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Judgment
Prabha Sridevan, J
This application has been filed for rectification of the trade mark No. 1342699 in Class 37 registered in the name of Prestige Estate Projects Private
Limited (the Respondent).
The facts are these:
The applicant is a Company registered under the Companies Act. Its registered office is at Hyderabad. It carries on the business of building
construction, developing etc., since 2004. The Respondent is the proprietor of the trademark under challenge. The Respondent has also obtained
registrations for the word ""Prestige"" in classes 35, 36 and 37 bearing Nos. 1342689, 1340145, 1340142, 1340136, 1340148.
3 . The applicant is aggrieved by this registration as it lacks distinctiveness and is incapable of identifying the goods of the Respondent from that of
other competitors. Search on the website indicates that there are many companies whose names begin with the prefix ""Prestige"" The word ""Prestige
has a direct connotation to the goods in respect of which it is used, and ""Estate' covers immovable property. The registration is hit by Section 9 of the
Trademarks Act 1999. It is also prohibited by Section 11 of the said Act. The Respondent has no business activity in A.P. and it has abused the
registration by filing a civil suit in Bangalore and obtained ex-parte injunction. The business of the applicant has come to a standstill. In view of the
provisions of the Act the registration is to be rectified.
4 . The Respondent has filed a counterstatement. They say that they are a reputed company engaged in the construction business for last two
decades. They are among the reputed builders of South India. The buildings and complexes built by them are identified with their names. They
commenced their business as a partnership in 1986. In 1997 it was incorporated as a Private Limited Company. The Respondents' buildings are
landmarks in Bangalore, Chennai and other places. They are very successful. The word Prestige has become identified with the Respondent and no
one else. The list of projects completed by the Respondent is set out in the counter. They have also obtained registration under the Copyright Act.
Their turn over touches 215 crores. They have clients from Gulf countries, UK, USA etc. and have thus established their name in this business
catering to a cross-section of people. The details of registration, obtained by them under the Trade Marks Act and the Copyright Act is given. So they
were shocked to learn of the business activity of the applicant recently. The applicant has slavishly and fraudulently copied the name of the
Respondent and are infringing the Respondents' trade mark. This is why the suit was filed. Injunction was granted. Though an appeal has been filed
by the applicant it is not yet admitted. Open, honest, continuous user by the Respondent is a matter of record. The rectification must be dismissed.
5 . The matter came up before us on 14.07.2007. Learned Counsel Shri Santosh Devadoss appeared for the applicant and Shri T.K. Ramkumar,
Learned Counsel appeared for the Respondent.
Both the counsel made their submissions. The counsel for applicant submitted how the word ""Prestige"" is laudatory and ought not to have been
granted registration. He took us through the documents filed by the Respondent to show that not one project relates to any territory actually outside
Bangalore. He submitted that the suit was filed so belatedly and it is malafide. The delay shows that the Respondent was aware of applicant's
existence, and had filed the suit only because the Respondent wanted to enter Andhra Pradesh where the applicant had created a big reputation. He
relied on certain decisions.
7 . The counsel for the Respondent, on the other hand, submitted that the word ""Prestige"" per se does not indicate the quality of goods/services in
question. But their name Prestige Estate had come to be associated with excellence. They have been in business since 1986. The application has to be
dismissed since no ground has been made out for rectification.
We have considered the submissions made by both counsel. We will first refer to the decisions cited.
9 . In 2002 (25 ) PTC 108 Prestige Housewares (India) Limited and Anr. v. Prestige Estates and Properties and Ors. the Hon'ble Karnataka High
Court dealt with an appeal under Section 72 (2) of the Copyright Act. The Petitioner was Prestige Housewares (I) Private Limited and the
Respondent was the Respondent herein. The allegation was that the Respondent was infringing the copyright of the Petitioners. The Hon'ble
Karnataka High Court dismissed the Petitioner's case on the ground that the Petitioner had failed to prove that the Respondent had copied or imitated
or adopted the artistic work of the Petitioner. But what is important in that judgement is the following paragraph:
When the material on record in the present case is considered in the light of the principles laid down in the above cited cases, it is clear that so far
as the registration of copyright and the artistic work of the Petitioners and the Respondent is concerned, the publication of artistic work of the
Respondent as also the registration of the artistic work of the Respondent under the Act is first in point of time as the copyright of the artistic work of
the Respondent was first published in 1986 and was registered on 25-2-1992 whereas the artistic work of the Petitioners was first published as per the
certificate of registration of copyright produced by the Petitioners in 1993 and the artistic work was registered under Act on 01.05.1995."" Though this
is not a judgement inter-parties, it can support the case of the Respondent that they have been in business from 1986, if there are other acceptable
pieces of evidence.
