Kaviraj Durga Dutt v Navaratna: Infringement vs Passing Off

One Sanskrit word, NAVARATNA, and two ayurvedic medicine makers a thousand kilometres apart. Navaratna Pharmaceutical Laboratories of Kerala held registrations for it. Kaviraj Pandit Durga Dutt Sharma of Delhi sold his own preparations as NAVARATNA KALPA.

Their fight reached the Supreme Court in 1965 and produced the passage every Indian trademark litigator can recite: the definitive explanation of how an infringement action differs from a passing-off action — and why different packaging can save one defendant but not the other.

If you have ever wondered what a trademark certificate actually buys you in court, this case is the answer.

The fight over one ayurvedic word

Navaratna Pharmaceutical Laboratories, based in Cochin, was the registered proprietor of marks built on NAVARATNA for ayurvedic pharmaceutical preparations. Durga Dutt Sharma sold ayurvedic medicines from Delhi under NAVARATNA KALPA and fought for his own rights in the name.

The two sides battled for years through the Trade Marks Registry and the courts — registration proceedings, rectification attempts, and an infringement claim. By the time the dispute reached the Supreme Court, two questions remained: could NAVARATNA be validly held as a trademark at all, and did NAVARATNA KALPA infringe it?

Durga Dutt’s core argument was that NAVARATNA — the classical term for a nine-gem formulation in ayurveda — was common to the trade and could not be monopolised. The argument failed on the record before the Court. The registrations stood, and the registered proprietor’s rights were enforced.

Two actions, two different questions

The Court’s lasting contribution was not the result but the framework. It explained that infringement and passing off are not two labels for the same complaint. They are different causes of action answering different questions.

• Infringement is statutory. It protects the exclusive right that registration itself confers. The question is whether the defendant’s mark is identical or deceptively similar to the registered mark.
• Passing off is about deceit. It protects goodwill built through use. The question is whether the defendant is misrepresenting his goods as the plaintiff’s.
• Registration is the dividing line. Only a registered proprietor can sue for infringement. Anyone with reputation in a mark can sue for passing off — a right today’s Section 27(2) of the Trade Marks Act 1999 expressly preserves.

Registration turns “prove your reputation” into “read my certificate.”

The added-matter rule: where the case earns its fame

Here is the distinction that decides real cases. In a passing-off action, a defendant can escape liability by showing that everything else on the product — the packaging, the get-up, the house name, the label — is different enough that no buyer would be deceived.

In an infringement action, that defence evaporates. The Court held that once the defendant has taken the essential features of the registered mark, differences in packaging, get-up, or added writing are immaterial. The statute protects the mark itself, not the overall shopping experience.

Think of it concretely. A rival copies your registered word mark but prints it in different colours, on a different bottle, with his own company name underneath. In passing off, those differences might rescue him. In infringement, they change nothing — he took the mark, and the mark is what the law protects.

Different packaging can save you in passing off. It saves nothing in infringement.

Why the burden of proof differs

The second half of the framework is evidentiary. A passing-off plaintiff carries a heavy load: prove reputation and goodwill in the mark, prove misrepresentation by the defendant, prove actual or likely damage. Sales figures, advertising spend, dealer affidavits, consumer evidence — the trial is built on documents.

An infringement plaintiff travels lighter. Where the defendant’s mark is closely similar to the registered mark — visually, phonetically, or otherwise — the court can conclude infringement from the comparison itself. No survey evidence. No proof of actual confusion. The certificate plus the comparison can be the whole case.

That difference shows up in cost and speed. Infringement suits filed with a strong registration routinely win interim injunctions within weeks. Passing-off suits fight over reputation evidence for years. Our IP litigation team sees the gap in almost every enforcement brief: the registered client starts the case at the finish line the unregistered client is still running toward.

In infringement, the comparison is the evidence.

The 2026 map: where each action lives today

The 1965 framework is now wired into the Trade Marks Act 1999. Section 28 grants the registered proprietor the exclusive right to use the mark. Section 29 defines infringement — including use of a deceptively similar mark on similar goods. Section 27(2) keeps passing off alive for unregistered marks. Section 135 gives both actions the same menu of remedies: injunctions, damages or account of profits, and delivery-up of infringing goods.

Courts still cite Durga Dutt whenever a defendant argues that his distinctive packaging cures his copied mark. The answer has not changed in sixty years: in infringement, it does not.

Passing off remains vital for brands that never registered — the classic get-up battles we cover in our guide to passing off in India. But it is the harder, slower, costlier road, and Durga Dutt is the case that made that arithmetic explicit.

What founders should take from a 1965 judgment

1. Register early. The entire advantage the case describes flows from the certificate. Trademark registration costs ₹4,500 per class in government fees for individuals, startups, and MSMEs — the process is mapped in our guide on how to register a trademark in India.
2. Preserve use evidence anyway. Invoices, ad spend, screenshots with dates. Passing off backs up your registration, and rectification fights turn on use.
3. Watch the register. A copycat who registers first flips the Durga Dutt advantage against you. A trademark watch catches conflicting applications while they can still be opposed.
4. Plead both actions when you sue. Indian courts allow a composite suit for infringement and passing off. Each covers the other’s gaps.

The certificate is not paperwork. It is the difference between two entirely different lawsuits.

Durga Dutt v Navaratna is sixty years old and still decides motions every week. File the mark, keep the evidence, and if a dispute comes, know which of the two actions you are actually fighting — because the law will hold you to the difference.