The registration of a device mark protects the mark as a whole and not any constituent feature, and the allegedly offending mark, when viewed as a whole, should be compared to the registered trademark to determine infringement.

JUDGMENT :

VIBHU BAKHRU, J.

1. Provident Housing Limited (hereafter ‘the appellant’) has filed the present appeal impugning an order dated 17.02.2020 (hereafter ‘the impugned order’) passed by the learned Single Judge, whereby the respondents’ application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was allowed and the appellant was restrained from using its trade mark/name.

2. The appellant states in the month of December, 2018, it began promoting two residential blocks named ‘Provident Central Park’, at its real estate project ‘Provident Park Square’. The appellant claims that it had spent an amount of approximately Rs.1.83 crores in promoting the aforesaid project and the two residential blocks in question. The appellant thereafter, adopted the marks “PROVIDENT CENTRAL PARK” and “ ”.

3. The respondents state that in the year 1999, respondent nos. 3 and 4 conceptualised, conceived and adopted the residential project “CENTRAL PARK”, after obtaining a government license for development of the residential project at Golf Course Road, Sector-42, Gurgaon. The respondents claim that they are the proprietors of the registered trademarks “CENTRAL PARK/, “CENTRAL PARK RESORTS” and “CENTRAL PARK RESORTS & RESIDENCE”. The respondents claim that they have procured various registrations of trademarks in favour of respondent no. 1, wherein “CENTRAL PARK” is an integral and prominent feature. The respondents further claim that they have spent an amount of approximately Rs.74.34 crores in advertisements and Rs.145.31 crores as brokerage and marketing expenses for their various marks.

4. The respondents state that in the month of March 2019, they were served with an application, wherein the appellant had taken a plea that the words “CENTRAL PARK” formed a part of several real estate projects including the appellant’s residential units “PROVIDENT CENTRAL PARK”. Thereafter, the respondents claim that they became aware of the mark “” and “PROVIDENT CENTRAL PARK” being used by the appellant.

5. Disputes have arisen between the parties with respect to their trademarks. The respondents claim that the appellant is using the mark “” and “PROVIDENT CENTRAL PARK”, which is identical/deceptively similar to its mark of “CENTRAL PARK/, “CENTRAL PARK RESORTS” and “CENTRAL PARK RESORTS & RESIDENCE”. The device marks of the parties are reproduced below:-

Appellant’s mark Respondents’ mark

6. On 09.04.2019, the respondents filed a suit against the appellant under the provisions of the Trademarks Act, 1999 inter alia seeking permanent injunction against the appellant from infringing, passing off the relevant trademarks of the respondents.

7. The respondents state that on account of extensive use, high revenues, extensive publicity, trademark registrations and diligent enforcement of its rights, the mark “CENTRAL PARK/” is exclusively associated with the respondents and their services. Further, the said mark has acquired the status of a well-known mark.

8. The case of the respondents is that the marks “ ” and “PROVIDENT CENTRAL PARK” of the appellant are deceptively similar to their trademark as the words “CENTRAL PARK” are highlighted in a prominent manner. The respondents claim that since the appellant is engaged in a similar business, its marks are likely to cause confusion amongst the purchasing public and members of trade as to the origin of the services of the respondents. The respondents’ further state that the word “Provident” is not a distinguishing feature and thus, the appellant’s mark is, essentially, identical to their trademarks.

9. The appellant contends that the respondents acquired registration of the trademark “CENTRAL PARK/” on the basis that the same are unique labels and not on the basis of any distinctiveness acquired by prolonged use. The respondents are the proprietors of the device mark and word marks “CENTRAL PARK RESORTS” and “CENTRAL PARK RESORTS & RESIDENCE” and not the exclusive owners of the words “CENTRAL PARK”. The