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2009 (9) TMI 1031
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....nce both applications by the same Plaintiffs raise more or less similar questions, they are being disposed of by this common judgment. 2. In CS (OS) No. 19 of 2005 there are two Plaintiffs, i.e. PPJPL (Plaintiff No.1) and M/s. L.R. Builders Pvt. Ltd. (Plaintiff No.2). In CS (OS) No. 604 of 2008 PPJPL is the sole Plaintiff. In CS (OS) No. 19 of 2005 P.P. Buildwell Pvt. Ltd is the Defendant and in CS (OS) No. 604 of 2008, P.P. Prime Properties and Promoters (P) Limited is the Defendant. 3. In CS (OS) No. 19 of 2005 it is stated that Plaintiff No. 1 PPJPL is a well- known manufacturer of jewellery, precious metals, their alloys and precious stones etc. It is stated to be one of the largest jewellery export houses in India having won several export awards. It is further stated that the mark „PP‟ has been coined by the predecessors in business of Plaintiff No.1 PPJPL in the year 1980 taking the initials from the names of the brothers Pawan and Padam. It is claimed that the marks „PP‟, „PP Jewellers‟ and „PPJ‟ have been continuously and extensively used by the Plaintiff No.1 and its predecessors as well as sister concerns in the cours....
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....domain names www.ppjewellers.org and www.pptowers.com. 6. The Defendant in CS (OS) No. 19 of 2005 M/s. P.P. Buildwell Pvt. Ltd („PP Buildwell‟) is a company engaged in the business of constructing commercial complexes like shopping malls. It has its office at Rohini in Delhi. According to the Plaintiff, its attention was drawn to a clipping in the newspaper Navbharat Times dated 5th December 2004 in which the Defendant offered for sale commercial outlets at their proposed shopping mall being constructed at Sector 9, Rohini, Delhi. A perusal of the clipping inviting bookings for the „North Ex Mall‟ shows a pictorial representation of a shopping mall in which the two towers display the letter „P‟ on each of the front and side faces. It is stated that L.R. Builders started receiving letters from its clients and the public enquiring about the proposed mall. The letters by Sarwamangala Sarees and Atul Sarees both located located at Nai Sarak, Delhi and few other letters making such enquiries of the Plaintiff No.2 have been placed on record. It is claimed by the Plaintiffs that the use by PP Buildwell of the word mark „PP‟ for its shoppi....
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....intiffs to claim exclusive right to use the mark „PP‟ in respect of all descriptions of goods, businesses or services. It is pointed out that the PPJPL has been using the mark „PP Jewellers‟ and not „PP‟ standing alone. It is further claimed that the mark „PP‟ is a combination of ordinary English alphabets which is not at all distinctive. The use of words „PP‟ by PP Buildwell as part of its corporate name is not likely to be mistaken for PPJPL. The services offered by PP Buildwell by offering space in the PP Shopping Mall or PP Mall does not constitute passing off of the products and services offered by the Plaintiffs in any manner whatsoever. Also PP Buildwell is not using letters „PP‟ separately but as part of a composite corporate name PP Buildwell Pvt. Ltd. Even the malls are named North Ex Mall & West Ex Mall and the single letter P is used on one side of the towers of North Ex Mall which are not even visually similar. When the marks are compared as a whole, the use by PP Buildwell of the mark PP Shopping Mall or PP Mall is neither likely to cause confusion nor is it deceptively similar to the trade mark o....
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....t the Plaintiff has throughout known of the existence of PP Prime Properties and therefore, on the principle of acquiesence, the Plaintiff should not been granted any injunction. It is further stated that the adoption of „PP‟ as part of its corporate name by PP Prime Properties is bonafide and came from the initials of its two promoters „Pankaj Sharma and Prince Dhingra‟. It is stated that the corporate name is entitled to protection under Section 35 of the Trade Mark Act 1999 („TM Act‟). 11. The submissions of Mr. S.K. Bansal, learned counsel for the Plaintiffs, Mr. Shailen Bhatia, learned counsel for PP Buildwell and Mr. Saket Sikri, learned counsel for PP Prime Properties have been heard. 12. This is essentially a passing off action by the Plaintiffs PPJPL and LR Builders claiming that the Defendants have by adopting the letter mark PP as part of their respective corporate names and for the services in the real estate and building industry passed off their services as that being offered by the Plaintiffs. The case is that the Defendants have adopted either an identical mark or a mark deceptively similar to the Plaintiffs‟ letter ma....
