ORDER
Rajiv Sahai Endlaw, J.
1. With the consent of the counsels, the two suits are consolidated and from the pleadings of the parties, the following issues are framed:-
I. Whether the use by the defendant of the name/mark TT amounts to infringement of the registered trade mark of the plaintiffs? OPP
II. Whether the use by the defendant of the name/mark TT amounts to the defendant passing off its services as that of the plaintiffs? OPP
III. Whether the defendant is the prior user of the name/mark TT and if so to what effect OPD
IV. Whether the use by the defendant of the name/mark TT is honest and concurrent with the plaintiffs and if so to what effect? OPD
V. Whether the plaintiffs are not entitled to the reliefs of injunction claimed, for the reason of the suit being barred by delay and laches and acquiescence? OPD
VI. Whether the defendant, owing to the agreement dated 27th April, 2004 is not entitled to use the trade name/mark TT? OPP
VII. If the above issues are decided in favour of the plaintiffs, whether the plaintiffs, besides the relief of injunction, are entitled to any other relief of delivery or rendition of accounts or for damages against the defendant and if so, what damages, if any are payable by the defendant to the plaintiff? OPP
VIII. Relief.
No other issue arises or is pressed.
2. The parties to file their list of witnesses within 15 days.
3. The plaintiffs to file affidavits by way of examination-in-Chief of all their witnesses within four weeks.
4. List before the Joint Registrar on 13th May, 2013 for fixing the dates of trial. I.A. No. 742/2008 in CS(OS) No. 101/2008 and I.A. No. 745/2008 in CS(OS) 102/2008
(Both of plaintiff under Order 39 Rules 1 and 2 CPC)
5. Though the suits have been pending for the last nearly 5 years, no interim relief has been granted to the plaintiffs till date. The counsels have been heard.
6. The plaintiffs have filed the two suits pleading:
i. that the plaintiff No. 1 as the proprietor of M/s. T.T. Industries has been carrying on business of manufacturing and marketing of all kinds of hosiery products such as vests, underwears, brassieres, socks, panties, clothing and under clothing, threads and yarns, shirts, trousers, sarees, elastic tapes, lungies, handkerchiefs, travelling bags, socks, textile piece-goods etc, for several decades with sales offices/depots at various places in India;
ii. that the plaintiff No. 1 adopted the trademark TT in relation to the aforesaid goods in the year 1968;
iii. that prior to 1968 the mark TT was being used by M/s. Tarun Textiles Pvt. Ltd. a family concern of the plaintiff No. 1 and of which the plaintiff No. 1 is one of the directors;
iii. that the plaintiff no. 2 Company namely T.T. Limited was got incorporated on 15th January, 1998 and since the year 1998 goods under the trademark TT are being manufactured by the plaintiff No. 2 Company under the licence from the plaintiff No. 1;
iv. that the plaintiff no. 1, over the years has obtained registration of marks, devices, logos, labels consisting of letters TT in Classes 25, 15, 10, 19, 3, 32, 20, 11, 33, 23, 84, 25, 19, 21, 41;
v. that the mark comprising of letters TT per se has also been registered in favour of the plaintiff No. 1 in Classes 25, 23, 24, 35 and 36;
vi. other applications of the plaintiff no. 1 for registration of various marks consisting of TT letters are also pending;
vii. that the artistic works comprising inter alia letters TT in a variety of forms, design, colour scheme have been registered before the Copyright Authority;
vii. that the plaintiff no. 1 is also the owner of the mark TT at common law and owing to widespread advertisements by the plaintiff, the consumers and the trade in general associate the said mark/brand/logo/monogram with the products of the plaintiff No. 1 exclusively;
viii. that in August, 2001 the plaintiff No. 1 came across the advertisement in the Trademarks General dated 15th August, 2005 in respect of multi class application for registration of trademark in Classes 36 and 39 of Trademarks Act consisting of word/mark TT Services, made by the defendant TT Enterprises Pvt. Ltd.
ix. the impugned word/mark as appearing in the said advertisement was identical to the plaintiffs trademark and the defendant by using the word/mark TT alongwith the word services has infringed the registered trademark of the plaintiff;
x. the plaintiff has the letters TT per se registered in his name in respect of Class 36 also;
xi. that prior thereto the plaintiff No. 1 had filed opposition to registration of the trademark TT in the name of TT Industries and Tantex Limited and on the basis of the said opposition the said TT Industries and Tantex Limited were compelled to change their corporate name to TTK Tantex Limited and a settlement was arrived at between the plaintiff No. 1 and TTK Tantex Limited whereunder they had agreed not to use the letters TT per se;
xii. that the address of the defendant herein is the same as of TTK Tantex Limited and the defendant is a company of the same group/management and under the said agreement also, is not entitled to use the word/mark TT
That upon the failure of the defendant to desist from using the word TT, the suits were filed for injunction from using the mark TT Services [CS(OS) 101/2008] and/or TT Logistic [CS(OS) 102/2008] or other deceptively similar marks and for ancillary reliefs. It may be clarified that the parties in both the suits are the same and two suits have been filed since the defendant Company is using both the marks TT Services and TT Logistic.
