India: Mark "TUFF" Prevails As Prior User

Last Updated: 15 September 2008

The most common tests validating the existence of a trademark include that of being a prior user and having a registered trademark. But a scenario, wherein both exist, each in the favour of an opposing party, one of these may weigh over the other. Striking a balance between the two is the case of Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises 2008 (37) PTC 514 (Del.)

Pioneer filed a suit against Goodwill praying for a permanent injunctive relief and delivery up in respect of its trademark. In the present case, they seek an ad-interim temporary injunction, which had been granted earlier, but the order was vacated owing to non-compliance with the relevant provisions of the Civil Procedure Code.

The trademarks under contention, TUFF and TUFF LABEL had been adopted by Pioneer in relation to their goods. They procured registration certificates with respect to these marks while they also claimed to be owners and proprietors of the artistic features of the mark. The marks are said to have been used bona fide in the course of trade since their adoption and also claim to maintain the highest degree of quality control, manufacturing excellent quality products. They also stated to have acquired tremendous reputation and goodwill in relation to its products to which the marks are appended. They also stated that they had an exclusive website www.tuffbolt.com and associated mail ids. They claimed that the word "TUFF" had acquired secondary meaning connoting a distinct indicum for its products. They further alleged Goodwill to have adopted identical as well as deceptively similar marks. They stated that they learnt of Goodwill's intention when they came across the advertisement for registration. They immediately lodged an opposition to the same.

The counsel for Pioneer submitted that Goodwill was indulging in unfair activities that it was not supposed to. They stated that the same amounted to "squatting" with a view to misuse and misappropriate the goodwill built meticulously over time. On Goodwill's contention of prior use and the evidence in the form of newspaper advertisements, was said to be insufficient to establish prior use.

Goodwill reverted to these allegations stating that it was engaged in the business of self-tapping screws for a long time. They stated that they adopted the mark "TUFF" with respect to self-tapping screws in 1991 and had advertised the same. They also claimed that they had obtained a telegraphic address in the same respect. They asserted that the original firm to which the company belonged shut down in 2002, and hence the mark was in use since 1991, in relation to one partnership firm or the other. In this regard, they stated the balance of convenience to be in their favour, in as much as Pioneer could not show that they were prior users in respect of the mark. Pioneer reverted stating that such a contention was a move to disentitle them of an interim relief.

The Court noted that the two words being identical and the pictorial representation also being identical, Pioneer uses the same for nuts, bolts and screws, while Goodwill uses the mark only with reference to a particular type of screw. Dealing with the aspect of prior user, in view of a registration being in favour of Pioneer, the Court opined that in such a scenario, Pioneer would have to depict that it was using the mark concurrently, if not prior to Goodwill in order to obtain an injunction. Substantiating its stance using a plethora of decisions, the Court ruled that Pioneer could not establish a case in its favour and hence was not entitled to an ad-interim injunction.

© Lex Orbis 2008

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