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Central Park Estates Pvt. Ltd. & Others v/s Provident Housing Limited

    IA. No. 5445 of 2019 In CS.(COMM). No. 194 of 2019

    Decided On, 17 February 2020

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE JAYANT NATH

    For the Plaintiffs: Sai Krishna Rajagopal, Kanish Kumar, Nitin Sharma, Abhiti Vachcher, Advocates. For the Defendant: C.M. Lall, Sr. Advocate, Rahul Goel, Satish Kumar, Anu Monga, Nancy, Parumita Pal, Advocates.



Judgment Text


IA No.544/2019

1. This application is filed by the plaintiffs under Order 39 Rules 1 and 2 CPC seeking an ex parte ad-interim injunction to restrain the defendant, etc. from using the mark CENTRAL PARK, PROVIDENT CENTRAL PARK/ “IMAGE” or any other mark which is similar or deceptively similar to the plaintiffs’ mark ‘CENTRAL PARK’ in relation to their business etc. so as to infringe the plaintiffs’ statutory rights in its ‘CENTRAL PARK’ mark. Other connected reliefs are also sought.

2. The accompanying suit is filed by the plaintiffs for permanent injunction, infringement of trademark, passing off, unfair trade practice, damages and delivery up.

3. The case of the plaintiffs is that plaintiff No.1 is the registered proprietor of the marks, namely, CENTRAL PARK/ “IMAGE”, ‘CENTRAL PARK RESORTS’, and ‘CENTRAL PARK RESORTS & RESIDENCE’. The plaintiffs have procured various registrations of trademarks in the name of plaintiff No.1 having ‘CENTRAL PARK’ as the integral and most prominent feature. It is pleaded that on account of extensive use, high revenues, extensive publicity, trademark registrations, unsolicited publicity and diligent enforcement of its rights, the ‘CENTRAL PARK’ marks are today exclusively associated with the plaintiffs and their services, and the mark ‘CENTRAL PARK’ has acquired the status of a well-known mark.

4. It is pleaded that the defendant is using the mark, namely, PROVIDENT CENTRAL PARK/ “IMAGE” in a manner where the words ‘CENTRAL PARK’ are deliberately highlighted and are prominent. The defendant has identically used the plaintiffs’ registered ‘CENTRAL PARK’ mark and has also prefixed its name ‘PROVIDENT’ with the words ‘CENTRAL PARK’ making it deceptively and confusingly similar to the plaintiffs’ trademark ‘CENTRAL PARK’. It is also pleaded that the word ‘PROVIDENT’ is not a distinguishing feature and thus for all practical purposes, the defendant’s mark PROVIDENT CENTRAL PARK/ “IMAGE” is identical to the plaintiffs’ mark CENTRAL PARK/ “IMAGE”. It is further pleaded that the defendant’s mark is being used in relation to services that are identical to the services offered by the plaintiffs, i.e., Real Estate Development. Hence, it is pleaded that there is bound to be confusion amongst the purchasing public and members of trade as to the origin of the services of the defendant.

5. It is pleaded that the plaintiffs’ group have projects and production units in various parts of the country with a present annual turnover of Rs.3624.16 crores for the financial year 2017-18. It is further pleaded that the CENTRAL PARK project was conceptualised, conceived and adopted by plaintiffs No.3 and 4 who obtained government license for development of the said residential project at Golf Course Road, Sector-42, Gurgaon in the year 1999. The first CENTRAL PARK project was commenced in the year 2000 on the above address. In 2003, plaintiff No.1, namely, CENTRAL PARK ESTATES PVT. LTD. was incorporated by Bakshi Enterprises to act as a holding company for the CENTRAL PARK mark as well as other brands. It is pleaded that the project CENTRAL PARK-I which is launched in 2001, has an unprecedented success and selling out within a short span of time. The list/details of plaintiff No.1’s registrations for the CENTRAL PARK marks have been stated in para 14 of the plaint.

6. It is pleaded that the plaintiffs have spent in excess of Rs.74.34 crores in advertisement and further disbursed almost Rs.145.31 crores as brokerage and marketing expenses for their CENTRAL PARK marks. It is also pleaded that the plaintiffs have been taking enforcement action for misuse of their statutory or common law rights in the CENTRAL PARK mark. Reliance is placed on the various judgments to this effect.

7. It is pleaded that on 01.03.2019 the plaintiff was served with a copy of an application. In the said application, the defendant took the plea that the words CENTRAL PARK forms part of several real estate projects, which also mentioned the name PROVIDENT CENTRAL PARK constructed by the defendant (Provident Housing Pvt. Ltd.). The plaintiff then from the perusal of the website of the defendant, i.e. www.providenthousing.com learnt that the defendant is using the mark PROVIDENT CENTRAL PARK/ “IMAGE” and appears to have pre-launched its housing and/or real estate projects under the said mark in Bengaluru. The plaintiffs do not have any office in Bengaluru and are not carrying on business in Bengaluru. It is pleaded that perusal of the defendant’s website makes it clear/evident that the adoption of the mark PROVIDENT CENTRAL PARK/ “IMAGE” by the defendant is a calculated attempt to take advantage of the reputation gathered by the plaintiffs on the mark CENTRAL PARK/ “IMAGE” over the years. It is also pleaded that the defendant is using the plaintiffs’ CENTRAL PARK marks both in appearance and commercial impression. Hence, the present suit.

