines.
(e) newspaper articles, awards, reviews.
46. There is no India dedicated website of the Plaintiffs. The
webpages would indicate the internet presence of the Plaintiffs since
the year 2014. The mere existence of the Plaintiff's website, which is
digital advertisement accessible from any country, by itself, without
support of body of tangible evidence to demonstrate the penetration of
the advertisements in the Indian market, is not sufficient to accept
transborder reputation. The webpages do not indicate targeted
customers in India, the product brochures do not demonstrate
circulation in India. The social media posts are part of digital
advertisements and there is not even a bare assertion of dedicated
followers from India. The awareness of the foreign brand is an essential
aspect as the evidence of confusion would emanate from the fact that
the Indian customers are aware of the foreign brand.
47. The advertisement invoices raised by Meta and Google in respect
of the social media handles reflected as India Regulatory Operating
Cost for August, 2023 is 0.44 AED, for September, 2023 is Nil, for
October 2023 is 0.02 AED, for November, 2023 is 0.53AED and in
December 2023 is 0.01 AED. With such operating costs for India, it is
difficult to accept the contention of wide scale advertisements in India.
The Plaintiffs have expended minimal expenses towards promotions in
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India. The certificate produced on record shows the overall promotional
expenses of 4085,626 AED for the year 2023 and when compared with
the operating costs for India set out in the invoices raised by Meta and
Google are minuscule. Further, the Chartered Accountant's certificate
does not set out the stand alone advertisement expenses in respect of
the Plaintiff's product in India and a consolidated statement is given.
48. There are no genuine documented local sales, no widely
circulating advertisements and promotional material in India actually
available or shown to be digitally accessed in India. With the material
produced on record, I am not inclined to accept that the Plaintiff's
marks and products had made an inroad in India and its goodwill and
reputation had permeated into India unlike the medical journals which
the doctors, physicians and person connected with medical field would
regularly access to update themselves.
49. The social media profiles annexed from pages 420 to 434 is not
shown to have any followers in India, the publicity material is not
demonstrated to have any circulation in India and there is nothing in
print media. There is no extensive advertisement in India to satisfy the
requirement of wide advertisement of a trade mark without the
existence of goods in the local market can well be considered as use of
the trade mark in the market. [See N.R.Dongre And Ors. vs Whirlpool
Corporation And Anr. (supra)]. In Toyota Jidosha Kabushiki Kaisha vs
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Prius Auto Industries Ltd. And Ors. (supra), it was held in paragraph 38
as under:
"38. ...Indeed the trade mark "Prius" had undoubtedly acquired a great deal
of goodwill in several other jurisdictions in the world and that too much
earlier to the use and registration of the same by the defendants in India.
But if the territoriality principle is to govern the matter and we have already
held it should, there must be adequate evidence to show that the plaintiff
had acquired a substantial goodwill for its car under the brand name "Prius"
in the Indian market also......Coupled with the above, the evidence of the
Plaintiff's witnesses themselves would be suggestive of a very limited sale of
the product in the Indian market and virtually the absence of any
advertisement of the product in India prior to April, 2001. This in turn would
show either lack of goodwill in the domestic market or lack of knowledge
and information of the product amongst a significant section of the Indian
population..."
50. In Sumit Vijay and Another vs Major League Baseball Properties
Inc26 the Hon'ble Division Bench of Delhi High Court was considering an
appeal against striking of the Appellants trade mark from the register
of trade marks. The issue involved consideration of trans border
reputation and the Delhi High Court held in paragraph 12.9, 12.10, and
12.11 as under:
12.9. Secondly, the availability of a mark on websites can again be no
indicator of trans-border goodwill or reputation percolating into a
particular country such as India. Websites are globally accessible. If
the principle that accessibility of a mark on a website is to be treated
as an indicator of trans-border reputation, every mark of every entity
would have trans border reputation in every country in the world. It
is not enough, therefore, to aver that a particular mark is available
on a website which is accessible within India, to substantiate a
contention that the mark enjoys trans-border reputation in India.
Positive assertions regarding the number of times the websites has
been accessed in India would have also to be pleaded.
