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15. The principal defence of the Defendant is that the registration is in respect of a device mark and that the element “Jodi” in the composite mark is not entitled to protection. The Plaintiff cannot and does not dispute _____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021 that its registration is in respect of the device mark “Jodi365”. Nonetheless, the Plaintiff contended that the use of the mark “Jodii” by the Defendant infringes the device mark “Jodi365”. In support of this contention, the Plaintiff relied on Satyam Infoway for the proposition that a domain name is also capable of protection as a trade mark. In addition, the Defendant relied on Central Park Estates to contend that “Jodi” is the prominent and essential feature of the device mark “Jodi365” and therefore the said device mark is infringed by the use of the mark “Jodii” by the Defendant. In Central Park Estates, the Delhi High Court concluded that “Central Park” is the essential feature of the plaintiff's trademark and the said trademark is infringed by the use of the mark “Godrej Central Park” by the defendant therein. In order to refute this contention, the Defendant contended that the Plaintiff is not entitled to claim monopoly over the word “Jodi” which is descriptive of matchmaking, dating and matrimonial services. The Defendant also relied on the use by various other entities of domain names and apps (Exs.D8 and D9) containing the word “Jodi” and asserted that the word “Jodi” is publici juris. It was also pointed out that, at paragraph 15 of the written statement, the Defendant set out a list of apps that use the word _____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021 “Jodi” in relation to matchmaking or dating services. In paragraph 16, domain names containing the word or element “Jodi” were enumerated.

The nature of the product or service should also be borne in mind while drawing conclusions on secondary meaning. For instance, general public recall and recognition is higher for consumer staples or even consumer durables, as a class of goods, or hotels, as a class of services, because a significant proportion of the population procures such goods or avails of such services, i.e. the addressable market is wider and larger. By contrast, the segment of the population that intends to or subscribes to a website or app that provides matrimonial or dating services is narrower. As noticed earlier, the Plaintiff's mark has an alpha-numeric element and it is pertinent to recognise that the numeric sub-element 365 does not expressly refer to the days of the year and is merely suggestive that the service is provided on _____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021 every day of the year. By making allowance for the nature of the service, if one puts oneself in the shoes of a subscriber or potential subscriber of the Plaintiff's services, there is sufficient basis to conclude on the basis of the fairly long history of use of the device mark “Jodi365” especially as a top level domain name, the business turnover and the like that the composite mark has acquired distinctiveness.

_____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021

22. The Plaintiff contended that the sub-element “Jodi” therein is the essential, prominent and distinguishing feature by citing Pidilite Industries and Central Park Estates. As is evident from paragraphs 12.7 and 12.8 of the PTC report, the Bombay High Court concluded in Pidilite Industries that the mark 'Marine', when used for a water-resistant adhesive, is not descriptive. Likewise, in Central Park Estates, at paragraph 32 of the SCC Online Report, the Delhi High Court recorded the finding that the mark 'Central Park', when used for a real estate developer, is not descriptive. Protection was extended on that basis in both those decisions. Whether the sub-element “Jodi” has acquired distinctiveness or remains descriptive is addressed next. If one were to put the distinctiveness of “Jodi” to test, it is safe to conclude that it is highly unlikely that “Jodi” on a standalone basis would have been accepted for registration because it is inherently descriptive. After registering the composite mark, can the proprietor be permitted to claim exclusivity over the originally non-distinctive element? Yes, if such originally non-distinctive element has acquired distinctiveness and a secondary meaning but not otherwise. To answer this question as regards “Jodi”, the question to be posed is: does the term “Jodi”, when used in context, overshadow the primary meaning and bring to mind the service _____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021 provider or source, i.e. the Plaintiff? While such conclusion may be reached as regards the composite mark, I am unable to conclude on the basis of the evidence on record that the primary meaning has been overpowered or that it has receded sufficiently to the background as regards “Jodi”. Therefore, the Plaintiff should not be permitted to achieve indirectly what it could not directly merely by relying on the essential features concept. Just as the failure to protect distinctive and essential elements of a composite mark could result in a subversion of Section 17 of the Trade Marks Act, a fortiori, extending protection to non-distinctive elements would render Section 17 otiose. The evidence on record discloses that several matrimonial and dating websites and apps use the term “Jodi” as an element in their trade name. In the absence of evidence of intentional and dishonest adoption, this is indirect evidence that the term remains descriptive and has not acquired secondary meaning. For reasons set out above, I conclude that the sub-element “Jodi” in the composite mark is non-distinctive, like the individual elements “Bharat” and “Matrimony” in “Bharatmatrimony” were held to be non- distinctive in Consim Info.

Issue No.5

26. Since the claim for infringement and passing off failed, the Plaintiff is not entitled to damages. Before concluding, I must confess that the “big fish is swallowing the small fish” argument did tug at the heart strings, but eventually the mind prevailed.

27. In the result, the suit is dismissed subject to the observations on the acquired distinctiveness of the composite mark. Since the Plaintiff is the prior user of the mark, the registered proprietor thereof and it was held that the Plaintiff is entitled to protect the composite mark but not the element “Jodi”, the parties shall bear their respective costs. Consequently, all connected applications are closed.