Prior use becomes “Turning Point” and prevails over registration
The parties engaged in imparting educational and training services vie for rights in the mark “TP Turning Point”. The Plaintiff, Turning Point Institute Private Limited (TPIPL) filed the action before the Delhi High Court alleging passing off, damages, etc, against the Defendants, Turning Point (TP) for using an identical mark/name in relation to identical services, i.e., education and training. TPIPL does not hold a trademark registration for the words or label “TP TURNING POINT”.
TP filed a counter suit against TPIPL for trademark infringement and passing off to safeguard its rights in the registered trademark TURNING POINT. The Court by this common order decided the injunction applications filed by both parties holding in favour of TPIPL.
TPIPL in the suits contends:
- TPIPL was incorporated in the year 2001 and is engaged in providing educational and training services under the trademark “TP TURNING POINT”. Their services comprise of preparatory classes for engineering and medical aspirants (IIT-JEE, AIEEE and PMT examination) along with examination preparation for science students, and foundation courses for High school (grade 9th and 10th).
- The mark “TP Turning Point” was adopted in March, 1994, and has been in continuous use ever since. The mark TURNING POINT was inspired by a science programme on national Television and the abbreviation TP stands for Tejan, founder of the institute and P was taken from Prakash, a maths teacher working at the time of inception in April 1994.
- TPIPL has during the period 2005-2011 expanded its centres to a number of states in India (Jharkhand, Bihar, U.P. and Haryana) and now have franchisees all over India. They have tie-ups and association with various schools across the country for its campus coaching facility.
- They have gained reputation among students all over India regarding preparatory classes concerning medical and engineering entrances since 1994 and have garnered wide media coverage for its activities.
- In April 2015, TPIPL became aware of TP’s use of the mark/name TURNING POINT in relation to identical services and therefore filed the suit. TP’s adoption of the mark is in bad faith. TPIPL is the prior adopter and user of the mark TURNING POINT since 1994. In support they filed extensive documents to substantiate its case.
TP contended following:
- TP is a sole proprietorship concern engaged in providing educational, coaching and training services to students in schools and colleges since the year 1998. They became aware of TPIPL only when the latter filed the suit.
- The mark TURNING POINT is registered in Class 41 since 2004 and is valid and subsisting.
- TP has trained thousands of students since 1998 and made extensive advertisements and their reputation and goodwill is evident from the turnover figures provided since 1998.
- TP is the prior user of the mark ‘TURNING POINT’ and it is TPIPL who subsequently copied the same by adopting a similar trade mark/trade name in the year 201. TPIPL’s case is barred by delay, laches and acquiescence. Moreover, TP in any case is honest concurrent user of the mark TURNING POINT.
- TPIPL is guilty of trademark infringement and passing off the registered trademark TURNING POINT.
Both sides filed extensive documents in support of their case. The court after considering the pleadings, documents, arguments and case laws ruled in favour of TPIPL and made the following observations.
- The primary issue to ascertain is the prior use of the mark in dispute. TPIPL has filed extensive documents out of which two documents establish their use since at least since 1995. On the other hand the documents filed by TP evidences its first use only from the year 1999 which is subsequent to TPIPL’s use.
- With regard to the elements of passing off the court held that as the rival names and services are identical and targeted to the same class of consumers, i.e., students, confusion is inevitable, thus, misrepresentation by TP stands established.
- Court noted that TPIPL has to show goodwill prior to 1999 when TP adopted the mark. The court held that TPIPL has garnered goodwill during the period 1995-1999.
- The court also considered the prior use of the mark TURNING POINT by TPIPL and rejected the contention of TP that registration of a trademark does not bar a prior user from exercising its rights under the common law.
- With regard to honest concurrent use, TP has failed to provide any justification for adoption of an identical mark in relation to identical services where they are even using the abbreviation TP along with the mark prior adopted and used by TPIPL.
- The court also noted that TP has failed to take any action despite becoming aware of TPIPL in the year 2002 when TP themselves was incorporated.
- With regard to acquiescence and delay the court observed that such defences can be invoked if adoption is honest which does not seem to be in the instant case.
In view of the above the court restrained TP from using the mark TURNING POINT in relation to education and training business.