By Priya Adlakha and Tanvi Bhatnagar
Introduction
Recently, Hon’ble Mr. Justice Amit Bansal, IP Division, Delhi High Court vide his judgement dated February 20, 2023, provided protection to TTK Prestige’s registered trademark ‘PRESTIGE’ in a trademark infringement and passing off suit filed against an entity named K.K. and Company for using the device mark 
for selling gas stoves.
Brief facts of the case:
The Plaintiff claimed to be in the business of manufacturing a range of kitchen home appliances including pressure cooker, gas stoves, non-stick cookware, induction etc., under the mark ‘PRESTIGE’ since 1955, having earliest registration of the word mark in classes 8 and 21 since 1949. Plaintiff obtained registration of the word mark ‘PRESTIGE’ in respect of ‘installation for cooking’ in class 11 on June 16, 1981, on a ‘proposed to be used basis’. Thereafter, on September 23, 1999, the Plaintiff also obtained registration of the word mark ‘PRESTIGE’ in class 11 specifically for ‘gas stoves’ on a ‘proposed to be used basis’. All of the Plaintiff’s registrations are valid and subsisting.
The Plaintiff claimed goodwill and reputation in its mark ‘PRESTIGE’ due to extensive promotional activities, sales/revenue figures and advertisement expenses made by it.
K.K. and Company, Defendant No. 1 applied for the device mark 
/’PRESTIGE’ vide application no. 3991087 dated November 02, 2018 in class 11 for ‘gas stoves’, claiming use since January 01, 1981. Plaintiff’s prior registered trade mark no. 877974 was cited as a conflicting mark in Defendant No. 1’s aforementioned trade mark application by the Trade Marks Registry.
Plaintiff on being aware of the said trade mark application, filed an opposition against the same and through investigation, it learnt that the Defendant No. 1 was indeed selling gas stoves under the impugned mark 
in bulk and on order basis.
Defense set up by the Defendant No.1:
The only defense set up by the Defendant No. 1 qua infringement action, was to be the prior user of the impugned mark 
since January 01, 1981 (based on its trade mark application no. 3991087), which pre-dates the Plaintiff’s registration of the mark ‘PRESTIGE’ with respect to ‘gas stoves’ obtained on June 16, 1981, on a ‘proposed to be used basis’. Hence, Defendant No.1 claimed prior knowledge of its use by the Plaintiff.
The Defendant No. 1 filed the following documents, in support of its defence i.e. prior use:
• The certificate of registration granted in favor of the Defendant No.1 as a small scale industries unit on December 21, 1982, which was applied on August 16, 1980.
• The Bureau of Indian Standards (BIS) license granted in favor of the Defendant No.1 on April 22, 1982 in respect of the brand name ‘PRESTIGE’.
• The classification list of the excisable goods dated May 08, 1985, granted in favor of the Defendant No.1, where the mark ‘PRESTIGE’ has been mentioned.
The defence of the Defendant No. 1 qua passing off action was that ‘pressure cookers’ are different from ‘gas stoves’, hence, there would be no customer confusion in the market.
Plaintiff’s Submissions:
Plaintiff dismantled the prior user plea of the Defendant No.1 on the ground that Defendant No. 1’s earliest invoices is dated March 29, 1982, which is subsequent to Plaintiff’s registration for the word mark ‘PRESTIGE’ dated June 16, 1981, in class 11 for ‘installation for cooking’.
Further, the defense under Section 34 of the Trade Marks Act, 1999, is also not available to the Defendant No. 1, as for the purpose of this Section, the user has to be ‘continuous’, whereas the Defendant No. 1 has filed on and relied upon only 3 invoices of the year 1982. Therefore, the Defendant No. 1 failed to establish its continuous use under the impugned mark. Reliance was placed on Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises.[2]
Plaintiff has been able to show its user of the mark ‘PRESTIGE’ in respect of gas stoves at least since 2007, apart from newspaper advertisements.
