Indian Express and Commercial Ventures and Projects Private Limited, operating restaurants under the registered trademark "House of Mandarin" since 2016 and claiming popular use of its acronym "HOM" from 2017, filed a suit for trademark infringement and passing off against Fundamental Hospitality Private Limited and another, who adopted "HOM" (derived from Sanskrit for fire offering) for their modern Indian restaurant launched in October 2025 near the plaintiff's Bandra outlet, after the plaintiff became aware in September 2025 via congratulatory messages mistaking it as their expansion.
The court reasoned that the plaintiff failed to provide cogent evidence, such as extensive media references, customer reviews, or consistent public domain use over eight years, to show "HOM" was popularly associated with them in the public mind, thus no extension of statutory protection from the registered mark to the unregistered acronym under the Trade Marks Act, distinguishing from Mahindra & Mahindra where long-term evidence existed; for passing off, the plaintiff lacked proof of standalone goodwill in "HOM," misrepresentation by defendants (whose adoption was honest and bona fide from November 2024), or likelihood of confusion among discerning premium customers, given different cuisines (Pan-Asian vs. Indian), stylized marks, and unreliable evidence like undated materials and unsubstantiated WhatsApp chats. The court dismissed the interim application, finding no prima facie case.
- The benefit of use and registration of a trade mark inures to its natural abbreviation only if the abbreviation is used to such an extent that the general public and trade recognize the plaintiff by it, making it a brand identifier associated solely with the plaintiff in the public mind: Para 18
- An abbreviation becomes a protectable trade mark if, through use by customers, trade, or media, it is identified in the public mind with a particular company, even without formal use by the company itself: Para 16
- In a passing off action, the plaintiff must prove goodwill or reputation in the mark, misrepresentation by the defendant, and likelihood of damage; intent to deceive is not necessary, but likelihood of confusion or deception is required, and goods need not be identical if misrepresentation affects the plaintiff's reputation: Para 25
- Passing off is a tort of deceit distinguished from confusion, where deception involves false representation but confusion may arise without lies; factors for deceptive similarity include mark nature, resemblance, goods nature, purchaser class, purchase mode, and surrounding circumstances: , Paras 26-27
- Common law rights in passing off are broader than infringement, unaffected by non-registration, and protect goodwill against misrepresentation causing consumer confusion: I Para 24
Case Title: Indian Express and Commercial Ventures Vs. Fundamental Hospitality :19.12.2025:Commercial IP (L) No.35330 of 2025:2025:BHC-OS:25517:Bombay HC: Sharmila U. Deshmukh
