Delhi High Court
Central Park Estates Pvt. Ltd. & Anr. vs Chd Developers Ltd. on 13 October, 2014
Author: Manmohan Singh
Bench: Manmohan Singh
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: 13th October, 2014
+ I.A. No. 9462/2014 and I.A. No. 13669/2014 in
CS(OS) No.1435/2014
CENTRAL PARK ESTATES PVT LTD & ANR ..... Plaintiffs
Through Mr.Sandeep Sethi, Sr. Adv.
Mr.Anil Airi, Ms.Sadhna Sharma
and Ms.Vrinda Sharma, Advs.
versus
CHD DEVELOPERS LTD ..... Defendant
Through Mr.K.K. Jha, Adv.
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The present suit has been filed by the plaintiffs for permanent injunction, restraining infringement of trademark BELLEVUE, passing off, rendition of accounts of profit, damages, delivery up against the defendant. Alongwith the suit, plaintiff also filed an application under Order 39 Rule 1 and 2 CPC being I.A.No.9462/2014.
2. The suit alongwith said interim application was listed before court on 19th May, 2014. After hearing, detailed ex-parte order was passed restraining the defendant, its officers, servants, agents and representatives and all other acting for and on their behalf are CS(OS) No.1435/2014 Page 1 of 16 restrained from either using themselves or from authorizing the use of the mark BELLEVUE or any other marks which are deceptively similar to the mark BELLEVUE of the plaintiffs for any housing/real estate project amounting to infringement of the plaintiffs' registered trade mark and/or passing off.
3. Upon service, the defendant filed its written statement and an application under Order 39 Rule 4 CPC for vacation of an ex-parte interim order being I.A. No.13669/2014. Arguments in both the pending applications are heard. By this order, I propose to decide both the applications.
4. Brief facts of the case as stated in the plaint are that plaintiffs belong to the same group of companies and have been successful involved in execution of immensely popular housing projects in the name of Central Park, Bellevue, Belgravia and Bell Heights. Plaintiff No.1 is the registered proprietor of the trade mark BELLEVUE TOWERS AND HOMES (Device) as of 21st March, 2005 which has the word BELLEVUE as its essential and primary feature and the plaintiff No.2 is the owner of the land upon which the housing project BELLEVUE has been constructed and has been authorized by the plaintiff No.1 to use the trade mark.
5. It has been stated that the plaintiffs are reputed Real Estate Developers engaged in developing land and constructing premier residential apartments and Hospitality projects like Five Star/Super Deluxe Hotels. The plaintiffs have been engaged in the construction of residential complexes under the trade mark BELLEVUE which carries a positive impression in the minds of the home owners and CS(OS) No.1435/2014 Page 2 of 16 enjoys the goodwill in the field of real estate and is considered synonymous with luxury. Advertisement campaigns have been held in various locations in the United States and the Middle East to promote and showcase the international character and appeal of BELLEVUE and other housing complexes in Central Park- II. Also, various national publications have written extensively on the desirability of owning an apartment in Central Park- II including apartments under BELLEVUE.
6. It is stated that the trade mark BELLEVUE has acquired a secondary meaning in relation to luxury/top end housing projects in India and refers solely to the housing project of the plaintiffs. The total turnover from the sale of apartments under the trademark BELLEVUE is approximately INR 297 Crores as of 10th December, 2013. The details of turnover of plaintiffs for the years 2002-2011 are given in Para 8 of the plaint. The details of expenditure on promotion of the projects and the mark BELLEVUE incurred by the plaintiffs is stated in Para 9 of the plaint.
7. It is the case of the plaintiffs that on 16th March, 2014, the plaintiffs came across the website of the defendant for a housing project in Karnal, Haryana by the name of BELLEVUE VILLAS. Upon investigation, it was revealed that the defendant on 25th September, 2013 had applied for registration of the mark BELLEVUE in the same classes i.e. 36 and 37 in which it has already been got registered by the plaintiffs.
8. It has been contended that in order to encash immense goodwill and reputation of the plaintiffs, the defendant has CS(OS) No.1435/2014 Page 3 of 16 dishonestly adopted the registered mark BELLEVUE of the plaintiffs in respect of its housing project. The adoption of an identical mark for identical services by the defendant amounts to infringement of the registered trade mark of the plaintiffs apart from violating the common law rights of the plaintiffs. The same would cause confusion in the minds of the customers which would amount to causing irreparable and incalculable loss to the plaintiffs. It is stated that the acts of the defendants are to deceive the general public, consumers and those involved in the trade believing the project setup by the defendant as that of the plaintiffs which amounts to passing off. Hence the plaintiffs filed the present suit.
