factual and procedural background An Italian company called Rubinetterie Bresciane Bonomi SpA makes brass valves and plumbing products and sells them worldwide under its well-known trademarks RB and Rubinetterie Bresciane. It appointed an Indian firm Lehry Instrumentation & Valves Pvt Ltd as its authorised distributor in India for several years. Later the Italian company received complaints from customers that some valves bearing its trademark looked different from genuine products and came with suspicious quality certificates. Believing counterfeit goods were being sold under its name the Italian company filed a suit for passing off and injunction. After terminating the distributorship it sent letters to customers warning them not to deal with the Indian firm. The Indian company then filed its own suit claiming the letters were defamatory and had damaged its reputation and business. Both suits were heard together by a single judge who dismissed the Italian company’s case and awarded damages to the Indian company. The Italian company appealed to the division bench of the Madras High Court.
dispute in question The main dispute was whether the Indian distributor had sold counterfeit products using the Italian company’s trademark and whether the letters sent by the Italian company to customers after terminating the distributorship amounted to actionable defamation or were justified to protect its brand.
reasoning and decision of court The High Court examined the evidence in detail including clear admissions by the distributor that the Italian company was the prior owner and user of the RB trademark. The court found that the distributor had internally generated quality certificates based on the Italian company’s earlier documents which could mislead buyers into thinking the goods were genuine. The court held that the Italian company had acted in good faith on customer complaints and was entitled to terminate the distributorship and inform the trade to safeguard its reputation. The letters were not defamatory as they were issued to prevent confusion in the market. The division bench set aside the single judge’s judgment allowed the Italian company’s appeal decreed its suit for injunction and accounts and dismissed the Indian company’s defamation suit.
one important legal point settled in this case In a passing off action a court can rely on circumstantial evidence such as admissions of prior trademark use internal generation of misleading quality certificates and the overall conduct of the parties to establish likelihood of confusion even without producing the actual counterfeit product in court.
Rubinetterie Bresciane Bonomi SpA Vs Lehry Instrumentation & Valves Pvt. Ltd., Order date: 17.04.2026, Case Number: O.S.A.Nos.241 & 255 of 2020, Neutral Citation: Not Provided, Name of court and Judge: High Court of Judicature at Madras, Hon’ble Mr. Justice P.Velmurugan and Hon’ble Mr. Justice K.Govindarajan Thilakavadi.
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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