In a trademark suit filed by TTK Prestige Ltd, the Delhi High Court barred K. K. AND Company Delhi Private Limited from using the mark ‘PRESTIGE’ in relation to gas stoves or any kitchenware or cookware.
TTK Prestige Limited(TTK Prestige) is an Indian company that manufactures kitchen appliances and cookware, under the “Prestige” and “Judge” brands. The company is best known for its pressure cookers. The company is recognized for its inventive marketing techniques, such as distributing pamphlets from helicopters in the 1950s and initiating exchange programs.
In August 2022, TTK Prestige came across the trademark application dated November 02, 2018 filed in the name of K.K. and Company (Defendant) for the registration of the mark PRESTIGE as a device mark for gas stoves. The Plaintiff opposed the registration of the aforesaid mark and carried out an investigation in which it was revealed that K.K. and Company had been selling “gas stoves‟ under the impugned trademark in bulk and on an order basis only. Therefore, TTK Prestige filed a trademark suit against K.K. and Company Delhi, seeking a permanent injunction, passing off, and other ancillary reliefs, alleging the use of the Prestige mark for selling gas stoves under the impugned mark “PRESTIGE.”
TTK Prestige Limited (the plaintiff) submitted that the trademark “PRESTIGE” (as a word) was first registered in the name of TTK Prestige Limited on December 14, 1949. On June 16, 1981, TTK Prestige registered the trademark “PRESTIGE” (the word itself) in respect of “cooking installations” on a “proposed to be used” basis. Following that, on September 23, 1999, the plaintiff’s trademark “PRESTIGE” (the word itself) was registered in respect of “gas stoves” on a “proposed to be used” basis. In the application seeking an interim injunction, Prestige pleaded that a case of passing off is made out against the Defendant in view of the goodwill and reputation attained by the usage of the trademark in respect of pressure cookers.
K.K. and Company argued that the trademark application they filed in 2018 was based on a user claim, and that they had been using the impugned trademark since January 1, 1981, and thus were the prior user in respect of gas stoves. In court, K.K. AND Company also argued that pressure cookers and gas stoves are distinct products. TTK Prestige sells pressure cookers under the “prestige” brand, so they could sell gas stoves under the same brand as well.
Justice Amit Bansal dismissed the contention that pressure cookers and gas stoves are different products and therefore there would be no confusion in the market. The court observed that the two goods are used as kitchen appliances, and the use of the trademark “PRESTIGE” by the defendant in respect of gas stoves is likely to cause confusion in the market as the public would associate the product with Prestige’s pressure cooker.
K.K. and Company argued that it has been continuously using the trademark since January 1981 and thus is a prior user of the trademark in respect of gas stoves. However, the court noted that the Defendant, in support of its contention, has placed only three invoices on record, that too of the year 1982 and a few statutory registrations in its favor, no credible evidence in the form of invoices or advertisements or other material has been filed to show that the defendant has been continuously using the trademark. The Defendant was not able establish the continuous use of the mark so as to constitute any goodwill or reputation built in his favor due to longstanding use of the mark. In view thereof the court said –
“Accordingly, I am of the view that the defendant no.1 has at best shown sporadic use of the impugned trademark, which would not qualify it as a “continuous user” in term of Section 34 of the Act”
For the submission made by the Prestige TTK in support of its continuous use and sales turn over to establish its goodwill associated with the mark PRESTIGE the court said –
“On the basis of the sales turnover as well as the promotional expenses placed on record by the plaintiff, the plaintiff has also established, at a prima facie stage, immense goodwill and reputation of its trademark “PRESTIGE”, albeit in respect of ‘pressure cookers’.”
While granting injunction in favor of the plaintiff, the Court observed that the goods of the plaintiff as well as the defendants are both used as kitchen appliances and therefore, there would be confusion for the consumer using both the products. Further, in view of the sales turnover as well as advertising expenses filed by the plaintiff, the plaintiff was able to establish that its trademark had acquired distinctiveness and goodwill in the market. Accordingly, it was observed that confusion is likely to be caused in the mind of public and hence, the interim injunction granted in favor of the plaintiff was confirmed.
Accordingly, the Defendants are injuncted from manufacturing, selling, offering for sale, exporting, advertising in any manner including on the internet and websites, directly or indirectly dealing in gas stoves or in any kitchenware, cookware and/or cognate/allied/related goods under the mark or any other mark which is identical or deceptively similar to the plaintiff’s “PRESTIGE” trademarks
Written by Nishi Shabana, Partner, Aretha Legal