Picture a halwa shop in Tirunelveli that opens only in the evenings, sells only one item, has never advertised, and has never expanded. It has no website, no social media presence, and no franchise. It occupies the same modest premises it has occupied since 1900. Yet it is so famous across Tamil Nadu that it features in a popular film song from the movie Samy, the reference so natural that audiences needed no explanation — everyone knew which shop was meant.
This is the Iruttu Kadai — named for the dimly lit conditions of its original premises, “iruttu” meaning darkness in Tamil. And in 2015, this unremarkable-looking shop’s trademark became the subject of a landmark Supreme Court judgment that settled one of the most important questions in Indian trademark law: when two parties both hold registered trademarks for similar names, whose rights prevail?
The answer, as the Supreme Court made clear in S. Syed Mohideen v. P. Sulochana Bai [(2016) 2 SCC 683, decided 17 March 2015], is unambiguous: the prior user prevails — even over a later registered proprietor. And the reasoning in that judgment carries lessons that every Indian MSME, street food brand, regional business, and local enterprise needs to understand before they discover these principles the hard way.
Case at a glance — S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683: Supreme Court of India, decided 17 March 2015. Judgment authored by Justice A.K. Sikri. Three-judge bench. The case concerned the trademark “Iruttukadai Halwa” — the registered mark of P. Sulochana Bai’s family, operators of the original Tirunelveli halwa shop since 1900 — against “Tirunelveli Iruttukadai Halwa,” the registered mark of the appellant S. Syed Mohideen, who opened a competing outlet in 2007 using the name. The trial court, the Madras High Court, and finally the Supreme Court all held in favour of the original shop’s family.
The Story Behind the Case
What made Iruttu Kadai famous before anyone registered a trademark?
The halwa shop at the centre of this litigation opened in Tirunelveli around 1900. For over a century, it operated under its distinctive identity — the dimly lit evening shop that sold only halwa, made only with pure ghee, wheat, and sugar, in the traditional manner. No machines, no food colouring, no concessions to modernisation.
Its reputation grew entirely through word of mouth and the inherent quality of what it produced. Customers returning to Tirunelveli from other cities were routinely asked to bring back Iruttu Kadai halwa for friends, family, and colleagues. The Supreme Court noted in its judgment that the shop’s goodwill had been extensively documented — including in a September 2003 article in Ananda Vikatan, the widely read Tamil weekly magazine, and, perhaps most memorably, in a Tamil song from the film Samy that specifically namelined the shop’s halwa alongside other famous regional foods. The Court observed that when a cinema song played across Tamil Nadu specifically mentions a shop’s name, it is difficult to overstate the depth of public recognition that shop has achieved.
The respondent’s family — P. Sulochana Bai and her predecessors — obtained a formal trademark registration for “Iruttukadai Halwa” in 2007, under Class 30 of the Nice Classification (covering food products including confectionery and sweets). The registration merely formalised what had existed in commerce for over a hundred years.
How did the dispute arise?
The appellant, S. Syed Mohideen, and his father had operated a sweet shop in Tirunelveli under the name “Raja Sweets” for approximately 40 years. In 2007 — the same year the respondent obtained her trademark registration — the appellant opened a separate outlet under the name “Tirunelveli Iruttukadai Halwa.” He obtained his own trademark registration for this composite mark in 2008, one year after the respondent’s registration.
The appellant’s argument was straightforward: he held a validly registered trademark. Under Section 28 of the Trade Marks Act, 1999, registration confers an exclusive right to use the mark in relation to the registered goods. He further argued that his shop was located approximately 5 kilometres from the original Iruttu Kadai, used distinct signage and packaging, and that no actual consumer confusion had been established.
The respondent filed a civil suit seeking a declaration of trademark proprietorship, a permanent injunction restraining the appellant from using the name, and ancillary reliefs. The trial court decreed the suit in her favour on 20 April 2011. The Madras High Court upheld that decree on 7 June 2013. The appellant then appealed to the Supreme Court.
Key Takeaway: The registration of a trademark does not automatically defeat a prior user. The respondent’s family had used “Iruttukadai Halwa” commercially for over 100 years before either party obtained a trademark registration. That prior use created rights that registration could not extinguish.
