Prestige Buildwell Private Limited v. Prestige Estates Project Ltd.

Madras HC12 Sept 2023(T)OP(TM)/63/2023

Case brief

AI extract

What is this about?

This order closes 18 rectification petitions for non-use of trademark filed under the Trademarks Act, 1999. The court closed the cases because the petitioner admitted in prior civil proceedings that it would use its trading style rather than infringing the registered proprietor's trademark, rendering the petitions moot.

What did the court decide?

All 18 rectification petitions are closed due to the petitioner's undertaking in prior civil proceedings to avoid infringement.

Prestige Buildwell Private Limited Vs Prestige Estates… — Intellectual Property | Madras HC (2023)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED: 12.09.2023

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CORAM

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THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

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(T)OP(TM)/63 to 80/2023 (18 Nos.) (ORA/314 to 331/2012/TM/CH) (18 Nos.)

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M/s.Prestige Buildwell Private Limited 154, 1st Floor, Aggarwal Cyber Plaza - 1, Plot No. - C - 4,5,6, Netaji Subhash Place Pitampura, Delhi - 110 034. ... Petitioner in all OP's

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-vs-

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1.M/s.Prestige Estates Project Ltd., The Falcon House, No. 1 Main Guard Cross Road, Bangalore 560 001.

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2.The Registrar of Trade Marks, Trade Marks Registry At Chennai Intellectual Property At Chennai Intellectual Property Rights Building, Industrial Estate, SIDCO RMD Godown Area, G.S.T. Road, Guindy, Chennai - 600 032. ... Respondents in all OP's

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PRAYER in (T)OP(TM)/63/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.651752 in class 16 and / or delete the goods on which

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https://www.mhc.tn.gov.in/judis

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there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/64/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340133 in class 36 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/65/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1342695 in class 35 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/66/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1342691 in class 36 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/67/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the

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https://www.mhc.tn.gov.in/judis

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registration No.1342697 in class 36 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/68/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340141 in class 35 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/69/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340145 in class 35 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/70/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1342689 in class 35 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/71/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks

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3/10

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https://www.mhc.tn.gov.in/judis

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Act, 1999, praying to rectify revoke and cancel confine the registration No.1340132 in class 35 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/72/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340134 in class 37 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/73/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340143 in class 37 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/74/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1043766 in class 16 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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https://www.mhc.tn.gov.in/judis

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PRAYER in (T)OP(TM)/75/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340148 in class 37 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/76/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1342699 in class 37 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/77/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1342693 in class 37 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/78/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340142 in class 36 and / or delete the goods on

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https://www.mhc.tn.gov.in/judis

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which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/79/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.1340147 in class 36 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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PRAYER in (T)OP(TM)/80/2023 : Transfer Original Petition (Trademarks) filed under Sections 47, 57 and 125 of the Trademarks Act, 1999, praying to rectify revoke and cancel confine the registration No.651750 in class 16 and / or delete the goods on which there is non user of the Registered Proprietor from the impugned registration.

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For Petitioner : No Appearance in all OP's For Respondent 1 : Mr.Arun C.Mohan in all OP's for M/s.Holla Associates

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For Respondent 2 : Mr.J.Madanagopal Rao, SPC in (T)OP(TM)/63 to 65/2023

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For Respondent 2 : Mr.M.Karthikeyan, SPC in (T)OP(TM)/66 to 80/2023

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https://www.mhc.tn.gov.in/judis

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COMMON ORDER

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Private notice was served on the petitioner on 09.08.2023, upon the first respondent being permitted to serve private notice on the petitioner. The bailiff's report records that Court notice was served on the petitioner on 17.08.2023. The petitioner remains unrepresented in spite of service of notice. Learned counsel for the first respondent placed before me a memorandum filed by the petitioner before the Additional City Civil Judge at Bengaluru in O.S.No.4192 of 2012.

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In the said memo, the petitioner herein admitted that the first

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respondent herein is the registered proprietor of the trade mark "Prestige” with Logo in classes 36 and 37. The petitioner further undertook that it will use the name "Prestige Buildwell Private Limited" only as the trading style and not in relation to the services provided by it. The relevant clauses of the said memo are set out 7/10

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https://www.mhc.tn.gov.in/judis

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below:

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"1. The defendants admit that the plaintiff is the registered proprietor of trade mark "Prestige" with logo in class 36 and 37 of the Trade Marks Act, 1999.

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2. The defendant has been using the trade style "Prestige Buildwell Private Limited". The defendant undertakes that they shall continue to use only "Prestige Buildwell Private Limited" as their trading style and they shall not use "Prestige" and logo adopted by the plaintiff for its activities and shall not infringe the registered trademark of the plaintiffs.

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3. The plaintiff has no objection for the defendant, using trading style "Prestige Buildwell Private Limited" and accordingly will not press for permanent injunction against the defendant for the use of trading style "Prestige Buildwell Private Limited".

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https://www.mhc.tn.gov.in/judis

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In view of the above agreement recorded in civil proceedings, the petitioner is no longer in a position to prosecute these rectification petitions. By taking note of this development, these rectification petitions are closed. There shall be no order as to costs.

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12.09.2023

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rna/ssa Index : Yes / No Internet : Yes / No

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https://www.mhc.tn.gov.in/judis

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SENTHILKUMAR RAMAMOORTHY,J

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rna/ssa

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(T)OP(TM)/63 to 80/2023 (ORA/314 to 331/2012/TM/CH)

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12.09.2023

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https://www.mhc.tn.gov.in/judis

Prestige Buildwell Private Limited v. Prestige Estates Project Ltd.

Case brief

What is this about?

What did the court decide?

Prestige Buildwell Private Limited v. Prestige Estates Project Ltd.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

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