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Implications of Trademark Disclaimers and the Significance of Acquired Distinctiveness

Trademark disputes often revolve around the distinctiveness and prior use of the marks involved. The case between the Plaintiff's trademark "TSL-TIRUPATI" and the Defendant's "MM TIRUPATI" serves as a prime example. This article explores the arguments from both parties, the role of disclaimers in trademark registrations, and the implications of geographic names in trademark law.

In 1994, Tirupati Structurals Limited, the Plaintiff, adopted the trademark "TSL-TIRUPATI" for their rigid PVC pipes and fittings business. "TSL" is an abbreviation of the Plaintiff's corporate name, while "TIRUPATI" is a significant part of it. The Plaintiff applied for the "TSL-TIRUPATI (LABEL)" trademark on November 21, 1997, and it was registered on August 23, 2007.

The Defendant has been using the trademark "MM TIRUPATI" and obtained registration for the word mark "MM TIRUPATI" in Class 11. The Plaintiff has challenged this registration through a rectification petition under Section 57 of the Trade Marks Act, 1999, citing deceptive similarity and their prior use of "TIRUPATI."

Plaintiff's Arguments:
Prior Use and Registration:
The Plaintiff claims their use of the "TSL-TIRUPATI" mark since 1994 establishes their priority. They argue that their extensive use and registration of the mark have resulted in acquired distinctiveness.

Validity of Registrations:
The Plaintiff asserts that their trademark registration No. 1318020, which is valid and subsisting without any disclaimer, grants them exclusive rights over the term "TIRUPATI" within their composite mark.

Distinctiveness of "TIRUPATI:
The Plaintiff contends that "TIRUPATI," although a geographic name, has no direct relation to the goods in question (PVC pipes, building materials, etc.). Its use in their mark is arbitrary, serving as a source identifier, and has acquired distinctiveness through extensive use.

Defendant's Arguments:
Generic and Common to Trade:

The Defendant argues that "TIRUPATI" is a generic term common in the trade. They emphasize that the Plaintiff cannot claim exclusivity over a geographic name that should be available to all traders.

Disclaimers in Registrations:
The Defendant notes that the Plaintiff's trademark registrations include disclaimers for the word "TIRUPATI." Therefore, they argue, the Plaintiff cannot claim exclusive rights over this term.

Role of Disclaimers:
A disclaimer in a trademark registration indicates that the registrant does not claim exclusive rights over a particular element of the mark. Here, while the Plaintiff's trademark registration No. 2087406 includes a disclaimer for "TIRUPATI," registration No. 1318020 does not. This distinction implies that the Plaintiff does have exclusive rights over "TIRUPATI" in connection with their mark under the latter registration.

Geographic Names and Distinctiveness:
Geographic names generally cannot be registered as trademarks unless they have acquired distinctiveness. In this case, "TIRUPATI" is a geographic name with no inherent connection to the products (PVC pipes and fittings). The Plaintiff's extensive use of "TIRUPATI" could lead to it being recognized as a distinctive element, thus justifying trademark protection.

Prior Use and Goodwill:
The Plaintiff's use of "TSL-TIRUPATI" since 1994 establishes prior use, a critical factor in trademark disputes. The goodwill and reputation developed over time strengthen the Plaintiff's position against the Defendant's use of a similar mark.

Deceptive Similarity:
The similarity between "TSL-TIRUPATI" and "MM TIRUPATI" is likely to cause consumer confusion. The shared use of "TIRUPATI" in both marks, particularly in the same industry, could mislead consumers into believing there is a connection between the two businesses, constituting passing off.

The Plaintiff's claims of trademark infringement and passing off against the Defendant are supported by their prior use and registration of the "TSL-TIRUPATI" mark. The Plaintiff's arguments are reinforced by the absence of a disclaimer in one of their registrations and the acquired distinctiveness of "TIRUPATI" through extensive use. The Defendant's argument that "TIRUPATI" is generic and common to trade is less compelling given the specific context and the Plaintiff's usage. These factors were key in the court granting an interim injunction in favor of the Plaintiff.

This case highlights the importance of understanding the nuances of trademark law, including the implications of disclaimers, the role of geographic names, and the significance of prior use and acquired distinctiveness.

Case Title: Tirupati Structurals Limited Vs Jai Prakash Singhal
Judgement/Order Date: 21.05.2021
Case No. CS Comm 221 of 2023
Neutral Citation: 2023:DHC:4514
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Sanjeev Narula H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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