Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories — Trademark Case Law

Citation & Court

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 AIR 980; 1965 SCR (1) 737, Supreme Court of India, decided 20 October 1964.

The Dispute

Navaratna Pharmaceutical Laboratories, established in 1926 and operating under that name since 1945, sued Kaviraj Pandit Durga Dutt Sharma, who sold ayurvedic products under "Navaratna Kalpa Pharmacy" and marketed medicines as "Navaratna Kalpa." The core issue was whether "Navaratna" was merely descriptive or had acquired distinctiveness — and how a statutory infringement claim should be analysed alongside a common-law passing-off claim.

What the Court Held

The Supreme Court drew the classic and still-controlling distinction between the two causes of action: an infringement action under the statute turns on comparing the registered mark itself against the impugned mark, focusing on the essential features of the registered mark; a passing-off action, by contrast, turns on the overall get-up, trade dress, and get-up of the goods as a whole, and on whether the defendant's conduct is likely to deceive. The two tests are related but not identical, and the evidence relevant to one is not automatically sufficient for the other.

How to Use This in Your Reply

Cite this at a hearing whenever you need to keep an infringement argument and a passing-off argument analytically separate — for example, to resist a court conflating "the registered marks aren't similar enough for infringement" with "there's no passing off either." Each needs its own evidence and its own comparison.

Key takeaway: Infringement and passing off are related but distinct causes of action, each requiring its own comparison and its own evidence.