Tirupati Structurals Limited vs Jai Prakash Singhal

SANJEEV NARULA, J. (Oral):

The Plaintiff, Tirupati Structurals Limited, was originally incorporated as “Tirupati Steel Tubes Limited” in the year 1988 and commenced their business of manufacturing and trading in all kinds of pipes and tubes, including fittings made of steel, such as stainless steel, PVC, water storage tanks, bathroom and sanitary fittings and their parts, etc. Subsequently, the name of the company was changed to ‘Tirupati Structurals Limited’.

In the year 1994, the Plaintiff adopted the trademark “TSL-TIRUPATI”, and started using the same for business. The prefix “TSL” is an abbreviation of the Plaintiff’s corporate name – Tirupati Structurals Limited – and “TIRUPATI” is a prominent part of the Plaintiff’s corporate name.

On 21^st November, 1997, Plaintiff applied for registration of the trademark/ device “TSL-TIRUPATI (LABEL)”/ “ ”, through trademark application No. 779198 in Class 17 for Rigid P.V.C. Pipe & Fittings, claiming use since 14^th November, 1994. The said application was granted registration vide certificate No. 654339 on 23^rd August, 2007, with effect from the date of application. Over the years, the Plaintiff has filed several applications for registration of their trademark “TSL-TIRUPATI” and formative marks thereof, including the device “ ”, under the Trade Marks Act, 1999^{11.“the Act”}. Some of the applications have resulted in a grant, while others are still pending consideration. Further, Plaintiff has also secured a copyright registration for the artistic work in the label “ ”, bearing No. A-103191/2013. A tabular representation of Plaintiff’s trademark registrations/ pending applications is as follows:

The Plaintiff is aggrieved by the Defendant’s use of the trademark “MM TIRUPATI” and “ ”^{22.“Impugned Marks”}. The Defendant has secured registration in respect of the word mark “MM TIRUPATI” in Class 11 under No. 3510820, which has been assailed by the Plaintiff through a rectification petition under Section 57 of the Act. The status of registration request for the device “ ” in Class 17 is presently ‘opposed’ by the Plaintiff. The details of Defendant’s applications, registered and pending, are as follows:

Mr. Bhuvneshwar Tyagi, counsel for Defendant, argues that the Plaintifff cannot claim any exclusivity over the term “TIRUPATI” as it is a generic term, and also common to trade. He posits that the registration of such a mark does not confer any monopoly over the said term. Further, he emphasises that the Plaintiff’s trademark registrations disclaim any rights in the word “TIRUPATI”, and therefore, this common element between the two marks being “TIRUPATI” cannot form the basis for the Court to determine deceptive similarity. In this regard, Mr. Tyagi places reliance on the judgment of this Court in Phonepe Private Limited. v. Ezy Services and Anr.^{33.2021 SCC OnLine Del 2635} to buttress his submissions.

As regards Defendant’s own adoption of the mark “TIRUPATI” is concerned, Mr. Tyagi argues that the Defendant has chosen the word “TIRUPATI” on account of their strong faith in Lord Vishnu, the deity worshipped at the Tirupati temple. He argues that the Plaintiff’s mark “TSL-TIRUPATI” is phonetically distinctive from the Defendant’s Impugned Mark “MM TIRUPATI”, and thus there is not likely to be any confusion caused between the two marks. Further, Mr. Tyagi argues that the Defendant’s adoption cannot be considered as a deliberate violation of Plaintiff’s right. There is no distinctiveness in the Plaintiff’s mark “TSL TIRUPATI”, being generic, and thus the Defendant’s adoption of the trademark “MM TIRUPATI” and “ ” is bona fide and honest.

The Defendant has not, in their pleadings or arguments addressed before the Court, disputed the fact that the Impugned Marks are employed for products identical or similar to those offered by the Plaintiff, categorized under Classes 11 and 17. Highlighting this overlap and the evident structural and phonetic similarity between the two marks, the Plaintiff is seeking an injunction to restrain the Defendant from using the Impugned Marks. It must, however, be clarified that although the Plaintiff has raised a claim of infringement, alleging the invalidity of the registered Impugned Mark “MM TIRUPATI”, and has also initiated rectification proceedings against it, for the purposes of this interlocutory application, the Plaintiff is primarily invoking their common law rights to pursue a passing off action.

