‘Tirupati’, the city where the famous Sri Venkateswara Temple sits atop one of the 7 peaks of Tirumala Hills is the bone of contention in the instant dispute between two entities for goods falling in class 17 The Plaintiff, Tirupati Structurals Limited (TSL) filed the suit, at the Delhi High Court, against the Defendant, Jai Prakash Singhal (Jai Prakash) alleging trademark infringement, passing off, damages etc. The note highlights the injunction application filed by TSL alleging passing off. The competing marks here are ‘TSL-TIRUPATI’ and ‘MM TIRUPATI’

TSL seeks injunction on the following grounds:

1. TSL was originally incorporated as Tirupati Steel Tubes Limited in the year 1988. They are engaged in manufacturing and trading various steel products, including pipes, tubes, water storage tanks, bathroom fittings, and sanitary fittings.
2. They adopted the trademark ‘TSL-TIRUPATI’ in 1994 where ‘TSL’ abbreviates their corporate name “Tirupati Structurals Limited,” and ‘Tirupati’ forms a significant part of their corporate identity.
3. They are the registered proprietor of the mark in class 17 since 1997. They have also applied and obtained registration for ‘TIRUPATI’ formative marks in several classes, and a few are pending registration.
4. TSL is aggrieved by Jai Prakash’s use of the mark ‘MM TIRUPATI’ in Class 11 and   in class 17. TSL has filed rectification against the MM TIRUPATI mark is Class 11 and opposition against in class 17 and the proceedings are ongoing before the Trademark Registry.

Jai Prakash countered the injunction application raising the following contentions:

1. TSL cannot claim exclusivity over the term ‘TIRUPATI’ as it is generic and is commonly used in the trade.
2. Further TSL’s registrations disclaim any rights in the word Tirupati and thus, the common element ‘Tirupati’ cannot be the basis for determining deceptive similarity between the marks.
3. They have honestly adopted the mark being the devotee of Lord Vishnu, associated with the Tirupati temple.
4. TSL-Tirupati is phonetically different from MM-Tirupati and there is no chance of confusion.

Court’s findings

1. In the instant case it is relevant to note that Jai Prakash has not disputed that the rival marks are being used in relation to similar products.
2. The rival marks contain the word ‘Tirupati’ prominently, with only the prefixes ‘TSL’ and ‘MM’ differing. The similarity in the styling of the letter’s ‘R’, ‘U’, and ‘A’ in the rival marks creates a strong resemblance. The similar styling of ‘Tirupati’ in the rival marks creates a strong resemblance, making consumers likely to perceive the brands as related by a common source, potentially leading to confusion.
3. Jai Prakash’s contention that TSL cannot claim exclusive rights over the word ‘Tirupati’ is incorrect. Despite a disclaimer, TSL can rely on the disclaimed element as part of their composite trademark. The Court noted that the exclusive rights to the mark as a whole remain intact, protection does not extend to the disclaimed element alone. Therefore, TSL can enforce rights against a party using a confusingly similar mark, including the disclaimed element, if it causes confusion.
4. Jai Prakash’s argument that ‘Tirupati’ is generic did not find favour with the Court. Court noted that TSL has shown reputation and goodwill for their registered trademarks.
5. TSL is the senior user of the mark evidenced by their prior registrations. Their longstanding use and market precedence establishes prior user rights which strengthens their rights against Jai Prakash for passing off.
6. Jai Prakash’s contention that TSL cannot claim exclusive rights over the word Tirupati is not correct. Documents show that ‘Tirupati’ is disclaimed only for trademark registration 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 in Class 17, on which the suit is based, as well as other registrations of TSL are without the disclaimer for ‘Tirupati’.
7. TSL has shown reputation and goodwill for their registered trademarks through evidence of extensive use and substantial annual sales. The evidence proves that Jai Prakash’s use of the marks constitutes misrepresentation likely to mislead the public and damage TSL’s goodwill.

In light of the above the Cout allowed the injunction application and restrained Jai Prakash from using the trademark ‘MM TIRUPATI’ or any mark deceptively similar to ‘TSL-TIRUPATI’ during the pendency of the suit.

Comment

The Court’s findings emphasize that despite disclaimers on certain elements of a trademark, the overall impression and distinctive use of a term like ‘Tirupati’ can still confer significant rights and protection. It further highlights the critical role of trademark protection in maintaining market integrity and preventing consumer confusion.