8. The defendant has filed a reply to the application. In the reply, the following contentions have been raised:

(i) It is stated that a false statement has been made by the plaintiffs that it is the proprietor of mark ‘CENTRAL PARK’ word per se. It is further pleaded that the plaintiffs have acquired registration of trademark ‘CENTRAL PARK’ not on the basis of any distinctiveness acquired by long user but on the basis that the same is a unique and a conspicuous label.

(ii) It is pleaded that there is deliberate suppression of fact that the plaintiffs’ prior user claims are under challenge. A suit was filed against a third party using the mark RUSTOMJEE CENTRAL PARK. The third party had challenged the plaintiffs’ right over the words ‘CENTRAL PARK’. A Division Bench of this court has permitted the said third party to continue using the mark ‘RUSTOMJEE CENTRAL PARK’. Hence, it is pleaded that the plaintiff is not an exclusive owner of the words ‘CENTRAL PARK’.

(iii) It is pleaded that there is deliberate false statement regarding the date of use of the mark PROVIDENT CENTRAL PARK/ “IMAGE” by the plaintiffs. It is pleaded that the defendant commenced promoting two blocks, namely, Provident Central Park of its project, namely, Provident Park Square in December, 2018 and the defendant invested a lot of resources in marketing and advertising and the same were not at all in a clandestine manner.

(iv) It is pleaded that the words/mark CENTRAL PARK is generic and publici juris.

9. I may note that this court on 23rd April, 2019 passed the following orders:

“IA No.5445/2019

Arguments heard.

In a connected matter being CS(Comm.)152/2019 titled Central Park Estates Pvt. Ltd. & Ors. Vs. Godrej Skyline Developers Private Limited & Anr. arguments have also been heard on the interim injunction application.

Learned senior counsel appearing for the defendant submits that this court may not, at this stage, pass interim orders and may reserve the judgment. He also submits that the defendant while dealing with their trade mark will prefix the mark PROVIDENT with CENTRAL PARK in a manner that the font of PROVIDENT is bigger than CENTRAL PARK. He seeks one week’s time to file reply/written statement.

Needful be done within one week.

Judgment reserved.”

10. I may also note that this court on 11.09.2019 in CS (COMM) No. 152/2019 titled ‘Central Park Estates Pvt. Ltd. & Ors. v. Godrej Skyline Developers Pvt. Ltd. & Anr.’, (2019 SCC OnLine 11580) held as follows:

“19. As noted above, the trademark used by the plaintiff is CENTRAL PARK/ “IMAGE” whereas the marks used by the defendant are GODREJ CENTRAL PARK/ “IMAGE” and “IMAGE”.

20. Taking into account the trade mark as a whole, it is clear that the trade mark of the defendant can prima facie be said to be structurally and phonetically similar to that of the plaintiff. The essential feature of the plaintiff’s mark is CENTRAL PARK. The defendant has copied the essential feature of the trade mark of the plaintiff. There is prima facie an overall similarity in the marks of the defendant and that of the plaintiff. Adding the prefix GODREJ does not do away the likely deception/ confusion. In my opinion, prima facie the above trade mark used by the defendant is deceptively similar to the mark of the plaintiff.

Xxxxxx

32. I may now deal with the next contention of the learned senior counsel for the defendant. The defendants have sought to rely upon the judgment of the Division Bench in the case of Central Park Estates Pvt. Ltd. & Ors. vs. Keystone Realtors Pvt. Ltd. & Anr., FAO(OS) 179/2016 dated 06.09.2017 to plead that the Division Bench has permitted use of the term ‘Rustomjee Central Park’. It is pleaded that the facts of the present case are akin to that case and hence this court should also allow the defendant to use the mark “Godrej Central Park”.

33. However, a perusal of the facts of the aforenoted case would show that that the plaintiff therein had claimed user of the mark ‘Central Park’ since October 2001 whereas the respondent therein had also claimed user of the mark ‘Rustomjee Central Park’ in Mumbai since 2001. It was also pleaded by the respondent therein that the appellant had knowledge of the adoption of the mark ‘Rustomjee Central Park’ which has been used since 2001 the usage being in public domain. It was in those facts that the court did not interfere in the use of the mark ‘Rustomjee Central Park’ as an interim measure. The facts of this case are not similar to the facts of the judgment of the Division Bench to warrant such an order.

34. In view of the above, in my opinion, there is no merit in the contention of the defendants.

35. The interim order of this court dated 26.03.2019 is

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made absolute. IA No. 4262/2019 is allowed accordingly. IA No. 5080/2019 is dismissed.” 11. The interim order that was passed on 26.03.2019 had restrained the defendant therein from using the impugned mark GODREJ CENTRAL PARK “IMAGE”, and “IMAGE” or any other mark deceptively similar to the plaintiff’s CENTRAL PARK. The defendant was directed to take appropriate steps within one week from the date of receipt of the injunction order. 12. Keeping in view that factually the pleas raised by the parties in this case are substantially the same as raised in CS(COMM) No.152/2019, for the same reasons as given in judgment dated 11.09.2019 in the said case, I restrain the defendant from using the marks CENTRAL PARK, PROVIDENT CENTRAL PARK/ “IMAGE”, or any other mark which is similar or deceptively similar to the plaintiff’s CENTRAL PARK/ “IMAGE”. The defendant will take appropriate steps within one week from today. 13. The application stands disposed of. CS(COMM) 194/2019 List on 24.02.2020 before the Joint Registrar for further proceedings.
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