Background: P.V.S. Knittings, a registered partnership firm, initiated legal proceedings against P. Prakash, trading as S P S TEX, alleging trademark infringement, copyright violation, and passing off. The dispute centered on the plaintiff's registered trademark "TWIN BIRDS" and the defendant's use of the trademark "FLY BIRDS" for apparel in Class 25. The plaintiff also sought rectification of the trademark register to cancel the defendant's trademark registration.
Plaintiff's Claims: P.V.S. Knittings claimed that their "TWIN BIRDS" trademark, used since 1969, was infringed by the defendant's "FLY BIRDS" mark, which was deceptively similar in name, design, and pink-and-white color scheme. The plaintiff argued that the defendant's actions constituted trademark infringement under the Trademarks Act, 1999, and copyright infringement under the Copyright Act, 1957, due to the substantial reproduction of their artistic label. Additionally, the plaintiff alleged passing off, asserting that the defendant's use of "FLY BIRDS" misled consumers and capitalized on the plaintiff's goodwill.
Defendant's Defense: P. Prakash contended that the "FLY BIRDS" mark was distinct and not deceptively similar to "TWIN BIRDS." The defendant argued that the term "birds" was common in the garment trade, citing numerous registered trademarks containing the word. They also claimed that the pink-and-white color scheme was standard for women’s apparel and not exclusive to the plaintiff. The defendant raised issues of delay, laches, and acquiescence, asserting that the plaintiff was aware of their trademark since its advertisement in 2019 but failed to act promptly.
Court’s Findings:The High Court of Judicature at Madras found that the plaintiff was the registered proprietor of multiple "TWIN BIRDS" trademarks and had used the mark since at least 2007, establishing prior use over the defendant’s 2017 use of "FLY BIRDS." The court determined that the two marks were deceptively similar due to their shared use of the word "birds," the two-bird device, and the pink-and-white color scheme, likely causing consumer confusion. The court rejected the defendant’s claim that "birds" was common to the trade, as evidence showed insufficient substantial use by others before the defendant’s application in 2016. The court also found the defendant’s adoption of the color scheme to be mala fide, given the similarities and the parties’ proximity in Tirupur.
Issues of Delay and Acquiescence: The court addressed the defendant’s argument of delay and acquiescence, noting that the plaintiff became aware of the defendant’s use in April 2022 and filed the suit in April 2023. Since less than five years had elapsed since the defendant’s trademark advertisement in 2019, acquiescence under Section 33 of the Trademarks Act was not established. The court held that any delay did not bar relief in an infringement and passing-off action.
Passing Off and Goodwill: The court concluded that the plaintiff established goodwill through evidence of substantial turnover and advertising from 1995 to 2022. The defendant’s use of "FLY BIRDS" was deemed a misrepresentation likely to cause loss to the plaintiff, satisfying the classic trinity test for passing off: reputation, misrepresentation, and damage.
Rectification Petition: In the rectification petition, the court found that the defendant’s trademark registration (No. 3237870) violated Section 11 of the Trademarks Act, as it was likely to cause confusion with the plaintiff’s prior mark. The registration was deemed to lack sufficient cause, warranting its cancellation.
Relief Granted:The court granted permanent injunctions against the defendant’s use of "FLY BIRDS," ordered the destruction of infringing materials, and directed the defendant to render 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. The plaintiff was awarded costs of Rs. 5,00,000. The rectification petition was allowed, with the Registrar of Trade Marks directed to cancel the defendant’s trademark within 30 days.
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 Judge: Senthilkumar Ramamoorthy J.