The Legal Framework: How Sections 27, 28, 34 Interact
What does trademark registration actually give you — and what does it not?
This case turned on the precise relationship between three provisions of the Trade Marks Act, 1999 — a relationship that most brand owners, and even many businesspeople who hold registrations, do not fully understand.
Section 28 grants a registered proprietor the exclusive right to use the trademark in connection with the registered goods or services. On the surface, this appears absolute. But Section 28 is expressly made “subject to the other provisions of this Act” — which is the key phrase the Supreme Court examined.
Section 28(3) addresses what happens when both parties in a dispute hold registered trademarks. It provides that where two persons have identical or similar registered marks, neither can sue the other for infringement solely based on registration. Between two registered proprietors, the registration itself creates a stalemate — neither can invoke Section 29 infringement rights against the other.
Section 27(2) preserves the right to bring an action for passing off. It states explicitly that nothing in the Trade Marks Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another. Passing off is a common law action — it does not require trademark registration and predates it.
Section 34 is the provision that most directly protects prior users. It states that registration shall not interfere with the rights of any person to use a mark in relation to goods or services if that person or his predecessor in title has continuously used the mark since before the date of registration — or before the date of use of the registered mark, whichever is earlier.
Justice Sikri’s statutory synthesis: The Supreme Court’s analysis in this case clarified that Section 28 rights are registration-based, while Section 34 and passing off rights are use-based. When a prior user and a later registered proprietor clash, the prior user’s Section 34 rights and common law passing off action survive intact — because registration under Section 28 is expressly made subject to Section 34. The registration does not create new rights; it formally recognises rights that already exist. A person who registers a mark that another party has already been using in commerce for decades cannot use that registration to dispossess the prior user.
What is the difference between infringement and passing off — and why did it matter here?
Infringement under Section 29 of the Trade Marks Act requires a registered trademark. It is the stronger statutory remedy — once you prove registration and the defendant’s use of an identical or similar mark, infringement is established.
Passing off is the common law tort that predates registration systems. To succeed in passing off, a plaintiff must establish three elements — the classical “trinity” from Reckitt & Colman Products Ltd v. Borden Inc. (UK, 1990), adopted by Indian courts: (1) goodwill — the plaintiff’s goods or services have acquired a reputation or goodwill in the market; (2) misrepresentation — the defendant has made a misrepresentation to the public, whether intentional or not, that is likely to cause confusion; and (3) damage — the misrepresentation has caused or is likely to cause damage to the plaintiff’s goodwill.
The respondent in this case had 100+ years of uninterrupted goodwill. The appellant’s adoption of a name incorporating “Iruttukadai Halwa” — the respondent’s established mark — was self-evidently likely to cause confusion among consumers seeking the original shop’s product. The Court found the passing off action fully made out.
The critical legal point: because Section 27(2) preserves passing off actions, the respondent could succeed even after the appellant obtained his 2008 registration. Registration protected the appellant against an infringement action — but it provided no defence against the passing off action, which the respondent could maintain as a prior user under Section 34.
Key Takeaway: Between two registered proprietors, neither can sue the other for infringement. But the prior user can still succeed on passing off — because 100 years of goodwill is a legal right that no later registration can extinguish. Registration recognises pre-existing rights; it does not create rights out of nothing.
What Made This Case a Landmark
Why did the Samy film song matter as legal evidence?
The Supreme Court’s reference to the Tamil film song from Samy is one of the more unusual — and genuinely compelling — evidentiary observations in Indian trademark jurisprudence. The Court noted that the song, played across Tamil Nadu over years, specifically mentioned the Iruttu Kadai halwa in a context that assumed audience familiarity with the shop and its product. When popular culture absorbs a brand name to the point where a commercial film’s lyricist deploys it as a known cultural reference, the depth of the associated goodwill is evident.
This observation matters beyond this specific case. It illustrates that goodwill in Indian trademark law is not measured only by advertising spend or sales turnover. Organic, word-of-mouth reputation built over decades — even without any formal marketing infrastructure — constitutes legally cognisable goodwill for the purpose of passing off. The Supreme Court’s willingness to treat cultural referencing in popular media as evidence of trademark goodwill is a significant and practical holding.
