Central Park Estates Pvt. Ltd. & Ors. v. Godrej Skyline Developers Private Limited & Anr.

10. I may first note the submissions of the learned senior counsel for the defendants. He has stated as follows:-

(i) It has been reiterated that the marks have to be compared as a whole.

Hence, the plaintiffs‟ label/mark has to be compared as a whole with the defendants‟ label. It is impermissible to compare constituent components of the plaintiffs‟ label mark with the defendants‟ mark. Hence, it wrong to concentrate only on the word CENTRAL PARK.

(ii) It is further stated that the word „CENTRAL PARK‟ is publici juris.

The words that are in general or common use are merely descriptive and cannot be appropriated as a trade mark. It is also stated that the word „CENTRAL PARK‟ in the Oxford Dictionary is defined as “a large public park in the centre of Manhattan, New York City”. It is reiterated that in innumerable real estate projects in India registered with RERA the word „CENTRAL PARK‟ is used. It is pleaded that no exclusive rights can be claimed over words/expressions that are descriptive and/or in common general use. Reliance is placed on the various judgments including judgments of the Supreme Court in the case of J.R.Kapoor vs. Micronix India, (1994) Supp (3) SCC 215; Skyline Education Institute (India) Pvt. Ltd. vs. S.L. Vaswani & Anr., (2010) 2 SCC 142 and the judgment of this court in the case of Living Media India Ltd.& Ors. vs. Alpha Dealcom Pvt. Ltd. & Ors., 2016 SCC OnLine Del 815 to plead that use of common/descriptive words eliminates any likelihood of confusion and if multiple entities use the same, the same becomes generic.

(iii) It is further stated that the plaintiffs‟ and defendants‟ marks are completely different. On a bare comparison, there is no scope or likelihood of confusion. It is also stated that the defendants‟ trade mark GODREJ CENTRAL PARK has the pre-fix GODREJ which is the dominant and essential feature of the defendants‟ trade mark. Reliance is placed on the judgment of this court in the case of Bhole Baba Milk Food Industries Ltd. vs. Parul Food Specialities (P) Ltd., ILR (2011) Delhi 317.

(iv) It is further pleaded that the plaintiffs‟ trade mark is prima facie invalid being in violation of Sections 9 and 11 of The Trade Marks Act, 1999 and is liable to be struck off.

(v) It is further stated that plaintiffs‟ reliance on various ex parte orders in its favour is misplaced. It is stated that there is no decision in favour of the plaintiffs which is on the merits of the case. It is further stated that in FAO (OS) 179/2016, the Division Bench of this court had permitted the respondent therein to use the mark „Rustomjee Central Park‟. It is pleaded that the facts of that case are akin to the facts of this case.

11. Learned senior counsel for the plaintiffs has rebutted the above submissions praying that appropriate interim orders be continued. It is denied that the word „CENTRAL PARK‟ is a dictionary word. It is stated that „Central Park‟ is combination of two words which are being used in an arbitrary manner for real estate projects. Hence, it cannot be held to be a generic/descriptive word. Reliance is placed on the judgment of this court in the case of Bata India Ltd. vs. Chawla Boot House & Anr. 2019 SCC OnLine Del. 8147 and Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. vs. Anchor Health & Beauty Care Pvt. Ltd., 2014 SCC OnLine Del. 3374. It is further stated that merely because several parties are using the said mark does not mean anything. The plaintiffs are not expected to sue all small time infringers who may not be affecting the plaintiffs‟ business. However, it is pleaded that the plaintiff is actively enforcing their rights in the mark „CENTRAL PARK‟ against third parties as can be seen from the list of litigations initiated by the plaintiffs. Reliance is placed on the judgment of this court in the case of Rolex Sa vs. Alex Jewellery Pvt. Ltd. & Ors., 2009 SCC OnLine Del. 753. It is further stated that the „CENTRAL PARK‟ is an essential feature of the plaintiffs‟ registered trade mark. The defendants have used the identical trade mark in relation to the identical services. They have merely pre-fixed their name „Godrej with the word „Central Park‟ making it deceptively and confusingly similar. It is stated that Godrej is not a distinguishing feature for all practical purpose. The Mark „GODREJ CENTRAL PARK‟ is identical to the plaintiffs‟ trade mark „CENTRAL PARK‟. Hence, there is likelihood of confusion and deception. Reliance is placed on provisions of section 29(2)(c) and 29(3) of the Trade Mark Act to plead that there is a presumption of confusion. In view of the above, it is pleaded that the interim orders passed by this court on 26.03.2019 be confirmed.

