Introduction: 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 engaged in manufacturing and marketing hosiery, ready-made garments, undergarments, and knitted apparel since its inception. The firm adopted the trademark "TWIN BIRDS" in 1969, claiming continuous use thereafter. The plaintiff secured multiple trademark registrations for "TWIN BIRDS" and its variants, including both word and device marks, under Class 25 (apparel) and other classes. These registrations, evidenced by legal use certificates, included a distinctive device mark featuring the words "TWIN BIRDS," a pictorial depiction of two birds, and a pink-and-white color scheme. The plaintiff also licensed the use of its trademarks to Network Clothing Company Private Limited, a registered user, which further expanded the mark’s market presence.
The defendant, P. Prakash, operating as M/s. S P S TEX, also based in Tirupur, adopted the trademark "FLY BIRDS" for apparel in Class 25. The defendant applied for registration of "FLY BIRDS" on 18 April 2016, claiming use since 1 April 2016, and obtained registration (No. 3237870) on 30 May 2019, following advertisement in the Trade Marks Journal on 14 January 2019. The "FLY BIRDS" mark similarly featured a device with two birds and a pink-and-white color scheme, which the plaintiff alleged was deceptively similar to its "TWIN BIRDS" mark. The plaintiff claimed that the defendant’s adoption was dishonest, intended to capitalize on the plaintiff’s goodwill and reputation, and likely to cause consumer confusion.
The plaintiff became aware of the defendant’s use in April 2022, prompting the filing of a rectification petition on 23 April 2022 and a legal notice on 29 April 2022. The defendant’s reply on 11 May 2022 disputed the plaintiff’s claims, asserting that "FLY BIRDS" was distinct and that the term "birds" was common in the garment trade. The plaintiff subsequently filed a civil suit in April 2023, alleging trademark infringement, passing off, and copyright infringement, and sought to cancel the defendant’s trademark registration through a rectification petition.
Detailed Procedural Background: The plaintiff initiated a civil suit (C.S. (Comm. Div.) No. 182 of 2023) under the Trade Marks Act, 1999, and the Copyright Act, 1957, seeking permanent injunctions to restrain the defendant from infringing the "TWIN BIRDS" trademark, passing off its products, and violating the plaintiff’s copyright in the artistic work of the "TWIN BIRDS" label. Concurrently, the plaintiff filed a rectification petition ((T) OP(TM) No. 10 of 2024) under Sections 47, 57, and 97 of the Trade Marks Act to cancel the defendant’s trademark registration (No. 3237870). The rectification petition was transferred to the Madras High Court on 16 April 2024 for joint adjudication with the suit.
The court framed nine issues on 8 January 2024, covering territorial jurisdiction, the plaintiff’s proprietorship of "TWIN BIRDS," the similarity of the marks, delay and acquiescence, the commonality of the term "birds," prior use, mala fide adoption of the color scheme, passing off, and appropriate reliefs. Evidence was recorded jointly for both matters, with the plaintiff examining Mr. M. Ravi, a partner, as PW1, who exhibited 31 documents (Ex.P1 to P31). The defendant, P. Prakash, testified as DW1, exhibiting 34 documents (Ex.D1 to D34). Both parties underwent cross-examination, and oral arguments were advanced by Senior Advocate Mr. Satish Parasaran for the plaintiff and Senior Advocate Ms. Chitra Sampath for the defendant. Written arguments were also submitted. The court reserved its order on 21 April 2025 and pronounced the judgment on 30 April 2025.
Issues Involved in the Case: The case presented several critical issues for adjudication. Whether the defendant’s "FLY BIRDS" mark 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 to the ready-made garments trade, precluding exclusive rights?
Detailed Submission of Parties: The plaintiff argued that PVS Knittings was the registered proprietor of multiple "TWIN BIRDS" trademarks, as evidenced by legal use certificates (Ex.P1 to P14). They asserted prior use since 1969, supported by invoices from 2007 (Ex.P18) showing use of the word mark "TWIN BIRDS" and from 2011 for the device mark. The plaintiff highlighted significant turnover (Rs.103,40,75,234 in 2021-22, per Ex.P17) and advertising efforts from 1995 to 2022 (Ex.P19), establishing substantial goodwill. They contended that "FLY BIRDS" was deceptively similar due to the shared word "birds," two-bird device, and pink-and-white color scheme, likely causing consumer confusion. The plaintiff challenged the defendant’s invoices (Ex.D19) as fabricated, citing discrepancies such as a pre-GST invoice bearing a GST number and inconsistent invoice values. They argued that the defendant’s adoption was dishonest, given the parties’ proximity in Tirupur, and that there was no delay, as the plaintiff acted promptly upon discovering the infringement in April 2022.
