Bangalore District Court
G.S.E Commerce Private vs The Design Cafe on 15 March, 2023
KABC010113042018
Form
No.9
(Civil)
Title
Sheet
for PRESENT: SRI PADMA PRASAD
Judgme
B.A.(Law) LL.B.,
XVIII Additional City Civil Judge.
Dated this the 15 th day of March 2023
PLAINTIFF: G.S.E COMMERCE PRIVATE
LIMITED, #41, 2nd Floor, Medsoft
Building, Tata Silk Farm,
Kanakapura Road, Basavangudi,
Bengaluru, Karnataka 560 004.
Represented by its Authorised
signatory Mr. Shezan Mohammad
Mobin Bhojani, Aged about 36
years.
[By Sri Mahesh Chowdhary A, Advocate]
/v e r s u s/
DEFENDANT: The Design Cafe,
25/2, Ritual Apt. 11th Min,
14t A Cross Road,
Malleshwaram,
Bengaluru-560 003.
[By Sri B.S.M., Advocate]
Date of institution of the : 21/04/2018
suit
2 O.S.3027_2018_Judgment_.doc
Nature of the suit : For INJUNCTION.
Date of commencement of : 15/11/2021
recording of the evidence
Date on which the : 15/03/2023
Judgment was
pronounced.
: Year/s Month/s Day/s
Total duration
4 10 25
(PADMA PRASAD)
XVIII ACCJ: B'LURU.
This is a suit for permanent injunction.
2. The plaint case in nutshell is that, plaintiff
is a body incorporate having been registered under the
provisions of Companies Act, 1956 having started by
well known and award winning architects and
designers Ms.Gita Ramanan and Mr.Shezan Bhojani
founder directors. Plaintiff company is engaged in the
business of interior design, décor and providing
comprehensive building solutions to its customers
through careful and judicious usage of its custom
made software and its well trained 25 member expert
architects. The directors coined the term "Design
3 O.S.3027_2018_Judgment_.doc
Cafe" in the year 2012 with is based on two primary
maxims - "Design has the power of change the way we
life; from out homes and offices to places of leisure
and luxury" and "God is in the details". Since 2012,
the plaintiff company is operating, trading and has
gained international repute under the trade name
"Design Cafe" and trade mark (device mark).
The plaintiff has been using the mark so as to
render goods and services related to interior design,
decor and providing comprehensive building
solutions. They have obtained trade mark registration
for trade mark Design Cafe (device mark) in classes
37 & 42 with priority date being 2013 under
Trademarks Act, 1999. The word mark "Design Cafe"
is a unique, uncommon and distinctive. The device
mark specially has been designed by placing of letters
d and c in a specific font and style. For the last 5
years they have established, goodwill and niche for the
goods and services provided by them. They have spent
huge amount for promoting the services and have also
set up an online portal with a unique domain name
4 O.S.3027_2018_Judgment_.doc
www.designcafe.xyz. It is further contended that
defendant is now trying to use the similar mark both
in terms of word mark and device mark and is
operating in providing goods and services related to
the interior designs, decor and holistic building
solutions similar to that of the plaintiff. The act of the
defendant amounts to infringement and passing off of
the plaintiff's goods and services as that of the
defendant. The defendant is using the marks
identical and similar marks to that of the plaintiff by
way of false and slavish imitation of essential artistic
and distinctive features of plaintiff's trade mark. The
words "Design" and "Cafe" along with letters "d" and
"c" constitute essential and integral part of the
plaintiff's trade mark. Accordingly prayed for the
reliefs claimed in the suit.
3. After issuance of suit summons, the
defendant appeared through its counsel filed written
statement. The defendant has totally denied the plaint
case. The defendant claims that it is running the
business from the year 2006 i.e., much earlier to the
5 O.S.3027_2018_Judgment_.doc
plaintiff and accordingly claimed that the word or
term "Design Cafe" was coined by the Directors of
the defendant company in the year 2012 is specifically
denied. The word "Design Cafe" is searched in the
virtual media, lot of names with "Design Cafe" will
surface. Infringement, passing off and unfairness is
near to impossible to in the service of interior designs.