12:10. Similarly, the availability of goods bearing a particular mark,
for sale on websites, whether they belong to the owner of the mark
or are e-commerce websites, can also be no evidence of percolation
of the reputation of the mark into India. As in the case of websites in
general, e-commerce websites may be accessible within India... even
26 2026 SCC Online Del 2
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if they are not hosted from within the country. Similarly, there is no
necessity that every product which is available on an e-commerce
website commands reputation or goodwill within India. Mere
availability of products bearing a mark for sale on an e-commerce
website, or on the website of the owner of the mark, would not,
however, suffice as proof of trans-border goodwill or reputation. It
would further have to be shown that orders were actually placed or
purchases effected, to a considerable existent, of the goods bearing
the mark, from within India.
12.11. The same principle applies to publication of marks in
periodicals, magazines, etc. With the proliferation of the internet,
most magazines, periodicals and the like are now available globally.
Every mark which figures in such magazines or periodicals cannot,
therefore, be said to have trans-border reputation within India There
would have to be positive assertions regarding the readership or
subscription of such magazines among Indians. Besides, such
assertions cannot be merely in the nature of bald statements, but
would also have to be supported by disclosure of the material on
which the assertion is made, even if positive evidence in that regard
may be deferred to the stage of trial. In the case of newspapers or
periodicals, empirical material should also be forthcoming that the
newspapers or periodicals are widely circulated in the country.
Offices of professionals often stock magazines, to occupy the time of
that those who are awaiting an appointment. The mere fact that
some of them may be sports magazines does not ipso facto indicate
that every sport, with reference to which an article may be contained
in the magazines, has goodwill or reputation.
51. I am in agreement with the view taken by Delhi High Court and
when applied to the facts of present case, do not show percolation of
reputation of the mark in India.
52. In so far as copyright violation is concerned, in the written
submission tendered by the Plaintiff, it is contended that the
Defendants have made a statement that out the table reproduced
therein, the marks at Sr Nos A, B and C will not be used as recorded in
the order dated 15th October, 2025. It appears that by reason of the
same, there were no submissions canvassed by Mr. Dhond on the aspect
of copyright infringement. However, perusal of the order of 15 th
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October, 2025 indicates that the said statement was time limited to the
next date, which statement was continued from time to time.
53. The pleading in the plaint in respect of copyright is that in or
around the year 2015, the Plaintiff No 2 had conceived and adopted the
distinctive label mark of " ", which was designed in house and
the copyright subsists in favour of the Plaintiff. In paragraph 56, it is
pleaded that since UAE is included in the list of WTO convention
countries, by virtue of International Copyright Order, 1999, reciprocal
copyright protection is granted to the Plaintiff in India in respect of the
aforesaid artistic work. In the reply, the Defendants have claimed the
Defendant is prior user of the mark " ".
54. There is specific pleading that the artistic work in " " was
designed at the instance of the Plaintiff and the copyright protection
extends to the artistic work in India by virtue of International Copyright
Order, 1999 which has not been specifically dealt with by the
Defendants in their reply. The Defendant's reply does not give any
explanation for adoption of the identical artwork as that of the
Plaintiffs. The reply is bereft of any pleading or material to demonstrate
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the Defendant's ownership in the artistic work. The Defendants have
pleaded that the they are prior adopters and users of the marks "
" and " ". It is pleaded in paragraph 42
as under:
"....that the trademark in respect of Defendant No 4
is prior user by the Defendants."
55. There is no material to show prior user of the artistic work or the
manner in which it was conceived and adopted. The Plaintiffs had
created the artistic work in the year 2015 and the impugned mark `at
Serial Nos 2 and 3 of the table reproduced above shows that it is slavish
reproduction of the Plaintiff's artistic work and constitutes violation of
copyright.
56. In light of the above, the Plaintiffs have failed to make out prima
facie case for grant of interim relief against passing off. However, the
Plaintiffs are entitled to interim relief against copyright infringement.
The Interim Application is allowed in terms of prayer clause (b) which
reads as under:
(b) That pending the hearing and final disposal of the suit the Defendant by
themselves, their respective proprietors, partners, servants, employees,
agents, dealers, stockists, distributors and all persons claiming under them
be restrained by an order and injunction of this Hon'ble Court from infringing
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the Plaintiff's copyright in the artistic work, viz. , comprised in the
Plaintiff's logos viz. , and by
reproducing, printing, publishing, communicating to the public the said
artwork or substantial part thereof by using the impugned marks
, and and/or any other
mark and/or label which is an exact/substantial reproduction or colorable
imitation of the Plaintiff's artistic work, i.e. , comprised in the
Plaintiff's logos viz. , and .
(SHARMILA U. DESHMUKH, J.)