The apparent similarity between the two marks stems from the shared element “TIRUPATI”. However, the Defendant claims that this term/ word is a disclaimed portion of the Plaintiff’s registered mark. Therefore, our analysis begins by examining the overall similarities between the two marks to determine if they are deceptively similar. Subsequently, we will evaluate the legal implications of a disclaimer to understand its impact on the rights conferred by the trademark registration. To this end, we begin with a side-by-side comparison of the two marks to assess their overall visual impression and determine the likelihood of confusion among consumers.

As regards the labels employed by parties, we notice that the Plaintiff’s mark employs a distinct stylized graphic wherein the letters ‘TSL’ are prominently featured next to “TIRUPATI”, set within a shield-like design shaped by the letter ‘T’. Conversely, the Defendant’s mark showcases the initials ‘MM’ in a unique font, placed next to “TIRUPATI” but with a different stylistic approach. However, despite these variations, both marks significantly incorporate “TIRUPATI” as a key element.

When we compare the Plaintiff’s registered label “TSL-TIRUPATI” with the Defendant’s textual element in their registered device, distinction is observed only in the prefixes: Plaintiff’s ‘TSL’ versus Defendant’s ‘MM’. The prominent feature of both marks, i.e. the word “TIRUPATI”, is identical. The presence of “TIRUPATI”, the shared geographic descriptor in both marks, despite differing prefixes, is likely to cause confusion and lead consumers to mistakenly believe that there is a connection between the two entities. The similarity in the overall structure makes it probable that consumers could be misled regarding the source or affiliation of the goods offered under these marks. Consequently, the Defendant’s mark is deceptively similar to the Plaintiff’s trademark. This close resemblance justifies the Plaintiff’s concerns about passing off and supports their prayer for injunctive relief to prevent further use of the “MM TIRUPATI” mark by the Defendant.

It is also pertinent to note the manner of use/ presentation of the trademarks on the packaging of both the Plaintiff and Defendant, which is depicted in the following comparison chart:

One can immediately notice the identical font and style used for the word “TIRUPATI”. The similarity is particularly noticeable in the styling of the letters “R”, “U”, and “A”. This consistency in font style can significantly enhance the likelihood of consumer confusion, as these elements play a critical role in the visual recognition of the brand by consumers. The replication of specific letter styles in a distinctive font intensifies this effect, overshadowing the differences brought by the ‘MM’ prefix and other design variations. Therefore, despite the presence of the additional elements in the Defendant’s packaging, the identical styling of the shared term ‘TIRUPATI’ creates a strong resemblance that consumers are likely to perceive as indicative of a common source or endorsement. This similarity could easily lead to confusion among consumers regarding the relationship between the two brands.

Having established the similarities between the two marks, it is crucial to emphasize that the Plaintiff is unequivocally the senior user of the two. The documentation of prior registrations not only demonstrates the Plaintiff’s longstanding use but also strengthens their precedence in the market with respect to the trademark in question. The Plaintiff's established prior user rights over the trademark significantly strengthen their claim against any subsequent uses by the Defendant amounting to passing off.

At this point, the Court deems it pertinent to review the registrations obtained by the Plaintiff for their trademark “TSL-TIRUPATI” to discern the disclaimer(s) and the effect thereof:

In light of the above, Defendant’s submissions that the Plaintiff’s registrations give no exclusive right over the word “TIRUPATI” is ex-facie misconceived. The word “TIRUPATI” is only disclaimed in respect of trademark registration No. 2087406 in respect of the design/ logo “ ”, of which “TIRUPATI” is only a part of the textual element along with the prefix ‘TSL’. The label registration bearing No. 779198 in Class 17, on which the suit is primarily based, as well as the Plaintiff’s other registrations noted above, are without the disclaimer for ‘TIRUPATI’.

