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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
TTK Prestige Ltd. – Appellant
Versus
Kk And Company Delhi Pvt. Ltd. & Ors. – Respondents
CS(COMM) 864 of 2022
Decided On : 20-02-2023
TRADEMARK - Infringement and Passing Off - Code of Civil Procedure, 1908 (CPC) - Trade Marks Act, 1999
Fact of the Case:
The plaintiff, engaged in the business of kitchen home appliances under the trademark 'PRESTIGE', filed a suit seeking a permanent injunction against the defendant for using a deceptively similar trademark. The defendant claimed prior use of the trademark since 1981.
Finding of the Court:
The court found that the defendant failed to establish continuous use of the impugned trademark, and the plaintiff had established immense goodwill and reputation of its trademark 'PRESTIGE'. The court granted the injunction in favor of the plaintiff.
Issues: Prior use of trademark, continuous user, passing off, and infringement
Ratio Decidendi: The defendant's failure to provide evidence of continuous use led the court to presume no continuous user. The plaintiff's established goodwill and reputation supported the finding of passing off and infringement.
Final Decision: The application was allowed, and the defendant was injuncted from using the impugned trademark. The suit was decreed against the defendants no.2 and 3, and the applications became infructuous.
JUDGMENT
Amit Bansal, J. (Oral)
I.A. 20992/2022 (O-XXXIX R-1 & 2 of CPC)
1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
2. Briefly, the case set up in the plaint is that the plaintiff is engaged in the business of manufacturing, marketing and sale of kitchen home appliances, including `pressure cooker' and `gas stoves., both electric and non-electric, non-stick cookware, induction cook-tops, mixer grinders, chimneys etc., under the brand/trade mark `PRESTIGE. since 1955, which is a house mark of the plaintiff. All the plaintiff's products are sold under its house mark `PRESTIGE..
3. Plaintiff also has several registrations of the trademark `PRESTIGE. in various Classes, details of which are given in paragraph 7 of the plaint. The earliest registration of the trademark `PRESTIGE. (word per se) in Classes 8 and 21 dates back to 14th December, 1949. The trademark `PRESTIGE. (word per se) was registered in favour of the plaintiff in Class 11 on 16th June, 1981 in respect of `installations for cooking' on a `proposed to be used basis'. Subsequently, the trademark `PRESTIGE. (word per se) was registered in favour of the plaintiff on 23rd September, 1999 specifically in respect of `gas stoves' on a `proposed to be used basis'. All the aforesaid trademark registrations are valid and subsistent.
4. The plaintiff has also filed its sales turnover in respect of its products under the trademark `PRESTIGE. from the financial year 2007-08 to 2020-21. The turnover of the plaintiff in the year 2007-08 was around Rs.339,00,00,000/-, whereas the turnover in the financial year 2020-21 was around Rs.2,033,00,00,000. The plaintiff has also provided the advertising and promotional expenses incurred by plaintiff in respect of its trademark `PRESTIGE'. In the year 2007-08, the plaintiff spent around Rs.24,00,00,000/- towards promotional expenses and in the year 2020-21 the plaintiff spent around Rs.98,00,00,000.
5. The plaintiff operates websites, `http://www.ttkprestige.com/', `https://shop.ttkprestige.com/' and `http://www.prestigexclusive.in', which showcases the plaintiff's goods under the said mark. The plaintiff also has its presence on various e-commerce platforms.
6. The defendant no.1 is engaged in the business of manufacturing and sale of `gas stoves' and its component parts. It is averred in the plaint that the defendant no.2 and 3 are sister concerns of the defendant no.1.
7. In the third week of August 2022, the plaintiff came across the trademark application dated 2nd November, 2018 filed on behalf of the defendant no.1 for the registration of the device mark [IMG] (hereinafter referred to as 'impugned trademark'). The plaintiff opposed the registration of the aforesaid mark by filing opposition on 18th August, 2022. The plaintiff's trademark `PRESTIGE. in Class 11 was cited as a conflicting mark in the examination report of the Trade Marks Registry. Thereafter, the plaintiff carried out an investigation in which it was revealed that the defendant no.1 has been selling `gas stoves' in collusion with the defendants no.2 and 3 under the impugned trademark in bulk and on order basis only.
8. Accordingly, the present suit was filed seeking a decree of permanent injunction, passing off along with other ancillary reliefs.
9. The defence set up by the defendant no.1 in its written statement is that the said defendant no.1 has been using the impugned trademark since 1st January, 1981. The aforesaid date finds mention in the trademark registration application filed on behalf of the defendant no.1 on 1st November 2018. Therefore, it is claimed that the defendant no.1 is a prior user of the impugned trademark in respect of `gas stoves'. The plaintiff filed its trademark application for the word mark `PRESTIGE. on 16th June, 1981 on a `proposed to be used basis'. The plaintiff was aware of the user of the trademark
The importance of establishing continuous use of a trademark and the significance of goodwill and reputation in determining passing off and infringement.
The main legal point established in the judgment is the protection of trademarks and prevention of passing off, based on prior adoption, continuous commercial user, goodwill, and deceptive similarity....
Plaintiffs failed to prove prior use and goodwill for 'BROAD PEAK' in India, thus no basis for trademark infringement or passing off against defendants who adopted the mark bona fide.
The main legal point established in the judgment is the protection of trademarks, the likelihood of confusion or deception arising from the similarity of marks, and the prima facie case of infringeme....
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The court ruled that deceptive similarity between competing marks creates a likelihood of consumer confusion and supports injunction against the infringing party.
A prior user of a trade mark has superior rights in passing off actions, preventing unauthorized use by subsequent users, especially when marks are likely to confuse consumers.
The defendant was entitled to the benefit of defense under Section 35 of the Act as it had been using the mark 'VASUNDHARA' in a bona fide manner since 2001.
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