7. The defendant Company has contested both the suits pleading:
i. that the defendant Company was incorporated in the year 1999;
ii. that the founder Directors of the defendant Company are descendants of eminent industrialist late Mr. T.T. Krishnamachari, also the former Union Finance Minister;
iii. that the defendant Company has adopted the name TT Enterprises Pvt. Ltd. from the initials of late Mr. T.T. Krishnamachari;
iv. that the adoption of the letters TT is in good faith and with bonafide intentions to indicate the defendant Company's association with the group of companies founded by late Mr. T.T. Krishnamachari;
v. that said Mr. T.T. Krishnamachari had founded M/s. T.T. Krishnamachari and Co. as far back as in the year 1950 and Mr. Arun Vasu, founder and managing director of the defendant company being descendent of the said Mr. T.T. Krishnamachari has named the defendant T.T. Enterprises, to show association with Mr. T.T. Krishnamachari;
vi. that it is the plaintiff who is a later entrant in the market and is exclusively involved in the business of hosiery and textile goods and now trying to monopolize and claim exclusive rights over the letters T.T. in respect of all goods and services which are not even related to the business of the plaintiff;
vii. that the defendant Company is a general sales agent for British Airways World Cargo in India and is a service provider in the field of air cargo, cargo clearance and having a turnover in the year 2005-2006 of Rs. 50,64,89,817.00;
viii. that the core business of the plaintiff is only textile and hosiery products and mere paper registration of various monograms, logos under all possible classes, for goods and services, without any intention to put those marks for use, portrays the vexatious motive of the plaintiff to grab monopoly over the letters TT;
ix. that the mark T.T. which is merely a combination of two alphabets cannot be monopolized by anybody;
x. that the defendant by extensive and continuous use of the service mark/trading style T.T. Logistics and T.T. Services has gained impeccable fame;
xi. that the extent of competition between the goods of the plaintiff and the services of the defendant, under the mark T.T. is nil;
xii. that the defendant Company's association with TTK Group is merely symbolic and the defendant does not have any business relationship with the T.T.K. Tantex Limited though managed and controlled by some other descendents of Mr. T.T. Krishnamachari;
xiii. that the defendant was not a party to the settlement of the plaintiff No. 1 with M/s. T.T.K. Tantex Limited;
ix. that the defendant has been carrying on business for two decades under the name and style of TT Logistic, TT Enterprises, TT Services, TT Forex, TT Insurance, TT Holdings and TT Hotels and there has never been any instance of any confusion between the business of the plaintiffs and the defendant.
8. The plaintiffs have filed replication controverting the pleas in the written statement.
9. The counsel for the plaintiff has argued:
i. that the defendant, in the application filed by it in the year 2004 for registration under Class 36, did not state any earlier date since when it may have been using the trademark TT Services sought to be registered and rather stated that the same was proposed to be used; the pleas of defendant in the written statement are thus falsified moreover the defendant was incorporated only in the year 1999 and the question of use since the year 1984 as pleaded in the written statement does not arise;
ii. that from the address of the defendant being the same as that of TTK Tantex Limited it is apparent that the defendant is a part of TT Group and which had entered into the settlement with the plaintiff and the defendant is thus bound by the said agreement and not entitled to use the mark TT.
10. Per contra the counsel for the defendant has argued:
i. only a part of the business being carried out by the defendant falls in Class 36;
ii. though the plaintiff has a registration in Class 36 but there is no pleading in the plaint of any business being carried on by the plaintiff in Class 36.
iii. Attention is invited to Section 34 of the Trademarks Act, 1999 and it is contended that while the registration of the trademark of the plaintiff in Class 36 is of the year 2005, the defendant Company at least since prior thereto, that is, since the year 1999 has been carrying on business specified in the said Class. It is thus contended that no case of infringement is made out.
iv. Attention is also invited to Section 29(2) of the Act to contend that there is no similarity or identity in the goods and services of the plaintiff and the defendant. It is argued that the defendant's business is travel related and does not fall in Class 36 except to the extent of providing travel related financial services; else the business of the defendant falls in Class 39;
v. that the defendant is not using the word TT alone but in conjunction with either Services or Logistic or Forex etc.;
vi. that the plaintiff without using the trademark in relation to the business in Class 36 wants to squat thereon and which is not permissible.
