The case of Keshav Kumar Aggarwal v. M/S NIIT Ltd. [CS (OS) No. 2237/2012], decided by the Delhi High Court on March 22, 2013, before Justice Kailash Gambhir, is a significant ruling in Indian trademark law, addressing issues of trademark infringement and passing off. The plaintiff, Keshav Kumar Aggarwal, sought an interim injunction to restrain the defendant, NIIT Ltd., from using the mark "NIIT THE TURNING POINT," alleging it infringed his registered trademark "TURNING POINT" and constituted passing off.

The case highlights the protection afforded to registered trademarks with secondary meaning, the importance of prior use, and the principles governing interim injunctions in trademark disputes. The court's decision to grant the injunction underscores the judiciary's role in safeguarding distinctive marks against deceptive similarity, even when used by larger entities. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into trademark protection in the educational services sector.

Detailed Factual Background:
The plaintiff, Keshav Kumar Aggarwal, operated an educational institution under the trademark "TURNING POINT" since 1998, providing coaching and training for students in classes VIII to XII and preparing them for competitive entrance exams like BBA, BBS, LAW, IIT, AIEEE, MEDICAL, CFAS, HM, and CPT. The mark was registered under Class 41 (educational services) on November 15, 2005, valid until 2015, as a label mark "TP TURNING POINT."

The plaintiff claimed to have coined the mark in 1998, building significant goodwill through high-quality education, with multiple centers in Delhi operated in association with his wife's sole proprietorship, "Pyramid Classes." The institution was associated with reputed schools like Don Bosco, Apeejay, and Ryan International, and had a strong online presence via its website (www.theturningpoint.com), Facebook, and YouTube lectures.

The plaintiff provided sales figures from 1999-2012, showing growth from Rs. 29,00,000 to Rs. 61,06,693, and substantial advertising expenses, claiming the mark had become well-known under Section 2(1)(zg) of the Trade Marks Act, 1999.

In June 2012, the plaintiff discovered that the defendant, NIIT Ltd., a prominent IT education and training company, had launched a computer training program under the name "NIIT THE TURNING POINT." The plaintiff alleged this infringed his registered trademark and constituted passing off by leveraging his goodwill, causing confusion among students. The plaintiff issued a cease-and-desist notice on June 1, 2012, which NIIT denied on June 15, 2012, rejecting claims of infringement or passing off.

The plaintiff argued that NIIT's use of "TURNING POINT" was dishonest, especially since both parties had previously collaborated in 2002 and provided services at Mody School, Rajasthan, suggesting NIIT's prior knowledge of the plaintiff's mark. The plaintiff further noted NIIT's opposition to a third party in Chennai using "TURNING POINT," contradicting its claim that the mark was descriptive.

The defendant, NIIT Ltd., incorporated in 1981 as Pace Education Pvt. Ltd. and renamed NIIT Ltd. in 1990, was a global leader in IT education and software services, operating under the well-known mark "NIIT." NIIT claimed "NIIT THE TURNING POINT" was adopted in May 2012 for a cloud-centric curriculum, arguing the phrase was descriptive and not exclusive to the plaintiff. NIIT's application to register "NIIT THE TURNING POINT" was pending, and it asserted its mark was distinct due to the prefix "NIIT."


Detailed Procedural Background:
The plaintiff filed the suit (CS (OS) No. 2237/2012) in the Delhi High Court in 2012, seeking a permanent injunction, damages, and other reliefs for trademark infringement and passing off, along with an interim injunction application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). The plaintiff was represented by Mr. H.P. Singh and Mr. Navroop Singh, while NIIT was represented by counsel whose identity is not specified in the judgment. The court heard arguments on the interim injunction, focusing on the plaintiff's registered trademark, NIIT's use of "NIIT THE TURNING POINT," and the likelihood of confusion.

The plaintiff filed documents including the trademark registration certificate, sales and advertising invoices, and school acknowledgments, while NIIT submitted a computer-generated search report and its written statement. On March 22, 2013, Justice Kailash Gambhir delivered the judgment, granting the interim injunction after reserving orders on an unspecified date. The court clarified that its observations were limited to the interim stage, with the suit's merits to be decided later.

