Summary
The case involves a dispute over the infringement of TTK Prestige's trademark and passing off of their products by KK & Company Delhi Pvt Ltd. TTK Prestige claimed that the use of the word "Prestige" by the defendants was an infringement of their trademark and causing confusion among customers, leading to loss of business. The Delhi High Court held that the defendant had failed to provide sufficient evidence to prove their claim of being a continuous user of the trademark and ordered a permanent injunction against the defendants for trademark infringement and passing off.
The case involves a dispute over the infringement of TTK Prestige’s trademark and passing off of their products by KK & Company Delhi Pvt Ltd. TTK Prestige claimed that the use of the word “Prestige” by the defendants was an infringement of their trademark and causing confusion among customers, leading to loss of business. The Delhi High Court held that the defendant had failed to provide sufficient evidence to prove their claim of being a continuous user of the trademark and ordered a permanent injunction against the defendants for trademark infringement and passing off.
Facts
The case of TTK Prestige Ltd versus KK & Company Delhi Pvt Ltd & Ors. before the Delhi High Court involves a dispute over the infringement of TTK Prestige’s trademark and passing off of their products by KK & Company Delhi Pvt Ltd and other defendants
TTK Prestige Ltd has filed a lawsuit against KK & Company Delhi Pvt Ltd and other defendants for infringing on their trademark and passing off their products as TTK Prestige products. TTK Prestige has been using the trademark “Prestige” since 1955 and has registered it under the Indian Trademark Act. KK & Company Delhi Pvt Ltd has been selling kitchen appliances under the name “Prestige Kitchenware,” which TTK Prestige claims is causing confusion among customers and loss of business. TTK Prestige is seeking an injunction against the defendants from using the word “Prestige” and passing off their products as TTK Prestige Products.
Contentions of the Parties
The plaintiff’s counsel submitted that, despite the defendant claiming to have used the trademark in question since January 1981, the earliest invoice they filed was dated March 29, 1982. However, TTK Prestige had registered their trademark “PRESTIGE” on a “proposed to be used basis” for “installations for cooking” on June 16, 1981, which was before the defendant began using the trademark in relation to “gas stoves”. Hence it was argued that the defendant is not eligible to use the defense under Section 34 of the Trade Marks Act, 1999. The plaintiff additionally claimed that they have established a strong reputation and goodwill for their trademark “PRESTIGE” in relation to “pressure cookers,” as evidenced by their sales volume and promotional expenditures. The plaintiff cited the case of United Brothers v. Navin Kumar, 2006 SCC OnLine Del 185, in support of their argument.
The defendants argued that “Prestige” was a common word used in the trade and that they had been using it for a long time without any objection from TTK Prestige. The defendant contended that it is a prior user of the trademark “PRESTIGE” and has been continuously using the said trademark since 1981; however, the defendant placed on record only three invoices, all of the year 1982, in support of their contention.
Judgment
Hon’ble Justice Amit Bansal delivered the Judgment, and he held that though the defendant claims to be a “Continuous user” of the trademark “PRESTIGE” from 1981, they have failed to provide any evidence to substantiate their ground as a “continuous user”. In the absence of any documents, the Court shall presume that there was no “continuous use” by the defendant. Though the defendant claimed to have used the trademark since January 1st, 198, there was very little evidence to support this claim, apart from a few invoices from 1982 and some statutory registrations. The Court made a note of the lack of evidence and concluded that the defendant has only used the trademark sporadically and has not built up any significant reputation or goodwill associated with it and hence cannot be considered a “continuous user” under Section 34 of the Act.
The Court also took into consideration the plaintiff’s various evidence, such as their sales turnover and promotional expenses, which demonstrated that their trademark “PRESTIGE” has significant goodwill and a strong reputation, specifically in relation to “pressure cookers” and came to the conclusion that the plaintiff has established a prima facie case of their trademark’s value and reputation.
Furthermore, the Court opined that the balance of convenience is also in favour of the plaintiff and against the defendant. The Delhi High Court ordered a permanent injunction against the defendant, holding that the plaintiff has a strong case for both trademark infringement and passing off.
Source:
https://indianexpress.com/article/cities/delhi/delhi-hc-restrains-company-from-selling-gas-stoves-kitchenware-under-prestige-trademark-8465827/
Authored by Ipshita Bhattacharyya (Associate, BananaIP Counsels) and Shuchita S (Intern, BananaIP Counsels)
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