The defendant countered that "FLY BIRDS" was distinct and applied for registration in 2016, claiming use since 1 April 2016. They argued that the plaintiff’s evidence, particularly invoices from Network Clothing, was unreliable, as the license agreement (Ex.P16) did not cover the device mark (Ex.P5), rendering its use unauthorized. The defendant claimed that the term "birds" was common to the trade, citing over 50 registered marks (Ex.D18), and that the pink-and-white color scheme was standard for women’s apparel, negating mala fide intent. They asserted that the plaintiff’s delay of five years, given the 2019 advertisement of "FLY BIRDS," constituted acquiescence under Section 33 of the Trade Marks Act. The defendant further argued that their local customer base differed from the plaintiff’s pan-India and global market, reducing the likelihood of confusion.
Detailed Discussion on Judgments Cited by Parties: The plaintiff relied on several precedents to support their claims.
In Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), the Supreme Court held that the existence of registered trademarks on the register does not constitute evidence of use, supporting the plaintiff’s challenge to the defendant’s claim that "birds" was common based on registrations.
Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) and Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited ((2001) 5 SCC 73) endorsed the anti-dissection rule, emphasizing that marks must be compared as a whole, which the plaintiff used to argue the overall similarity of "TWIN BIRDS" and "FLY BIRDS."
National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (AIR 1953 SC 357) was cited for the proposition that minor changes (e.g., "Eagle" to "Vulture") do not dispel deceptive similarity, relevant to the substitution of "TWIN" with "FLY."
Parle Products (P) Ltd. v. J.P. & Co. ((1972) 1 SCC 618) reinforced the need to examine overall similarity, supporting the plaintiff’s comparison of the marks’ visual and phonetic elements.
M/s. Heinz Italia & Anr. v. Dabur India Ltd. ((2007) 6 SCC 1) and R. Gopalakrishnan v. M/s. Venkateshwara Camphor Works (2000 (IV) CTC 222) were cited for granting relief upon findings of dishonesty, which the plaintiff alleged in the defendant’s adoption.
Neuberg Hitech Laboratories Pvt. Ltd. v. Dr. Ganesan’s Hitech Diagnostic Centre (2022 SCC OnLine Mad 8779) addressed the spectrum of distinctiveness, supporting the plaintiff’s claim that "birds" was arbitrary for apparel.
P.M. Palani Mudaliar & Co. v. M/s. Jansons Exports (AIR 2017 Mad 105) and National Bell Co. v. Gupta Industrial Corporation ((1970) 3 SCC 665) required substantial use to establish a mark as common to trade, which the plaintiff argued the defendant failed to prove.
Fatima Tile Works v. Sudarsan Trading Co. Ltd. (AIR 1992 Mad 12) allowed evidence of use by an entity with a trade connection, validating the plaintiff’s reliance on Network Clothing’s invoices.
The defendant cited Honda Motor Company Ltd. v. Kewal Brothers and Others (MANU/WB/0353/1999) to argue that the plaintiff must establish goodwill prior to the defendant’s adoption date (2016), challenging the plaintiff’s evidence. Brihan Karan Sugar Syndicate Private Limited v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (MANU/SC/1020/2023) emphasized the need to prove advertising expenditure in passing off actions, which the defendant claimed the plaintiff lacked.
Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. (2024 SCC OnLine Del 3140) required the plaintiff to satisfy the classic trinity test (reputation, misrepresentation, and loss) for passing off, which the defendant argued was not met. The defendant also referenced dictionary definitions and articles associating pink with girls to argue that the color scheme was generic, not proprietary.