The defendant claims that the allegation is based on
the reliance of face book, you-tube and other virtual
media and plaintiff has not referred any actual
transactions. The receiving of legal notice also
disputed by the defendant. The defendant is
continuously using the trade mark prior to the date of
plaintiff, the plaintiff has not applied the trade mark
registration in good faith. The defendant also claimed
that there is no impediment to use the face book, the
defendant denied the cause of action for the suit. It is
also stated that the defendant created the the "Design
Cafe" in the face book on 18/9/2011 and the
defendant is involved in Design Architecture, interior
design, furniture design, office design, residential
6 O.S.3027_2018_Judgment_.doc
design and retails space design since 28/8/2006, and
the defendant is the lawful owner of the name and
trade mark by usage which is longer and earlier to the
plaintiff, the plaintiff approached the court with
unclean hands, and mislead the court and accordingly
prayed for dismissal of suit.
4. On the basis of above pleading the court
framed following issues:
(1) Whether the plaintiff proves that it is the
registered owner of the device mark ?
(2) Whether the plaintiff proves that it is the
prior user of Trademark 'DESIGN CAFE' ?
(3) Whether plaintiff proves that the defendant
is passing off its goods as that of the
plaintiff by using the offending trade mark
'THE DESIGN CAFE' with device mark dc?
(4) Whether the plaintiff proves that defendant
is infringing the plaintiffs registered
trademark(Device) by using identical
mark dc as contended?
(5) Whether the plaintiff is entitled for the
decree of permanent injunction as sought
for?
(6) Whether the plaintiff is entitled for the
decree of mandatory injunctions as sought
for?
(7) What order or decree?
7 O.S.3027_2018_Judgment_.doc
5. Plaintiff in order to prove its case, examined
its Director Operations and authorised representative
as PW.1 and got marked documents as per Ex.P1 to
Ex.P22. On the other hand, neither defendant
examined any witness nor produced any documents
in support of its case as well as not cross-examined
PW.1.
6. Heard the arguments and perused entire
records of the case. The learned advocate for the
plaintiff filed following citations:
1. Shambhu Nath & Brothers & Ors vs.
Imran Khan, 2019 AIR CC 365.
2. RPG Enterprises Limited Vs. Riju
Ghoshal and another, 2022 SCC Online Bom
626.
3. Renaissance Hotel Holdings Inc. Vs.
B.Vijaya Sai & others, (2022) 5 SCC 1.
7. My findings on the above issues are as
under:
Issue No. 1) ............In the affirmative;
Issue No. 2) ............In the affirmative;
8 O.S.3027_2018_Judgment_.doc
Issue No. 3) ............In the affirmative;
Issue No. 4) ............In the affirmative;
Issue No. 5) ............In the affirmative;
Issue No. 6) ............In the affirmative;
Issue No. 7) ............As per final order for
the following:
8. ISSUE NO.1 TO 4: The issue no.1 is
regarding proving of fact that the plaintiff is the
registered owner of the device mark . Issue No.2 is
to proving that the plaintiff is the prior user of 'Design
Cafe', Issue No.3 and 4 are regarding the passing of
and infringing of the plaintiff's trade mark and device
mark as claimed in the plaint. Therefore, all these
issues are interlinked with each other, hence they
have been taken up together in order to avoid
repetition.
9. The plaintiff in order to prove its case
examined its Director Ganesh Prabu as PW.1 by filing
evidence affidavit wherein he stated in consonance
with plaint case, and also got marked documents at
Ex.P1 to Ex.P22. The plaintiff along with the suit filed
9 O.S.3027_2018_Judgment_.doc
a memo on 15/11/2021 with board resolution. As
per the said document, PW.1 has been authorised to
prosecute this case.
10. The plaintiff produced documents. Ex.P1 is
the certificate of incorporation, Ex.P2 and Ex.P3 are
the registration certificates which shows that the
plaintiffs are doing the business of interior decoration
and contract. Ex.P4 to Ex.P8 are the five legal use
certificates which disclose that the plaintiff has
obtained the registration of trade mark under the
trade mark type device and word on "Design Cafe".
Therefore, as per the said documents, the plaintiffs
are the registered owner of the trade mark and logo
as claimed in the plaint.
11. The plaintiff claimed that they are using the
trade name "Design Cafe" for their interior decoration
business since 25/1/2013. The documents produced
by the plaintiff certainly substantiate the said fact.