12. The position that emerges is that the plaintiffs appear to be using the said mark „CENTRAL PARK‟ since 1999. They are the proprietors of at least 30 registered trademarks having the word „CENTRAL PARK‟ as its prominent feature.

13. In contrast, the defendants in 2019 have now adopted and started using the trade mark GODREJ CENTRAL PARK/ /.

14. The defendant is a well known corporate group in India. It is said to have a market capitalisation of USD 15 billion and annual revenue USD 5 Billion. Admittedly, the defendants have also applied for registration of the trade mark „GODREJ CENTRAL PARK‟ in 2019 on a proposed to be used basis.

15. I may now deal with the submissions raised by the parties. I may first look at the statutory provisions.

16. Sections 29 and 2(1)(h) of the Trade Marks Act, read as follows: “29. Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not permitted use, uses in the course of trade, a mark which because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (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 of 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. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he— (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising— (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly. xxxxxx

2. Definitions and interpretation.— (1) In this Act, unless the context otherwise requires,— …….. (h) “deceptively similar”.—A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”

17. Section 17 of the Trade Marks Act reads as follows:- “17. Effect of registration of parts of a mark.— (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark- (a) contains any part--

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.”

18. Principles governing the resolution of disputes relating to identical and deceptive similarity of the trademark have been succinctly stated by the judgment of the High Court of Jammu & Kashmir in J.K.Oil Industries v. Ganpati Food Products & Ors., MANU/JK/0453/2017, as follows: “12. Principles governing the resolution of disputes relating to identity and deceptive similarity of trade marks have been laid down by the Supreme Court from time to time. In Corn Products Refining Company v Shangrila Food Products Limited: AIR 1960SC 142, the registered trade mark "Glucovita" of therein appellant was pitted against therein respondents' mark "Gluvita", which they had applied for its registration. Dealing with the question as to whether there was likelihood of confusion between the two marks, which was the view taken by Desai, J. of the Bombay High Court in that case, the Supreme Court observed as follows:

13. In AmritDhara Pharmacy v Satya Deo: AIR 1963 SC 449, the respondents therein had applied for registration of trade name "Lakshmandhara" in respect of a medicinal preparations for the alleviation of various ailments. This was opposed by therein appellant whose earlier registered trade name was "AmritDhara" in respect of a similar medicinal preparation. The question, which arose was whether the name "Lakshmandhara" was likely to deceive the public or cause confusion to the trade. Supreme Court in this has observed: "It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion." The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of cl. (a) of s. 8, or sub-s. (1) of s. 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause Confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker,

15. In Durga Dutt v Navaratna Laboratories: AIR 1965 SC 980, Supreme Court has pointed out: "In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."

16. Supreme Court in Durga Dutt's case has held also that 'where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion in relation to goods in respect of which it is registered. ''The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.

17. In F. Hoffmann-LA Roche and Co. Ltd. v Geoffrey Manner and Co. Pvt. Ltd.: 1969(2) SCC 716, relied upon by the learned counsel for the respondents, the dispute related to therein appellant's registered mark "Protovit" with therein respondents' mark "Dropovit". The question that came up for the consideration for the Supreme Court was whether the word "Dropovit" is deceptively similar to the word "Protovit" and in other words, whether the respondents' mark so nearly resembles the mark of the appellant as to be "likely to deceive or cause confusion". Supreme Court in this case referred to the test for comparison of by the two word marks were formulated by Lord Parker in Pionotist Co. (supra), and held further that: "It is also important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Layroma case Lord Johnston said': "...... we are not bound to scan the words as we would in a question of comparatioliterarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."