Detailed Reasoning and Analysis of Judge: Court’s analysis addressed each issue systematically. On territorial jurisdiction, the court found that invoices from Chennai retailers (Ex.P26) selling "FLY BIRDS" products established a cause of action within the court’s jurisdiction. Regarding proprietorship, the court confirmed the plaintiff’s status as the registered proprietor of multiple "TWIN BIRDS" trademarks (Ex.P1 to P14), including word and device marks.
The court assessed prior use, finding that the plaintiff’s invoices from 2007 (Ex.P18) evidenced use of the word mark "TWIN BIRDS," and from 2011 for the device mark (Ex.P5). The defendant’s earliest invoice was from 2017 (Ex.D19), which was discredited due to discrepancies, such as a pre-GST invoice bearing a GST number and inconsistent values. The court rejected the defendant’s objection to Network Clothing’s invoices, noting that the license agreement (Ex.P16) did not cover Ex.P5 because it was unregistered in 2015, but Section 2(1)(r) of the Trade Marks Act allowed non-registered mark licensing. The connection between the plaintiff and Network Clothing, evidenced by Mr. M. Ravi’s dual role, further validated the plaintiff’s reliance on these invoices, per Fatima Tile Works.
On deceptive similarity, the court compared the marks holistically, as mandated by Amritdhara Pharmacy and Parle Products, finding that the shared word "birds," two-bird device, and pink-and-white color scheme rendered "FLY BIRDS" deceptively similar to "TWIN BIRDS." The court noted that a consumer with average intelligence and imperfect recollection would likely confuse the marks, satisfying the test in Cadila Healthcare.
The court examined whether "birds" was common to trade, applying National Bell Co. and Palani Mudaliar. The defendant’s evidence (Ex.D18) listed numerous "birds"-containing marks, but most were registered post-2016 or were composite device marks, lacking evidence of substantial use. The court concluded that "birds" was arbitrary for apparel and not publici juris, favoring the plaintiff.
On mala fide adoption, the court acknowledged that pink is associated with women’s products but found the defendant’s adoption of the entire pink-and-white scheme, combined with the word "birds" and two-bird device, to be mala fide, given the plaintiff’s prior use and the parties’ proximity in Tirupur, aligning with Heinz Italia.
Regarding passing off, the court found that the plaintiff established the classic trinity test (per Pfizer Products): reputation and goodwill through turnover (Ex.P17) and advertising (Ex.P19), misrepresentation due to the deceptive similarity of the marks, and likely loss to the plaintiff. The defendant’s claim of a distinct local customer base was dismissed, as both parties sold identical goods to a common market.
On delay and acquiescence, the court noted that the plaintiff became aware of the defendant’s use in April 2022 and filed the suit in April 2023, negating delay. Section 33 of the Trade Marks Act required five years of acquiescence, which was not met, as less than five years had elapsed since the defendant’s advertisement in 2019. The court cited Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (AIR 1990 Del 19) to hold that delay does not bar relief in infringement and passing off actions.
For the rectification petition, the court found that the defendant’s registration violated Section 11 of the Trade Marks Act, as it was likely to cause confusion with the plaintiff’s prior mark, warranting cancellation due to insufficient cause.
Final Decision: The court decreed the civil suit in favor of the plaintiff, granting permanent injunctions against the defendant’s use of "FLY BIRDS," ordering the destruction of infringing materials, and directing an account of profits. To allow the defendant to liquidate existing inventory, the injunction was deferred for four months, subject to filing an affidavit detailing the inventory within two weeks. The plaintiff was awarded costs of Rs. 5,00,000. The rectification petition was allowed, directing the Registrar of Trade Marks to cancel the defendant’s trademark (No. 3237870) within 30 days.
Law Settled in This Case: The case reaffirms several principles of trademark law. It underscores that deceptive similarity is assessed holistically, considering phonetic, visual, and structural elements from the perspective of a consumer with average intelligence and imperfect recollection. The decision clarifies that a mark’s commonality to trade requires evidence of substantial use by others, not mere registrations. It establishes that mala fide adoption can be inferred from the cumulative copying of distinctive elements, especially in close geographical proximity. The case also confirms that delay or laches does not preclude relief in trademark infringement and passing off actions, and acquiescence under Section 33 requires a continuous five-year period of aware inaction. Finally, it highlights that trademark registrations obtained in violation of Section 11, causing confusion with prior marks, are liable for cancellation.
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.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