vii. It is argued that Section 34 is dispositive and commences with a non obstante class and owing to non-user by the plaintiff of the mark in relation to the goods and services in Class 36, the plaintiff cannot claim any right.
viii. that there are different trade channels of the plaintiffs and the defendant.
ix. that the use both by the plaintiff as well as by the defendant of the alphabets TT, is either with other words or with another design and for this reason also there can be no possibility of confusion.
x. that the Settlement dated 27th April, 2004 does not specify that it will be applicable to all companies managed and controlled by all descendants of Mr. T.T. Krishnamachari and is applicable only to T.T. Tantex Limited;
xi. that in any case the defendant Company has been carrying on business since prior to 27th April, 2004 and thus it cannot be said that the business in the name of the defendant has been commenced to defeat the said agreement.
xii. that there is no common shareholder, director, employee of TT Tantex Limited and the defendant Company.
xiii. Reliance is placed on:
a. P.P. Jewellers Pvt. Ltd. v. P.P. Buildwell Pvt. Ltd. 2010 (43) PTC 1 (Del) (DB);
b. Swastik Pipes Ltd. v. Rikab Chand Jain 2004 (28) PTC 555;
c. The order dated 9th September, 2010 of the Supreme Court in Civil Appeal No. 69/2006 titled M/s. T.T. Industries v. Harjeet Kaur;
d. Harjeet Kaur v. Deputy Registrar of Trade Marks 2004(30) PTC 330 (IPAB);
xiv. Copy of the application of the plaintiff for registration of the trademark TT in Class 36 is handed over to show that the user claimed therein is from 1st April, 2000 only i.e. after the user of the defendant.
xv. It is informed that rectification application filed by the defendant is pending consideration.
11. The counsel for the plaintiff in the rejoinder has argued that in P.P. Jewellers case the registration was as PPJ and not as PP; that in other cases the alphabets were not registered while in the present case the alphabet T.T. is registered; that from the pleadings of the defendant it is evident that the defendant also belonged to the same group to which TT Tantex Limited belonged; it is reiterated that the defendant in its application in the year 2005 did not claim any past user and only stated that it proposed to use the trademark; that though the plaintiff has not pleaded but will in evidence prove the user in Classes 36 and 38, though no document in that respect is filed. Reliance is placed on:
a). Tata Sons Ltd. v. Manoj Dodia 2011 (46) PTC 244 (Del);
b). Aktiebolaget Volvo v. Vinod Kumar 2011 (46) PTC 28 (Del);
c). Larsen and Toubro Limited v. Lachmi Narain Trades 149 (2008) DLT 46 (DB): 2008 (36) PTC 223 [Del].
It is further stated that TT Finance was a sister concern of the plaintiff No. 2 which merged with the plaintiff No. 2 in the year 1999.
12. I have considered the aforesaid rival submissions. In my view the plaintiffs are not entitled to any interim relief for the following reasons:
A. The plaintiffs are not found to have a prima facie case for the relief of infringement, because:
A(i) the plaintiffs, inspite of filing replication, have neither pleaded nor placed any documents on record to show that they have carried on any business of the nature specified in Class 36 or 39 or have used the trademark TT for the said business;
A(ii). in fact, as aforesaid, there is no plea also to the said effect and it was only during the hearing that the argument of the plaintiff No. 2 being a result of merger of TT Finance was taken;
A(iii). the argument of the counsel for the plaintiffs that the plaintiffs will in evidence show user of the mark TT for business in Class 36, and/or that the plaintiff No. 2 is the result of a merger of the business earlier being carried on in the name of TT Finance, are of without any pleadings and it is the settled position in law that no evidence beyond the pleadings can be recorded.
A(iv) no squatting on trade marks is permissible. Reference in this regard can be made to M/s. Veerumal Praveen Kumar v. M/s. Needle Industries (India) Ltd. 93 (2001) DLT 600: 2001 PTC (21) 889(Del)(DB), Fedders Lloyd Corporation Ltd. and Lloyd Sales Corporation Pvt. Ltd. v. Fedders Corporation and The Registrar of Trade Marks 11 9 (2005) DLT 410: 2005 (30) PTC 353 [Del] and Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises 169 (2009) DLT 209: 2009 (41) PTC 362[Del (DB)] (though I have in Sun Pharmaceuticals Industries Limited v. Cipla Limited (2009) 39 PTC 347 (Del) expressed an opinion that the said view/law needs to change). Thus, equities, while considering grant of interim injunction are not in favour of a squatter, not in use of the trade mark.