18. In order to decide whether the word "DIROPOVIT" is deceptively similar to the word "PROTOVIT", Supreme Court in F. Hoffmann-LA Roche and Co. Ltd. noticed that "each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel 'o'. The combined effect is to produce an alliteration......If greater regard is paid to the 'uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.” In view of the stated legal position, the issue centres around as to whether the trademark being used by the defendant is deceptively similar or nearly resembles the mark of the plaintiff or is likely to deceive or cause confusion.

19. As noted above, the trademark used by the plaintiff is CENTRAL PARK/ whereas the marks used by the defendant are GODREJ CENTRAL PARK/ and.

20. Taking into account the trade mark as a whole, it is clear that the trade mark of the defendant can prima facie be said to be structurally and phonetically similar to that of the plaintiff. The essential feature of the plaintiff‟s mark is CENTRAL PARK. The defendant has copied the essential feature of the trade mark of the plaintiff. There is prima facie an overall similarity in the marks of the defendant and that of the plaintiff. Adding the prefix GODREJ does not do away the likely deception/ confusion. In my opinion, prima facie the above trade mark used by the defendant is deceptively similar to the mark of the plaintiff.

21. I may now look at the defences raised by the defendant. The first defence raised by the defendants is that the word „CENTRAL PARK‟ is incapable of registration being descriptive and publici juris. The word is in common general use. The defendants have also sought to rely on the definition of „Central Park‟ given in Oxford Dictionary of English, 3rd Edition which reads as follows:- “Central Park a large public park in the centre of Manhattan in New York City.”

22. It has been vehemently argued that the mark CENTRAL PARK is publici juris being a part of the dictionary and hence being purely descriptive in nature and is not subject to protection under the Trademark Act.

23. In this context reference may be had to the judgment of a Coordinate Bench of this court in the case of Bata India Ltd. vs. Chawla Boot House & Anr.(supra). That was a case in which the plaintiff, namely, Bata India Ltd. adopted the mark „Power‟ for footwear in 1970. Defendant No. 2 moved a trade mark application for the mark „POWER FLEX‟ in respect of footwear. In those circumstances, this court held as follows:- “27. The spectrum of distinctiveness of marks clearly explains how distinctiveness of marks is to be judged. The spectrum as explained in McCarthy on „Trade Marks and Unfair Competition, can be illustratively depicted as below:

28. Even if one considers the nature of the mark „POWER’, it cannot be held to be a descriptive mark. As the well-known author Mr. J. Thomas McCarthy, in the treatise on „Trademarks and Unfair Competition, opines, the question as to whether the mark is descriptive or suggestive, can be based on the following tests: a) Degree of imagination required to connect the mark with the product; and b) The competitor's need to use the mark.

29. xxx

30. „POWER’, could at best be termed as a „SUGGESTIVE‟ mark for footwear, which would make it an inherently distinctive mark. In the context of footwear, it would at best be considered as a laudatory epithet. It is not immediately connectable to footwear. Even if one applies the competitors' need test, Defendant No. 2 has not shown a single footwear product using the word „POWER’. Though, some pending applications have been shown, it is a well-known fact that mere filing of applications or registering marks does not create any goodwill and also does not imply any use of the mark. The Plaintiff has been taking action against the marks which it considers conflicting to its interest, vigilantly.”

24. Reference may also be had to the judgment of the Division Bench of this court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. vs. Anchor Health & Beauty Care Pvt. Ltd.(supra) where the Division Bench held as follows:- “(xv) The feeling today, of the words “ALLROUND PROTECTION” being descriptive of toothpaste could perhaps be owing to the long usage thereof in relation to a toothpaste and may not have been so till it was first used in relation to toothpaste; the test, in our opinion, of descriptive is not of the day after long/repeated usage of some words in relation to a good or service, but of the day before such use; we are of the prima facie view that before the day of first use of the expression/words “ALLROUND PROTECTION” in relation to a toothpaste, the same could not have been said to be descriptive thereof.”

25. The dictionary definition relied upon by the defendants to claim that „Central Park‟ is a common term/is a dictionary term, in my opinion, is a misplaced argument. „Central Park‟ is not an English term.

CENTRAL PARK as is clear from the dictionary is a park in New York. Not every individual in India would be aware of this fact of New York. It is not a common English term as is sought to be urged. At best it is a case of two English words being used co-jointly. Further, the said mark is not readily connectable to real estate. It cannot be linked with real estate as is sought to be argued. The said mark „Central Park‟ cannot be said to be descriptive of the products which are being sold by the plaintiff. The claim of the defendants that „Central Park‟ is used where a building is centred around a park does not inspire any confidence.