9. On the other hand, it is the case of the defendant that it is a public limited company engaged in the business of real estate development since the year 1990. Defendant's application for registration of its logo is at the stage of "Formalities Check Pass"
and as such, in case the plaintiffs have any grievance from the same, they have a right to challenge it before the Registrar of Trade Marks. Accordingly, this Court has no jurisdiction to entertain the present suit being premature.
10. It is averred that the word BELLEVUE is a generic term and the plaintiffs' registration is in respect of trademark image BELLEVUE followed by the words TOWERS AND HOMES. The plaintiffs' have nowhere claimed any right over a particular artistic or colourful way of writing the word BELLEVUE in the plaint. The defendant uses the word BELLEVUE in different style with suffixes "Exclusive Spanish Villas" and its own name on the relevant CS(OS) No.1435/2014 Page 4 of 16 documents. It has been contended that defendant itself has and enjoys great brand value and does not need to use the name of the plaintiff to carry on its business.
11. To show that BELLEVUE is a generic term, the defendant has given instances of places, hotels, hospitals and other business concerns around the world using the said term BELLEVUE and also a list of websites having BELLEVUE as a part of their domain names in Paras 5 and 6 respectively of the written statement.
12. BELLEVUE, a French word, meaning 'beautiful view' has been used by the defendant to refer to townships and high rise building that remind people of a well developed city of America which is named after it. Further, defendant has used this word with different images and specifications like exclusive Spanish Villas and never forgot to write its name CHD Developers Ltd.
13. I have heard learned counsel for both the parties who have made their submissions at bar. Before I proceed to decide these applications, it is imperative to discuss Section 29 of the Trade Marks Act, 1999 that envisages the law relating to infringement of a registered trademark and Section 28 of the Act that provides for exclusive rights granted by virtue of registration. The said provisions read as under:-
"29. Infringement of Registered Trademark (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to CS(OS) No.1435/2014 Page 5 of 16 goods or services respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and CS(OS) No.1435/2014 Page 6 of 16
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trademark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.CS(OS) No.1435/2014 Page 7 of 16
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
"28. Rights conferred by registration -
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on CS(OS) No.1435/2014 Page 8 of 16 the register) be deemed to have been acquired by any one of those person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor."
14. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.
15. In order to establish infringement, the main ingredients of Section 29 of the Act are that the plaintiff's mark must be registered under the Act; the defendant's mark is identical with or deceptively similar to the registered trade mark; and the defendant's use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trademark is likely to deceive and cause confusion as the registration shows the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question.
CS(OS) No.1435/2014 Page 9 of 16If Court finds that the defendant's mark is closely, visually and phonetically similar, even then no further proof is necessary.
16. The following are the judgments which are relevant to be referred for the purpose of infringement of the trade mark:
i. In the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR1965SC980 - at 989- 990 page wherein it was held that:
"The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods"
"if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial"
ii. In the case of American Home Products v. Mac Laboratories AIR 1986 SC 137 in Para 36 it was held as under:
"When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction...."
iii. In the case of National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898 at page 903 it was held as under:
CS(OS) No.1435/2014 Page 10 of 16"On registration of a trade mark the registered proprietor gets under Section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark."
iv. In the case of M/s Avis International Ltd. vs. M/s Avi Footwear Industries and another, reported in AIR 1991 Delhi 22,the relevant paras of which read as under:
"14. At this stage of the case, we have no affidavit against another affidavit, and in view of the statutory provisions of Ss. 28 and 31 of the Trade and Merchandise Marks Act, it would be appropriate to rely upon contentions of the plaintiffs.
15. It is apparent that the word AEVI is not a commonly used word. The word is not in a dictionary. Its adoption by the defendants, therefore, needed to be explained, which the defendants have not explained in the pleadings before the Court.
16. Phonetically the word AVIS, which is registered mark for footwear, and the word AEVI'S have to be pronounced identically. The business name of the defendants is known as AVI Footwear Industries. Prima facie, if it was the intention of the defendants by affixing the label AEVI'S on the footwear made by them was to indicate that the footwear carrying that label is made by the AVI Footwear Industries, then the mark they would have adopted would have been AVI, but that they have not done. They have tried to bring their mark/ label as close as possible phonetically to the registered mark AVIS.
17. In my view, the statutory monopoly which has been conferred upon the plaintiffs in connection with use of the mark AVIS for any other consideration in relation to grant or non-grant of an injunction, especially when the matter is at an interlocutory state, and is yet to be tried, and it cannot be foreseen as to whether the defendants who seek CS(OS) No.1435/2014 Page 11 of 16 rectification of the plaintiffs mark, on account of nonuser would be able to prove their case. The statutory registration establishes prima facie case in favour of the plaintiffs.
