The Supreme Industries Limited v. Moorthi Rabeha

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High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction | Decided: 19 January 2026 Interim Application No. 4642 of 2025 in Commercial IP Suit No. 336 of 2024 Bench: Hon’ble Ms. Justice Sharmila U. Deshmukh Citation: 2026:BHC-OS:141

Background

The Supreme Industries Limited, the plaintiff, is a company that conceived and adopted the trade mark SUPREME in respect of its plastic products in the year 1987. The mark has been in continuous and uninterrupted extensive use since that year and is both the plaintiff’s house mark and part of its corporate name. The plaintiff demonstrated its reputation and goodwill by placing on record a certified sales turnover in excess of Rs. 10,000 crores and advertisement and promotion expenditure exceeding Rs. 140 crores for the financial year 2023-2024. An invoice of the year 1993 was produced establishing use of the mark at least since that year. The plaintiff holds eleven trade mark registrations of the mark SUPREME and its formatives, including registrations of the label mark SUPREME in Class 17 with the earliest registration dating to the year 2003 and registrations in Class 19 including SUPREME label registered on 12 October 2012. The mark SUPREME is depicted in a stylised label incorporating an original artwork designed in 1987 and revised in 1997, with the revised label retaining the stylised depiction of the word SUPREME and adding the tagline “People who know plastics best” beneath it. The artwork was designed under a contract of service for the plaintiff, making the plaintiff the owner of the copyright subsisting in it. The plaintiff also holds copyright registration in the original artwork.

In the fourth week of June 2024, during a routine public search of the trade mark registry records, the plaintiff discovered a registration granted in favour of the defendant, Moorthi Rabeha, for the impugned label mark SUPREMES GOLD with the logo SG, bearing registration number 5223553 dated 25 November 2021. The defendant is engaged in the business of manufacturing and marketing PVC pipes since the year 2015 and applied for registration of the impugned mark on a proposed to be used basis on 24 November 2021. The defendant also holds registration of the mark SG Sabariplast. The plaintiff did not encounter the defendant’s goods in the market until October 2024 and thereupon instituted the present suit. The plaintiff filed a Rectification Application before the Trade Mark Registry seeking cancellation of the defendant’s registration, which is pending. The present action is one for infringement of trade mark, infringement of copyright and passing off.

The defendant’s case in the written statement, which was adopted as the affidavit-in-reply, raised several defences. First, the word SUPREME was claimed to be a descriptive word incapable of trade mark protection. Second, it was contended that approximately 500 companies have SUPREME as part of their trade names and no exclusivity can be claimed in the word. Third, the plaintiff’s trade mark SUPREME does not appear in the list of well-known trade marks published by the Registrar. Fourth, the plaintiff does not hold registration of a word mark SUPREME in Class 19 and the plaintiff’s application for registration of the word mark SUPREME in Class 19 was refused   a fact which the plaintiff was alleged to have concealed. Fifth, the defendant’s mark was said to be distinct by reason of differences in colour, artwork, font and layout. Sixth, the defendant asserted that SUPREMES GOLD is a coined composite mark not similar to the plaintiff’s mark. The defendant also admitted in paragraph 28 of its written statement that it was willing to carry out suitable additions to the impugned mark and admitted in paragraph 19 that a customer purchasing the defendant’s product would refer to the impugned mark as SUPREMES GOLD and not by the SG logo, effectively conceding that the SG logo was insignificant as a distinguishing feature.