Issues Involved in the Case:
The case raised the following issues for determination:
Whether the plaintiff's registered trademark "TURNING POINT" (as part of the label "TP TURNING POINT") was entitled to protection against NIIT's use of "NIIT THE TURNING POINT" for similar educational services?

Whether NIIT's use of "NIIT THE TURNING POINT" constituted trademark infringement under Section 29 of the Trade Marks Act, 1999, due to deceptive similarity with the plaintiff's mark? Whether NIIT's use amounted to passing off by causing confusion or misrepresenting a connection with the plaintiff's institution?

Plaintiff's submission:
The plaintiff argued that "TURNING POINT" was a unique, coined mark adopted in 1998, registered in 2005 under Class 41, and had acquired distinctiveness through continuous use, substantial sales, and advertising. The plaintiff claimed "TURNING POINT" was a well-known mark under Section 2(1)(zg), associated exclusively with his institution, as evidenced by school affiliations, student success, and online presence.

He alleged NIIT's use of "NIIT THE TURNING POINT" infringed his registered mark under Section 29, as it was identical and used for identical services, causing confusion. The plaintiff further argued passing off, claiming NIIT's use diluted his goodwill and misrepresented a connection, especially given their prior collaboration in 2002 and shared operations at Mody School.

The plaintiff highlighted NIIT's opposition to a Chennai party's use of "TURNING POINT," exposing its mala fides in claiming the mark was descriptive. Citing precedents like Indian Shaving Products Ltd. v. Gift Pack [1998 PTC (18) 698], Ansul Industries v. Shiva Tobacco Co. [2007 (34) PTC 392 (Del.)], and Godfrey Philips India v. Girnar Foods [(2005) 30 PTC 1 (SC)], the plaintiff urged that long usage conferred secondary meaning, and deceptive similarity warranted an injunction to prevent irreparable loss.

Defendant's submission: NIIT's counsel argued that the plaintiff's registration was for the label "TP TURNING POINT," not "TURNING POINT" alone, and under Section 17 of the Trade Marks Act, 1999, no exclusivity applied to the words. NIIT contended that "NIIT THE TURNING POINT" was distinct due to the prefix "NIIT," a well-known mark since 1981, and that "TURNING POINT" was a descriptive, common phrase incapable of monopoly, especially in education.

NIIT claimed honest adoption in May 2012 for a cloud-centric course, denying prior knowledge of the plaintiff's mark or any collaboration at Mody School. It argued no confusion was likely, as its mark emphasized "NIIT," and submitted a search report showing multiple users of "TURNING POINT." NIIT reserved the right to seek rectification of the plaintiff's registration if needed and cited Skyline Education Institute v. SL Vaswani [2010 (42) PTC 217 (SC)], Marico Ltd. v. Agro Tech Foods Ltd. [MIPR 2010 (3) 0226], and Three-N Products Pvt. Ltd. v. Emami Ltd. [MIPR 2008 (3) 0319] to argue that descriptive marks lack protection absent distinctiveness, and its mark was distinguishable.
Detailed Discussion on Judgments and Citations: The court analyzed several precedents cited by both parties to determine the protectability of the plaintiff's mark and the likelihood of infringement or passing off. Below is a detailed discussion of each judgment, its citation, and its context:

