This is an order passed by the Division Bench (Two Judge bench) of the Madras High Court in an appeal against the order of the Single Judge. The Plaintiff, TVS Electronics Limited, filed the suit against the Defendant, Jitender Kumar, alleging trademark infringement, passing off, etc., and to restrain the latter from using the mark TVS in relation to their business.

Plaintiff in the suit stated:

1. They are part of the renowned business conglomerate namely, the TVS Group of Companies.
2. TVS trademark has been adopted since the year 1911 which is an abbreviation of the name of Mr. T. V. Sundaram and by its continuous use and maintenance of high quality, it is a well-known mark in India and abroad.
3. The brand TVS Electronics was originally conceived in the year 1986 and has been in extensive and continuous use since then. They are the prior adopter, user and registered proprietor of the marks TVS Electronics in various forms and registered in several classes.
4. They manufacture and sell point of sale devices, printers, keyboards apart from sale and manufacture of CCTV cameras and related products through their dealer network spanning across India. They have received several accolades and awards nationally and internationally for maintenance of the good quality of their products and services.
5. The Defendant is engaged in the business of manufacturing and selling CCTV cameras and products under the trade name Hash Control Systems.
6. They have registered the domain www.tvssecurity.com where it displays and sells its products under the mark TVS. They also list its products on e-commerce platforms including Government E-marketplace, Amazon, Indiamart etc., under the trademark TVS.
7. The Defendant has willfully copied the mark TVS and adopted the colour scheme (blue & white) and the font styles to resemble the Plaintiff’s mark.
8. Enquiries revealed that Defendant has registered the TVS mark and filed rectification petition against the Plaintiff’s marks. The Plaintiff seeks injunction in respect of infringement of trademark, copyright, passing off.

Defendant countered the injunction on the following grounds:

1. They are engaged in manufacturing and selling of electronic products such as CCTV cameras etc., and all information is available on its website www.tvssecurity.com
2. Initially they used to manufacture parts and components of security cameras and components in Taiwan for sale in India. The manufacturer’s products were known as Taiwan Visual Security products and thus, the letters TVS were adopted as the abbreviated form of Taiwan Visual Security.
3. When the production of the parts and components were shifted to other countries, the name was changed from Taiwan Visual Security to True Visual Security, and they continued with the mark TVS in trading of its goods.
4. They adopted the mark in the year 2007 and are the registered proprietor of the mark in class 9 since April 2009. They are well recognized in its section of trade by long and continuous use. The Plaintiff was only dealing in computer peripherals and was not in the line of business as that of the Defendant which is electronic security products.

The Learned Single Judge after hearing the parties refused to grant an injunction considering:

1. Defendant’s use of the mark from the year 2007 and registration since 2009;
2. Plaintiff’s use in regard to security cameras was only from 2020, the issues have to be gone into in detail only during trial.

The Plaintiff assailed the order of the Single Judge before the DB on the following:

1. Considering that the Plaintiff’s mark is a well-known trademark in India and abroad the very adoption of the impugned mark by the Defendant is dishonest.
2. The justification by the Defendant that it was initially Taiwan Visual Security and thereafter True Visual Security is a lame excuse and there is no material to substantiate the same.
3. Once the adoption is dishonest, the case for passing off is made out.
4. The Defendant has no reputation or goodwill and is riding on the Plaintiff’s.

The Defendant contended:

1. They have produced evidence to show use of the mark from the year 2007 onwards. The Plaintiff entered the field of security cameras only in the year 2020 and as far as Class 9 goods are concerned, the Defendant is the prior user.
2. The Defendant adoption is bonafide and is an honest and concurrent user of the mark and cannot be restrained by way of an injunction pending disposal of the suit.

After hearing the parties, the DB held:

1. It is the Plaintiff’s contention that in view of their mark being well-known, the Defendant’s registration per se is illegal and they cannot be permitted to tarnish the Plaintiff’s mark. In this regard it is for the Plaintiff to prove the knowledge and recognition of the mark, duration, extent and area of geographical use, and the successful enforcement of the rights in the mark.
2. In the instant case admittedly, the Plaintiff has entered the market in respect of the security camera goods about the year 2020. Thus, whether the Plaintiff’s mark is a well-known trademark across classes of goods cannot be presumed at the interlocutory stage and can be decided only during the course of trial.
3. In the present case the use claimed by the Defendant from the year 2007, the Plaintiff’s date of entry in the relevant field, the time of the alleged start of the tortuous activity and the time of institution of suit, are relevant factors in determining the balance of convenience.
4. The exercise of discretion by the learned Single Judge in refusing injunction and permitting the Defendant to continue to use its mark on a condition to maintain and submit accounts on quarterly basis, cannot be found fault with.
5. In the absence of any illegality or perversity, the Appellate Court will not ordinarily interfere with the discretion of the trial court.

In light of the above findings, the DB held that there is no reason for interference with the Single Judge’s order and dismissed the appeal filed by the Plaintiff.

Comment

Notwithstanding the fact that the mark TVS is extensively used and well-known in India, the DB refused to grant an injunction considering Defendant’s prior use and registration of the mark in relation to specific goods in class 9. This emphasizes that prior use holds a significant advantage at the interim stage even when the mark is identical/deceptively similar to a well-known mark such as TVS.