Issues for Determination

  1. Whether the impugned mark SUPREMES GOLD with the logo SG adopted and registered by the defendant is deceptively similar to the plaintiff’s registered trade mark SUPREME so as to constitute infringement under Section 29 of the Trade Marks Act, 1999, notwithstanding that the defendant is itself the registered proprietor of the impugned mark.
  2. Whether the defendant’s registration of the impugned mark SUPREMES GOLD is ex-facie illegal or fraudulent within the meaning of the narrow window recognised by the Full Bench of the Bombay High Court in Lupin Ltd. v. Johnson and Johnson, such as to disentitle the defendant from resisting an interim injunction on the basis of its registration.
  3. Whether the argument under Section 17 of the Trade Marks Act, 1999   that the plaintiff’s registration of a label mark does not confer exclusive rights in the word SUPREME as a component part of the registered mark   is sustainable on the facts of this case.
  4. Whether the defendant’s contention that the word SUPREME is descriptive and cannot be monopolised by the plaintiff can be sustained, particularly in light of the defendant’s own registration of a mark incorporating the word SUPREMES.
  5. Whether the plaintiff has made out a prima facie case of infringement of its copyright in the original artwork by reason of the defendant’s substantial reproduction of the plaintiff’s stylised depiction of the word SUPREME in the impugned mark.
  6. Whether the plaintiff has made out a prima facie case of passing off, having regard to the plaintiff’s goodwill and reputation in the mark SUPREME, the deceptive similarity of the impugned mark and the absence of any explanation by the defendant for the honest and bonafide adoption of the impugned mark.
  7. Whether the plaintiff suppressed a material fact by not disclosing the refusal of its application for registration of the word mark SUPREME in Class 19 and if so, what effect this has on the plaintiff’s entitlement to interim relief.

Key Holdings of the Court

  • First, the Court held that the impugned mark SUPREMES GOLD is prima facie deceptively similar to the plaintiff’s registered trade mark SUPREME. Applying the settled test of the average consumer with imperfect recollection and the principle that overall similarity   not microscopic comparison of differences   is the touchstone, the Court found that the essential and striking feature of the plaintiff’s mark is the word SUPREME written in a distinct stylised font which has been fixated in the public mind by over three decades of use. The defendant’s mark SUPREMES GOLD subsumes the plaintiff’s entire mark and the visual similarity was found to be absolutely striking. The defendant had copied the identical stylised font   with the starting alphabet S depicted identically and the subsequent letters in smaller case   for the word SUPREMES, while writing GOLD in a different straight English font. This differential treatment of SUPREMES and GOLD within the defendant’s own mark highlighted the word SUPREMES and created the possibility that the suffix GOLD would be ignored by consumers.
  • Second, the Court held that the addition of the alphabet S at the end of SUPREME and the suffix GOLD are immaterial to the question of deceptive similarity. There is a tendency to slur over the termination of words in pronunciation and the defendant’s mark is likely to be pronounced as SUPREME rather than SUPREMES. An average consumer would recollect only the word SUPREME and would be confused when confronted with the defendant’s mark. The use of a different colour by the defendant was also held to be insufficient to negate the similarity. Pertinently, the defendant’s own product catalogue depicted the mark in red colour identical to the plaintiff’s mark, whereas the defendant’s registration was in green   indicating prima facie dishonest use of the mark in a form different from the registered version.
  • Third, the Court held that the defendant’s registration of the impugned mark is ex-facie illegal within the meaning of the narrow exception recognised in Lupin Ltd. v. Johnson and Johnson. The defendant had bodily lifted the essential feature of the plaintiff’s registered mark and incorporated it in its own mark with the suffix GOLD which is immaterial. The plaintiff’s prior registration of SUPREME without any disclaimer and the deceptive similarity between the marks in respect of identical goods, meant that the Registrar ought not to have granted the registration. The Court was satisfied that this was a case of ex-facie illegal registration which brought it within the small window recognised by the Full Bench where an interim injunction may be granted even against a registered proprietor.
  • Fourth, the Court held that the defence based on Section 17 of the Trade Marks Act, 1999 was misplaced on the facts. The plaintiff’s label mark SUPREME consists of nothing other than the word SUPREME written in a stylised font. There is no other element or feature in the label mark beyond the word SUPREME and no composite label consisting of parts. Accordingly there is no part of the whole within the meaning of Section 17 and the issue of label mark versus word mark does not arise.
  • Fifth, the Court held that the defendant is estopped from contending that the word SUPREME is descriptive and incapable of trade mark protection, having itself applied for and been granted registration of a mark containing the word SUPREMES. The plaintiff’s registration of the label mark SUPREME without any disclaimer also demonstrates that the mark passed the test of distinctiveness before the Registrar. Further, the defendant produced no material to show that the word SUPREME is in such extensive use as to have become publici juris.
  • Sixth, on copyright infringement, the Court held that the plaintiff has a subsisting copyright in the original artwork which is secured by copyright registration and that the defendant’s mark is a substantial reproduction of that original artwork. The defendant’s counsel did not canvass any submissions in response to the copyright infringement claim and accordingly no defence was pressed or established.
  • Seventh, on passing off, the Court held that the plaintiff made out a prima facie case. The plaintiff’s continuous use of the mark SUPREME since at least 1993, its enormous sales turnover and its substantial advertisement expenditure together establish goodwill and reputation such that the registered trade mark is associated by the general public with the plaintiff’s goods. The defendant, a late entrant in the market, applied for registration on a proposed to be used basis with no evidence of a search of the trade mark registry before adoption and no explanation for the honest and bonafide adoption of a mark deceptively similar to the plaintiff’s registered mark in respect of identical goods. The court found prima facie that the adoption was for unjust enrichment at the cost of the plaintiff.
  • Eighth, on the alleged suppression of the refusal of the word mark application, the Court held that no material suppression had occurred. The claim for infringement was based on the plaintiff’s registered label mark SUPREME and its formatives, not on the refused word mark application. The refusal of the word mark did not affect the plaintiff’s rights under the registered label mark and no case of prosecution history estoppel was pleaded by the defendant.
  • Ninth, the Interim Application was made absolute in terms of prayer clauses (a), (b) and (c), granting the interim injunction in favour of the plaintiff on all three claims   trade mark infringement, copyright infringement and passing off.

