The case of PVS Knittings v. P. Prakash, adjudicated by the High Court of Judicature at Madras, is a significant trademark dispute involving allegations of infringement, passing off, and copyright violation. The plaintiff, M/s. P.V.S. Knittings, a registered partnership firm, sought to protect its registered trademark "TWIN BIRDS" against the defendant's use of the allegedly deceptively similar mark "FLY BIRDS." The case also included a rectification petition to cancel the defendant's trademark registration. The court's decision addresses key issues of deceptive similarity, prior use, and the legal implications of delay and acquiescence, offering valuable insights into trademark law principles in India.

Detailed Factual Background:

• PVS Knittings, a partnership firm based in Tirupur, Tamil Nadu, has been manufacturing and marketing hosiery, ready-made garments, undergarments, and knitted apparel since its inception.
• The firm adopted the trademark "TWIN BIRDS" in 1969 and claims continuous use thereafter.
• The plaintiff secured multiple trademark registrations for "TWIN BIRDS" and its variants, including word and device marks under Class 25 (apparel).
• The registrations include a distinctive device mark with the words "TWIN BIRDS", a pictorial depiction of two birds, and a pink-and-white color scheme.
• The trademark was licensed to Network Clothing Company Private Limited, expanding its market presence.
• The defendant, P. Prakash (M/s. S P S TEX), also based in Tirupur, adopted "FLY BIRDS" for apparel in Class 25 and applied for registration on 18 April 2016.
• The "FLY BIRDS" mark, registered on 30 May 2019, featured a similar two-bird device and pink-and-white scheme.
• The plaintiff alleged deceptive similarity, dishonest adoption, and likelihood of consumer confusion.
• The plaintiff discovered the use in April 2022 and filed a rectification petition and legal notice later that month.
• The defendant denied the claims, asserting distinctiveness and commonality of the term "birds" in the garment trade.
• A civil suit was filed in April 2023 alleging trademark infringement, passing off, and copyright infringement.

Detailed Procedural Background:

• The plaintiff filed C.S. (Comm. Div.) No. 182 of 2023 under the Trade Marks Act and Copyright Act, seeking injunctions against the defendant.
• A rectification petition ((T) OP(TM) No. 10 of 2024) under Sections 47, 57, and 97 was also filed to cancel the defendant's registration.
• The petition was transferred to the Madras High Court on 16 April 2024 for joint adjudication.
• The court framed nine issues on 8 January 2024 regarding jurisdiction, proprietorship, similarity of marks, delay, and other key questions.
• Evidence was recorded jointly; plaintiff examined Mr. M. Ravi (PW1) and submitted 31 documents (Ex.P1 to P31).
• Defendant P. Prakash testified as DW1 and submitted 34 documents (Ex.D1 to D34).
• Cross-examination and oral arguments were conducted by Senior Advocates Mr. Satish Parasaran and Ms. Chitra Sampath.
• The court reserved judgment on 21 April 2025 and pronounced it on 30 April 2025.

Issues Involved in the Case:

• Whether "FLY BIRDS" was phonetically, visually, and structurally similar to "TWIN BIRDS".
• Whether the suit was barred by delay, laches, or acquiescence.
• Whether the term "birds" was common in the garment trade, denying exclusivity.

Detailed Submission of Parties:

• Plaintiff emphasized registration and continuous use of "TWIN BIRDS" since 1969, supported by legal use certificates (Ex.P1 to P14) and invoices (Ex.P18).
• Plaintiff cited significant turnover (Rs. 103+ crore in 2021-22) and long-term advertising efforts (Ex.P17, Ex.P19).
• Plaintiff claimed "FLY BIRDS" mimicked key elements of its mark and argued dishonesty in adoption.
• Challenged defendant's invoice (Ex.D19) as fabricated due to inconsistencies.
• Defendant asserted "FLY BIRDS" was distinct, with a different market and customer base.
• Argued term "birds" was common, with over 50 registered trademarks (Ex.D18).
• Challenged the validity of plaintiff's license agreement and evidence from Network Clothing (Ex.P16).
• Claimed delay amounted to acquiescence under Section 33 of the Trade Marks Act.

Detailed Discussion on Judgments Cited by Parties:

• For Plaintiff:
• Corn Products v. Shangrila Food – registration doesn't prove use.
• Amritdhara Pharmacy v. Satya Deo Gupta & Cadila Healthcare v. Cadila Pharmaceuticals – anti-dissection rule; marks must be seen as a whole.
• National Sewing Thread v. James Chadwick – minor word changes don't remove deceptive similarity.
• Parle Products v. J.P. & Co. – emphasis on overall similarity.
• Heinz Italia v. Dabur & R. Gopalakrishnan v. Venkateshwara Camphor – support for injunction in dishonest adoption.
• Neuberg Hitech v. Dr. Ganesan's – "birds" is arbitrary for clothing, hence protectable.
• PM Palani Mudaliar v. Jansons & National Bell v. Gupta Industrial – common trade usage must be proven with substantial use.
• Fatima Tile Works v. Sudarsan Trading – related entity's use is valid evidence.
• For Defendant:
• Honda Motor v. Kewal Brothers – plaintiff must show goodwill before 2016.
• Brihan Karan Sugar v. Yashwantrao Mohite – passing off needs proof of advertising expenditure.
• Pfizer Products v. Renovision Exports – passing off requires proving reputation, misrepresentation, and damage.
• Also relied on generic use of pink in women's apparel and dictionary references.

Detailed Reasoning and Analysis of Judge:

• Territorial jurisdiction was affirmed based on sales in Chennai (Ex.P26).
• Plaintiff was held to be the registered proprietor of "TWIN BIRDS" (Ex.P1 to P14).
• Prior use was proven through invoices from 2007 (Ex.P18) for the word mark and from 2011 for the device mark (Ex.P5).
• Defendant's earliest evidence of use was from 2017 (Ex.D...)

Case Title: P.V.S. Knittings Vs. P. Prakash: Date of Order: 30 April 2025: Case No.: C.S. (Comm. Div.) No. 182 of 2023: Neutral Citation: 2025:MHC:1141: Name of Court: High Court of Madras:Name of Hon'ble Judge: Senthilkumar Ramamoorthy J.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539