In Ahmed Perfumes LLC and Anr. Vs Mohammed Faisal Rehman Sultan Ahmed and Ors., Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025, decided on 7 May 2026 by the , Justice refused interim relief in a passing off action relating to perfume trademarks but granted protection against copyright infringement in artistic label works.
The dispute arose between UAE-based perfume manufacturers using marks such as “Ahmed Al Maghribi”, “Bin Shaikh”, “Oud & Roses”, “Kaaf” and “Marj” and Indian defendants alleged to have adopted similar marks and artistic packaging in India. The plaintiffs claimed transborder reputation and asserted that Indian consumers associated the impugned marks with their products. The defendants disputed the plaintiffs’ goodwill and claimed prior adoption and use in India.
Justice Sharmila U. Deshmukh extensively examined the law relating to transborder reputation and passing off by relying upon judgments including N.R. Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan Inc., and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. The Court held that mere global reputation, website accessibility, social media presence, or isolated overseas purchases by Indian travellers were insufficient to establish goodwill in India. The Court found that the plaintiffs had failed to produce convincing evidence of substantial sales, customer base, advertisements, or market penetration in India.
However, the Court held that certain impugned labels used by the defendants were slavish reproductions of the plaintiffs’ artistic works protected under copyright law. Since the defendants failed to explain adoption of the identical artwork or establish prior ownership in the artistic labels, the Court granted interim injunction restraining copyright infringement while declining interim relief for passing off.
Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Detailed Analytical Article
Introduction
The decision delivered by the High Court of Judicature at Bombay in Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors., Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025, decided on 7 May 2026, is an important judgment concerning the principles of transborder reputation, passing off, territorial goodwill, and copyright protection in artistic label works. The judgment was delivered by Justice Sharmila U. Deshmukh and extensively discusses the legal standards applicable when foreign entities seek protection of unregistered trademarks in India.
The dispute arose between UAE-based perfume manufacturers claiming global reputation in marks such as “Ahmed Al Maghribi”, “Bin Shaikh”, “Kaaf”, “Oud & Roses” and “Marj”, and Indian defendants who were allegedly using deceptively similar marks and artistic labels in India. The plaintiffs sought interim injunctions alleging passing off and copyright infringement. The Court, however, drew a clear distinction between trademark goodwill and copyright ownership. While the Court refused interim relief for passing off due to lack of proof of substantial goodwill in India, it granted protection against infringement of artistic label works after finding that some of the impugned labels were slavish reproductions of the plaintiffs’ artistic works.
The judgment is significant because it reiterates that mere worldwide reputation or internet presence is not sufficient to establish transborder reputation in India. At the same time, it clarifies that artistic works incorporated in labels can independently enjoy copyright protection even if trademark rights are disputed.
Factual and Procedural Background
The plaintiffs, Ahmed Perfumes LLC and another entity incorporated in the United Arab Emirates, were engaged in the manufacture and sale of perfumes and fragrance products internationally. They claimed ownership and worldwide goodwill in several perfume brands and label marks including “Ahmed Al Maghribi”, “Ahmed Perfumes”, “Bin Shaikh”, “Kaaf”, “Oud & Roses”, and “Marj”. The plaintiffs asserted that these marks had acquired substantial international recognition through global sales, social media presence, websites, exhibitions, promotional activities, and customer goodwill.
According to the plaintiffs, their products had entered the Indian market since at least November 2021 through Indian customers purchasing products abroad and bringing them into India. The plaintiffs further claimed that they subsequently entered into distribution arrangements for direct sales in India from July 2024 onwards. They also relied upon domain names, websites, Instagram pages, Facebook pages, LinkedIn accounts, online advertisements, promotional campaigns, and publicity materials to establish spillover reputation in India.
The defendants were Indian entities and individuals alleged to have adopted deceptively similar marks and artistic labels in relation to perfume products. The plaintiffs alleged that the defendants had dishonestly copied not only their brand names but also sub-brands and artistic packaging. The plaintiffs argued that such conduct amounted to passing off and copyright infringement.
The defendants opposed the interim application by contending that the plaintiffs had failed to establish actual goodwill or customer base in India. They argued that the plaintiffs did not possess registered trademarks in India and that their evidence merely showed sales abroad to customers who later brought products into India. The defendants also asserted prior adoption and use of certain marks in India and disputed the plaintiffs’ claim of transborder reputation.
Dispute Before the Court
The principal issue before the Bombay High Court was whether the plaintiffs had established sufficient transborder reputation and goodwill in India to maintain an action for passing off despite being foreign entities without substantial direct business operations in India.
The Court was also required to determine whether the defendants’ use of allegedly similar labels and artwork constituted copyright infringement under Indian copyright law.
The dispute therefore involved two separate but related legal questions. The first concerned trademark passing off based on transborder reputation and spillover goodwill. The second concerned ownership and infringement of artistic works embodied in perfume labels and logos.
Reasoning and Analysis of the Judge
Justice Sharmila U. Deshmukh undertook a detailed examination of Indian and foreign precedents dealing with passing off and transborder reputation. The Court emphasized that in passing off actions involving foreign entities, the claimant must establish not merely global reputation but actual goodwill and customer recognition within India.
The Court first examined the classic trinity of passing off, namely goodwill, misrepresentation, and damage. Since the plaintiffs were foreign entities and their trademarks were unregistered in India, the Court observed that the plaintiffs were required to establish spillover reputation and goodwill in India before any passing off claim could succeed.
