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Judgment
S. Usha, J
1 . Application for removal of trade mark registered under No. 1386891 in Class 37 under the provisions of the Trade Marks Act, 1999 (hereinafter
referred to as the Act). The facts of the case are the applicants are engaged in real estate and construction activities since last nearly two decades.
They are one of the reputed builders having built innumerable shopping complex and residential apartments layouts in and around the city of Bangalore
and other parts of India. The various residential and commercial complexes executed over the last two decades have become landmarks in the city of
Bangalore and other places. The residential and commercial complexes built by the applicants are identified with their trade name PRESTIGE,
PRESTIGE GROUP an PRESTIGE ESTATES.
The applicants vide a partnership deed dated 1st April, 1986 commenced their business in real estate of building construction under the name and
style of PRESTIGE ESTATES AND PROPERTIES. On 4.6.1997, the said partnership w converted into a private limited company under the name
and style PRESTIGE ESTATES PROJECTS PVT LTD.
3 . On account of high quality construction, intrinsic value, salesmanship, advertisement, promptness in executing projects, they have built a vast
reputation and goodwill in the market. The various projects executed by the applicants have become landmark projects in Bangalore, Chennai and
other places in India. Even multinational companies, IT companies have purchased properties built by the applicants. The word PRESTIGE in the
building construction business is a symbolic of superior construction quality coupled with state of the art modern amenities provided at competitive
prices. The word PRESTIGE in the building construction business has thus become distinctive of and exclusively identified with the applicant and none
else. The word and name PRESTIGE has acquired a secondary meaning co-related with the applicant in so far it related to building construction and
real estate activities. The word PRESTIGE besides being a trade/service mark of applicant also occupies a leading, essential and prominent feature in
their corporate name.
4 . The applicant have spent considerable amount towards popularizing their trade mark/service mark and trading style PRESTIGE, through
advertisements in various media. The applicants have won many awards for excellent construction and architecture. Due to long and extensive use of
trade mark tremendous goodwill and reputation has accrued to the applicant on account of quality construction of and timely completion. In addition to
acquiring valuable common law rights in the trade mark, the applicant has also sought statutory protection in respect of their trade mark and have filed
applications for registration of their service marks before the Trade Marks Registry, which are duly registered. The applicants have also obtained
copyright registration under No. A-51400/91.
5 . In the year 1987-89 when the applicant commenced their business the turn over was just '.89,28,641 which increase to an excess of '.215 crores as
on date. The applicants have spent '.5 crores annually towards advertisement expenses.
The applicant recently launched ""Prestige Shantiniketan"" an elegant and sprawling city scape all of 105 acres. This township features have huge
residential complex with 2839 apartments, a brand new forum mall, a 5 screen multiplex, a convention center, the well known Radisson Hotel and
Bangalore's First World Trade Centre. The applicants were able to sell the project in a short span of 7 to 10 days because of the PRESTIGE Brand
Image.
The applicant and its group companies use the word PRESTIGE as a prominent and integral part of its corporate name ie. Prestige Estates Projects
(P) Ltd., Prestige Constructions, Prestige Leisure Resorts Pvt. Ltd. and Prestige Garden Constructions (P) Ltd. The applicants have become one of
the most renowned business houses in the City of Bangalore as well as in India in so far it relates to real estate and building construction activities are
concerned. Valuable common law right have accrued in the said trade mark which is exclusively associated with the applicant. Therefore, the
trademark / service mark / trading style viz. PRESTIGE / PRESTIGE GROUP / an PRESTIGE ESTATES is the property of applicant and no other
person can use a trade mark/service mark which is deceptively similar to the applicants trade mark PRESTIGE, PRESTIGE GROUP and PRESTIGE
ESTATES. The applicant were shocked learn in the third week of April 2005 that the respondent had got published an advertisement in the
Malayalam Manorama dated 27/04/2005 when an existing customer from Cochin had called on the Managing Director of the applicant to enquire
about the further details of the projects advertised bearing the same trade name PRESTIGE. On perusing through the same it is evident that the
respondents have slavishly and fraudulently copied the trade mark and trading style of the applicant by deliberately misspelling the same as
PRESTEEGE in the said advertisement. It appears that the respondent herein are recent entrants in the field of property developers. The applicants
had been in the business since the year 1986 using the trade mark PRESTIGE. The adoption of the impugned trade mark by the respondent in the
year 2005 is illegal and unauthorized. The applicants therefore initiated a civil suit before the City Civil Court, Bangalore seeking an order of the
injunction restraining the respondents from any manner using the trade mark PRESTEEGE in relation to their real estate and building construction and
obtained an order of ex-parte injunction on 13. 12.2005., which was confirmed by an order dated 20.04.2006 after hearing both the parties, against the
said order, the respondent herein has preferred an appeal before the Hon'ble High Court, Karnataka.
