Bangalore District Court
M/S Prestige Estates Projects vs M/S Forum Builders Private on 30 May, 2023
KABC010365952019
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 30 th day of May 2023
PLAINTIFF: M/s Prestige Estates Projects
Ltd., A Public Limited company
incorporated under Companies
Act, 1956, Having its registered
office at "The Falcon
House",No.1, Main Guard Cross
Road, Bangalore-560 001. Rep.
By its Authorized
Representative & Executive
Director Mr. Suresh Singaravelu
s/o Munuswami Singaravelu,
Aged about 68 years.
[By Sri Harikrishna S. Holla, Advocate]
/v e r s u s/
DEFENDANT: M/s Forum Builders Private
Limited, 4/1, Red Cross Place,
Kolkata 700001.
Represented by its Director.
[Exparte]
Date of institution of the : 2/12/2019
suit
2 O.S.8726_2019_Judgment_.doc
Nature of the suit : For INJUNCTION (IPR)
Date of commencement of : 8/11/2021
recording of the evidence
Date on which the : 27/3/2023
Judgment was
pronounced.
: Year/s Month/s Day/s
Total duration
3 5 28
(PADMA PRASAD)
XVIII ACCJ: B'LURU.
This is a suit for permanent injunction and
damages.
2. The plaintiff's case in nutshell is that,
plaintiff is engaged in the business of construction
and management of retail malls since last 28 years.
The plaintiff has adopted the trade mark 'THE
FORUM' for the purposes of real estate, financial and
monetary affairs among other allied service since the
year 2005 and has extensively used the same in the
subsequent years, and it is one of the reputed
builders of South India having built innumerable
3 O.S.8726_2019_Judgment_.doc
residential apartments, office space, malls in and
around the city of Bengaluru.
Plaintiff claims that defendant adopted the
trading style/ trade name FORUM BUILDERS and it
is deceptively identical to the well-established trade
mark of the plaintiff which amounts to infringement
of the registered trade mark.
Accordingly prayed for the reliefs claimed in the
suit.
3. Inspite of service of summons, defendant
has not chosen to appear before the court and contest
the case of the plaintiff. Hence, he is placed exparte.
4. On the basis of above, point for
consideration is that - Whether the plaintiff is
entitled for the reliefs claimed in the suit ?
5. Plaintiff in order to prove its case, examined
its Senior Manager Secretarial of plaintiff company
as PW.1 and got marked documents as per Ex.P1 to
Ex.P26.
6. Heard the arguments of the plaintiff and
perused entire records of the case.
4 O.S.8726_2019_Judgment_.doc
7. My findings on the above point is partly in
the affirmative, for the following:
8. The specific case of the plaintiff in the
plaint that the plaintiff engaged in business of
construction and management since last 28 years and
the plaintiff is one of the reputed builders of South
India. The plaintiff has adopted the trade mark 'THE
FORUM' for the purpose of real estate, financial and
monetary affairs since 2005, and also adopted the
distinctive mark 'THE FORUM' with the device mark.
The Forum associated with plaintiff company. The
plaintiff in para 7 of the plaint has given particulars of
the various trade mark obtained under class 35, 36,
37, 41. The plaintiff further claimed that on 6/9/2012
the defendant filed an application for the registration
of trade mark and fraudulently obtained the mark
'FORUM BUILDERS' claiming that they are using the
said mark since 2008. The plaintiff further claims that
the plaintiff is using the trade mark 'THE FORUM'
5 O.S.8726_2019_Judgment_.doc
since 2005 which is prior to the adoption of alleged
trade mark 'FORUM BUILDERS' by the defendants.
Accordingly plaintiff claimed that they are the prior
user of the trade mark claimed in the plaint.
9. The plaintiff in support of its case,
examined its Senior Manager Lingaraj Patra as PW.1
and got marked documents at Ex.P1 to Ex.P26. Ex.P1
is the board resolution which authorises the PW.1 to
prosecute this case on behalf of the plaintiff. Ex.P2 to
Ex.P7 are the Legal Use Certificates; Ex.P8 is the CA
certified sales turnover; Ex.P9 is the certified copy of
the certificate of registration; Ex.P10 is the Falcon
News Magazine; Ex.P11 is the online printout of
advertisement and articles; Ex.P12 to Ex.P16 are the
online printouts of articles; Ex.P17 to Ex.P20 are the
online printouts of advertisements; Ex.P21 is the
online printout of defendant's website; Ex.P22 is the
online printout of company master date of defendant;
Ex.P23 is the online printout of defendant's trade
mark; Ex.P24 is the certificate under Section 65 B of
Evidence Act in respect of Ex.P11 to Ex.P23; Ex.P25 is
6 O.S.8726_2019_Judgment_.doc
the online printout of trade mark status of defendant;
and Ex.P26 is the certificate under Section 65-B of
Evidence Act. These documents show that the plaintiff
is a company and it has been authorized by its
authorised signatory to prosecute this case as well as
it is the company involved in construction field as
claimed in the plaint.
10. Ex.P2 to Ex.P7are the legal use certificate of
plaintiff's various trademarks. These documents
shows that the plaintiff is the registered owner of word
mark THE FORUM in various classes as claimed in
the plaint as well as logo with eagle and original
artistic work, design and get up of their logo
PRESTIGE GROUP. Therefore, these materials on
record sufficiently establishes the fact that the
plaintiff is the registered owner of trademark THE
FORUM and logo since 2005 and the plaintiff has
executed various projects in and around Bengaluru as
well as other cities. The documents produced by the
plaintiff sufficiently shows that the plaintiff's
7 O.S.8726_2019_Judgment_.doc
trademark THE FORUM with the device of bird is a
part of the PRESTIGE GROUP.
