Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of decision: 28 August, 2018
+ CS (COMM) 356/2018
ASHIANA HOUSING LTD ..... Plaintiff
Through Mr. Tanmay Mehta with Mr. Asit
Tewari, Advcoates
versus
SKG GROUP & ORS ..... Defendants
Through Mr. Gaurav Miglani, Mr. M K
Miglani, Advocates.
(Mob. 9899310299)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The dispute in the present case, relates to the trade mark “ASHIANA” .
2. The claim of the Plaintiff is that it adopted the mark ‘ ASHIANA ’ in
1986 in respect of housing and real estate services. Various companies were
incorporated by the Plaintiff with the mark ‘ ASHIANA ’, such as ASHIANA
Housing Ltd., ASHIANA Homes Pvt. Ltd. The Plaintiff, also started various
projects with the ‘ ASHIANA ’ name including, Ashiana Tree House
Residences, Ashiana Aangan, Ashiana Gardens, Ashiana Town, Ashiana
Green Hills, Ashiana Bageecha, Ashiana’s Gulmohar Park, Ashiana
Navrang, Ashiana’s Gulmohar Gardens, Ashiana’s Rangoli Gardens,
Ashiana’s Vrinda Gardens, Ashiana Anantara, Ashiana Amarbagh, Ashiana
Dwarka, etc., The Plaintiff also claims enormous goodwill in the market.
CS (COMM) 356/2018 Page 1 of 8
3. The suit was filed against the Defendants SKG Group, which
registered the Defendant No.2 company - ASHIANA Realtech Pvt. Ltd.
According to the Plaintiff, the Defendants also registered the domain name/
website www.thecubixashiana.com. The Defendants were planning to
launch a residential project in Dharuhera, Haryana by the name of
ASHIANA Cubix Homes. The Plaintiff’s grievance was in the use of the
mark ASHIANA as part of the corporate name of the Defendant no.2 as also
the undue prominence given to the said name in hoardings, billboards etc.,
One such banner of the defendant’s project is depicted below:
In this background, the present suit came to be filed by the Plaintiff seeking
permanent injunction against the use of the word “ ASHIANA” as part of the
trademark, trade name, project name and domain name, as also for damages.
4. The Defendant Nos.1 & 2 filed their written statement and claimed
that the word ‘ ASHIANA ’ is commonly used by several persons in respect of
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housing and real estate. It was also submitted that the project ASHIANA
Cubix Homes was started more than 8 years ago i.e. around 2007 and the
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company name of the Defendant No.2 was also registered on 7 March,
2007. It was further claimed that the word ‘ ASHIANA ’ is descriptive of the
services and that this Court had no jurisdiction.
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5. Initially, on 1 December, 2014, an ex-parte ad interim injunction was
granted in favour of the Plaintiff in the following terms :
“To protect the interest of the plaintiff and considering
the reply dated 08.12.2012 to M/s Ashiana Housing
Ltd. by the defendant where is was specifically
mentioned that they had never used the word
“Ashiana” for any of its projects and out of goodwill
gestures and good business ethics did not intend to do
so in future also in relation to its residential or
commercial projects, in the meanwhile, the defendants
No.1 & 2, their directors, partners, associates, agents,
licensees and all the persons acting for and on behalf
are restrained from providing services relating to real
estate development, construction, consultancy, etc,
under the trademark “Ashiana” or any other
trademark identical with and/ or deceptively similar to
the registered trademark “Ashiana” of the plaintiff
whereby infringing its registered trademark “Ashiana”
till the next date of hearing.”
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6. On 30 April, 2015, this Court recorded as under:
“Leaned counsel appearing for the defendant nos.1
and 2 states that after the injunction order dated
01.12.2014 defendant nos.1 and 2 are not using the
mark “Ashiana” and as such there is no infringement
of the trade name of the plaintiff. Learned counsel for
the plaintiff submits that if an undertaking to the said
effect is taken by the defendants, the matter may be
settled.”
CS (COMM) 356/2018 Page 3 of 8
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7. Thereafter, on 17 September, 2015, it was again directed as under:
“1. On 30.4.2015, counsel for the defendants No.1
& 2 ha d stated that after passing of the injunction
order dated 1.12.2014, her clients have stopped using
the mark, “Ashiana” and there is no infringement of
the trademark of the plaintiff. Counsel for the plaintiff
had stated that if the defendants No.1 & 2 are willing
to give an undertaking to the said effect, the matter
could be settled. In view of the statement recorded
above, the authorised representatives of the plaintiff
and the defendants were directed to appear in person.
2. Mr. Vipin Kumar Marya, authorised
representative of the plaintiff is present. However,
none is present on behalf of the defendants No.1 & 2.
3. Counsel for the defendants No.1 & 2 states that
Mr. Mohit Garg, Director of the defendants No.1 & 2
is confined to bed with fever.
4. Counsel for the plaintiff states that the statement
made on behalf of the defendants No.1 & 2 on the last
date of hearing to the effect that they have stopped
using the plaintiff’s trademark, is incorrect. He hands
over a screenshot of the defendants No.1 & 2’s website
of yesterday that reveals that the work, “Ashiana” is
being used as a corporate name.
5. As the arguing counsel for the defendants No.1 &
2 is absent, nor is the authorised representative of the
defendants No. 1 & 2 present, list on 8.10.2015.
