The case involves a dispute between V. Rangasamy Naidu Educational Trust (Petitioner) and Parthasarathy Seniammal Educational Trust (Respondents) over the use of the trademark “CIT” in the field of education. The Petitioner claims use of the mark since 1956 and is the registered proprietor, seeks the cancellation of the Respondents’ registration of the mark in Class 41. This note discusses the arguments put forth by both parties and outlines the Court’s decision.

Petitioner in the rectification petition contends:

1. Coimbatore Institute of Technology (CIT) was founded in 1956 and has built a strong reputation over decades in industrial training across science, engineering, and technology fields.
2. The abbreviation “CIT” is widely recognized and exclusively associated with them and utilized by students, staff, alumni, and the public.
3. The CIT mark is registered in class 41 in relation to education services since 2011.
4. The Respondents, who operate in the same educational sector, began using the mark “CIT” on their building, forms, website, and other materials and also in their domain name, www.citchennai.edu.in. despite being aware of the Petitioner’s prior rights and established goodwill.
5. They had already filed a suit for the reliefs of infringement and passing off and obtained an interim order against the Respondents. This was suppressed by the Respondents at the time of obtaining registration.
6. The Respondents prominently display “CIT” in their mark, despite claiming it as a composite mark with an almost invisible tagline.
7. The Respondents’ use of the “CIT” mark is misleading and intended to benefit from the former’s reputation, entitling them to relief.

Respondents counter the contentions on the following:

1. They are entitled to protection as an honest and concurrent user of the mark. The use is honest as it is the abbreviation of their name, Chennai Institute of Technology.
2. The rectification petition is an afterthought as the suit was filed in the year 2017 even before the Respondent obtained registration in the year 2019. The Petitioner has not sought leave of the Court before filing the rectification petition as suit is pending between the parties.
3. The competing marks are to be viewed in its entirety, as a partial word does not constitute a separate trademark. Respondent’s mark is a composite mark and the butterfly, and the tagline are the dominant part of the registered mark and there is no chance of confusion.
4. Adoption is innocent as the parties were unaware of the use of the mark.
5. Registrar’s decision to grant them registration is justified and should not be challenged and the rectification petition ought to be dismissed.

The court framed the following issues:

1. Whether the Respondent’s mark is liable to be removed as prayed for?
2. Whether non-adherence to Section 124 of the Act renders the petition not maintainable?
3. Whether the Respondent’s use of the impugned mark is honest and concurrent?

Both sides did not examine any witness and advanced oral submissions.

Court’s findings

1. With regard to maintainability, the Petitioner contends that the Respondent did not have a registration at the time of the filing of the suit and the question of maintainability of the rectification petition does not arise. Moreover, as the Civil Court has not stayed infringement suit pending rectification, the petition cannot therefore be dismissed on this ground.
2. In the instant case admittedly, both the parties are dealing in the education sector. The Petitioner alleges that the Respondents adopted the mark with malafide intent to exploit their established reputation and goodwill. On the other hand, the Respondent relies on honest adoption and use as “CIT” is the abbreviation for Chennai Institute of Technology.
3. A comparison of the marks, Petitioner’s CIT and the Respondent’s reveals significant similarity, with “CIT” being the dominant feature in both, leading to a likelihood of confusion, since both parties operate in the education sector. The Respondents’ claim that their butterfly logo and tagline distinguish their mark ought to fail, as these elements do not overshadow CIT which is the prominent portion in the rival marks.
4. The Petitioner’s use of the mark dates to 1956, whereas the Respondents adopted their mark only in 2013, with just 14 months of use before their application. This short duration is insufficient to establish distinctiveness, and there is no evidence to substantiate such claim.
5. The Respondents’ defence of honest and concurrent use is also without merit. At the time of their registration, a Civil Court had issued an interim order restraining their use of the mark, undermining their claim of honest use. The Respondents failed to disclose the interim injunction restraining the use of their mark while their application was pending before the Registrar. This omission likely influenced the Registrar’s decision, as the authority might have refused registration had it been informed of the restraint order. This lack of disclosure further undermines the Respondents’ claim of “honest use.”

In light of the above findings the Court allowed the rectification petition and directed removal of the Respondents mark from the Register.

Comment

This ruling reinforces the importance of establishing prior use, distinctiveness, and the need for substantial evidence when claiming honest and concurrent use which the Respondent failed to establish. The case also highlights the significance of avoiding public confusion. The court held that the similarity between the two marks “CIT” used by both parties in the same field of education was likely to cause confusion.