A(v). on the contrary, the defendant, from the documents on record has been able to establish that it has been carrying on business in Class 39, overlapping with Class 36, in the name and style of the defendant Company and in the name and style of TT Services and TT Logistic since at least the date of registration of the defendant Company in the year 1998;
A(vi). the statement of the defendant in the application of the year 2005 for registration to the effect that the label sought to be registered was proposed to be used cannot be held against the defendant when the documents on record are to the contrary. Moreover that application was for registration of a label containing also a design besides the words TT Logistic and the statement that the said label was proposed to be used would thus be applicable only to the label with the design and not to the word TT.
A(vii) the plaintiffs in their application for registration in Class 36, gave the date of user as from 01.04.2000.
A(viii) though there is no plea or material to show such user by the plaintiffs of the mark in relation to business in Class 36 but even if the same were to be accepted, the defendant is found to be a prior user from the year 1998.
A(ix). Section 34(2Kb) is thus clearly attracted. It disentitles the registered proprietor of the trademark from interfering with or restraining the use by any person of trademark identical with or nearly resembling the registered trademark in relation to the goods or services in relation to which such person has continuously used the trademark from a date prior to the date of registration or prior to the date of use of the registered trademark whichever is earlier.
A(x) Section 34 protects the vested rights, so that the registered proprietor of a trademark cannot interfere with the use of the identical or similar mark by any other person using that mark from an earlier date. Here the defendant is found to be using the mark TT in relation to the services in Class 36 since prior to the date of registration of the said mark by the plaintiff in the said class and as aforesaid, there is no plea even to the effect that the plaintiff has used the mark TT in relation to any business specified in Class 36.
A(xi) there is no identity between the business of the plaintiffs and the defendant within the meaning of Section 29(2) of the Act.
A(xii) the judgments in Tata Sons Ltd. and in Land T Limited are not found to come to the rescue of the plaintiffs as Tatas and Land T were carrying on business in diverse fields and which prevailed with the Courts in restraining another business in the same name, for the reason of the same being associated with the business of Tatas and Land T.I. am afraid the same, at this stage, cannot be said to be true qua TT, considering the limited field of business of the plaintiffs for which the mark is being used, even though it may be registered for a large number of businesses.
A(xiii) at this stage, it cannot be said that the use by the defendant of the mark of the plaintiffs, without due cause, takes unfair advantage of the registered trademark of the plaintiffs or is detrimental to the distinctive character of the registered trademark of the plaintiffs within the meaning of Section 29(4) of the Act.
A(xiv) I have great doubts at least without evidence being led that an Alphabet mark can become a well known trademark particularly when it is found to be in use by others also.
B. The plaintiffs are not found to have a prima facie case for the grant of interim relief on the ground of passing off because:
B(i) the Division Bench of this Court in P.P. Jewellers Pvt. Ltd. (supra) has observed that where the plaintiff is not found to be the only user of the word mark PP, the question of granting any interim injunction does not arise and noticed that two letter marks do not even justify registration and where the channels of business are totally different, no case of passing off can be said to have been made out.
B(ii) In this regard it may be noticed that the IPAB in Swastik Pipes Ltd. (supra) had held the mark comprising of letters TT of Swastik Pipes Ltd. to be registrable and had dismissed the opposition by the plaintiff No. 1 thereto;
B(iii) similarly, in Harjeet Kaur (supra) no similarity was found between M/s. Tarun Textiles Pvt. Ltd. and the mark of the plaintiff No. 1 and the opposition of the plaintiff No. 1 was dismissed and the said order was confirmed till the Supreme Court;
B(iv) considering the nature of business of the plaintiff and of the defendant, there is no possibility of any confusion;
B(v) while the plaintiffs goods are sold across the counter, the defendants services are not such.
C. And otherwise, because:
C(i) the settlement agreement dated 27th April, 2004 between the plaintiff No. 1 and TTK Tantex Limited is also not found to come in the way of the defendant using the said mark. A reading of the said agreement shows that the same to be between the plaintiff No. 1 and the said TTK Tantex Limited only and even the proprietors of the said TTK Tantex Limited were not a party to the said agreement. The obligations undertaken in the said agreement are of the TTK Tantex Limited only and by virtue of the said agreement, even if it were to be believed that the proprietors of the defendant belong to the same family to which the proprietor of TTK Tantex Limited belong, there is nothing in the said agreement to show that the said proprietors or their family members were intended to be restrained in future from using the mark TT as part of trade name/trademark.
C(ii) as aforesaid, the suits have been pending for the last nearly five years and there is no interim relief in favour of the plaintiffs; now that issues have been framed, it is not deemed appropriate to injunct the defendant at this stage and it is deemed expedient to take a final view only after the evidence has been led.
C(iii) the ingredient of balance of convenience, in the circumstances, is also found in favour of the defendants.
The applications are dismissed.