S. Syed Mohideen v. P. Sulochana Bai — Trademark Case Law

S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, Supreme Court of India, decided 17 March 2015.

Because the report appears in the 2016 volume, the case is often cited as a 2016 judgment. It was decided in 2015.

The dispute concerned the name “Iruttukadai Halwa”, the name of a long-established halwa business. Both sides held trademark registrations connected with the name.

The respondent’s family had used the name commercially long before either party obtained a registration. The appellant argued that, as a registered proprietor, they could not be sued for passing off by another party. The trial court found the respondent to be the prior user and granted a declaration and an injunction.

The Supreme Court upheld the prior user. It held that the rights of a prior user are superior to registration, and that a registered proprietor can be sued for passing off by someone who used the mark earlier.

The reasoning runs through three provisions of the Trade Marks Act, 1999. Section 27(2) preserves the right of action for passing off, whatever the position on registration. Section 28 gives a registered proprietor exclusive rights, but where two parties both hold registrations for identical or similar marks, neither gets exclusive rights against the other merely by registering. And Section 34 protects the vested rights of a prior user against the registered proprietor.

The Court treated passing off as a remedy grounded in goodwill built through use. Registration is a statutory overlay on that right, not a substitute for it, and it does not wipe out goodwill someone else built first.

This is the leading authority when you used a mark first and someone else registered it. Plead your prior use, show the goodwill built by it, and rely on Sections 27(2) and 34 to meet the argument that their registration ends the matter.

The evidence that matters is dated and continuous: invoices, advertising, signage, and anything showing the public associated the name with your business from before the other side’s adoption. See Century Traders v. Roshan Lal Duggar on how prior use is weighed.

Read the other way, it is a warning for anyone relying on a registration alone. Registering a name someone else has long been using does not make it safe to trade under. A proper search, including a look for unregistered local users, matters before you file. The practical differences between the two remedies are set out in infringement vs passing off.

It also explains why a business name and a trademark are not interchangeable — see company name vs trademark — and why ownership should be decided early, as covered in who should own the trademark.

Key takeaway: Prior use beats registration. A registered proprietor can still be restrained by passing off at the suit of an earlier user, because registration does not erase goodwill that someone else built first.