Statutory Provisions Involved

Section 29 of the Trade Marks Act, 1999 governs infringement of a registered trade mark and provides that a registered trade mark is infringed by a person who is not a registered proprietor and who uses in the course of trade a mark identical with or deceptively similar to the registered trade mark in relation to goods or services in respect of which the trade mark is registered. The Court applied this provision to find prima facie infringement by the defendant, while also addressing the complication arising from the defendant’s own registration of the impugned mark and the principle drawn from Lupin Ltd. v. Johnson and Johnson that an injunction may be granted against a registered proprietor where the registration is ex-facie illegal or fraudulent.

Section 28 of the Trade Marks Act, 1999 confers on the registered proprietor the exclusive right to use the registered trade mark. The Court noted that Section 28 uses the expression if valid, which means that the exclusive rights conferred by registration are not absolute and do not operate as an absolute embargo on the grant of injunction where the validity of the registration is in question.

Section 9 of the Trade Marks Act, 1999 prescribes absolute grounds for refusal of registration and includes marks which are not distinctive and marks likely to cause deception or confusion. Section 11 of the Trade Marks Act, 1999 prescribes relative grounds for refusal and prohibits registration of a mark identical with or similar to an earlier trade mark in respect of identical or similar goods where there is a likelihood of confusion on the part of the public. The Court found that the Registrar had failed to apply the well-settled tests for confusion and deception in granting the defendant’s registration, rendering it ex-facie illegal under these provisions.

Section 17 of the Trade Marks Act, 1999 provides that when a trade mark consists of several matters its registration confers on the proprietor exclusive rights to the trade mark taken as a whole and that registration shall not confer exclusive rights in matter forming only a part of the whole of the trade mark where that part is not the subject of a separate application or registration or is not distinctive. The Court held this provision inapplicable on the facts since the plaintiff’s label mark SUPREME consists solely of the word SUPREME and there is no composite element of which it could be said to be only a part.

The copyright provisions of the Copyright Act, 1957, while not expressly detailed in the judgment, underpin the plaintiff’s claim for infringement of the original artwork in its registered trade mark label. The Court accepted the subsistence of copyright in the original artwork on the basis of the plaintiff’s copyright registration and found the defendant’s mark to be a substantial reproduction of that artwork.

Reasoning of the Court

The Court’s reasoning proceeded through a structured analysis of three distinct causes of action   trade mark infringement, copyright infringement and passing off   while addressing the threshold complication raised by the defendant’s own registration of the impugned mark.