• Indian Shaving Products Ltd. v. Gift Pack, 1998 PTC (18) 698: Cited by the plaintiff, this Delhi High Court decision supported granting injunctions for trademark infringement where the defendant's mark was deceptively similar, causing confusion. The plaintiff used it to argue that NIIT's mark was identical and likely to deceive students, warranting protection.
• Ansul Industries v. Shiva Tobacco Co., 2007 (34) PTC 392 (Del.): Cited by the plaintiff, this Delhi High Court ruling emphasized that trademark similarity is judged by the impression on an unwary consumer, not a vigilant one, focusing on overall similarity. The court applied this to hold that "NIIT THE TURNING POINT" could confuse students due to its similarity to "TURNING POINT."
• Amritdhara Pharmacy v. Satyadeo Gupta, PTC (Suppl) (2) 1 (SC): Cited by the plaintiff, this Supreme Court decision clarified that a mark's distinctiveness is assessed by its overall impression, not minor differences. The plaintiff argued that "TURNING POINT" was distinctive, and NIIT's mark was deceptively similar despite the prefix.
• Greaves Cotton Ltd. v. Mohammad Rafi & Ors., 2011 (46) PTC 466 (Del.): Cited by the plaintiff, this Delhi High Court case restrained the use of "GREAVES INDIA" due to its similarity to "GREAVES," protecting consumer interests. The court relied on it to find that NIIT's use could mislead students into believing both marks shared a common origin.
• United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 (50) PTC 433 (Del.) (DB): Cited by the plaintiff, this Delhi High Court Division Bench decision held that a label mark's essential feature (e.g., "ORZID") is protected under Section 17, rejecting claims of non-exclusivity for parts. The court used this to affirm that "TURNING POINT" was protectable as an essential feature of the plaintiff's label.
• ACL Education Centre Pvt. Ltd. v. American Centre for Languages, 2008 (36) PTC 113 (Del.): Cited by the plaintiff, this Delhi High Court ruling granted an injunction for the mark "American Centre for Languages," finding it distinctive due to long use. The court applied this to hold that "TURNING POINT" had acquired secondary meaning through 14 years of use.
• Godfrey Philips India v. Girnar Foods, (2005) 30 PTC 1 (SC): Cited by the plaintiff, this Supreme Court decision (reported as Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd., (2004) 5 SCC 257) held that descriptive marks gain protection if they acquire secondary meaning. The court relied on this to find "TURNING POINT" distinctive.
• S.P. Chengalvaraya v. Jagannath, AIR 1994 SC 853: Cited by the plaintiff, this Supreme Court judgment denied relief to dishonest litigants. The plaintiff used it to question NIIT's bona fides, given its Chennai opposition. The court did not directly apply it but noted NIIT's contradictory stance.
• Automatic Electric v. R.K. Dhawan, 1999 PTC (19) 81: Cited by the plaintiff, this Delhi High Court decision supported protecting marks with established goodwill. The plaintiff argued it reinforced his claim to exclusive rights over "TURNING POINT."
• Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960] 1 SCR 968: Cited by the plaintiff, this Supreme Court decision (reported as Corn Products v. Shangrila Foods, AIR 1960 SC 142) held that the defendant must substantiate claims of third-party use. The court applied this to reject NIIT's search report as insufficient evidence of other users.
• Skyline Education Institute v. SL Vaswani, 2010 (42) PTC 217 (SC): Cited by the defendant, this Supreme Court ruling denied protection to descriptive marks without distinctiveness. NIIT argued "TURNING POINT" was descriptive, but the court distinguished it, finding the plaintiff's mark had secondary meaning.
• Marico Ltd. v. Agro Tech Foods Ltd., MIPR 2010 (3) 0226: Cited by the defendant, this Delhi High Court decision held that descriptive marks require strong evidence of distinctiveness. The court found it inapplicable, as "TURNING POINT" was coined, not descriptive of the plaintiff's services.
• Three-N Products Pvt. Ltd. v. Emami Ltd., MIPR 2008 (3) 0319: Cited by the defendant, this Delhi High Court ruling emphasized comparing marks as a whole. NIIT argued its mark was distinct due to "NIIT," but the court held that "TURNING POINT" was the dominant feature, causing confusion.
• Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court (reported as 2001 IXAD SC 472 in some databases), this Supreme Court decision restrained the use of "Mahendra" due to its distinctiveness. The court used it to affirm that "TURNING POINT" was associated with the plaintiff.
• Standard Electricals Ltd. v. Rocket Electricals, 2004 (72) DRJ 794: Cited by the court, this Delhi High Court ruling held that common words can acquire distinctiveness through long use. The court applied this to find "TURNING POINT" protectable.
• Ramdev Food Products Ltd. v. Arvindbhai Rambhai, 2006 (33) PTC 281 (SC): Cited by the court via United Biotech, this Supreme Court decision clarified that a label mark's essential feature is protected. The court used it to reject NIIT's Section 17 argument.
• Pionotist Case, (1906) 23 RPC 774: Cited by the court, this UK decision outlined the test for deceptive similarity, comparing marks by look, sound, and consumer perception. The court applied it to find NIIT's mark confusingly similar.
• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 SCR (1) 737: Cited by the court, this Supreme Court ruling held that close similarity in marks establishes infringement without further evidence. The court used it to support the plaintiff's claim.
• Clock Ltd. v. Clock House Hotel Ltd., (1936) 53 RPC 269 (CA): Cited by the court via Wadlow's Law of Passing-Off, this UK case defined passing off as misrepresenting a connection with the claimant's business. The court applied it to find NIIT's use misleading.