11. It is relevant to note that the plaintiff has
obtained the registration of trade mark in the word
mark as well as device and logo as per the document
produced by the plaintiff. In the case on hand, the
defendant though served with the suit summons not
chosen to appear before the court to resist the plaint
case. The definite claim of the plaintiff is that, they
are the prior user of the trade mark 'THE FORUM'.
There is no material on record to disbelieve the said
claim of the plaintiff. Ex.P23 shows that the
defendant claims that they are using the trade mark
'FORUM BUILDERS' since 19/2/2008 which is
subsequent to the registration of plaintiff's trade
mark. The documents produced by the plaintiff
particularly legal use certificates disclose that the
plaintiff's trade mark has been registered as on
11/7/2005 which is prior to the registration of
defendant's trade mark. Therefore, it is clear that the
plaintiff is the prior user of the trade name 'THE
8 O.S.8726_2019_Judgment_.doc
FORUM' and also obtained the registration of trade
mark prior to the defendant using the trade name
'FORUM BUILDERS' in the year 2008. Hence the trade
name of the plaintiff which is a registered one to be
protected under the provisions of Trade Marks Act.
Absolutely there is no material on record to disbelieve
the plaint case.
12. The material placed before the court shows
that the plaintiff and defendant are in identical
business of construction of building premises. As
stated earlier, the plaintiff has made out sufficient
case / grounds to accept his case that the plaintiff is
using the trade name 'THE FORUM' with the device
mark for its business since 2005. As per Ex.P23, the
defendant started to use the word FORUM for its
business since from the year 2008. If the said claim is
accepted, the defendant started to use the word
FORUM for its business almost after the lapse of 3
years. Therefore, the plaintiff sufficiently proved that
it is the prior user of the word THE FORUM for
construction business. Under such circumstances,
9 O.S.8726_2019_Judgment_.doc
the court is left with no option than to accept the
plaint case. Further, the registered trade name of the
plaintiff has to be protected under Section 29 of the
Trade Marks Act. Therefore, material on record
sufficiently shows that the defendant has infringed
and passing off of the plaintiff's registered trade name.
13. The plaintiff in this case also claimed
damages of Rs.25,000/- per day from the date of filing
of the suit. But the plaintiff has not produced any
material on record to show that the plaintiff has
sustained damages as claimed in the plaint per day.
Further, the plaintiff has paid the court fee for the
damages of Rs.25,000/-. In the case on hand, the
plaintiff sufficiently proved that the plaintiff is the
registered trade mark owner and inspite of that the
defendant has used the plaintiff's trade mark. Hence,
certainly the defendant is liable to pay the damages of
Rs.25,000/- only. Accordingly, the above point is
answered partly in the affirmative. In the result,
following:
10 O.S.8726_2019_Judgment_.doc
The suit of the plaintiff is hereby
decreed in part with costs in the
following terms:
The defendants or anybody claiming
under them are hereby permanently
restrained from infringing THE
plaintiff's registered trademark THE
FORUM or any other trademark,
trading style which is deceptively
similar to the plaintiff's trademark by
using offending trademark FORUM
BUILDERS or any other deceptively
similar trademark /trading style for
building constructions.
The defendant is hereby directed to
destroy the entire stock of unused
offending brochures, bills, hoardings,
literature, negatives, positives,
transparencies, blocks containing
THE FORUM
The defendant is directed to pay
damages of Rs.25,000/- to the
plaintiff.
The defendant is directed to render
true accounts of the profit that
defendant has derived by promoting
11 O.S.8726_2019_Judgment_.doc
their company by using offending
tradename / trading style FORUM
BUILDERS.
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 30 th day of May 2023.] [PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
1. List of witnesses examined on behalf of the Plaintiff/s:
PW.1 Lingaraj Patra
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 Board resolution.
Ex.P2 to Legal Use Certificates (6 in nos.) Ex.P7 Ex.P8 CA certified sales turn over.
Ex.P9 CC of the certificate of registration. 12 O.S.8726_2019_Judgment_.doc Ex.P10 Falcon news magazine.
Ex.P11 Online printout of advertisement and articles.
Ex.P12 to Online printout of articles. Ex.P16 Ex.P17 to Online printout of advertisements. Ex.P20 Ex.P21 Online printout of defendant's website.
Ex.P22 Online printout of company master data of defendant.
Ex.P23 Online printout of defendant's trade mark.
Ex.P24 Certificate under Section 65-B of Evidence Act in respect of Ex.P11 to Ex.P23.
Ex.P25 Online printout of trade mark status of defendant.
Ex.P26 Certificate under Section 65-B of Evidence Act.
4. List of the documents marked for the defendants:
NIL.
Digitally signed [PADMA PRASAD] by PADMA PADMA PRASAD XVIII Additional City Civil Judge.
Date: BENGALURU.
PRASAD 2023.05.30
15:31:07
+0530
13 O.S.8726_2019_Judgment_.doc ...Judgment pronounced in the Open Court....
(Vide separate detailed judgment) The suit of the plaintiff is hereby decreed in part with costs in the following terms:
The defendants or anybody claiming under them are hereby permanently restrained from infringing THE plaintiff's registered trademark THE FORUM or any other trademark, trading style which is deceptively similar to the plaintiff's trademark by using offending trademark FORUM BUILDERS or any other O.S.8726_2019_Judgment_.doc deceptively similar trademark /trading style for building constructions. The defendant is hereby directed to destroy the entire stock of unused offending brochures, bills, hoardings, literature, negatives, positives, transparencies, blocks containing THE FORUM The defendant is directed to pay damages of Rs.25,000/- to the plaintiff. The defendant is directed to render true accounts of the profit that defendant has derived by promoting their company by using offending tradename / trading style FORUM BUILDERS.
Draw decree accordingly.
[PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.