In the case of V. Rangasamy Naidu Educational Trust vs. Parthasarathy Seniammal Educational Trust, the Madras High Court addressed a dispute regarding the use of the trademark “CIT” in the field of education.
Coimbatore Institute of Technology’s Arguments
The petitioner, V. Rangasamy Naidu Educational Trust, claimed exclusive rights over the mark “CIT” in relation to its longstanding institution, Coimbatore Institute of Technology, established in 1956. The petitioner sought the rectification and removal of the trademark registered by the respondent, Parthasarathy Seniammal Educational Trust, under registration No. 2855463 in Class 41, arguing that the respondent’s use of “CIT” created confusion and misled the public as both parties operated in the same industry. The petitioner contended that “CIT” had acquired distinctiveness over decades and had come to be associated exclusively with their institution.
Chennai Institute of Technology’s Arguments
The respondent, on the other hand, claimed honest and concurrent use of the trademark, asserting that their institution, Chennai Institute of Technology, had independently adopted “CIT” without malafide intent. They further argued that their use of the mark, along with other elements like a butterfly and tagline, distinguished their logo from that of the petitioner’s.
The Court’s Conclusion
The court examined whether the respondent’s use of “CIT” was likely to cause confusion among the public. Upon comparing the two trademarks, the court found that the dominant and prominent feature in both was “CIT” and held that the addition of the butterfly and tagline by the respondent did not sufficiently distinguish their mark from the petitioner’s. The court rejected the respondent’s defense of honest and concurrent use, and stated that the registration of the respondent’s trademark was obtained while an interim injunction restraining its use was in place, which the respondent did not disclose to the Registrar of Trademarks.
The court ruled that the rectification petition was maintainable under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, despite the respondent’s argument about the need for leave from the civil court due to pending litigation. The court held that the respondent had failed to establish any distinctiveness or honest use of the mark and that their registration had been obtained through suppression of material facts.
Consequently, the court allowed the rectification petition and ordered the removal of the respondent’s trademark from the register, noting that the petitioner’s prior and established use of “CIT” entitled them to trademark protection.
Citation: V. Rangasamy Naidu Educational Trust v. Parthasarathy Seniammal Educational Trust, O.P.(TM) No. 350 of 2023 (H.C. Madras Sept. 20, 2024). Available at: https://indiankanoon.org/doc/183178474/, visited on 06/10/2024.
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