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....dman 8 RPC 181 were quoted with approval: "The truth is that the label does not consist of each particular part of it, but consists of a combination of them all." 15. The Plaintiff PPJPL has perhaps been aware that PP by itself has no distinctiveness even for the jewellery trade. PPJPL has used those letters in combination with the word "Jewellers" or the letter "J" to form the marks PP Jewellers and the logo PPJ. It used the same pattern for the real estate business when it adopted the marks PP Towers and logo PPT. Likewise, PP Buildwell cannot claim distinctiveness for the letters PP except when combined with the word "Mall" or "Shopping Mall‟ for which marks it holds registrations. The Plaintiffs contend that in a written statement of PP Buildwell dated 2nd August 2008 (which incidentally is not on record) it has been admitted in para 9 at page 17 that the mark PP can be appropriated as a trademark and service mark; that PP is a trade mark and service mark and that PP is an essential part of its impugned trademark. This court is unable to agree with this submission. A perusal of para 9 of the written statement dated 4th August 2008 does not reflect any such admission. T....
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....McCarthy on Trademarks to urge that "the modern rule of law gives the trademark owner protection against the use of its mark on any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by the trademark owner." With reference to the Defendant PP Prime Properties it was urged that this was a case of an attempt by that Defendant at "injurious association" with the Plaintiff PPJPL. However, it should be remembered that the customer here is a person booking a commercial space in either a commercial complex or in a shopping mall, and in prominent commercial localities in New Delhi. In this context, the following observations of Kerly's Law of Trade Marks and Trade Names by David Kitchin et al.(14th Edition, 2005, Sweet & Maxwell) pp. 589-590 are relevant: "In passing off, the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive are all of those also are likely to become purchasers of the goods upon which the marks are used, provided that such persons use ordinary care and intelligence. It may be, and time ....
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....arks, they are relevant for determining whether the letter mark in question is distinctive or merely descriptive. 21. As the decisions in Rheumaton Trademark [1978] R.P.C. 406, British Petroleum Company Limited v. European Petroleum Distributors Limited [1968] R.P.C. 54, Du Cross Trademark Application [1913] RPC and Polarama Trademark [1977] R.P.C. 581 show, courts would be reluctant to accord distinctiveness to letter marks per se without anything more being shown. In British Petroleum Company Limited v. European Petroleum Distributors Limited 1968 RPC 54 the Court refused to grant any injunction against the European Petroleum Limited which was using the mark EP for its petrol outlets. It was held that the mark BP used by the Plaintiff British Petroleum Ltd. was non-distinctive. There was no likelihood of deception or misconception among consumers even if they were the same goods. Both were selling petrol and yet no injunction was granted. The court observed: "though an exceptionally careless motorist might make a mistake, there is no likelihood of deception or confusion on any scale worth considering." 22. Since counsel for the Plaintiffs placed considerable reliance on the....
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....by the Plaintiffs as far as the construction activities were concerned was the composite mark PP Towers. The Defendants on the other hand uses PP as part of their corporate names PP Buildwell and PP Prime Properties. PP Prime Properties have shown that they use their corporate name on the letter head by writing their full name as Prime Properties and Promoters Pvt. Limited and it is the only in the pentagonal shaped ring that the logo with the words „PP‟ is used. Even this is presented very differently from the way PPJPL uses the logo PPJ or PPT. Also, PPJPL applied for registration of the mark „PP‟ under Class 37 only on 27th August 2004 and it stated therein that it only "proposed to use" the mark even as of that date. It is stated by learned counsel for the Plaintiffs that since then PPJPL has filed an application for amending the date of user as from 1998. Nevertheless, the Plaintiffs have not shown that they used the letters PP per se from that date. Consequently it is not possible to agree with the contention of learned counsel for the Plaintiffs that „PP‟ by itself is a distinctive letter mark and is entitled to protection against passing ....
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....ast. But they run an excellent store. This won‟t stop me shopping there." Damage to goodwill is not confined to loss of custom, but damage to reputation without damage to goodwill is not sufficient to support an action for passing off." The question of customers seeking commercial spaces in shopping malls named North ex Mall or West End Mall mistaking PP Buildwell or PP Prime Properties to be PPJPL or the spaces being offered there to be in PP Towers or by PPJPL is highly unlikely. 26. In view of the above discussion and conclusion, this Court does not consider it necessary to consider the other submissions including whether PPJPL and LR Builders are a single economic unit as claimed by them. Also, the question whether the registration in favour of PP Buildwell is liable to be cancelled on account of a misrepresentation by it as alleged by the Plaintiffs is not examined since that will be decided by the concerned authority before whom such an application is pending. As of today the registration in favor of PP Buildwell in respect of the marks PP Mall and PP Shopping Mall subsists and is entitled to protection in terms of Section 28 read with Section 31 (1) of the TM Act....