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2) Whether the Defendant's trademark JODII is deceptively similar to the Plaintiff's trademark JODI365?
3)Whether the Plaintiff can claim infringement of its registered trademark JODI365 by the Defendant's use of the trademark Jodii?
4) Whether the Plaintiff can claim passing off against the Defendant by the use of the trademark Jodii?

9. As regards the defence that exclusivity cannot be claimed over one of the elements of a composite mark, the Plaintiff contended that Section 17 of the Trade Marks Act, 1999 (the Trade Marks Act) would constitute a defence only if exclusivity is claimed over the word “Jodi”, whereas the Plaintiff claims exclusivity over the device mark “Jodi365” and that the use of the word “Jodii” by the Defendant is infringing and amounts to passing off because such mark is deceptively similar to the device mark “Jodi365”. Learned counsel relied upon Section 38 of the Specific Relief Act, 1963 (the Specific Relief Act) and pointed out that the requirements for the grant of permanent injunction under Section 38 thereof are different from the requirements under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 (the CPC). In specific, Section 38 enables an aggrieved plaintiff to seek a permanent injunction subject to the requirements of Chapter VIII of the Specific Relief Act. Such an injunction may be granted where there exists no standard for ascertaining the actual damages caused or likely to be caused by the invasion of the plaintiff's right or where the invasion is such that compensation in money would not constitute adequate relief. He contended that the suit satisfies all the requirements of Sections 38 and 40 of the Specific Relief Act and that none of the circumstances _____________ https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.)No.122 of 2021 specified in Section 41 operate so as to deny the relief of injunction to the Plaintiff. By referring to and relying upon Section 29(3) of the Trade Marks Act, he also contended that the Plaintiff is entitled to the presumption of confusion since both the Plaintiff and Defendant provide substantially similar services and the marks are near-identical. As regards the claim for damages, learned counsel contended that damages cannot be proved in matters of this nature and, therefore, the Court should exercise judicial discretion in awarding reasonable compensation.

13. Issue Nos.1 to 3 relate to whether the Plaintiff is the registered proprietor of the trademark “Jodi365”, whether the Defendant's mark “Jodii” is deceptively similar to the Plaintiff's trademark and whether the Plaintiff is entitled to relief in respect of infringement by the Defendant. These issues are closely inter-related and are dealt with jointly. The Plaintiff exhibited the Trademark registration certificate as Ex.P2. The said registration is in respect of the device mark. The registration is with effect from 26.05.2010. The annexure thereto discloses that the registration is in Classes 35, 38 and

21. The Plaintiff also contended that the Defendant should not be permitted to contend that “Jodi” is not distinctive because it uses the mark “Jodii” and applied for registration thereof as a trademark (Ex.P14). This argument is attractive at first blush but cannot carry the Plaintiff far because the Defendant has the statutory right to contend that the sub-element “Jodi” is not distinctive and this cannot be defeated by an argument founded on estoppel. Ultimately, the success or failure of the Plaintiff would still hinge on whether the sub-element “Jodi” in the composite mark is distinctive. If it were held to be distinctive, there is no doubt that the mark “Jodii” is deceptively similar.