Nonetheless, it is important to examine the legal implications of a disclaimed element in a trademark. In trademark jurisprudence, when an element of a mark is disclaimed, it typically signifies that the term is considered descriptive or generic concerning the goods or services it represents. This disclaimer is intended to prevent the trademark owner from claiming exclusive rights to a term that must remain freely available for other traders to use descriptively. Typically, geographic names, like Tirupati, are not registrable as trademarks unless they have acquired distinctiveness through such extensive use that the public associates the same specifically with the goods or services of the registrant. Undoubtedly “TIRUPATI” is a geographic designation, yet it is crucial to note that there is no natural or intrinsic connection between the name “TIRUPATI” and the goods manufactured by either party—specifically, it does not describe or suggest the nature, quality, or geographical origin of the products like PVC pipes, building materials, water tanks and sanitary apparatus. Therefore, the adoption of this word as part of the Plaintiff's trademarks cannot be considered to be a generic or descriptive term. It is also possible that the arbitrary use of “TIRUPATI” by a party can serve as a source identifier. Over time, the party may develop significant goodwill and reputation associated with this term, effectively transforming it into a distinctive element of their brand. This distinguishes the present case from the judgment in Phonepe Private Limited (supra) relied upon by the Defendant, wherein the common element between the competing marks, i.e. “Pe”, was held to be a deliberate misspelling of ‘pay’, therefore rendering the term to be descriptive of the nature of services offered by the parties and incapable of forming the basis for an action of passing off.

In this regard, the Supreme Court’s exposition in Registrar of Trademarks v. Ashok Chandra Rakhit Ltd.^{44.1955 SCC OnLine SC 12} clarifies the role and significance of disclaimers in the registration of trademarks, emphasizing that the primary objective is not to benefit competitors or the public directly, but to delineate the rights of the trademark proprietor. By mandating disclaimers, the legal framework seeks to curb proprietors’ tendencies to extend their trademark’s scope beyond legitimate bounds—a practice noted in cases such as In re Smokeless Powder Co.’s Trade Mark^{55.LR (1892) 1 Ch 590} and Greers Ltd. v. Pearman and Corder Ltd.^{66.(1922) 39 RPC 406}, known as the “Banquet” case. These disclaimers are intended to prevent proprietors from making exaggerated claims about the exclusive use of certain parts of their trademarks that are not inherently distinctive or that are generic, especially those parts they have expressly disclaimed.

The Court also recognises that while the disclaimer limits the scope of protection under the trademark registration, it does not impinge upon any other rights the proprietor might hold under different legal statutes. This means that if the proprietor has established rights through long usage of the disclaimed elements associated with their goods or services, these rights remain enforceable outside the ambit of trademark registration. Should there be an infringement or passing off, the proprietor could still pursue legal remedies to protect their interests. Thus, a disclaimer, while shaping the contours of rights conferred by trademark registration, does not strip the proprietor of any underlying rights obtained through other legal means, such as common law rights acquired through extensive and recognized use in the marketplace.

To conclude, in light of the arguments presented and the evidence reviewed, this Court holds that despite a disclaimer, Plaintiff can still rely upon the disclaimed element as part of their composite trademark. The rights to exclusive use of the mark as a whole are not diminished by the disclaimer. However, the protection does not extend to the disclaimed element on its own. This means the Plaintiff could enforce rights against the Defendant using a confusingly similar mark, including the disclaimed element, as the overall impression of the marks is similar enough to cause confusion. The presence of a disclaimer within a trademark registration does not automatically preclude the registrant from enforcing exclusive rights over a disclaimed element, especially in cases where such enforcement is necessary to prevent passing off. This interpretation aligns with established jurisprudence which asserts that a registrant may, under the principles of passing off, restrain others from using a disclaimed word if such use is likely to deceive or cause confusion among the public, thereby damaging the registrant’s business interests. The right to protect one’s market identity and consumer goodwill, even for elements that are not exclusively enforceable under registration, is critical to maintaining fair business practices and consumer trust. This view is supported by the precedent set in Charan Dass & Veer Industries (India) v. Bombay Crockery House^{77.1984 SCC OnLine Del 465 at para.11}, where it was explicitly stated that a disclaimer does not prohibit acquiring a right to exclusive use of a word in the trademark, otherwise than by registration, and that a passing off action can effectively safeguard such rights.

