Indian Kanoon - Search engine for Indian Law

Delhi High Court

Alpha Corp Development Private Limited vs Alpha Integrated Management Services ... on 17 March, 2023

Author: Amit Bansal

Bench: Amit Bansal

                                 2023:DHC:1982




*     IN THE HIGH COURT OF DELHI AT NEW DELHI
%                         Date of Decision : 17th March, 2023

+                         C.O. (COMM.IPD-TM) 393/2022

      ALPHA CORP DEVELOPMENT PRIVATE
      LIMITED                                ..... Petitioner
                   Through: Mr. Sagar Chandra, Ms.Srijan Uppal,
                            Mr. Abhishek Bhati and Ms.Anisha
                            Roy, Advocates.
                   versus

    ALPHA INTEGRATED MANAGEMENT
    SERVICES PVT. LTD. AND ANR.                      ..... Respondents
                      Through: None.
    CORAM:
    HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)

1. The present rectification petition has been filed on behalf of the petitioner seeking cancellation/removal of the trademark bearing registration number 3187803 and registered in the name of respondent no.1 in respect of real estate services in Class 36 under Sections 57 and 125 of the Trademarks Act, 1999 (hereinafter 'Act').

Case set up by the petitioner

2. The case set up by the petitioner in the petition is as follows:

2.1 The petitioner, Alpha Corp Development Private Limited, is engaged in the business of real estate development including development of malls, hotels, townships, multiplexes and complexes and provides facility management services such as maintenance, building automation, security services among others, since 2003. 2.2 The petitioner is the registered proprietor of the mark ALPHA through its predecessor-in-interest, M/s Grandeur Estates Private Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 1 of 7 Signing Date:20.03.2023 18:55:18 2023:DHC:1982 Limited, bearing registration no. 1483826 and 1483827 in Classes 36 and 37 of the Act. Several other registrations have also been obtained by the petitioner in respect of the mark ALPHA and its formative marks. The earliest registration was granted on 1st September, 2006. 2.3 The petitioner has successfully delivered several real estate projects under the mark ALPHA, such as Alpha International City, Karnal (Haryana), Alpha International City, Fatehabad (Haryana), GurgaonOne-84 among others.

2.4 The petitioner has also won several real estate awards and accolades over the years. Due to long and extensive use of the mark ALPHA, the petitioner has acquired vast goodwill and reputation. The annual sales of the petitioner in the year 2018 amounted to Rs. 988,145,000/-

and the petitioner has also incurred expenditure of Rs.6,241,000/- towards advertisement and promotions in the said year.

2.5 The respondent no.1 has obtained registration of the mark (hereinafter 'impugned mark' ) in respect of similar services as that of the petitioner, in the name of the respondent no.1 under application no. 3187803 in Class 36 of the Act. The letter 'A' and the word ALPHA in the impugned mark are written in black colour, which shows the intention of the respondent no. 1 to give prominence to the mark ALPHA in the impugned mark. The colour scheme adopted by the respondent no.1 for the impugned mark is also similar to that of the petitioner's ALPHA marks.

Signing Date:20.03.2023 18:55:18 2023:DHC:1982 2.6 The malafides of the respondent no.l is evident from the fact that the respondent no.l company was incorporated by the ex-employees of the petitioner and its subsidiary company, Alpha G: Corp Management Services Pvt. Ltd., on 23rd July, 2015, which is prior to the date of resignation of the said employees. The said employees had complete access to the records and data of the petitioner and its subsidiary company.

2.7 Public caution notices were published by the petitioner's subsidiary company in various newspapers when it came to know that its ex- employees had incorporated a new company with confusingly similar name for providing identical services of facility management. Thereafter, the respondent no.1 filed a defamation complaint before Tis Hazari Courts, New Delhi. Against the summoning order dated 14th May, 2016 passed in the aforementioned defamation complaint, the petitioner filed a CRL.M.C. No.297/2017 before this Court, which is pending adjudication.

2.8 The petitioner filed an application being SRN G43969063 dated 6th February, 2017 before Ministry of Corporate Affairs (MCA) under Section 16 of the Companies Act, 2013 seeking a direction to the respondent no. 1 to rectify its deceptively similar/identical trade name. The Regional Director, MCA held that the trade name of the respondent no.1 closely resembles the name of the subsidiary company of the petitioner and directed them to change the name of their company vide order dated 1st August, 2017. 2.9 The impugned mark was published in the Trade Mark Journal on 18 th September, 2017. However, the respondent no. 1 concealed the Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 3 of 7 Signing Date:20.03.2023 18:55:18 2023:DHC:1982 factum of passing of the aforementioned order by the Regional Director regarding change of name of the respondent no.1 company. 2.10 The respondent no.l has challenged the aforesaid order of the Regional Director by filing a Writ Petition Civil No. 24380/2017 before High Court of Punjab and Haryana, which is presently pending adjudication. However, the High Court of Punjab and Haryana vide order dated 30th October, 2017 has stayed the operation of the order dated 1st August, 2017 passed by the Regional Director. 2.11 The impugned mark has been adopted by the respondent no. 1 with the sole intention of riding on the goodwill of the petitioner and to create confusion in the minds of the public and trade channel. 2.12 Accordingly, the present rectification has been filed by the petitioner. Proceedings in the petition

3. Notice in the present petition was issued by the Intellectual Property Appellate Board (IPAB) on 1st November, 2018. However, the respondent no.1 failed to appear before IPAB despite service. The respondent no.1 was proceeded against ex parte on 21st January, 2020. Thereafter, the present rectification got transferred to this Court after coming into effect of Tribunals Reforms Act, 2022 and the Court notice was issued to the respondent no.1 by this Court on 28th March, 2022. However, none appeared on behalf of the respondent no.1 despite service.

4. It was noted in the order dated 23rd January, 2023 that the respondent no.1 has changed its corporate name from 'Alpha Integrated Management Service Private Limited to 'Abante Integrated Management Services Private Limited'. Further, on 15th February, 2023, the counsel for the petitioner handed over fresh trademark registrations granted in favour of the Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 4 of 7 Signing Date:20.03.2023 18:55:18 2023:DHC:1982 respondent no.1 in respect of the marks (logo) , (device) and 'ABANTE' (word). The court notice was also issued to the respondent no.1 including through attorney, who applied for the aforesaid registrations on his behalf on the said date. Court notice was duly served on the respondent no.1's attorney. Despite service, none has appeared on behalf of the respondent no.1. Nor any reply/counter-statement has been filed on behalf of the respondent no.1. It is indicative of the fact that the respondent no.1 is not interested in pursuing the present petition, as it has already changed its trademark and its corporate name.

Analysis and Findings

5. I have heard the counsels for the parties and perused the record of the case.

6. In order to determine whether the trademark of the respondent no.1 is identical to the trademark of the petitioner, it would be apposite to refer to the two competing trademarks, as set out below:

Respondent no.1's Trademark Petitioner's Trademarks ALPHA Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 5 of 7 Signing Date:20.03.2023 18:55:18 2023:DHC:1982

7. It is pertinent to note that the prominent and essential feature of the impugned mark is 'ALPHA', which is identical and deceptively similar to the petitioner's mark 'ALPHA' and its other formative marks in respect of similar services. Therefore, the registration of the impugned mark is in contravention of Section 11(1) of the Act.

8. The respondent no. 1 was well aware of the petitioner's mark ALPHA since respondent no. 1 was incorporated by ex-employees of the petitioner. There can be no plausible reason for the respondent no. 1 to have chosen an identical and a deceptively similar mark as that of the petitioner's mark for identical goods. Clearly, the adoption of the mark by the respondent no.1 is dishonest and therefore, the respondent no.1 is not entitled to the benefit of Section 12 of the Act.

9. From the facts detailed above, it is clear that the petitioner is the proprietor of the impugned mark. The respondent no.1 cannot claim to be the proprietor of the impugned trademark as there is nothing to show as to how the impugned trademark has been adopted by the respondent no.1. Therefore, the application for registration of the impugned trademark is in contravention of Section 18(1) of the Act. Further, the respondent no.1 is also not entitled to the benefit of Section 11(4) of the Act as the petitioner has not consented to the use of the impugned mark by the respondent no.1.

10. The grant of registration of the impugned trademark by the respondent no.2 is against the principles of Section 11(3)(a) of the Act, as there is no dispute that the petitioner is the prior user of the impugned trademark since 2003 in India. Due to such a long, continuous and extensive use, the impugned mark is solely associated with the petitioner. Therefore, the Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 6 of 7 Signing Date:20.03.2023 18:55:18 2023:DHC:1982 registration of the impugned trademark should have been refused by the respondent no.2.

11. In view of the discussion above, it is clear that the impugned trademark has been adopted by the respondent no.1 dishonestly to trade upon the established goodwill and reputation of the petitioner and to project itself to be associated with the petitioner. The nature of the impugned trademark is such that it will deceive the public and create confusion as regards the source of the goods manufactured and sold under the impugned trademark.

12. Accordingly, the present petition is allowed and the impugned trademark registered under trademark application no. 3187803 in the name of the respondent no.1 in Class 36 is removed from the Register of Trade Marks.

13. A copy of the order be sent to the respondents through e-mail. The Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail - [email protected] for compliance.

AMIT BANSAL, J MARCH 17, 2023 sr Signature Not Verified Digitally Signed By:AMIT BANSAL C.O. (COMM.IPD-TM) 393/2022 Page 7 of 7 Signing Date:20.03.2023 18:55:18