Generic Words Can’t Be Owned: Delhi High Court Refuses Injunction Over ‘TIGER’ Trademark

Generic Words Can’t Be Owned: Delhi High Court Refuses Injunction Over ‘TIGER’ Trademark

Introduction

The Delhi High Court has declined to grant interim injunctive relief in a trademark infringement and passing off dispute involving agricultural implements, holding that the words “TIGER” and “BRAND” are common, generic expressions incapable of exclusive ownership. The Court ruled that such terms are publici juris and cannot be monopolised by a single trader merely on the basis of a device mark registration.

Factual Background

The plaintiff, Mayank Jain, proprietor of Mahaveer Udyog, is engaged in the manufacture and sale of agricultural implements such as disc harrows, harrows and tractor-towed equipment. The business was established in 1997.

The plaintiff claimed adoption of the device mark “TIGER GOLD BRAND” in May 2010 and asserted continuous use thereafter. An application for registration of the mark was filed in June 2022, which culminated in registration in February 2023.

In October 2024, the plaintiff discovered that the defendants, including Atulya Discs Pvt. Ltd., were manufacturing and selling similar agricultural implements under the mark “TIGER PREMIUM BRAND”. According to the plaintiff, the defendants had copied the essential features of its mark, including the word “Tiger” and the tiger device, merely substituting the word “Gold” with “Premium”.

Procedural Background

Aggrieved by the defendants’ use of the impugned mark, the plaintiff instituted a suit before the Delhi High Court seeking reliefs for trademark infringement, passing off, dilution, misrepresentation and unfair competition. Along with the suit, an application for interim injunction was filed to restrain the defendants from using the mark “TIGER PREMIUM BRAND”.

Certain defendants operating online platforms also sought protection as intermediaries under the Information Technology Act, 2000.

Issues

1. Whether the plaintiff could claim exclusive rights over the words “TIGER” and “BRAND”.

2. Whether the defendants’ mark “TIGER PREMIUM BRAND” was deceptively similar to the plaintiff’s “TIGER GOLD BRAND”.

3. Whether a prima facie case of trademark infringement or passing off was made out warranting grant of interim injunction.

Contentions of the Parties

Plaintiff’s Contentions: The plaintiff contended that it had acquired goodwill and reputation in the mark “TIGER GOLD BRAND” through long and continuous use. It was argued that the defendants had deliberately adopted a deceptively similar mark by copying the dominant element “Tiger” and the tiger device, thereby attempting to pass off their goods as those of the plaintiff. The plaintiff further asserted that the substitution of “Gold” with “Premium” was insufficient to distinguish the rival marks and that such use was likely to cause confusion among consumers, particularly farmers.

Defendants’ Contentions: The defendants opposed the injunction, contending that “Tiger” is a common and generic word widely used in relation to agricultural goods and implements. It was argued that the plaintiff held no registration over the word mark “Tiger” and that registration of a composite or device mark does not confer exclusive rights over generic or non-distinctive elements. The defendants further submitted that the rival marks, when viewed as a whole, were visually and structurally distinct and unlikely to cause confusion.

Reasoning and Analysis

Justice Tejas Karia categorically rejected the plaintiff’s attempt to monopolise the word “Tiger”. The Court held that both “TIGER” and “BRAND” are generic expressions incapable of exclusive ownership.

“The Marks ‘TIGER’ and ‘BRAND’ are generic in nature and incapable of being registered as a Trade Mark. Hence, ‘TIGER’ is publici juris and common to trade and is not uniquely identifiable with a particular goods or services of the Plaintiff.”

On the claim of distinctiveness, the Court noted that the plaintiff had failed to produce any material to demonstrate that the word “Tiger” had acquired a secondary meaning exclusively associated with its goods.

Applying the anti-dissection rule, the Court compared the rival marks as a whole and held that “TIGER GOLD BRAND” and “TIGER PREMIUM BRAND” were not deceptively similar. From the perspective of the average consumer, particularly farmers purchasing agricultural implements, the marks were found to be visually distinct and unlikely to cause confusion.

On the aspect of passing off, the Court held that the plaintiff had failed to establish goodwill and reputation in the generic element “Tiger” and therefore had not made out a prima facie case.

Decision

The Delhi High Court dismissed the plaintiff’s application for interim injunction, holding that:

• The plaintiff has no exclusive right over the generic words “TIGER” and “BRAND”.
• The impugned mark “TIGER PREMIUM BRAND” is not deceptively similar to the plaintiff’s mark when viewed as a whole.
• No prima facie case of trademark infringement, passing off or copyright infringement was established.

In this case the plaintiff was represented by Mr. R.P. Yadav and Mr. Riju Mani Talukdar, Advocates. Meanwhile the defendant was represented by Dr. Amit George, Mr. Manish Gandhi, Mr. Vaibhav Gandhi, Ms. Muskan Gandhi, Mr. Dushyant Kishan Kaul and Ms. Rupam Jha, Advocates for D-1 to D-3 and Ms. Rohini Sharma and Ms. Chanchal Sharma, Advocates for D-5.