Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2009 Supreme(Kar) 1025

IN THE HIGH COURT OF KARNATAKA AT BANGALORE
A.S. Bopanna, J.
Presteege Property Developers rept. by its Managaing Partner Mr. Deepak Aswani and Terrafirm Projects Pvt. Ltd. rept. by its Managaing Director —Appellant
Vs.
Prestige Estates Projects Pvt. Ltd. rept. by its Company Secretary Mr. K. Venkat Narayana —Respondent
Miscellaneous First Appeal Nos. 4954 and 13696/2006 and (CPC) Miscellaneous First Appeal No. 4954 of 2006
Decided on : 02-12-2009

Advocates:
Advocate Appeared:
Mr. Aditya Sondhi, Srinivas A.R., Siddartha S.G., Nidhishree B.V., for the Appellant
Mr. Harikrishna S. Holla, S.N. Venkatarm, Bharathi, for the Respondent

The main legal point established in the judgment is that the cause of action for infringement arises only when a registered trade mark is used, and subsequent registration does not confer jurisdiction if the cause of action did not arise at the time of filing the suit.

Headnote:
TRADE MARK - Passing off - [ACT SECTION LIST] - The court discussed the provisions of the Trade Marks Act, 1999, particularly Section 134(2), and the implications of subsequent registration of a trade mark. The court emphasized that the cause of action for infringement arises only when a registered trade mark is used, and the subsequent registration of the trade mark does not confer jurisdiction if the cause of action did not arise at the time of filing the suit. The court also considered the interactivity of the defendants' websites and their geographical impact on the cause of action and jurisdiction.
Fact of the Case:

The plaintiffs filed suits seeking relief against infringement and passing off of their trade marks. The defendants contested the suits on grounds of jurisdiction, prior use of the marks, and lack of similarity. The trial court granted injunctions in favor of the plaintiffs, which were challenged in the appeals.
Finding of the Court:

The court found that the suits were not maintainable due to lack of territorial jurisdiction. It emphasized that the cause of action for infringement arises only when a registered trade mark is used, and subsequent registration does not confer jurisdiction if the cause of action did not arise at the time of filing the suit. The court also held that the interactivity of the defendants' websites did not establish a part of the cause of action within the jurisdiction of the Court at Bangalore.
Issues: The main issues were the maintainability of the suits in the Court at Bangalore, the implications of subsequent registration of the trade marks, and the impact of the interactivity of the defendants' websites on the cause of action and jurisdiction.
Ratio Decidendi: The court held that the cause of action for infringement arises only when a registered trade mark is used, and subsequent registration does not confer jurisdiction if the cause of action did not arise at the time of filing the suit. The court also emphasized that the interactivity of the defendants' websites did not establish a part of the cause of action within the jurisdiction of the Court at Bangalore.
Final Decision: The appeals were allowed, the orders of the trial court were set aside, and the respective applications under Order 39 Rule 1 and 2 CPC were dismissed. The parties were directed to bear their respective costs.

JUDGMENT

A.S. Bopanna, J.— This appeal is filed Under Order 43 Rule 1(R) of CPC against the order on I.A. No. 1 dated 15/12/06 passed in O.S. No. 7198/06 on the file of XXII Addl. City Civil Judge, Bangalore, Allowing I.A. 1 Filed Under Ordered XXXIX Rule 1 and 2 of CPC seeking for temporary injunction.

These appeals having been reserved for orders on 11.11.2009. Coming on for pronouncement this day, the court pronounced the following:

Judgment

Facts Relating to M.F.A. No. 4954/2006

The appellants herein are the defendants in O.S. No. 17779/2005. The said suit is filed by the plaintiff seeking for judgment and decree to restrain the defendants from infringing the well established trade mark "PRESTIGE" by using the offending trade mark "PRESTEEGE" to deceptively take advantage of the reputation of the plaintiff. In the said suit, an application under Order 39 Rules 1 and 2 of CPC was filed seeking temporary injunction. Since ad-interim injunction was granted, the defendants also filed an application under Order 39 Rule 4 of CPC praying to vacate the injunction. The said applications were considered by the trial Court and disposed of by its order dated 20.04.2006. By the said order, the ad-interim temporary injunction granted was confirmed and the application of the defendants was dismissed. The defendants are therefore before this Court against the order dated 20.04.2006.

2. The brief facts are, the plaintiff is before the trial Court contending that they are engaged in construction and building business for the last two decades and they are reputed builders of South India having built innumerable shopping complexes and residential apartments in and around the City of Bangalore. The plaintiff contends that they are identified with their trade mark "PRESTIGE, PRESTIGE GROUP and PRESTIGE ESTATES". They contend that they commenced their business by partnership deed dated 01.04.1986. Due to their high quality construction, intrinsic quality, salesmanship, advertisement and the promptness in executing the projects, they claim that they have built vast reputation and goodwill in the market. It is further contended that the word "PRESTIGE"" in the construction business is symbolic of superior construction quality coupled with modern amenities at competitive prices.

3. The plaintiffs have also stated with regard to the several projects undertaken by them and the awards won by them for excellent construction and architecture. It is the contention of the plaintiff that in addition to acquiring valuable common law rights, they have also sought for statutory protection in respect of their trade mark and trading style and as such have filed applications for registration of their service marks before the Trade Mark Registry. The plaintiff has also obtained registration under the Copyright Act, 1957 in respect of the original artistic work, design and getup of their Prestige Group label vide registration No. A-51400/91. The turnover of their business has also been referred to. Hence, the plaintiffs contend that the trade marks/service marks and the trade style stated above has therefore become their property and no other person can use a trade mark/service mark which is deceptively similar to the plaintiffs trade mark and if adapted would amount to passing off the valuable common law rights of the plaintiff.

4. In this background, the plaintiffs contend that during the third week of April 2005, the defendants got published an advertisement in Malayalam Manorama dated 27-04-2005 and the plaintiffs received inquiries from an existing customer about the further details advertised regarding a project of Prestige. The plaintiff therefore contends that the defendants have slavishly and fraudulently copied the trade mark and style by deliberately misspelling the same as "PRESTEEGE". Hence, it is contended that the use of identical name with phonetic similarity in relation to the same description of the services as that of the plaintiff is bound to result in

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Judicial Analysis

2009 Supreme(Kar) 1025

The main legal point established in the judgment is that the cause of action for infringement arises only when a registered trade mark is used, and subsequent registration does not confer jurisdiction if the cause of action did not arise at the time of filing the suit.

Cases Referred (9)

Judicial Analysis