8 . During the pendency of the above suit, the respondent herein had clandestinely applied for registration of the impugned trade mark in Class 37 and
obtained the same on 26.03.2008.
9 . The applicant herein has filed this instant application for revocation on the following grounds:
a) The registration of the impugned trade mark under No. 1386891 in Class 37 is without any basis, lacks application of mind and opposed to the
provisions of the Act. b) The impugned mark is also the contravention of the provisions of the Section 11 of the Act.
c) The respondent is not the proprietor of the trade mark as per Section 18(1) of the Act.
d) The impugned mark is wrongly remaining in the register without sufficient cause.
e) The adoption is not bonafide and is dishonest.
f) The registration is obtained by suppressingly material facts.
g) The applicant is a person aggrieved as per Section 57 of the Act.
h) The registration is opposed to law under Section 11 of the Act.
i) In the light of the foregoing grounds, the impugned trade mark may be expunged from the register of trade marks.
1 0 . The respondent herein filed their counter statement raising the issue of maintainability of this application for rectification on the grounds that leave
of the Civil Court has not been obtained before initiating this rectification application. The respondent stated that they are engaged in the business of
construction as a partnership firm. They further submitted that they have been using the mark PRESTEEGE through their sister concern, M/s.
Presteege Textile Marketing and Manufacturing Merchants, for the last three decades. Their sister concern and the mark PRESTEEGE has been
associated with the famous textile company BOMBAY DYEING since the year 1976. The sister concern is the registered proprietor of the mark
PRESTEEGE and they have obtained registration in Class 24 which has been regularly renewed and is subsisting as on date.
The rival trade marks are completely different deceptively and structurally. The respondent trade mark has been used for more than decades and
therefore applied for registration for goods falling under class 37 on 24.09.2005 claiming user since
04.2005. The respondents have also registered with the Central Excise for payment of service tax and the same has been produced along with the
counter statement.
This rectification application is barred by acquiescence and estoppel and is hit by the provisions of Section 33 and 34 of the Act. The applicants
being aware of our use and the application for registration had not opposed the same and have now file this rectification application for the reasons
best known to them.
The respondents are carrying their business exclusively in the state of Kerala and at no point of time in the city of Bangalore and are not aware of
the applicants business which is only in Bangalore and nowhere in Kerala. The applicant trade marks is not well known. The respondents are the prior
user and there is no question of expunging the mark from the register. The respondent have been in business for a very long time and have established
immense recognition and reputation in the field of real estate, property developers and construction. The respondents trade mark has been registered
even before the applicant started their business by their sister concern. The respondent further stated that the business operations of the applicants
and respondents are in two different places where the question of confusion or deception does not arise. There is no scope of the customer to be
mislead into purchasing the goods of the other. In any case, the registration may be allowed to continue on the ground of honest and concurrent user.
As regards the interim orders, the Hon'ble High Court of Karnataka in MFA No. 4954 of 2006 had stayed the order of the trial court in OS No.
17779 of 2005 dated 20. 04.2006.
In view of the explanation given above, the grounds for revocation are untenable and the registration of the mark is valid and ought to continue on
the register.
We have heard Shri. Harikrishna S. Holla, counsel for the applicant and Ms. Nidhi Shree B.V, counsel for the respondent on 9th August 2011.
17 . The learned counsel for the applicant submitted that applicants are using the trade mark ""PRESTIGE"" since the year 1986. The respondents filed
application for registration of the impugned trade mark on 22.09.2005 claiming user since 15.04.2005. The applicants had their business of construction
in Chennai, Bangalore and other parts of the country. By end of the year 2005, the applicant came to know that the respondents use of the trade mark
PRESTEEGE PROPERTY DEVELOPERS The applicants therefore file a civil suit and obtained injunction on 13.12.2005 which was confirmed on
20.04.2006 after hearing both the parties.
The respondent's plea in the counter statement is that they adopted the trade mark in the year 1976 and had been using the same for textile goods.
The marks namely PRESTIGE and PRESTEEGE are totally different both phonetically an structurally was the defence of the respondent both the
pleas were denied by the applicant.
The applicants further submitted that the use of the trade mark in textile goods will not be any use to prove their user for property development.
