LOKHANDWALA CONSTRUCTION INDUSTRIES PVT. LTD. vs LOKHANDWALA INFRASTRUCTURE PVT. LTD.

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2015 Supreme(Bom) 1343

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
G.S. PATEL, J.
LOKHANDWALA CONSTRUCTION INDUSTRIES PVT. LTD. & Anr. - Plaintiffs
versus
LOKHANDWALA INFRASTRUCTURE PVT. LTD. & Ors. - Defendants
NOTICE OF MOTION NO. 4244 OF 2006
IN
SUIT NO. 3979 OF 2002
WITH
NOTICE OF MOTION NO. 3300 OF 2007
IN
SUIT NO. 2442 OF 2007
Decided On : 31.8.2015

Advocates Appeared:
Mr. Ashish Kamat, with Mr. Shailesh Mendon & Mr. Avesh Kayser & Taniya Liman, for the Plaintiffs.
Dr. B. Saraf, with Ms. Shoma Maitra, i/b M/s. Wadia Ghandy & Co., for the Defendants.

Headnote:Trade Marks Act, 1999 - Section 29 Infringement of trade mark. Pendency of plaintiff’s "notice of motion" for nine years in Court, cannot be a ground for denial of a relief to plaintiff to which he might be otherwise entitled. This is a matter not so much on delay on the part of the plaintiffs as delays endemic to the judicial system. Anglo-French Drugs & Industries Ltd. v. Eisen Pharmaceutical Company Pvt. Ltd., 1998 (18) PTC 692 (Bom), Court should ever contemplate a situation where, simply because Courts have not been able to take up a matter as expeditiously as is perhaps desirable, that a plaintiff should, only for that reason, find himself denied a relief to which he might otherwise be entitled. At best, this delay may require the adjustment or moulding of the relief. Whether, independent of the Court’s delay, there has been delay on the part of the plaintiffs is another matter and that must be separately addressed.
       Trade Marks Act, 1999 - Section 29 Infringement of trade mark. Since plaintiff’s use of name is well established and defendant’s use of name is not entirely innocent hence defendants restrained from using name used by plaintiff. In Mumbai there is incessant construction. There are advertisements daily and ’construction’ companies or enterprises abound. Many use the names proper nouns or surnames. In this crowded field of builders jostling for projects, some, using their names, have acquired considerable goodwill and a reputation for standards and quality. Their names are uniquely associated with the construction and with a certain class or classes of housing : Mittal, Raheja, Lodha are among these. So, too, is Lokhandwala. The word "Lokhandwala", the name used by the plaintiffs, has now come to describe a geographical area in Mumbai’s suburbs. This was a township developed by the plaintiffs themselves. There is in the public mind and imagination an association of that area with the name of the plaintiffs. Defendants’ use of the name is not entirely innocent.
       Moreover, this is an action in passing off, and there may be third parties who assume that the defendants’ constructions are in fact those of the plaintiffs, and consequently alter their circumstances to their detriment. This necessitates at least some level of relief. Those who purchase properties are members of a discerning class who would be capable of distinguishing between. the two. This is the purest speculation. While such buyers do often conduct their own due diligences, it hard to believe that this would necessarily include an investigation of precisely which Lokhandwala they are dealing with, particularly if there is a common public association with one of them and not the other. The material annexed to the Affidavit in Reply does not also indicate the kind of recognition or public awareness that might enable third party purchasers to easily tell one from the other.
       A flat purchaser would first be drawn by the fact that the proposed construction is "by Lokhandwala", assuming quite understandably that this is a project by the plaintiffs It would be wholly unrealistic to expect every flat purchaser to then minutely scrutinize material and to be able to tell from, say, one of a raft of names that might be used by the defendants that this is not after all a project by the plaintiffs but by their rivals. When we speak of `confusion’ or `deception’ in the context of passing off and indeed, the very expression `passing off’ itself all suggest that the overarching consideration is not merely an individual proprietary rights or claims but of the public interest. How will a consumer view the rival marks? Will he or she readily be able to tell one from the other? Is he or she likely to confuse the two rival users? If so, then an injunction must follow.[2002 (24) PTC 121 (SC) Foll].

JUDGMENT:

1. Both suits are actions in passing off. The Plaintiffs, a group of builders well known in Mumbai, seek to restrain the Defendants from using the word “Lokhandwala” or any other expression similar to it as part of their corporate name, trading style or in relation to their business. The Defendants are also in the construction business.

2. Notice of Motion No. 4244 of 2006 in Suit No. 3979 of 2002 has been pending for nine years. In the meantime, the Plaintiffs had filed an earlier Notice of Motion. That was allowed to be withdrawn with liberty to file afresh, and Notice of Motion No. 4244 of 2006 came to be filed in consequence.

3. The Plaintiffs also brought a second Suit No. 2442 of 2007 and filed Notice of Motion No. 3300 of 2007 in that suit. In that Notice of Motion, the Defendants made a statement on 4th September 2007 that the 1st Defendant would not commence or enter into commercial activities till the final disposal of the suit. That ad-interim order has continued till date. The order of 4th September 2007 also directed both Notices of Motion to be heard together. The present order disposes of both the pending Notices of Motion.

4. Suit No. 3979 of 2002 was filed on 13th December 2002. The Plaintiffs’ case is that the Plaintiffs are a renowned name in the construction industry in Mumbai. In 1979-1980, they commenced construction under the name “Lokhandwala”, using it as their mark or brand. Various partnership firms, companies and other commercial entities were set up or incorporated by them using this name. They also began development of a very large township at what was then known as Oshiwara near Andheri and is now known only as “Lokhandwala”, named after the Plaintiffs who did most, if not all, the construction there. Further companies were established by mid-1982. In 1992, the Lokhandwala Foundation was established. The Plaintiffs then took up the development of a 2000- acre township at Kandivali, also known as “Lokhandwala”. They also constructed what was then called the Regent Hotel at Bandra, now known as The Taj Land’s End. Given this background, Mr. Kamat for the Plaintiffs says that the name Lokhandwala, the surname of the Plaintiffs’ first promoter and used by the group as a trading name or mark, has become synonymous with the Plaintiffs’ entire group.

5. On 29th November 2002, the Plaintiffs issued a notice to the Defendants. A copy of that notice is at Exhibit “F” to the plaint. In this, the Plaintiffs alleged that the Defendants had dishonestly adopted the surname “Lokhandwala”, identical to that of the Plaintiffs, and were using it in the same field of construction and housing. The Defendants were called on to cease and desist from using the name “Lokhandwala”. The Defendants sent a pro tem reply on 2nd December 2002. There was no further reply and the suit No. 3979 of 2002 was filed.

6. Since then, a written statement has been filed and, of course, in addition there is a comprehensive Affidavit in Reply to Notice of Motion 4244 of 2006.

7. As I understand it, the defences seem to be principally that the word “LOKHANDWALA” is a family name or surname and carries no exclusivity. It is not permissible, the Defendants represented by Dr. Saraf say, to have a monopoly on any such name. It is also the surname of the Defendants’ own promoter. In any case, the Defendants have been using this name openly and continuously for a very long period of time before the Suit was filed. There is a long and unexplained delay on the part of the Plaintiffs and this is sufficient to deny them equitable relief. Dr. Saraf also points out that the Notice of Motion has remained without an effective interim order, other than the statement volunteered by the Defendants themselves in the second Notice of Motion, for the last nine years. In that time, the Defendants have continued using the name “Lokhandwala” and have done business in that name. It would be most inequitable to grant interim relief now, he submits, especially wh

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2015 Supreme(Bom) 1343

Cases Referred (1)