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Tube Investments Of India Ltd. v. Trade Industries, Rajasthan .
Factual and Procedural Background
The appellants are long-standing and well-known manufacturers of bicycles and bicycle parts who have held, since 1972, a registered trade mark consisting of the letters “TI” enclosed within two concentric circles for goods in Class 12. Their sales for the year 1993-94 amounted to Rs 41,715.10 lakhs, with advertising expenditure of Rs 384.31 lakhs.
The respondent, a much smaller manufacturer who began operations in 1976 at Jodhpur, recorded sales of Rs 12,50,717 and advertising expenses of Rs 71,000 in 1995-96. He has been using a “TI” mark enclosed within a single circle on bicycle saddle covers—goods that also fall within Class 12.
The appellants initiated proceedings alleging that the respondent’s mark is deceptively similar to their registered trade mark and sought an interim injunction. The High Court declined relief, prompting the present appeals. The Supreme Court now reviews that decision.
Legal Issues Presented
- Whether the respondent’s use of a single-circle “TI” mark on Class 12 goods is deceptively similar to, and therefore infringes, the appellants’ registered trade mark consisting of “TI” within two concentric circles.
- Whether, in view of the similarity and the appellants’ statutory rights, an interim injunction should be granted restraining the respondent from using the impugned mark on goods falling in Class 12.
Arguments of the Parties
Appellants’ Arguments
- The appellants hold a valid registration for the “TI” mark in two concentric circles for all goods in Class 12, covering bicycles and their parts.
- The respondent’s use of an almost identical “TI” configuration on bicycle saddle covers is likely to deceive consumers and amounts to infringement and passing off.
Respondent’s Arguments
- The respondent distinguishes his mark by enclosing “TI” within only one circle, contending that this difference is sufficient to avoid confusion.
- He relied on the Supreme Court decision in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997) 4 SCC 201 and the Calcutta High Court decision in Gopal Hosiery v. Dy. Registrar of Trade Marks, AIR 1981 Cal 53, in support of his position.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997) 4 SCC 201 |
Concerned with rectification of a trade mark register. | The Court held that the case has no bearing on the present dispute regarding infringement and interim relief. |
| Gopal Hosiery v. Dy. Registrar of Trade Marks AIR 1981 Cal 53 |
Related to trade mark registration issues. | The Court concluded that this decision is not relevant to the issues presently before it. |
Court's Reasoning and Analysis
The Court conducted a visual comparison and found the respondent’s mark to be prima facie similar to the appellants’ registered mark: both display the capital letters “T” and “I”, with the “I” placed below the “T”. The sole difference—a single circle instead of two concentric circles—was deemed too minor to dispel the likelihood of confusion.
Given that both parties operate within Class 12 goods, the Court acknowledged a real danger that consumers might assume the respondent’s saddle covers originate from the appellants. Because the appellants hold a long-standing statutory monopoly over the mark for bicycle-related goods, continued use by the respondent would infringe those rights and facilitate passing off.
The authorities cited by the respondent were dismissed as irrelevant: Vishnudas Trading focused on rectification of the register, and Gopal Hosiery did not address the issue of deceptive similarity in Class 12 goods.
Balancing these factors, the Court concluded that the appellants had established a strong prima facie case and that the balance of convenience favoured granting interim relief.
Holding and Implications
The appeals are allowed; the High Court’s order is set aside. An interim injunction is issued restraining the respondent from using the impugned “TI” mark on any goods manufactured for use in connection with bicycles or otherwise falling within Class 12. No order as to costs.
Implications are confined to the immediate parties: the respondent must cease using the similar mark on bicycle-related products, while the appellants’ registered rights are preserved pending final adjudication. The order sets no new precedent beyond applying settled principles of trade mark infringement and deceptive similarity.
Order
1. The appellants are well-known manufacturers of bicycles and bicycle parts. As per the counter-affidavit of the respondent, the total sales of the appellants for the year 1993-94 were to the tune of Rs 41,715.10 lakhs and their expenditure on advertisements alone for the year was Rs 384.31 lakhs. The appellants have a registered trade mark bearing their initials TI in two concentric circles. It is registered in the year 1972 and the registration is still in force. The trade mark is registered for goods in Class 12 for bicycles and its parts and fittings including free wheel clutches for land vehicles, hubs, saddles, rims, tyres, tubes, stands for cycles, saddle carriers for cycles, gears for cycles, bells for cycles and pumps for cycles — all these goods being included in Class 12.
2. The respondent is a small manufacturer. He set up his business in the year 1976 in Jodhpur and his sales for the year 1995-96 were amounting to Rs 12,50,717 and his expenditure on advertisements for that year was Rs 71,000. The respondent uses a mark TI in a circle in all his goods. The respondent manufactures saddle covers on which he uses this mark. An examination of the mark used by the respondent with the registered mark of the appellants shows that the mark used by the respondent is prima facie similar to the mark used by the appellants. In the respondent's mark also, ‘T’ is a capital ‘T’ and ‘I’ is a capital ‘I’ and is shorter and placed below ‘T’. The respondent contends that he uses only one circle around his mark instead of two concentric circles. However, this small difference does not make much impact on the obvious similarity between the two marks. The visual similarity between the two marks coupled with the fact that the respondent's mark is used on bicycle saddle covers, prima facie, posed a real danger that the product of the respondent can be passed off as a product of the appellants. Use of the mark by the respondent on goods falling in Class 12 is, prima facie, violative of the appellants' rights in respect of their registered trade mark for goods in Class 12.
3. The respondent has relied upon the decision of this Court in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997) 4 SCC 201, JT (1996) 6 SC 366 This decision deals with rectification of registration of a trade mark and has no bearing on the question before us. The respondent has also cited the decision of the Calcutta High Court in Gopal Hosiery v. Dy. Registrar of Trade Marks AIR 1981 Cal 53 which also has no bearing on the question before us.
4. In fact, the respondent had applied for registration at Delhi of his mark in the year 1984 in respect of goods in Class 18 which deals with leather and leather goods. The appellants had filed their opposition to registration. Ultimately in 1991, the respondent withdrew his application. He has filed another application for registration of the same mark for the same category of goods in Ahmedabad which application is pending.
5. In the above circumstances, looking to the fact that the appellants are registered holders of their mark which is specifically registered for bicycle parts, and in the circumstances set out above, this is a fit case for grant of interim injunction restraining the respondent from using his mark for any items manufactured by him for use in connection with bicycles or falling in Class 12. It is ordered accordingly. The appeals are allowed. The impugned order of the High Court is set aside. No costs.
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