The defendant filed a written statement and in the
written statement claimed that the defendant is the
10 O.S.3027_2018_Judgment_.doc
prior user of the trade mark "Design Cafe", and he is
doing the business since 2006 and i.e., evident from
the face book page of the defendant that has been
dated 18/9/2011, accordingly the defendant claimed
that he is the prior user of the trade name "Design
Cafe". The defendant though claimed that he is the
prior user of the trade name "Design Cafe", not chosen
to produce any oral or documentary evidence to
substantiate the said fact. Apart from that, the
defendant also not chosen to resist the oral evidence
of PW.1 as well as documentary evidence placed
before the court. The defence taken by the defendant
sufficiently shows that he is also claiming right over
the trade name "Design Cafe". When the defendant
claimed that he is the prior user of the trade name
"Design Cafe", it is for the defendant to prove that the
defendant is the prior user as claimed in the written
statement. When the defendant failed to produce any
documentary or oral evidence in support of his
defence, as well as failed to cross-examine the PW.1
and challenge the documentary evidence produced by
11 O.S.3027_2018_Judgment_.doc
the plaintiff, the court left with no option than to
accept the case of plaintiff. In the case on hand, the
plaintiff produced the documents to show that the
plaintiff is the registered trade mark owner of "Design
Cafe" along with logo in class 37, 42, 9. As the
plaintiff is the registered trade mark owner, the trade
mark of plaintiff has to be protected under Section 29
of the Trade Marks Act. When the defendant failed to
prove that he is the prior user of the trade mark
"Design Cafe" as claimed in the written statement the
court cannot accept the said claim, and the court has
to accept that the plaintiff is the prior user of the
trade name "Design Cafe". Therefore, it is clear that
the defendant is infringing the plaintiff's registered
trade mark "Design Cafe" along with logo. Accordingly,
Issue No.1 to 4 are answered in affirmative.
12. ISSUE NO.5 AND 6: In view of the finding
on aforesaid issues, certainly the plaintiff is entitled
for the reliefs claimed in the suit, Accordingly, these
two issues are answered in affirmative.
12 O.S.3027_2018_Judgment_.doc
13. ISSUE NO.7: In view of my finding on the
above issues, I proceed to pass the following:
The suit of the plaintiff is hereby
decreed with costs in following terms:
The defendant is hereby permanently
restrained from infringing and
passing off of the plaintiffs' registered
trade mark "Design Cafe" with logo
by using offending mark and logo as
claimed in the suit.
The defendant is hereby directed to
destroy all infringing materials.
The defendant is directed to render
true accounts of its trading by
infringing and passing off of the
plaintiff's trade name.
Draw decree accordingly.
***
[Dictated to the Judgment Writer directly on computer, Script corrected, signed and then pronounced by me, in the Open Court on this the 15 th day of March 2023.] [PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
13 O.S.3027_2018_Judgment_.doc
1. List of witnesses examined on behalf of the Plaintiff/s:
PW.1 Ganesh Prabu
2. List of witnesses examined on behalf of the Defendant/s:
NIL.
3. List of documents marked on behalf of the Plaintiff/s:
Ex.P1 Copy of the certificate of the incorporation.
Ex.P2 Copy of the registration certificate of establishment.
Ex.P3 Copy of the GST registration certificate.
Ex.P4 to 5 Legal Use Certificates Ex.P8 Ex.P9 Plaintiff's brochure.
Ex.P10 Plaintiff's Brochure Booklet.
Ex.P11 Printout of E-magazine Femina.
Ex.P12 Online printout of website Industry Updates.
Ex.P13 Online printout of Urban clap website. 14 O.S.3027_2018_Judgment_.doc Ex.P14 Online printout of Just Dial website.
Ex.P15 Online printout of whois record of Domain ownership of plaintiff's website.
Ex.P16 Online printout of public relation report for plaintiff.
Ex.P17 Feedbacks of customers of plaintiff (8 sheets).
Ex.P18 18 Invoices (marked together).
Ex.P19 Office copy of the seize and desist notice.
Ex.P20 Postal receipt.
Ex.P21 Online printout of defendant's facebook page.
Ex.P22 Certificate under Section 65 B of Evidence Act.
4. List of the documents marked for the defendants:
NIL.
Digitally signed by PADMA [PADMA PRASAD] PADMA PRASAD XVIII Additional City Civil Judge.
PRASAD Date:
2023.03.15 BENGALURU.
15:50:43
+0530
15 O.S.3027_2018_Judgment_.doc ...Judgment pronounced in the Open Court....
(Vide separate detailed judgment) The suit of the plaintiff is hereby decreed with costs in following terms:
The defendant is hereby permanently restrained from O.S.3027_2018_Judgment_.doc infringing and passing off of the plaintiffs' registered trade mark "Design Cafe" with logo by using offending mark and logo as claimed in the suit.
The defendant is hereby directed to destroy all infringing materials. The defendant is directed to render true accounts of its trading by infringing and passing off of the plaintiff's trade name. Draw decree accordingly.
[PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
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