6. It is made clear that if the authorised
representative of the defendants No.1 & 2 is not
present on the next date of hearing, then the court
would be inclined to pass adverse orders against them.
The authorised representative of the plaintiff shall also
remain present on the next date of hearing.
Interim orders to continue.”
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8. On 8 October, 2015, the promoter of the Defendant No.2 appeared in
CS (COMM) 356/2018 Page 4 of 8
Court and undertook that he may be granted 2 weeks’ time to apply to the
Registrar of Companies for seeking change of name without prejudice to the
application under Order XXXIX Rule 4 CPC. The matter was thereafter
adjourned from time to time. A review application was filed by the
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Defendants for seeking review of the order date 8 October, 2015.
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9. On 18 August, 2017, the review application was disposed of
permitting the Defendants to pursue the application under Order XXXIX
Rule 4 CPC.
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10. On 24 August, 2018, when this matter was listed for arguments,
since none of the facts were disputed in the matter, and the only question
urged by the learned counsel for the Plaintiff was in respect of permanent
injunction, the counsels were directed to address submissions. Mr. Tanmaya
Mehta, Advocate appears for the Defendants and is duly instructed by an
officer, who is present on behalf of the Defendants. The Plaintiff does not
press for damages/rendition of accounts. The only issue is of ownership of
the Plaintiff and injunction against use of ASHIANA as part of the corporate
name. The defendants also concede that they are not using the word
ASHIANA as a mark and do not intend to use the same even in future, as is
clear from the various orders already passed. The only submission is that the
corporate name ought not to be injuncted. This is a legal issue for which no
oral evidence is required to be adduced.
11. The Plaintiff claims to be the owner of the trademark “ASHIANA” in
several classes namely 16, 19, 35, 36, 37, 41, 42, 43, as stated in paragraph-
9 of the plaint. The legal consequence of the same is that all the statutory
rights as per Section 29 flow to the Plaintiff. A reading of Section 29(5)
makes it abundantly clear that use of a trade mark in respect of a trading
CS (COMM) 356/2018 Page 5 of 8
style or corporate name, constitutes infringement. The said provision reads
as under:
“ Section 29. Infringement of Registered trade
marks:-
(1).............(4).................
(5) A registered trade mark is infringed by a person if
he uses such registered trade mark, as his trade name
or part of his trade name, or name in his business
concern or part of the name, of his business concern
dealing in goods or services in respect of which the
trade mark is registered”
12. Since the Plaintiff is the registered proprietor of the mark ASHIANA,
which is not disputed by the Defendants, the use of the said word as part of
the corporate name is impermissible. The Defendants merely allege that
there are several third parties who are using the word ASHIANA as part of
the corporate name. Third-party use is not a defence in an infringement
action, as is settled in several judgements of this court including Essel
Packaging Ltd. v. Sridhar Narra & Anr. 2002 (25) PTC 233 (Del) , Info
Edge (India) Pvt Ltd & Anr. v. Shailesh Gupta & Anr 2002 (24) PTC 355
(Del) , as also the Division Bench judgment in Pankaj Goel v. Dabur India
Ltd. 2008 (38) PTC 49 (Del). It is however clear that the Defendants have
an approved project with the present corporate name, the functioning of
which could be jeopardised if the corporate name is fully injuncted.
13. In this factual background and in view of the settled legal position, the
following directions are passed:
The Defendant is permitted to use the trade/corporate name
`Ashiana Real Tech Pvt Ltd’ only in respect of the project which is
known as Cubix Homes at Dharuhera, Gurgaon. Under the
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impugned trade name, Ashiana Real Tech Pvt Ltd, no other project
would be started by the defendant. The impugned Company name
Ashiana Real Tech Pvt Ltd., shall be continued to be used for a
period of three years till the project is completed. The sales of the
flats or spaces can be made, under the impugned company name,
for a period of three years. If the entire project is not completed
and if any outstanding sales remain after three years, the
Defendants are permitted to seek permission of this Court for
extension of time.
Insofar as the banners, hoardings, advertisements, etc in respect of
Cubix Homes is concerned, the word CUBIX HOMES shall be
given prominence and the Ashiana Real Tech Pvt Ltd will be used
as a corporate name and the size of the font would not be higher
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than 1/4 of the font of CUBIX HOMES . Undue prominence
would not be given to the impugned corporate name.
The statutory compliances with respect of the CUBIX HOMES
project can be made with the name of Ashiana Real Pvt Ltd.
14. The suit is decreed in terms of paragraph- 28(i) and (ii) of the plaint,
except to the extent that in respect of Cubix Homes, the trade name Ashiana
Real Tech Pvt Ltd would be permitted to be used for a period of three years.
Insofar as domain name thecubixashiana.com is concerned, the Defendants
submitted that they have already changed the same. The injunction in terms
of paragraph 28 (iii) and (iv), of the plaint, is accordingly passed. Paragraph
28(v) of the plaint is infructuous. Insofar as paragraph 28(vi) is concerned,
damages are not pressed.
15. The above order has been passed with the consent of parties.
CS (COMM) 356/2018 Page 7 of 8
16. The suit is decreed in the above terms. Decree sheet be drawn
accordingly.
PRATHIBA M. SINGH
JUDGE
AUGUST 28, 2018
Pallavi
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