Source: Delhi High Court 

Why in News? 

Recently, Justice Amit Bansal has held that Sporadic use of a trademark cannot be assumed as a ground to assume goodwill or reputation. 

• The Delhi High Court held this in the case of Broad Peak Investment Holdings Ltd. And Anr v. Broad Peak Capital Advisors LLP And Anr. (2025). 

What was the Background of Broad Peak Investment Holdings Ltd. And Anr v. Broad Peak Capital Advisors LLP And Anr. Case?   

• Core Parties: 
  • Plaintiffs: Broad Peak Investment Holdings Ltd. and its Singapore subsidiary (international investment advisors). 
  • Defendants: Broad Peak Capital Advisors LLP and its managing partner. 
• The plaintiffs were incorporated in 2006 in the Cayman Islands and Singapore. 
• They have been using the name 'BROAD PEAK' in their trade names since their incorporation. 
• The plaintiffs registered trademark rights for 'BROAD PEAK' in various international jurisdictions, with earliest registrations in Singapore and UK dating back to 2007. 
  • The plaintiffs are investment advisors managing pan-Asia-focused investment funds. 
  • They have been conducting investment advisory services in India since 2008. 
  • The plaintiffs primarily invest in equities and credit instruments for global institutional investors. 
• In February 2017, the plaintiffs discovered that the defendants had established an asset management company called 'Broad Peak Capital Advisors LLP.' 
• The plaintiffs immediately sent a legal notice to the defendants, asserting their prior rights to the 'BROAD PEAK' trademark. 
• The defendants did not respond to this initial notice. 
• In July 2020, the plaintiffs learned the defendants were continuing to use the 'BROAD PEAK' name. 
• The defendants had filed trademark registration applications in March 2017. 
• Despite the plaintiffs' objections, the defendants were granted trademark registration. 
• The plaintiffs sent multiple cease-and-desist notices to the defendants. 
• A separate settlement was reached with Mr. Shiv Krishnan (connected to the defendants) in December 2020. 
• The defendants maintained they were unaware of the plaintiffs' prior use and had conducted searches before adopting the name. 
• The plaintiffs claim prior use and reputation of the 'BROAD PEAK' trademark. 
• The defendants argue they adopted the name independently and have been using it in good faith since 2016. 
• Both parties now hold registered trademarks for 'BROAD PEAK' in the same class of services. 
• The legal battle centers on whether the defendants' use of the 'BROAD PEAK' trademark constitutes trademark infringement or passing off, given the similarities in name and the investment advisory sector. 
• The plaintiffs filed the present suit seeking a permanent injunction restraining the defendants from using the trademark. 

What were the Court’s Observations?  

• The Delhi High Court made the following observations: 
  • Registration Status: 
    • Both plaintiffs and defendants hold registered trademarks for 'BROAD PEAK.' 
    • The defendants' trademark was granted after the plaintiffs' application. 
    • The plaintiffs' initial trademark application was filed on a 'proposed to be used' basis. 
  • Plaintiffs' Evidence of Prior Use: 
    • The court carefully examined the documents submitted by the plaintiffs to establish their prior use in India and analyzed: 
      • Acknowledged limited transactions involving the plaintiffs. 
      • Determined that these documents showed sporadic use, not substantial reputation. 
      • Concluded that international reputation doesn't automatically translate to Indian market recognition.  
  • Key Considerations: 
    • Both parties serve sophisticated corporate clients. 
    • Different specific business segments within investment sectors. 
    • Highly qualified financial professionals unlikely to be easily confused. 
    • Clients would make informed, careful decisions. 
  • Legal Principles Applied: 
    • Territoriality principle (goodwill must be established in India). 
    • Honest concurrent use doctrine. 
    • Deceptive similarity test considering client sophistication. 
    • The Delhi High Court had a view that settlement with Mr. Shiv Krishnan's US entity does not automatically bind the defendants, and that the defendant has separate legal entities with distinct operations. 
  • Critical Observations: 
    • The court found no prima facie case of trademark infringement. 
    • Insufficient proof of goodwill in Indian market. 
    • No clear evidence of intentional misrepresentation. 
    • Unlikely confusion among target clients. 
  • Burden of Proof: 
    • Plaintiffs must establish substantial reputation in India. 
    • International reputation alone is insufficient. 
    • Detailed evidence required to prove market confusion. 
  • Conclusion: 
    • The High Court essentially found that while the plaintiffs have an international presence, they failed to demonstrate: 
      • Substantial market reputation in India. 
      • Likelihood of consumer confusion. 
      • Intentional trademark misappropriation by the defendants. 
• The Supreme Court dismissed the interim injunction application, allowing both parties to continue using their 'BROAD PEAK' trademark, with a full trial recommended to thoroughly examine the claims. 

What is a Trademark Infringement? 

• About: 
  • A trademark serves as a unique identifier for goods and services, representing the brand and its reputation. 
  • Infringement of trademarks not only undermines the value of intellectual property but also poses a threat to businesses by allowing unauthorized parties to benefit from the goodwill associated with a brand. 
• Legal Framework: 
  • India has a comprehensive legal framework to protect trademarks, primarily governed by the Trademarks Act, 1999 (TMA). 
  • The act defines a trademark as a mark capable of being represented graphically and distinguishing the goods or services of one person from those of others. 
  • Trademarks can include names, logos, symbols, and even shapes. 
• Infringement under the Act: 
  • Direct or registered trademark infringement is mentioned under Section 29 of the TMA. 
    • It outlines the various acts that constitute infringement, including using a trademark that is identical or deceptively similar to a registered mark in the course of trade. 

What is ‘Passing off’? 

• Passing off is a legal concept primarily related to trademark law, not copyright law. 
• It involves the unauthorized use of a trademark or a trade name in a way that misleads consumers into believing that the goods or services offered by one party are those of another party. 
• To establish a passing off claim, the following elements typically need to be proven: 
  • The plaintiff has goodwill or reputation associated with their goods or services. 
  • The defendant has engaged in some form of misrepresentation (intentional or unintentional) that creates confusion among consumers. 
  • The misrepresentation has caused or is likely to cause damage to the plaintiff's goodwill or reputation.

Landmark Cases 

• S. Syed Mohideen v. P. Sulochana Bai (2016): 
  • In this case the "Triple Test" for Passing Off Actions were cited: 
    • Plaintiff's Goodwill. 
    • Misrepresentation by Defendant. 
    • Damage to Plaintiff's Goodwill. 
• Satyam Infoway v. Siffynet Solutions (2004) 
  • This case expanded understanding of trademark protection in digital era as: 
    • Sales volume. 
    • Advertising extent. 
    • Proof of public misrepresentation. 
• Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries (2018) 
  • This case established that international reputation doesn't automatically translate to local market recognition. 
  • Requires substantial evidence of 
    • Local sales.  
    • Local advertising.  
    • Local market awareness. 
• Cadila Health Care v. Cadila Pharmaceuticals (2001) 
  • In this case it was held that trademark similarity must be assessed from perspective of: 
    • Consumer's education. 
    • Consumer's intelligence.  
    • Degree of care while purchasing. 
• Khoday Distilleries v. Scotch Whiskey Association (2008) 
  • In this case the key points were highlighted based on market segmentation: 
    • In specialized markets, consumers are more discerning. 
    • Sophisticated consumers less likely to be confused by similar trademarks. 
    • Brand choice involves careful consideration, not impulse.