26. Learned senior counsel for the defendant has heavily relied upon some of the judgments to support his contention that the mark CENTRAL PARK is a generic term. Reliance of the defendant on the judgment of the Division Bench of this court in Living Media Limited vs. Alpha Dealcom Pvt.LTd. & Ors. (supra) is misplaced. The case of the plaintiff in that case was that it was engaged in the publication of various magazines like India Today Travel Plus, Design Today and Magazine like Spice Today and Money Today etc. It was their case that they are using the mark „Today‟ in its variance continuously since 1975 and had spent sufficient resources to promote and publicise these brands and that the plaintiff has earned the status of a well known trademark. The defendant had applied for registration of the trademark Nation Today. In that background the court held as follows:- “17.The discussion of the facts discloses that the plaintiffs are owners of several registered trade marks. Prominent amongst these is INDIA TODAY which has been used for a weekly magazine since 1975; others are MUSIC TODAY, BUSINESS TODAY, a travel magazine “INDIA TODAY TRAVEL PLUS”, an architecture and design magazine “DESIGN TODAY”, and other magazines under the trade marks SPICE TODAY and MONEY TODAY, etc. The plaintiff also publishes daily newspaper MAIL TODAY. It has apparently acquired two trade marks TODAY in Classes 16 and 35. The argument for temporary injunction is that the plaintiffs have acquired distinctiveness to the extent that TODAY has gained a secondary meaning in the news, publishing and media segment; it is also a well known trade mark. In support, they contend that the advertising and growing sales figures testify to the mark's gaining strength. The bedrock of their reputation is the word mark TODAY, with which the users and members of the public invariably associate the plaintiffs. Quite naturally, the defendant resists the argument and points out that TODAY is a descriptive term: descriptive of the services rendered by the plaintiff; it also has a strong descriptive or service associative meaning to the defendant's business i.e. news channel. Additionally, the defendant points out that TODAY has been used by several other channels and products and that per se absence of use of that word by the plaintiff in the English news channel segment cannot entitle it to ad interim injunctive relief.

18. There is no dispute about the fact that the plaintiff has been in the news magazine publication business for over four decades; if it asserts that it has acquired a strong reputation for the title INDIA TODAY, which is its registered trade mark, the Court would be correct in assuming it to be so. However, does that per se along with sales figures and other financial details testifying to various brands and trade marks owned by the plaintiff, crystallise into a right to prevent others from using a common word, “TODAY” in respect of television news channel services. It is here that the matter requires a slightly closer scrutiny. The word TODAY is a common term and a dictionary one. Used in a non-contemporary sense i.e. without reference to time and as a mark, it could well be urged that it constitutes an arbitrary mark. However, its link with news is unmistakable. In this context, what acquires distinctiveness is the combination India Today.

19. The law demands closer scrutiny, when it comes to the use of common words (such as TODAY), that are descriptive (or semidescriptive) of the services or goods offered by the service provider or trader. This reluctance was best described in Joseph Crosfield & Sons Ltd., In re [(1910) 1 Ch 130] “Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the inclosure.” Again, in Mars GB Ltd. v. Cadbury Ltd. [1987 RPC 387] it was held that: “Where the trade mark allegedly used by the defendant comprises ordinary English words (such as „Page Three‟, considered by Slade

27. Reference may also be had to the judgment of the Supreme Court relied upon by the learned senior counsel for the defendant in the case of J.R.Kapoor v. Micronix India, 1994 Supp. (3) SCC 215. That was a case in which the appellant was injuncted from using the trade mark „MICROTEL‟. The appellant was manufacturing various electrical and electronic apparatus in which micro-chip technology was being used. The Supreme Court held that the word „micro‟ being descriptive of micro technology used, no one can claim monopoly for use of the said word. In the facts of that case, the Supreme Court held as follows: “5......... We are, therefore, unable to see how the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both trade names and the logos..............” Clearly, the above judgment does not help the case of the defendant. The court recorded a finding on the facts of the case that visual effect of both the logos is not same and there was not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos.

