Prakash Ferrous Industries Private Limited (“Prakash Ferrous”) filed a suit for infringement and passing off against Mansarowar Ispat (India) Private Limited (“Masarovar Ispat”) which was decided by the Madras High Court recently. The dispute centered around the mark “TIRUMALA” and its use on TMT Steel bars.
In the suit, Prakash Ferrous, which is the structural steel division of Prakash Group of Industries and a top manufacturer of various kinds of metals and their alloys, claimed that it was the prior user of the mark “TIRUMALA” and had been continuously using the mark since 2007. Through the prolonged usage of the mark, and owing to the reliable and superior quality of their products, they had attained substantial goodwill and reputation in the market.
The conflict arose when Prakash Ferrous discovered that Mansarowar Ispat had been actively using the mark “TIRUMALA” with respect to TMT bars with an identical description as the products of the plaintiff under class 6. Mansarowar was also using the trademark “TIRUMALA GOLD” and marketing the same on online platforms such as IndiaMART. Prakash Ferrous claimed that since the products of both the parties were being sold on the same platform side by side, there was a significant likelihood of confusion among the consumers.
Despite receiving a legal notice in August 2022, Mansarowar Ispat claimed to have been using the trademarks since 2012 but failed to provide any substantial evidence. Efforts to resolve the issue through mediation in October 2022 proved unsuccessful, prompting Prakash Ferrous to pursue legal action. The plaintiff presented extensive documentation to support their case, including trademark registration certificates, advertising materials, and sales invoices.
The court found that Prakash Ferrous had successfully established their claim through various documentary evidence, proving the exclusive rights to the “TIRUMALA” trademark. As a result, the court decreed a permanent injunction against Mansarowar Ispat, prohibiting them from using the “TIRUMALA” and “TIRUMALA GOLD” marks and ordered the delivery of all infringing materials to Prakash Ferrous for destruction. The court also awarded costs of the suit to the plaintiff.
Authored by Ms. Ilana Baruah, Consulting and Strategy Team, BananaIP Counsels
Citation: Prakash Ferrous Industries Private Limited v. Mansarowar Ispat (India) Private Limited, Madras High Court, 5th June, 2024, [C.S. (Comm. Div.) No.1 of 2024], available at: https://indiankanoon.org/doc/70499149/
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