The Court extensively relied upon the Supreme Court judgment in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., (1996) 5 SCC 714, where the Supreme Court recognized that even advertisement of a trademark without actual sales could constitute use sufficient to establish transborder reputation. The Bombay High Court noted that Whirlpool represented an early recognition of spillover reputation through advertisements circulating in India.
The Court also referred to Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court held that international reputation and medical literature circulating in India could support passing off claims in pharmaceutical products. The Court noted, however, that pharmaceutical products constitute a special category because doctors and medical professionals regularly rely upon international journals and literature.
The most significant reliance was placed upon the landmark Supreme Court judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and Ors., (2018) 2 SCC 1. In Prius, the Supreme Court strongly favoured the “territoriality principle” over the “universality principle.” Justice Deshmukh reproduced and analysed the Supreme Court’s reasoning that a claimant must establish actual goodwill and customer recognition within India rather than merely relying upon global reputation. The Court highlighted that mere existence of worldwide reputation is insufficient unless the claimant proves substantial presence of the mark in the Indian market.
The Court further referred to the UK Supreme Court judgment in Starbucks (HK) Ltd. and Anr. v. British Sky Broadcasting Group Plc and Ors., [2015] UKSC 31, where it was held that mere reputation is insufficient and that a claimant must demonstrate customers within the jurisdiction. Justice Deshmukh emphasized that Indian courts have consistently followed this principle while dealing with foreign trademark owners seeking passing off protection.
The Court also discussed Athlete’s Foot Marketing Associates Inc. v. Cobra Sports Ltd., [1980] RPC 343, where it was observed that no trader can complain of passing off in a territory where it has no customers or trade relations.
The Court relied upon the Delhi High Court decision in Bolt Technology OU v. Ujoy Technology Pvt. Ltd. and Anr., 2022 SCC OnLine Del 2208, which summarized the principles flowing from Toyota Prius and clarified that a claimant must show significant goodwill in India and not merely worldwide reputation.
Another important precedent discussed by the Court was Sumit Vijay and Another v. Major League Baseball Properties Inc., 2026 SCC OnLine Del 2. In that case, the Delhi High Court held that mere accessibility of websites or availability of products on e-commerce platforms does not establish transborder reputation unless there is evidence of substantial Indian customers, viewership, circulation, or purchases within India. Justice Deshmukh expressly agreed with this reasoning and applied it to the present dispute.
Applying these principles, the Court found serious deficiencies in the plaintiffs’ evidence. The Court observed that most invoices relied upon by the plaintiffs reflected sales made in UAE to customers who subsequently brought products into India. Such sales did not establish that the plaintiffs had customers in India. The Court emphasized that the law distinguishes between customers who purchase goods abroad and customers who purchase goods within India.
The Court also found that the plaintiffs had failed to produce reliable evidence regarding Indian distributors, circulation of advertisements in India, social media followers from India, targeted Indian promotional campaigns, or substantial sales turnover in India. The Court noted that the promotional expenditure shown for India through Meta and Google advertisements was extremely insignificant and did not support the claim of extensive market penetration.
The Court therefore concluded that the plaintiffs had failed to establish prima facie goodwill and reputation in India necessary for a passing off action. The Court held that there were no genuine documented local sales, no substantial advertisements targeted at Indian consumers, and no convincing evidence showing that the plaintiffs’ marks had permeated the Indian market.
However, on the issue of copyright infringement, the Court reached a different conclusion. The plaintiffs had specifically pleaded that certain artistic labels and logos were conceived and designed in-house in 2015 and that copyright protection extended to India through the International Copyright Order, 1999 because UAE is a WTO Convention country.
The Court found that the defendants had failed to explain adoption of identical artistic labels and had not produced material showing prior authorship or ownership of the artwork. The Court observed that the impugned labels were “slavish reproductions” of the plaintiffs’ artistic works. Accordingly, the Court held that the plaintiffs had established a prima facie case for copyright infringement.
Final Decision of the Court
The Bombay High Court refused interim relief in respect of passing off and trademark claims after holding that the plaintiffs had failed to establish sufficient transborder reputation and goodwill in India.
However, the Court granted interim injunction against copyright infringement and restrained the defendants from reproducing, printing, publishing, or using the plaintiffs’ artistic label works and logos or any colourable imitation thereof. The interim application was therefore partly allowed only to the extent of copyright protection.
Point of Law Settled in the Case
The judgment reinforces the territoriality principle in trademark passing off actions involving foreign entities. It clarifies that worldwide reputation, internet accessibility, social media presence, and isolated overseas sales to Indian customers are insufficient to establish transborder goodwill in India. A foreign claimant must demonstrate substantial customer recognition, market penetration, advertisements, or commercial presence within India. The judgment also clarifies that copyright in artistic label works can independently receive protection even where trademark passing off claims fail due to lack of territorial goodwill.
Case Details
Title of the Case: Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors.
Date of Judgment: 7 May 2026
Case Number: Interim Application No. 1405 of 2025 in Commercial IP Suit (L) No. 1403 of 2025
Neutral Citation: Not Available
Court: High Court of Judicature at Bombay
Hon’ble Judge: Justice Sharmila U. Deshmukh
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Headnote
The Bombay High Court in Ahmed Perfumes LLC and Anr. v. Mohammed Faisal Rehman Sultan Ahmed and Ors. held that foreign trademark owners seeking passing off protection in India must establish substantial goodwill and customer recognition within India and cannot rely merely upon worldwide reputation, internet accessibility, social media presence, or overseas sales to Indian travellers. Applying the territoriality principle laid down in Toyota Prius, the Court refused interim injunction in passing off but granted copyright protection against slavish reproduction of artistic label works and logos.
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