The mark is not distinctive of the respondent goods. The registration is in contravention of the provisions of Sections 9 & 11 of the Act. As per
Section 9(a) of the Act, by short term of use, the mark cannot be said to have acquired distinctiveness. The marks being identical for identical goods
there is every possibility of confusion being caused.
The applicants counsel then relied on few judgments:
1998 PTC (18) 698 - Indian Shaving Products Ltd. & Anr. Vs. Gift Pack & Anr.
2000 PTC (260) High Court of Delhi - Punjab Tractors Limited Vs. Pramod Kumar Garg
2003 (26) PTC 567 (II) High Court of Allahabad - Mumtaz Ahmad and etc. Vs. Pakeeza Chemicals & Others
2005 (30) PTC 131 (Bom) - Franco Indian Research Pvt. Ltd. Vs. Unichem Laboratories Ltd.
2006 (33) PTC 694 (Mad) (DB) - Rajamani Fabrics & Anr. Vs. Mothi Textiles
2007 (35) PTC 876 (IPAB) - Prestige Housewares India Limited & Anr. Vs. GuptaLight House & Anr.
2007 (35) PTC 915 (IPAB) - Computer Sciences Corporation Vs. R. Thangaraj
2008 (37) PTC 373 (IPAB) - Ganesh Zarda Factory Vs. Kishore Zarda Factory Anr.
2008 (38) PTC 409 (Bom) (DB) - Mapra Laboratories Pvt. Ltd. Vs. Walter Business Pvt. Ltd. & 3 Others
2008 (38) PTC 691 (IPAB) - Orchid Chemical and Pharmaceuticals Ltd. Vs. United Biotech Pvt. Ltd. & Anr.
AIR 1980 Mad 56 - P.L. Anwas Basha Vs. M. Natarajan
The learned counsel for the respondent submitted that the applicants have not proved confusion because of the registration. The onus is always on
the applicant for rectification to prove the same. The counsel also submitted that there has been a long delay in filing this application.
The respondents relied on few judgments:
2010 (42) PTC 480 (Karn.) - Presteege Property Developers Vs. Prestige Estates Projects Pvt. Ltd.
2008 (37) PTC 413 (SC) - Khoday Distilleries Limited Vs. Scotch Whisky Association & Ors.
AIR 1971 SC 898 - National Bell Co. Vs. Metal Goods Mfg. Co.
2009 (40) PTC 428 (Mad) - Nakoda Dairy (P) Ltd. Vs. Kewal Chand Vinod Kumar & Ors.
2007 (35) PTC 905 (IPAB) - Candico (I) Limited Vs. Perfetti S.P.A. & Anr.
MANU/IC/5015/2007 - Golden Rubber Industries Vs. Tirumala Polymers
AIR 1971 All 157 - Ram Avtar Sharma and Others Vs. Chakradhar Saran Sharma and Others.
In rejoinder the applicants counsel submitted that there was no delay in filing this application.
We have heard and considered the arguments of both counsel. The applicants have established their user since the year 1986. This was observed
by the Karnataka High Court in another matter ie. 2002 (25) PTC 108 -M/s Prestige Avenues Limited Vs. Prestige Estate Projects Pvt. Limited and
the same was relied on by this Board in another matter - ORA/191/2008/TM/CH. Though the parties were not the same or it was not inter parties it
only supports the case of the applicant that they were in the business since the year 1986.
The respondents had applied for registration of the trade mark in the year 2005 claiming user since the year 2005. They also claim to have adopted
and used the trade mark for textiles since the year 1976. The respondents are not clear in their statements. In one place they state that they are
associated with Bombay Dyeing the famous textile company since the year 1976. In another statement they state that Presteege textile marketing in
their sister concern and that they have registered the trade mark as of 1982. In such circumstances, when it is not established as to the relationship or
as to how they are connected, the respondents before us cannot claim to be proprietor of the trade mark ""Presteege"". No cogent evidence filed before
us to prove their adoption or use.
When the marks and the services are identical, the possibility of confusion is certain. We then will have to consider the fact as to who is in the
market first. Here the marks are identical except for the spelling ie. Prestige Vs. Presteege. As regards confusion and deception, no doubt the service
is being made use of by the literate people but when its identical trade mark its clear that the public may be under the impression that its that of the
applicants construction who is in the business for long. Therefore there is every possibility of confusion being caused.
In view of the above, we are of the opinion that the impugned trade mark is in contravention of the provisions of the Act and deserves to be
removed from the Register of Trade Marks. Accordingly, the rectification application is allowed with a direction to the Registrar to remove the trade
mark registered under No. 1386891 in Class 37. No order as to costs.