The court ruled that the defendants' use of the trademark 'VGK' was legitimate, derived from a history of business associations, and upheld defences against the plaintiff's claims of infringement.

JUDGMENT :

Background

The suit was filed seeking remedies in respect of alleged infringement of the plaintiff's registered trade mark 'VGN' by use of the impugned mark 'VGK', either singly or in combination with other words, and for passing off.

2. In the plaint, the plaintiff states that it is a multi-million-dollar real estate company head-quartered in Chennai and that it has built over 8 million square feet of residential real estate. It is further stated that the trade mark 'VGN', under which the real estate development activities were carried out, was derived from the name of Mr.V.Guruswamy Naidu, the great grandfather of the managing director of the plaintiff. At paragraph 3 of the plaint, the plaintiff has set out details of registered trade marks containing the element 'VGN'. At paragraph 8, the annual turnover from 2009 - 2010 to 2020 - 2021 and sales promotion expenditure from 2010 - 2011 to 2020 - 2021 are set out.

3. The plaintiff has provided details of an opposition filed against the 1^st defendant's trade mark under Trade Mark no.2430235 in class 37 as early as 14.07.2014. After stating that the said application and opposition are pending, the plaintiff further states that it came across a registration for the same mark under Trade Mark no.2430234 in class 36 and that a rectification action had been initiated in respect thereof. After also stating that the defendants' adoption and use of the deceptively similar mark 'VGK' in respect of identical services is likely to cause deception and confusion, the plaintiff has prayed for the relief indicated at the outset.

4. In the written statement of the defendants, it is stated that the 1st defendant is the registered proprietor of the trade mark under Trade Mark no.2430234 in class 36 and that the said trade mark is valid and subsisting. Consequently, it is stated that the defendants are entitled to claim protection under Section 28(3) read with Section 30(2)(e) of the TRADE MARKS ACT , 1999 (the TM Act). The defendants have also stated that the plaintiff was aware of the defendants' application in class 37 as early as on 14.07.2014. Therefore, the defendants assert that the plaintiff has acquiesced in the defendants' use of the trade mark 'VGK' inasmuch as the suit was filed about nine years after lodging the opposition.

5. With regard to the reason for adoption of the impugned mark 'VGK', the defendants state that Mr.V.Prabakaran, who is one of the directors of the 1^st defendant company, was the proprietor of an entity called 'VGK Contractors and Promoters'. It is further stated that the 2^nd defendant was formed in the year 2013 after the business of the proprietary concern was hived off. At paragraph 7 of the written statement, the defendants have set out the family tree to show that the promoters of the defendants are the maternal grand children of Mr.V.G.Krishnan, whose name formed the basis for the abbreviation VGK. The defendants further state that they have carried on business using the impugned mark for about 22 years. After denying that the trade mark of the plaintiff and the defendants is similar, the defendants prayed that the suit be dismissed.

6. On the basis of the pleadings and documents, the following issues were framed on 15.04.2024:

“(i) Whether the suit is barred by Section 12 A of t