The Hon’ble Delhi High Court has, in a suit of injunction filed by Tirupati Structurals Limited (“Plaintiff”), restrained Jai Prakash Singhal (“Defendant”) from using “MM TIRUPATI” or any other mark which is deceptively similar to the Plaintiff’s mark, “TSL-TIRUPATI”, during the pendency of the present suit.
It was the Plaintiff’s case that it adopted the mark TSL-TIRUPATI, wherein TSL is the acronym of the Plaintiff’s corporate name and TIRUPATI has been adopted arbitrarily on/in relation to PVC pipes. Since the Plaintiff has been using the mark TSL-TIRUPATI since 1994 on/in relation to unrelated goods, in a non-geographical context, it has acquired distinctiveness. Accordingly, the Plaintiff, aggrieved by the use of the mark “MM TIRUPATI” by the Defendant, instituted a suit of infringement and passing off against the Defendant.
The Defendant, on the other hand, argued that, since “TIRUPATI”, which is the common term in the rival marks, is generic and common to trade, and even the Plaintiff’s registration for the mark TSL-TIRUPATI was allowed by the Trade Marks Registry with a condition that the mark will not give the Plaintiff any exclusive rights over the word TIRUPATI, therefore, the Plaintiff does not enjoy monopoly or exclusivity over the said term. The Defendant, consequently, argued that presence of such common term in the rival marks cannot form the basis for the court to determine deceptive similarity.
The Court ruled that, while the term TIRUPATI has a geographical designation, since it has been used by the Plaintiff on unrelated goods, it cannot be said that the adoption of the term TIRUPATI as part of the Plaintiff’s mark TSL-TIRUPATI is generic or descriptive. As regards the effect of disclaimer in the Plaintiff’s registration, the Court ruled that, while a disclaimer limits the scope of protection of the disclaimed element, such a disclaimer will not limit the Plaintiff's common law right in the disclaimed element, which it has established through long usage. Lastly, as regards the Plaintiff’s plea for injunction, since the Court found the rival marks to be confusingly similar and the Plaintiff to have successfully met the criteria set forth by the classic trinity test of passing off, it granted an ad interim injunction in the Plaintiff’s favor, till the pendency of the suit.
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