On the question of deceptive similarity, the Court applied the well-established principles drawn from a line of Supreme Court authorities including Parle Products Private Limited v. J.P. & Co., M/s Hiralal Prabhudas v. M/s Ganesh Trading Company, National Sewing Thread Co. Ltd. v. James Chadwick & Bros. and Amritdhara Pharmacy v. Satya Deo Gupta. The consistent thread running through these authorities is that the test for deceptive similarity is not a microscopic side-by-side comparison of differences but an assessment of overall similarity from the perspective of an average consumer with imperfect recollection who relies on general impressions and significant details rather than photographic memory. Applying this standard, the Court found the evidence of deceptive similarity in the present case to be compelling and visually self-evident. The defendant had adopted not merely the word SUPREME but the identical distinctive stylised font in which the plaintiff has depicted that word since 1987, with the starting alphabet S styled identically and the subsequent letters in the same smaller case format. The addition of the letter S and the suffix GOLD in a different font did not detract from the dominant impression created by the word SUPREMES rendered in the plaintiff’s own distinctive visual style.

On the question of whether an injunction could be granted against the defendant as a registered proprietor, the Court applied the framework articulated by the Full Bench of the Bombay High Court in Lupin Ltd. v. Johnson and Johnson. That decision recognised that while there is a strong presumption in favour of a registered proprietor and a very heavy burden lies on a defendant to rebut that presumption, the court retains the power in exceptional cases   where the registration is ex-facie illegal, fraudulent or shocks the conscience of the court   to grant an injunction even against a registered proprietor at the interlocutory stage. The Court was satisfied that the present case fell within this narrow window because the defendant had bodily copied the essential feature of the plaintiff’s prior registered mark in respect of identical goods. The Registrar’s grant of registration in such circumstances was found to be ex-facie contrary to Sections 9 and 11 of the Act.

On the Section 17 argument, the Court’s reasoning was straightforward. The section applies where a mark consists of several matters and excludes exclusive rights in parts that are not separately registered or are not distinctive. Since the plaintiff’s label mark consists of nothing other than the word SUPREME, there are no several matters and no part distinct from the whole. The section simply has no application to a label mark that is constituted entirely by a single word. The Court reinforced this reasoning by reference to the Ultra Tech Cement decision of the Bombay High Court which had clarified that a registration without disclaimer shows that the mark has passed the test of distinctiveness under Sections 9 and 11 and such a distinctive component is not hit by Section 17(2).

On the descriptiveness argument, the Court disposed of it by applying the principle of estoppel. Having applied for and obtained registration of its own mark containing the word SUPREMES, the defendant cannot simultaneously maintain that the word SUPREME is descriptive and incapable of trade mark protection. The Court further noted that even setting aside the estoppel, the defendant produced no material to support the claim that SUPREME is in such widespread use in the relevant trade as to have entered the public domain and become publici juris.

On passing off, the Court applied the trinity of goodwill, misrepresentation and damage drawn from settled passing off jurisprudence as recently restated by the Supreme Court in Pernod Ricard India Private Limited v. Karanveer Singh Chhabra. The plaintiff’s vast turnover, extensive advertising, documentary evidence of use since 1993 and the public association of the mark with the plaintiff’s goods established goodwill. The defendant’s use of a deceptively similar mark on identical goods, in the absence of any credible explanation for its adoption, constituted misrepresentation. The likelihood of consumers associating the defendant’s goods with the plaintiff was established by the deceptive similarity itself. The Court emphasised that the defendant as a late entrant in the market, applying for registration on a proposed to be used basis without any search of the registry, cannot escape the inference that the adoption was designed for unjust enrichment at the plaintiff’s expense.

Doctrinal Significance

The Supreme Industries judgment makes several doctrinal contributions to Indian trade mark law that are likely to be of value to practitioners and courts dealing with trade mark infringement and passing off disputes.

Its most significant contribution is the application and affirmation of the Lupin Ltd. v. Johnson and Johnson Full Bench principles to a case involving ex-facie illegal registration. The judgment provides a practical illustration of the kind of facts that will bring a case within the narrow window of ex-facie illegal registration   specifically the bodily lifting of an earlier registered mark’s essential feature in its distinctive visual depiction for use on identical goods. This gives content and practical meaning to what might otherwise appear to be an abstract exception. Courts and practitioners now have a concrete example of a case that crosses the threshold beyond mere arguable invalidity into ex-facie illegality sufficient to justify an injunction against a registered proprietor at the interlocutory stage.

