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IN THE HIGH COURT OF DELHI AT NEW DELHI
VIPIN SANGHI, J.
Turning Point Institue Private Limited - Plaintiff
Versus
M/s Turning Point - Defendant
I.A. Nos. 16232, 22081 of 2015 in CS (OS) Nos. 2368 & 3159 of 2015
Decided On : 11-08-2017
In a suit for passing off and infringement of trademark, the court held that the plaintiff was the prior user of the mark 'TP TURNING POINT' and had established a prima facie case of passing off against the defendant. The court also held that the defendant's adoption of the mark was dishonest and that the balance of convenience tilted in favor of the plaintiff. Accordingly, the court granted an injunction restraining the defendant from using the mark 'TP TURNING POINT' or any part thereof.
Fact of the Case:
The plaintiff, Turning Point Institute Private Limited, filed a suit against the defendant, M/s Turning Point, for passing off and infringement of trademark. The plaintiff claimed that it was the prior user of the mark 'TP TURNING POINT' and that the defendant had dishonestly adopted and used the same mark for identical services. The defendant denied the allegations and claimed that it was the prior user of the mark 'TURNING POINT'.
Finding of the Court:
The court found that the plaintiff was the prior user of the mark 'TP TURNING POINT' and had established a prima facie case of passing off against the defendant. The court also held that the defendant's adoption of the mark was dishonest and that the balance of convenience tilted in favor of the plaintiff.
Issues: 1. Whether the plaintiff was the prior user of the mark 'TP TURNING POINT'? 2. Whether the defendant had dishonestly adopted and used the mark 'TP TURNING POINT'? 3. Whether the plaintiff had established a prima facie case of passing off against the defendant?
Ratio Decidendi: 1. The court held that the plaintiff was the prior user of the mark 'TP TURNING POINT' on the basis of the following evidence: * The plaintiff had filed affidavits of several students who had attended coaching classes at the plaintiff's institute under the name 'TP TURNING POINT' since 1994. * The plaintiff had also filed copies of rent receipts issued by the landlord in respect of the premises where the plaintiff's institute was located, which showed that the plaintiff had been paying rent for the premises since 1995. * The plaintiff had also filed copies of telephone bills and test series question papers, which showed that the plaintiff had been using the mark 'TP TURNING POINT' since 1994. 2. The court held that the defendant had dishonestly adopted and used the mark 'TP TURNING POINT' on the basis of the following evidence: * The defendant had not provided any explanation for adopting the mark 'TP TURNING POINT', which was identical to the plaintiff's mark. * The defendant had adopted the mark 'TP TURNING POINT' after the plaintiff had acquired a reputation and goodwill in the mark. * The defendant had used the mark 'TP TURNING POINT' in a manner that was likely to cause confusion among the public. 3. The court held that the plaintiff had established a prima facie case of passing off against the defendant on the basis of the following evidence: * The plaintiff was the prior user of the mark 'TP TURNING POINT'. * The defendant had dishonestly adopted and used the mark 'TP TURNING POINT'. * The defendant's use of the mark 'TP TURNING POINT' was likely to cause confusion among the public.
Final Decision: The court granted an injunction restraining the defendant from using the mark 'TP TURNING POINT' or any part thereof.
Vipin Sanghi, J.
1. As would be evident from the cause title, these are two cross suits between the parties. In each of these suits, the respective plaintiff has filed an interim application under Order 39 Rule 1 & 2 Code of Civil Procedure (hereinafter CPC) to seek interim injunction against the defendant in the particular suit. The parties have addressed their submissions in the said two applications – the first one being I.A. No. 16232/2015 in CS (OS) No. 2368/2015 preferred by the plaintiff - Turning Point Institute Private Limited under Order 39 Rules 1 & 2 of CPC to seek interim injunction against the defendant - M/s Turning Point, and the latter being I.A. No. 22081/2015 in CS(OS) No. 3159/2015 preferred by the plaintiff- M/s Turning Point, under O39 R1 & 2 of CPC seeking interim injunction against the defendant- Turning Point Institute Pvt. Ltd. The aforesaid applications have been heard together and are being disposed of by this common order. The I.A. No. 16232/2015 is being considered as the lead application, but both applications are being dealt with together. For ease of reference, the term 'plaintiff' is being used hereinafter to address Turning Point Institute Private Limited, and the term 'defendant' is being used to address M/s Turning Point hereinafter.
2. The plaintiff is praying for an interim order restraining the defendant from:
"..........using Plaintiff's mark TP TURNING POINT or any other deceptively similar trademark, trade name/company, name/trading style, by advertising, or by offering goods or services, under the said marks, either online or in any other manner, amounting to passing off of the Plaintiff's trademark;
dilution or tarnishment of the Plaintiff's mark TP TURNING POINT, by adopting the same as a part of their corporate name/ trade name/ trading style/domain name of the mark or by the use of any other deceptively similar trademark."
3. The defendant, in its application for interim injunction, is praying for an interim order restraining the plaintiff from:
"(i) selling and offering for sale or marketing, advertising, directly or indirectly dealing or rendering services in Educational Services including Providing of coaching and training or other related services under the Trade Mark/Trade Name TP TURNING POINT and/or any mark confusingly similar thereto, or any imitation or variation thereof, amounting to an infringement or passing off of the Plaintiff registered trade mark TURNING POINT.
(ii) Using the trade mark/trade name TP TURNING POINT and/or any deceptively similar name, from in any manner holding out an association of its products or business with that of the Plaintiff by use of the name TP TURNING POINT or any deceptively similar name and from doing any other thing as to pass-off or that maybe likely to lead to passing off of the Defendant's business as and for those of Plaintiff".
4. The case of the plaintiff, insofar as it is relevant, is as follows. The plaintiff, Turning Point Institute Private Limited - a private limited company incorporated on 15.03.2001, is engaged in providing educational and training services under the trademark "TP TURNING POINT". These services comprise of preparatory classes for IIT- JEE, AIEEE and PMT aspirants along with Board examination preparation for science students, and foundation courses for 9th and 10th classes. It is also maintaining a website under the address http://www.turningpointedu.org/ wherein the details of the services provided by the plaintiff institute can be found. The plaintiff does not hold a trademark registration for the words or label “TP TURNING POINT”.
5. The plaintiff submits that the word mark "TP Turning Point" was created during the last week of March 1994, and has been in continuous use ever since- in connection with the plaintiff’s services aforementioned. The plaintiff, in relation to adoption and coining of t
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