TMI Blog2009 (9) TMI 1031X X X X Extracts X X X X X X X X Extracts X X X X ..... y 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 course of business as their house mark and trademark. It is stated that the trade mark PP‟ has come to be co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 8223;) 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 shopping mall and as part of its corporate name is likely to create confusion amongst the clients and customers of the Plaintiffs; it is not bonafide and is a misrepresentation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 3; 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 or name of PPJPL. It is pointed out that PP Buildwell has obtained registrations for the marks PP Mall (under No.1308302) and PP Shopping Mall (under No. 1308303) both in Class 37 effective 13th September 2004. It is submitted that inasm ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erties 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 mark PP which is the essential feature of its marks PP Jewellers and PP Towers and logos PPJ and PPT. While PPJPL holds a registration for the marks PP Jewellers and PPJ in Class 14, its application for registration of the letter mark PP in Class 37 is yet to be granted. On the other hand PP Build ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se 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. The statements therein are really a denial of the Plaintiffs‟ assertions in the corresponding para in the plaint. In any event, an implied admission by the Defendant in a written statement cannot lend distinctiveness to a mark which inherently lacks it. 16. The burden in the instant case for t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 will tell, that these tests are not the same, and that the reference in Lloyd to a reasonably well informed and reasonably observant and circumspect average consumer will have the effect that a likelihood of confusion for the purposes of the 1994 Act will be harder to show than a likelihood of decep ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... PC 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 decision in B.K. Engineering Company v. U.B.H.I. Enterprises (Regd,) Ludhiana 1985 PTC 1 (Del) (DB) it is discussed at some length hereafter. The Plaintiffs and the Defendants in the said case were both firms were engaged in the manufacture of cycle bells. The Plaintiffs started manufacturing bells as early as 1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntagonal 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 off. 24. Therefore it boils down to this. The comparison of the rival marks in this case is between the Plaintiff‟s marks - PP Jewellers, PP Towers, the logos PPJ and PPT - and the Defendants marks - PP Buildwell, PP Mall, PP Shopping Mall and PP Prime Properties. To the question whether these marks on a comparison are deceptively or confusingly similar, the answer of this Court is prima facie in the negative. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es 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. [see P.M. Diesels Pvt. Ltd v. Thukral Mechanical Works AIR 1988 Delhi 282] 27. Learned counsel for the Plaintiff referred to Section 29 (5) of the TM Act and submitted that although the said provision was relevant to infringement of a registered trade mark by use of such mark as part of a corporate name, the same principle should apply even in an action for passing off. This Court is unable to agree. The tests for ..... X X X X Extracts X X X X X X X X Extracts X X X X
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