In 2005 (30) PTC 1 (SC) Godfrey Philips India Ltd., v Girnar Food & Beverages (P) Ltd., related to an interim order and with regard to the
passing off action. There the Division Bench held that the word ""SUPER"" was a laudatory word. The two marks concerned were ""SUPER CUP"" and
SUPER TEA"". Th relevant portion for the purpose of this case is the following sentence:
...A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being
from a particular source.
This is only an interim order and relates to passing off.
In 2007 (35) PTC 1 SC Heinz Italia and Anr. v. Dabur India Ltd., the matter related to infringement of trademark. The two marks were
GLUCON-D"" and ""GLUCOSE-D"". Glucon-D had been used by Glaxo since 1940 Glucode-D was used from the year 1989. The relevant portion of
the judgement is extracted as under:
Likewise, it has been repeatedly held that before the use of a particular mark can be appropriated it is for the Plaintiff to prove that the product
that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party. In Corn
Products case (supra) it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that
there was a dishonest intention on the part of the Defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing
the matter to Court was not a ground to defeat the case of the Plaintiff. It bears reiteration that the word ""Glucon-D"" and its packaging had been used
by Glaxo since 1940 whereas the word ""Glucose-D"" had been used for the first time in the year 1989."" The Hon'ble Supreme Court held in favour of
Glucon-D.
In this case, various newspaper clippings show that the Respondent has launched projects as early as in 1986. There are news items published in the
Deccan Herald, Times of India, Asian Age relating to their projects and activities. They have won the FLABCI award from International Real Estate
Federation. A news item which says that it was the first property developer to achieve CRISIL award. These documents are not disputed by the
applicant.
In 2002 (24) PTC 1 SC Laxmikant v. Patel v. Chetanbhat Shah and Anr., the Plaintiff was operating under the name and style of 'Muktajivan
Studio'. The Defendant who was earlier using the name 'Gokul Studio' changed it to 'Muktajivan Studio'. The Hon'ble Supreme Court held that the
Plaintiff's user was earlier and the intention of the Defendant was to divert the business of the Plaintiff and that the word 'Muktajivan' in the business
name of the Plaintiff had created a property linked with the Plaintiff. The Hon'ble Supreme Court granted injunction in favour of the Plaintiff.
In 2007 (34) PTC 370 (Del.) Ishi Khosla v. Anil Aggarwa and another the name was 'Whole Foods'. It was contended by the Defendant that it
was a generic word and that they were entitled to use the word 'Diet Whole Foods'.
The Hon'ble High Court held:
20...However, the adoption of this trademark 'Whole Foods' with totally different connotation than as provided in the dictionary and selling her
meaning of 'whole Foods' to those who are likely users of this product would definitely give it a distinctive meaning capable of distinguishing her
products from those of others. It can also be said that because of her untiring and relentless efforts in projecting what she means by 'Whole Foods', it
has acquired secondary character and has come to be associated with the Plaintiff's products. To acquire secondary meaning/distinctive meaning it is
not necessary that the product is in the market for numbers of years, as observed earlier. If a new idea is fascinating and appeals to the consumers, it
can become a hit overnight.
This was relied on by the Respondent to show that Prestige Estate has developed a meaning and was associated with the projects. The evidence filed
by them show their existence from the year 1986 at least and reputation in the market in class 37, from the year 2005.
In 2008 (37) PTC 413 (SC) Khoday Distilleries Limited (Now known as Khoday India Ltd.) v. Scotch Whisky Association and Ors., the offending
mark was 'Peter Scot'. It was contended that this mark was adopted with a view to take advantage of the goodwill associated with Scotch whisky.
The Hon'ble Supreme Court rejected it on various grounds. One related to the class of buyers and it was held that where the class of buyers was quite
educated and rich, the test to be applied has to be different. It was also held that the rectification of trade mark after a delay of 18 years was barred
under the principles of acquiescence and waiver.
In 2010 (44) PTC 286 (IPAB) Raj Kumar Saraf v. Bindal Food Products this Board held that when a person has abandoned the plea as to the
invalidity of the registration of the mark cannot raise a plea afresh de hors the suit by filing a rectification application and resume such a plea - No
motion as to what is the stage of the suit, whether written statement filed and issue of invalidity of the registration of the mark raised etc. It was held
that no permission from the Civil Court is required to be obtained to file rectification application.
In the Eenadu case reported in CDJ 2011 SC 194 T.V. Venugopal v. Ushodaya Enterprises Ltd., and Anr., the mark related to ""EENADU"".
