2009 (9) TMI 1031 - HC - Indian Laws

Summary

Issues Involved:
1. Interim injunction for passing off.
2. Distinctiveness of the letter mark "PP".
3. Use of the mark "PP" by defendants in corporate names.
4. Likelihood of confusion or deception among consumers.
5. Protection of registered trademarks.
6. Acquiescence and bona fide adoption of marks.
7. Comparison of rival marks and likelihood of damage to goodwill.

Issue-wise Detailed Analysis:

1. Interim Injunction for Passing Off:
The plaintiffs sought interim injunctions to restrain the defendants from using the mark "PP" in their business activities, alleging that it would lead to passing off. The court examined whether the plaintiffs had established a prima facie case for passing off, considering the distinctiveness and reputation of the plaintiffs' marks.

2. Distinctiveness of the Letter Mark "PP":
The plaintiffs claimed that the letter mark "PP" was distinctive and associated with their business. The court noted that while a single letter or group of letters could function as a mark, the plaintiffs needed to demonstrate that "PP" was distinctive in their case. The court found that the plaintiffs had not shown that "PP" per se was distinctive or used independently in their business.

3. Use of the Mark "PP" by Defendants in Corporate Names:
The defendants argued that their use of "PP" as part of their corporate names (PP Buildwell and PP Prime Properties) was bona fide and came from the initials of their promoters. The court noted that the plaintiffs used "PP" in combination with other words (e.g., "PP Jewellers," "PP Towers") and not as a standalone mark. The court found that the defendants' use of "PP" in their corporate names did not constitute passing off.

4. Likelihood of Confusion or Deception Among Consumers:
The court considered whether the defendants' use of "PP" was likely to cause confusion or deception among consumers. It noted that the plaintiffs' marks were used in combination with other descriptive words or letters, and the defendants' marks included additional elements that distinguished them. The court concluded that there was no likelihood of confusion or deception.

5. Protection of Registered Trademarks:
The plaintiffs held registrations for the marks "PP Jewellers" and "PPJ" in Class 14, but their application for "PP" in Class 37 was pending. The defendants had registrations for "PP Mall" and "PP Shopping Mall" in Class 37. The court noted that the plaintiffs had not shown that "PP" was used independently in their business, and the defendants' registrations were entitled to protection.

6. Acquiescence and Bona Fide Adoption of Marks:
The defendants argued that the plaintiffs had known of their use of "PP" and had acquiesced. The court noted that the defendants' adoption of "PP" was bona fide, based on the initials of their promoters. The court found no evidence of dishonest adoption or intent to deceive.

7. Comparison of Rival Marks and Likelihood of Damage to Goodwill:
The court compared the plaintiffs' and defendants' marks, considering the added elements in the defendants' marks. It found that the additional elements in the defendants' marks (e.g., "Buildwell," "Mall," "Prime Properties") were sufficient to distinguish them from the plaintiffs' marks. The court concluded that there was no likelihood of damage to the plaintiffs' goodwill.

Conclusion:
The court dismissed the plaintiffs' applications for interim injunctions, finding that they had not established a prima facie case for passing off. The court noted that the defendants' use of "PP" in their corporate names and marks did not constitute passing off, and there was no likelihood of confusion or deception among consumers. The court also directed the defendants to maintain business accounts and file half-yearly statements during the pendency of the suits. The order was based on a prima facie view and was not intended to influence the final decision at trial.