Plaintiff relying upon its reputation and goodwill under the mark ‘PRESTIGE’ in respect of pressure cookers, alleged passing off action against the Defendants. Plaintiff argued both the products ‘pressure cookers’ and ‘gas stoves’ are kitchen appliances and therefore, there will be confusion among the consumer using both the appliances. Reliance was placed on United Brothers vs. Navin Kumar .[3]
Finding of the Court:
The Hon’ble Court observed that there has been no challenge to the validity of the said marks by Defendant No.1 in its written statement.
During the hearing, while answering to a query raised by the Hon’ble Court as to why only three invoices of 1982 have been placed on record, whereas the Defendant No. 1 has a user claim since 1981 and if the Defendant No. 1 has made any sale under the impugned mark in last 10 years, a request was made on behalf of the Defendant No. 1’s seeking further time to present documents, which was rejected by the Hon’ble Court in view of Order XI Rule 1(10) CPC, as applicable to Commercial Suits. The Hon’ble Court further held that though additional documents can be filed with the leave of the Court, if a sufficient reason is given for not placing the documents earlier, however, no such application for seeking leave was ever filed by the Defendants. Therefore, in absence of any document to support the plea of prior user, the Court presumed that there is no ‘continuous user’.
The Hon’ble Court held that other than the three invoices of the year 1982 and a few statutory license, the Defendant No. 1 has failed to show any credible evidence of ‘continuous user’ of the impugned mark in its favour to establish reputation, which is required to be proved as held by the Division Bench of this Hon’ble Court in Pioneer Nuts (supra). The Hon’ble Court further held that mere filing of a trade mark application, giving an arbitrary date of user, would not itself constitute evidence of use of the mark.
Answering the Defendant No.1’s objection that the Plaintiff has not filed any document to show its user, the Hon’ble Court held that as per the provision of Section 34 of the Trade Marks Act, the Defendant No.1 use has to be prior to (a) the Plaintiff’s use (b) date of Plaintiff’s registration, whichever is earlier. Applying the said rule on the facts of the case, the Hon’ble Court held that Plaintiff’s registration for the mark ‘PRESTIGE’ for ‘installations for cooking’ which includes ‘gas stove’ from June 16, 1981, is prior in time to the Defendant’s use since 1982.
The Hon’ble Court prima-facie upheld the goodwill and reputation earned by the Plaintiff in its trade mark ‘PRESTIGE’ in respect of ‘pressure cookers’. While placing reliance on United Brothers (Supra), the Hon’ble Court held that and since both the products are kitchen appliances, confusion is likely to be caused in the market, as the public at large would associate the said products of the Defendant No. 1 with the Plaintiff.
Conclusion:
Therefore, the Plaintiff’s injunction application was allowed, and the Defendants were restrained from using the impugned mark ‘
’ or any other mark which is similar to Plaintiff’s mark PRESTIGE, in relation to any allied/cognate and related goods.
It is mentioned that other Defendants were ready to suffer a permanent injunction and the Hon’ble Court has passed a decree against them.
Author’s comments:
While Plaintiff has been able to prove its registration, use as well as goodwill and reputation to the satisfaction of the Court, it is interesting to note that Defendant No. 1 herein, way back in 2014 had also applied for registration of the impugned mark 
vide application no. 2753468 claiming use since January 01, 1990, in class 11 for ‘gas stoves’. Later on, a request was made to modify the use to January 01, 1981 and Defendant furnished its sales figures under the mark ‘PRESTIGE’ from 1990 to 2016 in the affidavit of use filed in support of the said application. The current status of the said application is ‘refused’.
More interestingly, in the said affidavit, the Defendant No. 1 also relied upon and provided the details of its previous application no. 378106 dated July 07, 1981, for the mark 
/PRESTIGE HOT PLATE filed in class 11 claiming use since January 01, 1981. Though, the records of the said application of 1981 are not available on the website of IP India, a screenshot of the Defendant’s Additional Representation is pasted herein below:
Further, the Defendant No. 1 could have set up the defenses of honest concurrent user, acquiescence, delay and laches against the Plaintiff, which are principals in equity and could defeat interim injunction.
[1] CS (Comm) 864/2022 Citation 2023 SCC OnLine Del 1125
[2] 2009 SCC OnLine Del 2851
[3] 2006 SCC OnLine Del 195
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