What did the Court say about registration and common law rights?
The Court stated the principle in terms that should be required reading for every Indian business owner: “Registration merely recognises the rights which are already pre-existing in common law and does not create any rights.” And: “Passing off rights are considered to be superior to that of registration rights.”
This does not mean registration is unimportant. It means that registration is a powerful instrument for a brand that actually uses its mark in commerce — but it cannot be weaponised to dispossess a prior user who has built genuine goodwill, even if that prior user delayed formal registration.
The GI dimension — an unresolved question: While many Tirunelveli halwa manufacturers have collectively sought Geographical Indication (GI) protection for “Tirunelveli Halwa” under the Geographical Indications of Goods (Registration and Protection) Act, 1999, the Iruttu Kadai shop itself has not joined this group. This creates an intriguing future IP question: if “Tirunelveli Halwa” obtains GI protection, would it conflict with the existing trademark registration for “Iruttukadai Halwa”? GI protection under Indian law is collective and territorial; trademarks are individual and not geographically limited. The interplay between a specific trademark held by a single proprietor and a collective GI covering a regional product category remains an evolving area of Indian IP law — and this case sits at precisely that intersection.
Key Takeaway: The Supreme Court’s holding in this case is not merely about one halwa shop in Tirunelveli. It establishes, clearly and bindingly, that continuous prior use of a trademark in commerce creates legally enforceable rights that survive later registrations by third parties. Prior use is not just a defence — it is a positive right. [INTERNAL LINK: Trademark Registration and Brand Protection — Unimarks Legal Solutions]
Five Lessons for Indian MSME Brand Owners
This case is one of the most practically instructive trademark judgments for Indian MSMEs, street food businesses, regional product brands, and traditional enterprises. Five specific lessons follow from the facts and the Court’s analysis.
Lesson 1 — Register your trademark — but do it early
The respondent’s family operated the Iruttu Kadai for over a century before registering the trademark in 2007. They won in court because their prior use was so clearly established. But not every prior user will have 100 years of documented goodwill to rely upon. Registration creates a clearer, faster, and less expensive path to enforcement than proving common law passing off. File your trademark application early — ideally before your brand has any significant commercial presence — to prevent the situation the appellant created by registering a competing mark in 2008.
Lesson 2 — Prior use without registration is still a right — but it is harder to enforce
The respondent succeeded through passing off, not infringement, because both parties held registrations and Section 28(3) created a stalemate between them. She succeeded only because 100 years of prior use and documented goodwill was overwhelming. A business with five or ten years of prior use and limited documentation would face a much harder evidentiary challenge. Document your commercial use — keep records of invoices, advertising, sales, customer correspondence, and media references — from the beginning.
Lesson 3 — Monitoring the Trade Marks Journal is essential
The respondent’s family could have opposed the appellant’s 2008 trademark application during the four-month opposition window under Section 21 of the Trade Marks Act, 1999. Had they filed a Notice of Opposition at that stage, the appellant would never have obtained his registration — eliminating the litigation that followed. The respondent’s family did not oppose. The subsequent three-level litigation — trial court, Madras High Court, Supreme Court — took years. Opposition at the Registry stage is faster, cheaper, and more certain than litigation. Monitor the Trade Marks Journal for applications that conflict with your mark and oppose promptly.
Lesson 4 — Goodwill earned organically is as legally valuable as goodwill built through advertising
This case is a direct judicial endorsement of the commercial value of word-of-mouth reputation. The Iruttu Kadai never advertised. It never expanded. It ran no social media campaigns. Yet its goodwill was so well-documented — in magazine articles, in popular culture — that the Supreme Court found its passing off claim compelling at every level of the judiciary. Under Indian trademark law, organic reputation built over time through quality and customer loyalty constitutes legally cognisable goodwill. Small businesses that build genuine reputations over years are building IP assets, whether or not they recognise them as such.
