The Delhi High Court, in a dispute between ASR Market Ventures Private Limited (ASR) and Fitship Private Limited (Fitship), examined whether prior adoption of a trademark, without demonstrable use as a source identifier and independently established goodwill, could sustain a passing-off claim and justify rectification of a rival registration. The dispute concerned the mark FITFEAST, which ASR claimed to have adopted in 2017 for nutrition and wellness-related services, while Fitship used the mark for protein-rich snacks and other food products.

Background

ASR claimed to have adopted FITFEAST in 2017 for nutrition, healthy food and wellness-related services, including customised meal plans, nutritionist services and other fitness solutions. It asserted that extensive promotional activities, commercial collaborations and business operations had generated substantial goodwill and common law rights in the mark.

Fitship, on the other hand, operated a business involving health-focused food products, including protein bars, chips, shakes and peanut butter. It adopted FITFEAST in 2021, allegedly inspired by its founder’s personal health and weight-loss journey and subsequent interest in nutrition and protein-rich foods. Fitship applied for registration of a FITFEAST device mark in Class 30 on a proposed-to-be-used basis, and the mark was subsequently registered.

ASR challenged the registration, alleging dishonest adoption, likelihood of confusion and false association between Fitship’s products and its nutrition and wellness services. It sought rectification of Fitship’s registration, principally on the ground that the registration was contrary to the law of passing off.

ASR’s submissions

ASR contended that it was the honest prior adopter and proprietor of the coined mark FITFEAST, having used it continuously since 2017. It argued that Fitship, being engaged in the same industry, was aware of its goodwill and nevertheless adopted an identical or deceptively similar mark for allied and cognate goods.

ASR relied on its claimed commercial activities, revenues, promotional expenditure and collaborations to establish goodwill and reputation. It further contended that the overlapping consumer base, trade channels and increasing convergence between fitness services and nutritional products created a likelihood of confusion and false association. It also relied on mixed Instagram search results as evidence of the parties’ overlapping online presence and the potential dilution of its claimed distinctiveness.

Fitship’s submissions

Fitship denied that ASR had established prior trademark use or independent goodwill in FITFEAST. It maintained that its adoption in 2021 was bona fide, following trademark, domain-name and online searches that allegedly revealed no relevant prior rights or significant use by ASR.

Fitship emphasised that ASR’s business was predominantly conducted under FITPASS, with FITFEAST appearing merely as one of several additional services offered under the FITPASS umbrella. It argued that ASR’s documents did not establish independent commercial use of FITFEAST as a source identifier and that the revenue and marketing figures relied upon related to its overall business rather than the impugned mark.

Fitship further contended that ASR had applied to register FITFEAST only in 2025, years after its claimed adoption, and had failed to establish the essential elements of passing off, goodwill, misrepresentation and damage.

Court’s Findings and Analysis

• Trademark use must identify the commercial source

The Court emphasised that use of a mark cannot be considered in isolation. It must be demonstrated that the mark is used in a manner that identifies the source of the goods or services and distinguishes them from those of others. For a passing-off claim, the claimant must establish that its use of the mark as a badge of origin generated sufficient goodwill before the rival’s adoption.

The Court reiterated that priority of adoption, by itself, is insufficient. Even where adoption is earlier, the claimant must establish actual use and consequent goodwill as of the relevant date.

• FITPASS, rather than FITFEAST, was the principal source identifier

On examining the evidence, the Court found that ASR consistently advertised, promoted and provided its services under FITPASS. FITFEAST appeared only as a reference to one of several additional services and was frequently presented as “FITFEAST by FITPASS.”

The Court noted that FITFEAST services were bundled with FITPASS subscription plans and accessed through ASR’s FITPASS website and mobile application. ASR’s social media presence and third-party collaborations were also predominantly associated with FITPASS. Consequently, the evidence did not establish that consumers independently associated FITFEAST with ASR as the source of the relevant services.

The Court also found it significant that ASR had not produced separate revenue figures, marketing expenditure or sales invoices demonstrating commercial activity under FITFEAST as an independent trademark.

• Documentary evidence did not establish independent goodwill

The Court examined the documents relied upon by ASR to establish use since 2017, including internal emails, standees, brochures, corporate posters and news articles. It found that these materials either lacked evidence of actual commercial use or referred to FITFEAST as an additional service offered under FITPASS.

The third-party agreements relied upon by ASR were similarly insufficient. Only six agreements predated Fitship’s adoption of the mark, and even these did not establish use of FITFEAST as an independent trademark. The subsequent agreements could not substantiate the existence of prior goodwill as of the relevant date. The awards relied upon by ASR were also associated with FITPASS rather than FITFEAST.

Accordingly, the Court concluded that ASR had failed to demonstrate independent goodwill or an exclusive consumer association with FITFEAST.

• Passing off and bad-faith adoption were not established

In the absence of independently established goodwill in FITFEAST, ASR could not sustain its passing-off claim. The Court also rejected ASR’s allegation of bad faith taking into account Fitship’s searches before adoption and the fact that ASR applied for registration only in 2025.

The Court found that ASR’s evidence did not establish the requisite prior trademark use and goodwill to support its challenge to Fitship’s registration.

Decision

The Court held that ASR had failed to establish independent goodwill and reputation in FITFEAST before Fitship’s adoption of the mark in 2021. Finding that ASR’s business was predominantly conducted under its umbrella mark FITPASS, the Court dismissed the passing-off claim and the rectification petition.

Comment

The decision underscores the importance of distinguishing between use of a mark as a trademark and its mere appearance as a feature or service description under a dominant house mark. Businesses seeking to enforce common law rights should maintain contemporaneous evidence demonstrating independent use, including invoices, sales figures, advertising expenditure and consumer recognition attributable specifically to the mark in question.