Next, we address the Defendant’s contention that the word “TIRUPATI” is generic. On this issue, we must first highlight the inconsistency in the Defendant’s stance, evidenced by their own adoption and registration of the mark “MM TIRUPATI” for similar goods in Class 11, without any accompanying disclaimer for the word “TIRUPATI”. This action—trademark usage and securing statutory rights therein—contradicts their claim that the term is generic. Instead, it suggests an acknowledgment of its distinctiveness, at least within the context of their commercial use. This inconsistency raises questions about the sincerity of the Defendant's argument and supports the notion that “TIRUPATI” may possess a distinctive character when associated with their products.

Mr. Tyagi’s submission that the Defendant has not claimed any proprietary rights over the word “TIRUPATI” also does not align with the registration evidence provided to the Court. Defendant’s registration certificate for “MM TIRUPATI” lacks any indication that the word “TIRUPATI” is disclaimed. This discrepancy also raises questions about the Defendant’s rationale for incorporating “TIRUPATI” into their trademark.

The Defendant has not provided any convincing reasons to justify their selection of “TIRUPATI” as a trademark, particularly when they would surely have been aware of the Plaintiff’s presence in the market for similar goods, given their multiple established registrations with the term “TIRUPATI”. The lack of a clear, plausible explanation for the Defendant’s adoption of a mark so closely aligned with the Plaintiff’s established trademarks, especially in the absence of a disclaimer, casts doubt on the Defendant’s claim of the term being generic and suggests a strategy to leverage the goodwill associated with the Plaintiff’s brand.

The Court has evaluated the request for an injunction through the lens of common law rights related to passing off. The Plaintiff has prima facie established a significant reputation and goodwill associated with their registered trademarks. This has been convincingly demonstrated through evidence of extensive and continuous use of their marks, alongside substantial annual sales figures that underscore the commercial impact of the said marks. These figures, which are detailed below, serve to illustrate the strength and recognition of the Plaintiff’s trademarks within the marketplace:

The Defendant’s adoption of the Impugned Marks for goods identical or similar to those of the Plaintiff, without providing any credible justification, reflects a calculated strategy on their part. Further, although the Defendant has obtained registration for the word mark “MM TIRUPATI”, their manner of use––which has been depicted above––indicates a deliberate attempt to come close to the Plaintiff’s trademark. This adoption demonstrates a clear attempt at misrepresentation, exhibiting an intent to capitalize on the established goodwill and reputation of the Plaintiff. The Defendant’s actions are not only potentially deceptive but also likely to create confusion among consumers, who may struggle to differentiate between the two brands due to the similarities in the trademarks and the goods offered. This confusion can dilute the Plaintiff’s brand identity and diminish the value of their trademarks, leading to potential harm and a loss of reputation. Such consequences are particularly injurious in markets where brand distinction plays a crucial role in consumer decision-making.

Given these considerations, the Court finds that the Plaintiff has successfully met the necessary criteria set forth by the classic trinity test for passing off, which requires a demonstration of goodwill, misrepresentation, and potential damage. The evidence presented clearly proves that the Defendant’s use of the Impugned Marks constitutes a misrepresentation that would mislead or has the potential to mislead the public, thereby causing damage to the Plaintiff’s goodwill. Consequently, the Plaintiff’s request for an injunction, based on passing off, is both justified and necessary to prevent further damage and to protect their trademarks. This injunction will also serve to maintain consumer trust and uphold the Plaintiff’s rightful position in the marketplace.

Accordingly, the present application is allowed and the Defendant is restrained from using the trademark “MM TIRUPATI” or any other mark which is deceptively similar to the Plaintiff’s mark “TSL-TIRUPATI”, during the pendency of the present suit.

The application is disposed of.

List for consideration on 22^nd October, 2024.