28. I may also note that the defendants have themselves applied for registration of their mark. What is the effect of this Act i.e. applying for the registration of the mark Godrej Central Park. In my view it is not permissible for the defendant to approbate and reprobate. The respondent has himself applied for registration of the trademark Godrej Central Park. It cannot now turn around and say that the mark Central Park is Publici Juris or a common English term or is descriptive.

29. Reference in this context may be had to the judgment of the Full Bench of this Court in Rajneesh Kumar Singhal vs. The State (National Capital Territory of Delhi), 89 (2001) DLT 511. In paragraph 6 the Court held as follows:- “6. The submission of the learned senior counsel overlooks the fact that a party cannot normally be allowed to approbate and reprobate. If a party has taken up a specific stand at a particular stage of the court proceedings it should not be open for him to take a contrary position at a subsequent stage of litigation or in different proceedings. The principle serves well as it does not allow a litigant to blow hot and cold at successive stages of the same litigation, or another litigation. The doctrine is well illustrated in Dwijendra Narain v. Joges Chandra 39 C.L.J. 40 where it was held as follows:- “It is an elementary rule that a party litigant cannot be permitted to assume inconsistent positions in Court, to play fast and loose, to blow hot and cold, to approbate and reprobate, to the detriment of his opponent. This wholesome doctrine applies not only to the successive stages of the same suit, but also to another suit than the one in which the position was taken up, provided that the second suit grows out of the judgment in the first.”

30. Reference may also be had to the judgment of this Court in the case of Automatic Electric vs. R.K.Dhawan(supra). That was a case which pertained to a suit for injunction filed by the plaintiff for its registered trademark DIMMERSTAT. The defendant in that case is said to have adopted the trademark DIMMER DOT. The defendants in that case took the stand in the said matter that the word DIMMER being a generic word is incapable of serving the trademark function. It was urged that the said word signifies an auto variable transformer and no trader could monopolize its use. The defendants in that case had got their trademark DIMMER DOT registered in Australia. In those facts this Court did not accept the contention of the defendant in that case that DIMMER is a generic expression. This Court held as follows:- “16. The defendants got their trade mark “DIMMER DOT” registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in “DIMMER DOT”, it does not lie in their mouth to say that the word “DIMMER” is a generic expression.”

31. Hence, the defendants have themselves applied for the trade mark with the word Central Park as an essential feature. They cannot turn around to claim that the mark Central Park is publici juris and cannot be registered. Hence, in these facts even otherwise the plea of the defendant that the trademark of the plaintiff i.e. CENTRAL PARK is a generic term or descriptive cannot be accepted.

32. I may now deal with the next contention of the learned senior counsel for the defendant. The defendants have sought to rely upon the judgment of the Division Bench in the case of Central Park Estates Pvt. Ltd. & Ors. vs. Keystone Realtors Pvt. Ltd. & Anr., FAO(OS) 179/2016 dated 06.09.2017 to plead that the Division Bench has permitted use of the term „Rustomjee Central Park‟. It is pleaded that the facts of the present case are akin to that case and hence this court should also allow the defendant to use the mark “Godrej Central Park”.

33. However, a perusal of the facts of the aforenoted case would show that that the plaintiff therein had claimed user of the mark „Central Park‟ since October 2001 whereas the respondent therein had also claimed user of the mark „Rustomjee Central Park‟ in Mumbai since 2001. It was also pleaded by the respondent therein that the appellant had knowledge of the adoption of the mark „Rustomjee Central Park‟ which has been used since 2001 the usage being in public domain. It was in those facts that the court did not interfere in the use of the mark „Rustomjee Central Park‟ as an interim measure. The facts of this case are not similar to the facts of the judgment of the Division Bench to warrant such an order.

34. In view of the above, in my opinion, there is no merit in the contention of the defendants.

35. The interim order of this court dated 26.03.2019 is made absolute. IA No. 4262/2019 is allowed accordingly. IA No. 5080/2019 is dismissed. CS(COMM) 152/2019 List on 14.10.2019 before the Joint Registrar for further proceedings.

JAYANT NATH, J. SEPTEMBER 11, 2019/rb/v