The Delhi High Court last week delivered a comprehensive judgment which could be treated as a crash course in passing off..The Court restrained a coaching institute from using a mark which was deemed to be dishonestly adopted by it even though they had it registered and directed the institute to pay Rs. 50,000 to the plaintiff coaching centre..The plaintiff Turning Point Institute Private Limited had approached the Court praying for an interim injunction against the defendant M/s Turning Point from using the mark ‘TP Turning Point’. The defendant had filed a cross-suit against the plaintiff praying for the same..The plaintiff, through advocate Ayushi Kiran, contended that the mark in question was created in 1994 and has been in continuous use ever since. Further, it has gained reputation among students all over India regarding its preparatory classes concerning medical and engineering entrance exams..It was further submitted by the plaintiff that it came across the defendant’s mark in 2015 and realized that the defendant was passing off its services with the trademark ‘TP Turning Point’, as that of the plaintiff. It was argued,.“The defendants have copied the identical mark ‘TP Turning Point’ and are using the same for identical services as of the plaintiff’s…Defendant has dishonestly adopted and mala fide obtained trademark registration of the mark ‘TP Turning Point’…..Because of the illegal adoption and use by the defendants of the plaintiff’s trade mark, the consumers and members of the trade are being misled into falsely believing that the defendants’ services are either being offered by the plaintiff, or endorsed by the plaintiff, or the two have some nexus or affiliation.” .Advocate HP Singh, appearing for the defendant, in turn submitted that it is the plaintiff who is guilty of infringement of the defendant’s registered trade mark and of passing off its services as that of the defendant. Moreover, it was argued that the registration of the trademark of the defendant was valid and subsisting. He submitted,.“Plaintiff has filed false and fabricated documents of dubious nature to defeat the valuable rights acquired due to prior user of the mark by the defendant herein.”.The Single Judge Bench of Justice Vipin Sanghi observed at the outset,.“The plaintiff’s case is of passing off since, evidently, they have not secured, much less applied for, registration of their trademark “TP Turning Point”. To adjudicate cases of passing off, the courts in our country apply the ‘classical trinity’ test as laid down by Lord Oliver in Reckitt & Colman Products Ltd. v. Borden Inc.”.The Court held that prima facie, the plaintiff has been able to establish adoption and use of the mark TP Turning Point at least from April 1995 onwards and according to the defendants themselves, their first use of the mark “TURNING POINT” dates back to the year 1998..Going forward with the trinity test (misrepresentation, goodwill and damage), Justice Sanghi first dealt with misrepresentation. He observed,.“That the effect of misrepresentation is the causation of confusion in the mind of the consuming public with regard to the source or origin of the goods or services. Also, in assessing the likelihood of confusion, the Courts are required to apply the test of ‘imperfect recollection of a person of ordinary memory.”.While holding that prima facie, the element of misrepresentation by the defendant stands established, the Court stated that in case of use of identical marks for identical goods or services, confusion is bound to occur. In this light, it was held that the act of the defendant was most likely to cause confusion amongst its potential customers, who are students in this case..On the question of goodwill, the judge held that owing to the continuous and uninterrupted use of the mark in question by the plaintiff, there appears to be sufficient prima facie material on record to establish the goodwill and reputation attained by the plaintiff. It was also stated that the goodwill and reputation of the defendant cannot be denied but this reputation and goodwill is a result of adoption of the mark, subsequent to the plaintiff’s adoption of the mark in question and the defendant’s adoption of the mark, prima facie, seems to be dishonest..On the last element of damage, the Court held that the use of an identical mark by the defendant for identical services is bound to cause confusion, which increases the likelihood of injury to the goodwill, reputation and business of the plaintiff. A comparison of the sales figures of both the institutes in the last six years, prima facie shows this to be an instance of actual damage,.“The reason behind the upsurge in revenue figures of the defendant, prima facie, appears to be because of the subsequent dishonest adoption of the identical mark by the defendant for the same services.”.Responding to the defence raised by the defendant regarding honest and concurrent use, the court stated that honest and concurrent use may be a defence in cases where the goods are not identical, or the marks are not identical, i.e., in cases in which there is no scope of confusion as to the source of the goods or services of the two parties being the same..The Court concluded that an overall assessment of these three elements, in light of the facts at hand, establishes a prima facie case of passing off in favour of the plaintiff. While dismissing the allegations of the defendant, the Court also stated that the lack of bonafides on the part of the defendant is also apparent from the fact that the defendant did not take any action against the plaintiff, even though they most certainly would have learnt of the existence of the plaintiffs company..Read the judgment:
The Delhi High Court last week delivered a comprehensive judgment which could be treated as a crash course in passing off..The Court restrained a coaching institute from using a mark which was deemed to be dishonestly adopted by it even though they had it registered and directed the institute to pay Rs. 50,000 to the plaintiff coaching centre..The plaintiff Turning Point Institute Private Limited had approached the Court praying for an interim injunction against the defendant M/s Turning Point from using the mark ‘TP Turning Point’. The defendant had filed a cross-suit against the plaintiff praying for the same..The plaintiff, through advocate Ayushi Kiran, contended that the mark in question was created in 1994 and has been in continuous use ever since. Further, it has gained reputation among students all over India regarding its preparatory classes concerning medical and engineering entrance exams..It was further submitted by the plaintiff that it came across the defendant’s mark in 2015 and realized that the defendant was passing off its services with the trademark ‘TP Turning Point’, as that of the plaintiff. It was argued,.“The defendants have copied the identical mark ‘TP Turning Point’ and are using the same for identical services as of the plaintiff’s…Defendant has dishonestly adopted and mala fide obtained trademark registration of the mark ‘TP Turning Point’…..Because of the illegal adoption and use by the defendants of the plaintiff’s trade mark, the consumers and members of the trade are being misled into falsely believing that the defendants’ services are either being offered by the plaintiff, or endorsed by the plaintiff, or the two have some nexus or affiliation.” .Advocate HP Singh, appearing for the defendant, in turn submitted that it is the plaintiff who is guilty of infringement of the defendant’s registered trade mark and of passing off its services as that of the defendant. Moreover, it was argued that the registration of the trademark of the defendant was valid and subsisting. He submitted,.“Plaintiff has filed false and fabricated documents of dubious nature to defeat the valuable rights acquired due to prior user of the mark by the defendant herein.”.The Single Judge Bench of Justice Vipin Sanghi observed at the outset,.“The plaintiff’s case is of passing off since, evidently, they have not secured, much less applied for, registration of their trademark “TP Turning Point”. To adjudicate cases of passing off, the courts in our country apply the ‘classical trinity’ test as laid down by Lord Oliver in Reckitt & Colman Products Ltd. v. Borden Inc.”.The Court held that prima facie, the plaintiff has been able to establish adoption and use of the mark TP Turning Point at least from April 1995 onwards and according to the defendants themselves, their first use of the mark “TURNING POINT” dates back to the year 1998..Going forward with the trinity test (misrepresentation, goodwill and damage), Justice Sanghi first dealt with misrepresentation. He observed,.“That the effect of misrepresentation is the causation of confusion in the mind of the consuming public with regard to the source or origin of the goods or services. Also, in assessing the likelihood of confusion, the Courts are required to apply the test of ‘imperfect recollection of a person of ordinary memory.”.While holding that prima facie, the element of misrepresentation by the defendant stands established, the Court stated that in case of use of identical marks for identical goods or services, confusion is bound to occur. In this light, it was held that the act of the defendant was most likely to cause confusion amongst its potential customers, who are students in this case..On the question of goodwill, the judge held that owing to the continuous and uninterrupted use of the mark in question by the plaintiff, there appears to be sufficient prima facie material on record to establish the goodwill and reputation attained by the plaintiff. It was also stated that the goodwill and reputation of the defendant cannot be denied but this reputation and goodwill is a result of adoption of the mark, subsequent to the plaintiff’s adoption of the mark in question and the defendant’s adoption of the mark, prima facie, seems to be dishonest..On the last element of damage, the Court held that the use of an identical mark by the defendant for identical services is bound to cause confusion, which increases the likelihood of injury to the goodwill, reputation and business of the plaintiff. A comparison of the sales figures of both the institutes in the last six years, prima facie shows this to be an instance of actual damage,.“The reason behind the upsurge in revenue figures of the defendant, prima facie, appears to be because of the subsequent dishonest adoption of the identical mark by the defendant for the same services.”.Responding to the defence raised by the defendant regarding honest and concurrent use, the court stated that honest and concurrent use may be a defence in cases where the goods are not identical, or the marks are not identical, i.e., in cases in which there is no scope of confusion as to the source of the goods or services of the two parties being the same..The Court concluded that an overall assessment of these three elements, in light of the facts at hand, establishes a prima facie case of passing off in favour of the plaintiff. While dismissing the allegations of the defendant, the Court also stated that the lack of bonafides on the part of the defendant is also apparent from the fact that the defendant did not take any action against the plaintiff, even though they most certainly would have learnt of the existence of the plaintiffs company..Read the judgment:
