Bangalore District Court
M/S Prestige Estates Projects vs M/S Falcon Shelters Pvt. Ltd on 15 November, 2022
KABC010220102014
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 November 2022
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 VP Audit &
Taxation, Sriram Iyer S/o
S. Balasubramanian, Aged
about 38 years.
[By Sri Harikrishna S. Holla, Advocate]
/v e r s u s/
DEFENDANT: M/s Falcon Shelters Pvt. Ltd.,
#28/1, Opp. Nalli Silks,
Margosa Apartments
Margosa Road, Malleswaram,
Bangalore-560 003.
Rep. By its Managing Director.
2 O.S._7852_2014_Judgment_.doc
[Retired]
Date of institution of the : 16/10/2014
suit
Nature of the suit : For INJUNCTION.
Date of commencement of : 8/11/2021
recording of the evidence
Date on which the : 15/11/2022
Judgment was
pronounced.
: Year/s Month/s Day/s
Total duration
8 - 31
(PADMA PRASAD)
XVIII ACCJ: B'LURU.
This is a suit for permanent injunction and
damages.
2. The plaintiff's case in nutshell is that,
initially plaintiff is a partnership firm established as
per partnership deed dated 1/4/1986 and
commenced the business of building construction
under the name and style PRESTIGE ESTATE and
properties. The plaintiff claims that it is engaged in
the construction and building business since 28 years
and it is one of the reputed builders of South India
3 O.S._7852_2014_Judgment_.doc
having built innumerable residential apartments,
office space, malls in and around the city of
Bengaluru. The residential and commercial complexes
built by the plaintiff are identified with their name and
trademark PRESTIGE, PRESTIGE GROUP and
PRESTIGE ESTATE. The plaintiff further claimed that
on account of high quality of construction, intrinsic
quality, salesmanship, advertisement, promptness in
executing projects, the plaintiff has built a vast
reputation and goodwill in the market, the plaintiff
has executed the works at Bengaluru, Chennai and at
other places in India etc., The word PRESTIGE has
become distinctive with plaintiff in respect of building
construction business and exclusively identified with
plaintiff and none else. The word and name
PRESTIGE has thus developed into and has acquired
a secondary meaning co-related with the plaintiff and
its building projects. The name PRESTIGE has
become the trademark / service mark synonymous
with the plaintiff only. The plaintiff in the plaint has
given the particulars and names of its various
4 O.S._7852_2014_Judgment_.doc
projects, and also given the particulars of its
trademarks, sales turn over, advertisement expenses
etc., The plaintiff further claimed that it has many
claims from abroad countries like USA, UK, Germany,
Great Brittan, and Gulf countries etc., The plaintiff
further claimed that the plaintiffs have carved out a
special niche and have created revolution in the field
of construction by offering residential and commercial
complexes with exclusive range of lifestyles, features,
and amenities such as swimming pool, health club,
badminton court, library, super market, ATM, Gym,
Coffee Shop, Dispensary, Tennis Court and also
provision for landscaping, garden, greenary etc., The
plaintiff also claimed that the plaintiff is doing its
activities under the trademark / service mark,
PRESTIGE, PRESTIGE GROUP, and PRESTIGE
ESTATE & PROPERTIES. Accordingly, claimed that
the plaintiff's trademark PRESTIGE has become
distinctive with the plaintiff and trade name has
acquired a secondary meaning co-related with the
plaintiff and its business.
5 O.S._7852_2014_Judgment_.doc
Plaintiffs claims that they have also been using
the device of FALCON with the word FALCON for
promoting their business. As a matter of fact, the
registered office of the plaintiff company is located in
The Falcon House, symbolizes the device of FALCON
Bird since the year 1986. Besides the plaintiff is
publishing news magazines with the device of
FALCON. The plaintiffs have also obtained registration
of FALCON for construction and real estate activities.
The case made out by the plaintiff in this case is
that, the defendant has commenced the business from
20/12/2013 under the trading style FALCON
SHELTERS PVT LTD., The adoption of the trade name
FALCON with device of Bird by defendant amounts
to infringement of registered trademark PRESTIGE.
The defendant used and adopted FALCON with device
of Bird similar to the registered trademark of plaintiff
in order to confuse the customer with the intention to
encash the immense goodwill and reputation earned
by the plaintiff. The trademark used by the defendant
is deceptively similar to the plaintiff's trademark and
6 O.S._7852_2014_Judgment_.doc
the defendant is infringing and passing off of the
plaintiff's registered trademark PRESTIGE.
Accordingly, plaintiff claims that the defendant
caused loss to the plaintiff and prayed for the relief
claimed in the suit.
3. The defendant filed a written statement
wherein denied the plaint averments and claimed that
the defendant is the registered owner of trade mark
"THE FALCON HOUSE", and they are not infringed
any trademark of plaintiff or they have not traded in
the name of FALCON and the word "THE FALCON
HOUSE" is only one of the project of defendants. The
defendant also claimed that the trademark of
defendants is totally different, and accordingly not
liable for any damages and the plaintiff is not entitled
for the reliefs claimed in the suit. The defendants also
claimed that they are not intended to use the word
FALCON for their projects and they are not at all
trading in the name of FALCON. The defendant also
claimed that the word FALCON has been used by
several persons and also the eagle has been used by
7 O.S._7852_2014_Judgment_.doc
many persons for their respective business. The
defendant further claimed that the word FALCON is a
very commonly used word in the field of building
construction and real estate as well as other fields.
The mark FALCON by virtue of extensive use has
become common in the real estate market. As such
the plaintiff has not acquired any reputation, good will
on the word FALCON.
The defendant further claimed that they have
used SHELTERS as a suffix to the word FALCON and
the defendants trade name is combination of FALCON
SHELTERS that is distinctive in itself. Further, the
defendant claims that in the year 2013, they started
the company and they used the word FALCON for
their trading because of the ability of FALCON to sore
high in the sky as well as its ability to come down on
its target without loosing its ability, both of which
were the qualities that the defendant's company wish
to portray and associate with.
Further, the defendant also claimed that design
and the manner in which Eagle has been portrayed by
8 O.S._7852_2014_Judgment_.doc
the defendant is totally different from the plaintiff and
there is no chance of confusion to identify the same,
and also claimed that colour combination of
defendant's logo is different from that of plaintiff. The
defendant denied all other plaint averments and
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 trademark
"THE FALCON HOUSE"?
(2) Whether plaintiff further proves that
it is the registered owner of copyright
in respect of device of flying FALCON?
(3) Whether the plaintiff further proves
that defendant has infringed the
plaintiff's registered trade mark and
copyright?
(4) Whether the plaintiff is entitled for the
relief of permanent injunction as
prayed for?
(5) Whether the plaintiff is entitled for the
relief of mandatory injunction as
prayed for?
(6) Whether the plaintiff is entitled for the
relief of damages as prayed for?
(7) What order or decree?
9 O.S._7852_2014_Judgment_.doc
5. Plaintiff in order to prove its case, examined
its Senior Manager Secretarial as PW.1 and got
marked documents as per Ex.P1 to Ex.P29. On the
other hand, defendant neither examined any witness
nor produced any documents on its behalf as well as
not cross-examined the plaintiff's witnesses.
6. Heard the arguments and perused entire
records of the case. The learned advocate for the
plaintiff filed following citations:
1. General Mills Marketing Inc. & anr. Vs.
South India Beverages Pvt. Ltd., 2014 SCC
Online Del 3779.
2. Pidilite Industries Limited Vs. Vilas
Nemichand Jain and another, (2015) 6 AIR Bom
R 389.
3. Nokia Corporation & ors. Vs.
Movieexpress & ors 2017 SCC Online Del 11359.
7. My findings on the above issues are as
under:
Issue No. 1) ............In the affirmative;
10 O.S._7852_2014_Judgment_.doc
Issue No. 2) ............In the affirmative;
Issue No. 3) ............In the affirmative;
Issue No. 4) ............In the affirmative;
Issue No. 5) ............In the affirmative;
Issue No. 6) ............Partly in the affirmative;
Issue No. 7) ............As per final order for
the following:
8. ISSUE NO.1 TO 3: The Issue No.1 and 2
are regarding the proving of the fact that the plaintiff
is the registered owner of the trade mark THE
FALCON HOUSE and it is the registered owner of the
copyright in respect of device of flying FALCON. The
Issue No.3 is regarding the infringing of plaintiff's
well established trademark FALCON by using the
offending trademark FALCON with device of bird.
Hence, these two issues are taken up together in order
to avoid of repetition.
9. The specific case of the plaintiff in the
plaint that initially plaintiff is a partnership firm
constituted on 1.4.1986 in the name of PRESTIGE
ESTATE & PROPERTIES, later on converted into
11 O.S._7852_2014_Judgment_.doc
private limited company as PRESTIGE ESTATES
PROJECTS PRIVATE LIMITED. The specific case of
the plaintiff is that it is involved in the field of
constructions of building and it is a reputed builders
of South India having built innumerable residential
apartments, office space, commercial buildings, malls
in and around Bengaluru and other places. The
plaintiff claims that it has built many reputed
residential and commercial buildings now found in
Bengaluru. The plaintiff also claimed that it has
obtained a registered trademarks in class 16, 35, 36
and 37 on various projects and also spent huge
money in advertisement as well as it has huge
turnovers and the particulars of the same has been
given in the plaint. The plaintiff claims that it has
been using the trademark and trade name since 1986.
The specific claim of the plaintiff is that the plaintiff is
the proprietor of trademark PRESTIGE, PRESTIGE
GROUP, PRESTIGE ESTATE & PROPERTIES. The
plaintiff also claimed that so far it relates to real
estate and building activities are concerned, the
12 O.S._7852_2014_Judgment_.doc
trademark PRESTIGE has become distinctive with the
plaintiff and is exclusively identified with the plaintiff.
The said trademark / service mark and trade name
has acquired a secondary meaning co-related with the
plaintiff and its business.
10. 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.P29. Ex.P1
is the original board resolution that authorises the
PW.1 to prosecute this case on behalf of the plaintiff.
Ex.P2 is the certificate of incorporation, Ex.P3 is the
Memorandum and Articles of Association, Ex.P4 is the
certificate of ISO. Ex.P5 is the copy right certificate.
Ex.P6 is the online printout of defendant's company
master data, Ex.P7 is the certificate under Section
65B of the Evidence Act, Ex.P8 is the CA certified
sales turn over, Ex.P9 to Ex.P19 are the Legal Use
Certificates, Ex.P20 and Ex.P21 are the certified
copies of the Legal Use Certificates, Ex.P22 to Ex.P24
are the online print out of orders passed by the
examiner of trade mark, Ex.P25 is the FIABCI
13 O.S._7852_2014_Judgment_.doc
Certificate, Ex.P26 is the DA1 Excellence Certificate,
Ex.P27 is the Annual Report, Ex.P28 is the FALCON
Magazine, and Ex.P29 is the brochure. 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.
11. Ex.P9 to Ex.P19 are the legal use certificate
of plaintiff's various trademarks. These documents
shows that the plaintiff is the registered owner of word
mark PRESTIGE GROUP, PRESTIGE ESTATES &
PROPERTIES, PRESTIGE ESTATE PROJECT PRIVATE
LIMITED, PRESTIGE GROUP, in various class as
claimed in the plaint as well as logo with eagle and
original artistic work, design and get up of their logo
PRESTIGE GROUP. Further, the plaintiff has also
been using the device of FALCON with the word
FALCON for promoting their business. Therefore,
these materials on record sufficiently establishes the
fact that the plaintiff is the registered owner of
trademark FALCON and logo since 1986 and the
14 O.S._7852_2014_Judgment_.doc
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 trademark FALCON with the device of bird
is a part of the PRESTIGE GROUP.
12. The defendant claims that it is not trading
in the name of FALCON. It is true that the defendant
is not using the word FALCON for their trading, but it
has used the word FALCON SHELTERS PVT LTD in
one of their project. The use of the word FALCON
with the device of Bird is not in dispute and it is
admitted fact in the written statement. The specific
defence of the defendant that as the defendant used
the word FALCON along with the suffix word
SHELTER, hence the defendant's trade name is
FALCON SHELTERS which is not similar to the
plaintiff's trade name. Admittedly, the defendant has
started the trading in the year 2013, till then they
have not used the word FALCON for their trade. The
material on record sufficiently discloses that the
plaintiff has used the word FALCON for their projects
15 O.S._7852_2014_Judgment_.doc
since 1986 and they have also obtained the trade
mark FALCON. Therefore, the plaintiff is the prior
registered user of the trade name FALCON. Hence, the
said name has to be protected under Section 29 of the
Trade Marks Act. The material placed before the court
also shows that the plaintiff is having the apartments
and commercial buildings in and around Bengaluru
as well as other cities. The business claimed by the
defendant is also identical to the business of plaintiff
and they are trading at Bangalore. As such certainly
use of word FALCON with the device of bird by the
defendant for its project certainly amounts to
infringing and passing off of the plaintiff's registered
trademark. The plaintiff being the prior and
registered user of the trademark / trade name
FALCON along with logo has to be protected under
trademark laws, and the defendant certainly cannot
use the said word FALCON with the device of bird for
the identical business of plaintiff. Therefore, it is clear
that the plaintiff sufficiently proved that the defendant
has used the plaintiff's trademark for its business.
16 O.S._7852_2014_Judgment_.doc
Therefore, it is clear that the plaintiff has sufficiently
proved that the plaintiff is the registered owner of the
trademark PRESTIGE, PRESTIGE ESTATES and
PRESTIGE GROUP along with Copyright owner in
respect of PRESTIGE GROUP with device of flying
eagle as their logo as shown in the plaint and also
user of device of FALCON with the word FALCON bird.
The aforesaid discussion also shows that the
defendant has infringed the trademark and Copyright
of the plaintiff. In view of these facts, the claim of the
defendant that many others have used the word
FALCON for their business is not a ground to reject
the plaint case. Apart from that, the defendant though
filed a written statement not chosen to give any oral
evidence and also not challenged the oral testimony of
PW.1 so that the court can disbelieve the plaint case.
Accordingly, Issue No.1 to 3 are answered in
Affirmative.
13. ISSUE NO.4 AND 5: This issue is
regarding the permanent and mandatory injunction.
In view of the finding on Issue No.1 to 3, certainly the
17 O.S._7852_2014_Judgment_.doc
plaintiff is entitled for permanent injunction as the
plaintiff is the registered trademark owner of
PRESTIGE and FALCON with device of bird. The
plaintiff also claimed the relief of mandatory
injunction. Considering the facts of the case, and the
trademark of plaintiff, the defendant can be directed
to delete or remove the word FALCON with the device
of bird in their project. Accordingly, Issues 4 and 5
are answered in affirmative.
14. ISSUE NO.6: This issue is regarding the
plaintiff's entitlement for damages. It is relevant to
note that the defendant not denied the using of word
FALCON with the device of Bird for its project as
claimed in the plaint. The defence of the defendant is
that the word FALCON is a common in the
construction field and many have used the FALCON
for their respective trading. It is relevant to note that
the defendant has not obtained any registration on
their trade name, and they have started the trading in
the year 2013 as claimed in their written statement.
Hence, no much damage has been caused to the
18 O.S._7852_2014_Judgment_.doc
plaintiff or its projects. However, the defendant not
chosen to remove or change their trade name. Hence,
certainly they are liable to pay damages to the
plaintiff. In the case on hand, the plaintiff claimed
damages of Rs.25,000/- per day, but how the plaintiff
sustained damages of Rs.25,000/- per day is without
any explanation and no documentary evidence has
been placed in support of the said damages. It is also
relevant to note that the plaintiff has paid court fee
the damages of Rs.25,000/- only. Hence, this court is
of the humble opinion that the plaintiff is entitled for
the damages of Rs.25,000/- in the suit. Accordingly,
this issue is answered partly in the affirmative.
15. 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 in part with costs in the
following terms:
The defendants or anybody claiming
under them are hereby permanently
19 O.S._7852_2014_Judgment_.doc
restrained from infringing and
passing off of plaintiff's registered
trademark THE FALCON HOUSE or
any other trademark, trading style
which is deceptively similar to the
plaintiff's trademark by using
offending trademark FALCON
SHELTERS 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
FALCON with device of Bird.
The defendant is directed to pay
damages of Rs.25,000/- to the
plaintiff.
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 November 2022.] [PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
20 O.S._7852_2014_Judgment_.doc
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.P.1 Original board resolution copy of Mr.Lingaraj Patra.
Ex.P.2 Certified copy of the incorporation Certificate of plaintiff company.
Ex.P.3 Certified copy of memorandum and article of association of plaintiff company.
Ex.P.4 Certificate copy of ISO 9001 certificate of Company Ex.P.5 Certified copy of copy-right certificate.
Ex.P.6 Defendant company master date of & printout obtained online with Ex.P.7 certificate 65(B) of Indian Evidence Act.
Ex.P.8 CA certified sales turn over Ex.P.9 to Legal use certificate Ex.P19 21 O.S._7852_2014_Judgment_.doc Ex.P.20 Certified copy of the legal use & certificate Ex.P21 Ex.P.22 Online print out copy of the order to passed by Examiner of trademark .
Ex.P24 Ex.P.25 FIABCI certificate Ex.P.26 DA1 excellence certificate Ex.P.27 Annual Report Ex.P.28 Falcon Magazine Ex.P.29 Brochure
4. List of the documents marked for the defendants:
NIL.Digitally signed
by PADMA [PADMA PRASAD]
PADMA PRASAD XVIII Additional City Civil Judge.
Date: BENGALURU.
PRASAD 2022.11.15
16:24:39
+0530
...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 and passing off of plaintiff's registered trademark THE FALCON HOUSE or any other trademark, trading style which is deceptively similar to the plaintiff's trademark by using offending trademark FALCON SHELTERS 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 FALCON with device of Bird.
The defendant is directed to pay damages of Rs.25,000/- to the plaintiff. Draw decree accordingly.
[PADMA PRASAD] XVIII Additional City Civil Judge.
BENGALURU.
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