The main legal point established in the judgment is that copying a prominent part of a registered trade mark is prohibited, and the essential features of the trade marks must be considered as a whole.

JAYANT NATH, J.

IA No.19531/2012

1. The Suit is filed seeking a decree of permanent injunction to restrain the defendant from offering for sale or dealing in real estate business under the impugned trade mark “Genesis SKYON” or any other trade mark which may be deceptively similar to the plaintiff’s trade mark “IREO SKYON”. Other connected reliefs are also sought. The present application is filed for seeking an interim injunction to restrain the defendant from offering for sale, advertising or dealing in real estate business under the said impugned trade mark or using any trade mark which is deceptively similar to the plaintiff’s trade mark till pendency of the Suit.

2. This suit came up for hearing on 19.10.2012 when this Court by an ex parte ad interim injunction restrained the defendant, its directors, proprietors etc. from constructing, selling, offering for sale, advertising directly or indirectly dealing in the real estate business under the trade mark “Genesis SKYON” or any other trade mark which is deceptively similar to the trade mark of the plaintiff’s IREO SKYON.

3. The plaintiff pleads in the plaint/application that the trade mark IREO SKYON was adopted by the plaintiff in the year 2010. The plaintiff states to be a registered proprietor of the said trade mark IREO SKYON under class 35 and 37 w.e.f. 27.12.2010. There are several applications for the trade mark IREO SKYON of the plaintiff stated to be pending under different classes. It is stated that the said trade mark is a coined design adopted and used by the plaintiff when there was no other identical/similar mark in existence. It is urged that the said product/projects under the said trade mark have become immensely popular as the plaintiff’s advertisements routinely appear in national newspapers. It is further urged that the plaintiff has expended advertising and promotion expenditure on its product/project and trade mark IREO SKYON which roughly comes to Rs. 9.424/- crores and has achieved sales of Rs. 869/- crores.

4. It is further stated that in October 2012 the plaintiff came to know from publications in a newspaper about use of the trade mark “Genesis SKYON” by the defendant. It is urged that the plaintiff is the owner and prior user of the trade mark IREO SKYON and the defendant has blatantly copied the plaintiff’s trade mark and has tried to pass off their goods as that of the plaintiff. It is urged that the impugned trade mark Genesis SKYON is phonetically, visually and structurally similar to the plaintiff’s trade mark. It is further urged that the action of the defendant is to merely to cash upon the reputation and goodwill of the plaintiff’s mark and that there is no honesty in the action of the defendant.

5. It is further urged that the use of the trade mark “Genesis SKYON” by the defendant constitutes a violation of the plaintiff’s statutory right under the Trade marks Act, 1999. It is further urged that the use of the said impugned trade mark by the defendant constitutes acts of misrepresentation, misappropriation and passing off of the defendant’s goods/business as that of the plaintiff. Hence, the present Suit is filed.

6. The defendant has filed the written statement/reply. In the written statement/reply it is urged that the registration of the plaintiff is for the trade mark “IREO SKYON, Space Age Living” and hence the plaintiff cannot claim exclusive registration of the trade mark IREO SKYON. It is urged that the use of the word SKY is common and prevalent in real estate industry. It is urged that sky being common is used by the defendant in accordance with honest practices in the real estate industry. It is urged that the words SKY AND SKYON are publici juris and the use of the said words does not amount to infringement of the registered trade mark of the plaintiff. It is further stated that the official website of the Government of India would show that several trade marks with the word/label with prefix SKY are registered under Cl