18. In this view of the matter, I think that the balance of convenience would be in fav0uor of the plaintiffs, to ensure that by concurrent user, during the period of the trial, no other rights come into existence. In my view, it is very convenient, if the defendants are so minded, to adopt any other label that establishes a connection in the course of trade with respect to the footwear manufactured by them."
17. Another contention of the learned counsel for the defendant is that no confusion or deception is caused by the defendant's use of the mark BELLEVUE since defendant has used this word with different images and specifications like Exclusive Spanish Villas and never forgot to write its name CHD Developers Ltd.
The test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel vs. Chetanbhat Shah and Another, reported in (2002) 3 SCC 65, wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to CS(OS) No.1435/2014 Page 12 of 16 someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. It was held that the principles which apply to trade mark are applicable to trade name also.
In para 10 of the aforesaid judgment reads as under:-
"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
18. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered CS(OS) No.1435/2014 Page 13 of 16 rather by general impressions or by some significant detail than by any photographic recollection of the whole.
19. There is no force in the submission of the defendant that the word "Exclusive Spanish Villas" has been added after the word "BELLEVUE", or the expression CHD Developers Ltd is also used, therefore, the two trademarks are not deceptively similar. The said submission is without any substance. It is clear from examining the two packaging of the parties that essential features from the same is "BELLEVUE". By adding the word "CHD Developers Ltd", i.e. the name of the defendant, alongwith the word "BELLEVUE" is totally immaterial.
20. The Supreme Court in the case of Ruston and Hornby Ltd. vs. Zamindara Engineering Co., reported in AIR 1970 SC 1649, also upheld the similarity and resemblance between the two trademarks "RUSTON" and "RUSTAM". It was also held that even an addition of the word "India" was not sufficient, to distinguish the goods from that of the plaintiff.
21. The judgment passed in the case of Midas Hygiene vs. Sudhir Bhatia and Ors., reported in 2004 (28) PTC 121 (SC) Para- 5, it was held as under:
"The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest."
22. On the contention of the defendant that the mark BELLEVUE is generic, this Court is of the opinion that the defendant himself filed an application for registration of the mark BELLEVUE. In the case of CS(OS) No.1435/2014 Page 14 of 16 Automatic Electric Ltd. Vs. R.K. Dhawan, (1999) (19) PTC 81 it was held that the defendant therein having got the trademark "DIMMER DOT" registered in Australia, could not contend that the word "DIMMER" is a generic expression. Automatic Electric Ltd. (supra), was approved by the Division Bench of this Court in The Indian Hotels Company Ltd. Vs. Jiva Institute of Vedic Science & Culture, 2008 (37) PTC 468, wherein it was held that:
"40. It was next argued by Mr. Rohtagi that the word 'JIVA' is a descriptive word which cannot be protected as a trade mark by a Civil Court. We do not think so, the appellant has itself applied for registration of the Jiva as a trade mark and cannot, Therefore, argue that the mark is descriptive. In Automatic Electric Limited. v. R.K. Dhawan and Anr. 1999 PTC (91) 81 this court has in similar circumstances repelled the contention and held that since the defendant had itself sought to claim a proprietary right and monopoly in "DIMMER DOT", the disputed trade mark it did not lie in its mouth to say that the said mark was a generic expression."
Therefore, this Court of the opinion that the plaintiffs have prima facie established a classic case of infringement of its registered trademark and passing off. Any argument of the learned counsel for the defendants on this aspect is rejected.
23. In view of the above, the plaintiffs have made a strong prima facie case. Balance of convenience also lies in favour of the plaintiffs and against the defendant. In case the interim order will not continue, the plaintiffs will face irreparable loss and injury.
24. Considering the overall facts and circumstances of the case, the application filed by the plaintiffs under Order 39 Rules 1 & 2 CS(OS) No.1435/2014 Page 15 of 16 CPC being I.A.No.9462/2014 is allowed. The interim order granted on 19th May, 2014 is made absolute during the pendency of the suit. Consequently, application filed by the defendants under Order 39 Rule 4 CPC being I.A. No. 13669/2014 is dismissed.
25. The finding arrived in the present applications are prima facie tentative and shall have no bearing in any manner when the matter would be considered by the Court after the trial.
26. No costs.
CS(OS) No.1435/2014List the matter on 12th December, 2014.
(MANMOHAN SINGH) JUDGE OCTOBER 13, 2014 CS(OS) No.1435/2014 Page 16 of 16