The judgment also provides useful clarification on the operation of Section 17 of the Trade Marks Act, 1999 in the context of label marks that are constituted entirely by a single distinctive word. By holding that Section 17 has no application where the label mark has no composite elements and consists solely of the word in a stylised font, the Court prevents the section from being used to fragment what is in substance a word mark merely because it has been registered in a stylised graphical form. This addresses a common defensive argument in trade mark litigation where defendants seek to exploit the label mark versus word mark distinction to deny a plaintiff the benefit of its registrations.

The judgment’s treatment of the descriptiveness estoppel is also noteworthy. The proposition that a defendant who has itself applied for and obtained registration of a mark containing the plaintiff’s alleged descriptive word is estopped from denying the distinctiveness of that word is a practically significant principle that prevents inconsistent positions being maintained in litigation.

Finally, the judgment synthesises in one place the principles governing infringement under Section 29 and the passing off action as applied to the specific situation of a late entrant into the market adopting a mark deceptively similar to an established registered mark on proposed to be used basis. The Court’s emphasis on the absence of any explanation for honest adoption and on the inference of unjust enrichment from unexplained adoption reinforces the principle that the good faith of the adopter is a relevant consideration in assessing passing off claims even at the interlocutory stage.

Frequently Asked Questions:

Q1. Can an interim injunction be granted against a registered trademark proprietor in India?
Yes. The Full Bench of the Bombay High Court in Lupin Ltd. v. Johnson and Johnson recognised that while there is a strong presumption in favour of a registered proprietor, a court may grant an interim injunction against a registered proprietor in exceptional cases where the registration is ex-facie illegal, fraudulent or shocks the conscience of the court. The Supreme Industries v. Moorthi Rabeha judgment applied and affirmed this principle where the defendant had bodily copied the essential feature of the plaintiff’s prior registered mark for use on identical goods.

Q2. What is ex-facie illegal trademark registration under Indian trademark law?
Ex-facie illegal registration refers to a trademark registration that is so obviously contrary to Sections 9 and 11 of the Trade Marks Act 1999 that no prima facie defence can be built on it. The Bombay High Court in Supreme Industries v. Moorthi Rabeha held that a registration granted by the Registrar in respect of a mark that bodily copies the essential feature of a prior registered mark for identical goods is ex-facie illegal, bringing it within the narrow window where an injunction may be granted even against the registered proprietor.

Q3. Does Section 17 of the Trade Marks Act 1999 apply to a label mark consisting only of a single word?
No. Section 17 of the Trade Marks Act 1999 applies where a trademark consists of several matters and excludes exclusive rights in parts that are not separately registered or not distinctive. The Bombay High Court in Supreme Industries v. Moorthi Rabeha held that where a label mark is constituted entirely by a single word in a stylised font with no other composite elements, Section 17 has no application as there are no several matters and no part distinct from the whole.

Q4. Can a defendant claim a trademark is descriptive after registering a similar mark themselves?
No. The Bombay High Court in Supreme Industries v. Moorthi Rabeha applied the principle of estoppel to hold that a defendant who has itself obtained registration of a mark containing the plaintiff’s allegedly descriptive word cannot simultaneously maintain that the word is descriptive and incapable of trademark protection. Having claimed the benefit of registration for a mark containing the word SUPREMES, the defendant was estopped from denying distinctiveness of the word SUPREME.

Q5. What is the significance of adopting a trademark on a proposed to be used basis without a registry search in India?
A defendant who adopts a trademark on a proposed to be used basis without conducting a search of the trademark registry and without any credible explanation for adopting a mark deceptively similar to an established registered mark on identical goods is exposed to an adverse inference of dishonest adoption for unjust enrichment. The Bombay High Court in Supreme Industries v. Moorthi Rabeha relied heavily on the absence of a registry search and the absence of any explanation for adoption as supporting the passing off claim at the interlocutory stage.

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