Eenadu, the newspaper in Telugu complained that the Appellant was riding on its goodwill. The Appellant was a manufacturer of agarbhati in
Karnataka. The Appellant said Eenadu is a well known word in South Indian languages, there could be no monopoly in that name. There are other
traders and manufacturers with that name. The readers of the newspaper are literate and therefore, they are unlikely to be confused and deceived.
The Hon'ble Supreme Court did not accept the contentions.
In the present case, the Respondent has proved that it is in existence from the year 1986. The Respondent has received several awards. The trade
mark has been registered in 1995. Several projects have been referred to in the various advertisements none of which are denied by the applicant as
unacceptable evidence. All that the applicant says is that the applicants presence is only restricted to the state of Karnataka. In fact the projects are
only in Bangalore. But we find that the advertisement is made in national newspapers. Therefore, it is clear that the Respondent has been in the
market and established a reputation in their favour. The Respondent has also filed a civil suit as mentioned earlier in which the City Civil Court had
held that a prima facie case had been made out in favour the Respondent herein. It was a decision after contest though of course it is only an order in
an interlocutory application. The applicants have also shown that an appeal has been filed against that. The Respondent's case before the City Civil
Court was that they had established their business for over two decades and that the applicant is a recent entrant in real estate activities.
The applicant who carries on business as Prestige Avenues Limited has executed projects in which the word 'Prestige' is used, for instance,
Ocean Prestige, Prestige global City etc. The present rectification application has been filed only after the injunction suit probably in retaliation.
The applicant also produced certain documents at the time of hearing which were objected to by the Respondent. They are paper clippings of
advertisements, the Copyright Registrations and a WIPO order. The Copyright registration certificate in favour of the applicant is dated 2008. The
WIPO order relates to a complaint made by the Respondent against the registration of the domain name. The complaint was dismissed. The issue had
to be tested against the Uniform Domain Name Dispute Resolution Policy. This has no bearing on the present case. We do not think it is necessary to
receive these documents as evidence for the purpose of this case. In any event no application has been filed for adducing additional evidence.
Therefore, we are not looking into these matters.
It is the case of the applicant that when they have been in the business for so long, the fact that the injunction suit was filed only in the year 2007
would show the malafides of the Respondents and it is for this reason they had to file this rectification application. According to the applicant, even if
the Respondent were to be allowed to continue business, they should be restrained to the State of Karnataka. The logic really should be applied in the
reverse. When the applicant started his business, the Respondent was already well entrenched at least in the State of Karnataka. It is difficult to
believe that being in the same business, the applicant would not have known of the existence of the Respondent. If the applicant's contention that the
term is laudatory has to be accepted, then he should have filed a rectification application as soon as he launched the business. But he probably could
not have done so since their name is ""Prestige Avenues"". The fact that they kept quiet and filed this only after the injunction suit is actually a factor
against them, and is indicative that this proceeding has been filed with an oblique motive.
The applicant has not produced anything to show that they are engaged in the business activities all over India. We are unable to accept that the
word Prestige is laudatory or is indicative of the quality, value and activity of real estate business. The Respondents have evidently established a
reputation for their projects in the name of Prestige Estate Projects. The grounds raised by the applicants are unsustainable.
As rightly submitted by the Learned Counsel for the Respondent, ""the class of customers"" ground cannot help. According to the applicant,
customers in this business are literate and aware. The counsel for the Respondent submitted that on seeing the trademark Prestige which is theirs by
prior user, customers may contact the person who has a similar sounding name and it is difficult to predict how many will return and decide in favour
of the prior user. This is why they had to protect themselves from infringement by filing a civil suit. We accept this. Prestige cannot be said to indicate
the quality of the Respondent business. It can mean status. But the Respondent has been using the mark since 1986 and the reasons that prevailed
upon the Hon'ble Delhi High Court in regard to the term ""Whole Foods"" apply equally here. Apart from stating that the Respondent business presence
is restricted to Bangalore, the applicant has been unable to dislodge the evidence relating to its existence for two decades. There is also the judgment
of the Hon'ble Karnataka High Court which has accepted the evidence of the Respondent in this regard. The evidence before us shows the
Respondent's user since 1986. So we are unable to accept that Section 9 stands in the way. As regards Section 11, we do not see how it can help the
applicant who has subsequently started using the word ""Prestige"" in its project. Applicant is not the earlier trademark owner. So Section 11(1) and (2)
do not apply. Respondent's copyright in the mark is proved. The Respondent cannot be said to be passing off, since they are the prior users.
In view of the above, we are of the opinion that the application deserves to be dismissed and it is dismissed. No order as to costs.