Detailed Reasoning and Analysis of Judge:

• The Court focused on the interim injunction's triple test:
  • Prima facie case
  • Balance of convenience
  • Irreparable injury
• The Court found that the plaintiff adopted "TURNING POINT" in 1998, registered it in 2005, and used it continuously. Evidence included:
  • Sales figures
  • Advertising
  • School affiliations
  This established prior use and goodwill.
• The mark's long usage (14 years) conferred secondary meaning, making it well-known under Section 2(1)(zg), supported by:
  • Godfrey Philips
  • Mahendra & Mahendra
  • ACL Education
  • Standard Electricals
• The court rejected NIIT's claim that "TURNING POINT" was descriptive, finding it coined and distinctive, unlike:
  • Marico
  • Three-N Products
    

• On Infringement:
  • The court applied Sections 28 and 29 of the Trade Marks Act, 1999.
  • It noted:
    • Plaintiff's valid registration
    • NIIT's use of an identical mark for identical services (education under Class 41)
  • NIIT's Section 17 argument was dismissed. The court relied on:
    • United Biotech
    • Ramdev Food
    to hold "TURNING POINT" was an essential and protectable part of the plaintiff's label.
  • The Pionotist and Kaviraj Pandit tests confirmed deceptive similarity. "NIIT THE TURNING POINT" incorporated the plaintiff's mark and was likely to confuse students, as in:
    • Ansul Industries
    • Greaves Cotton
  • NIIT's adoption lacked bona fides, especially due to:
    • Operations at Mody School
    • Opposition to a Chennai party
    Contradicting its descriptive claim, as noted in S.P. Chengalvaraya.
    
• On Passing Off:
  • The court applied Clock Ltd. principles.
  • NIIT's use misrepresented a connection with the plaintiff, risking damage to goodwill.
  • NIIT's search report was found unsubstantiated, as per Corn Products.
  • The court held:
    • Prima facie case was strong
    • Balance of convenience favored plaintiff due to prior use
    • Irreparable injury from continued confusion
  • NIIT's larger size did not justify riding on plaintiff's goodwill.
  • The prefix "NIIT" did not sufficiently distinguish the mark.
    
• Final Decision:
  • On March 22, 2013, the Delhi High Court granted the plaintiff's interim injunction application in CS (OS) No. 2237/2012.
  • NIIT Ltd., its directors, employees, and agents were restrained from:
    • Using
    • Marketing
    • Selling services under the mark "TURNING POINT" or any deceptively similar mark in Class 41
    until the final disposal of the suit.
  • The court clarified that the observations were preliminary and not affecting the suit's merits.
    
• Law Settled in the Case:
  • Protection of Label Marks: Under Section 17, the essential feature of a label mark is protectable even if registration is for the whole label.
  • Secondary Meaning for Descriptive Marks: Common words can acquire distinctiveness through long use, gaining well-known status under Section 2(1)(zg).
  • Deceptive Similarity Test: Marks are compared as a whole (visual, phonetic, structural), considering perception of an unwary consumer, as per Pionotist and Kaviraj Pandit.
  • Passing Off: Misrepresentation through similar marks can damage plaintiff's goodwill, constituting actionable passing off, as per Clock Ltd..
  • Bona Fides and Prior Knowledge: A defendant with prior knowledge of the mark and contradictory actions (e.g., opposing third-party use) cannot claim honest adoption.
  • Interim Injunction Criteria: Plaintiff must show prima facie case, balance of convenience, and irreparable injury. Prior use and goodwill are crucial factors.

Keshav Kumar Aggarwal Vs NIIT Ltd.: Date of Order: March 22, 2013: : CS (OS) No. 2237/2012: High Court of Delhi:Hon'ble Judge Shri Kailash Gambhir, 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