Lesson 5 — Geographic distance does not eliminate consumer confusion for famous marks
The appellant argued that his shop was 5 kilometres from the original Iruttu Kadai and used distinct signage and carry bags. The courts at every level rejected this. For a mark with the depth of recognition that “Iruttukadai Halwa” had achieved across Tamil Nadu and beyond, geographic separation within the same city is irrelevant to the likelihood of confusion analysis. Indian consumers seeking the original shop’s product — particularly those from outside Tirunelveli — would plausibly be confused by another outlet using the same name in the same city. The moral for brand owners: if your brand name is well-known, do not assume geographic distance protects a copycat from liability.
Practical Roadmap: Building Prior Use Evidence for Your Brand
Whether your business is a traditional food enterprise, a regional product brand, a service business, or a manufacturer, the following steps build the evidentiary record that prior use claims require.
- Trademark registration — file Form TM-A at ipindia.gov.in at the earliest stage of commercial activity. Your priority date is established on filing day, even if registration takes 18 months.
- Date-stamp all commercial use — retain the earliest possible evidence of your mark in commerce: first invoices bearing the brand name, early packaging, photographs of signage, media mentions, online listings. Date-stamped emails and digital files serve this purpose.
- Collect third-party recognition — press mentions, customer reviews, awards, trade association listings, and media appearances that reference your brand name are powerful evidence of goodwill.
- Monitor the Trade Marks Journal — set up monitoring for new applications in your mark’s class and adjacent classes. The four-month opposition window is your fastest, cheapest remedy against conflicting applications.
- Maintain renewal records — a trademark registration that lapses for non-renewal loses the priority date advantage you built. Calendar your ten-year renewal dates from filing day.
- Document geographic spread of goodwill — collect evidence that your mark’s reputation extends beyond your immediate locality: customer testimonials from other cities, orders from outside your state, media references from sources not based in your city.
Conclusion: 125 Years of Halwa, One Supreme Court Judgment, and a Principle That Protects Every Indian Brand
The Iruttu Kadai Halwa case is, at its heart, a story about something every Indian brand owner intuitively understands but does not always know how to articulate in legal terms: the value of genuine, long-standing commercial reputation. The law calls this goodwill. The Trade Marks Act, 1999 — through Sections 27(2), 34, and the Court’s interpretation of Section 28 — protects it even against registered proprietors who arrive later and attempt to appropriate it.
For Tamil Nadu’s food businesses, traditional artisans, regional brands, and the thousands of MSMEs whose commercial identity is built on years of quality and customer loyalty: your reputation is a legal right. Protect it through registration, through documentation, through active monitoring of the trademark register — and through the knowledge that prior use, in Indian trademark law, is the bedrock on which all other rights are built.
At Unimarks Legal Solutions, we help MSMEs, startup founders, regional businesses, and established enterprises protect and enforce their trademark rights — from first registration through opposition proceedings, infringement litigation, and the complex intersection of trademark and GI protection. If your brand has been built over years of honest commercial use and you want to understand your rights, contact our team today.
Protect your brand’s legacy → [INTERNAL LINK: Trademark Registration and Enforcement — Unimarks Legal Solutions]
About the Author
Advocate Suresh Kumar has a law practice specialising in Intellectual Property Rights, Commercial legal advisory, debt recovery, commercial litigation, and dispute resolution for domestic and international clients. He is enrolled with the Bar Council of Tamil Nadu and Puducherry and represents clients before all courts and forums in Chennai, Tamil Nadu. This article reflects his understanding of the current legal position and is intended solely for informational purposes.
Disclaimer
This article is published by Unimarks Legal for informational purposes only. It is not intended to constitute legal advice or to create an attorney-client relationship. The contents are based on Indian law as applicable at the time of writing and are subject to change. Readers should not act upon the information in this article without seeking independent legal counsel. Every legal situation is unique, and the application of law depends on specific facts and circumstances. Past results do not guarantee future outcomes. This publication is made in compliance with the Bar Council of India Rules, which prohibit advertising or solicitation by advocates. Any information received through this article should not be construed as legal advice.
For specific legal guidance on your matter, you may consult a qualified advocate in your jurisdiction.
