Bombay High Court grants trademark relief to two Mumbai builders

The Bombay High Court recently granted interim relief to Kalpataru Properties Private Limited (Kalpataru) by granting an injunction restraining Kolkata-based fast moving consumer goods (FMCG) company called Kalpataru Group from infringing Kalpataru's trademark and trade name. It also restrained Lokhandwala Infrastructure Private Limited and its officer-bearers from using the trademark 'Lokhandwala' or any other name deceptively similar to it in relation to any new construction project.

Justice GS Patel, in a September 3 order, forbade the Kolkata company from directly and/or indirectly using the impugned mark Kalpataru in any manner or any other word identical with or deceptively similar to the registered trademark of Kalpataru.

Kalpataru had approached the HC against the Kolkata company and four others after it learnt in November 2014 about them using an identical mark Kalpataru as their trade name, trading style and corporate name in relation to the services of distribution of FMCG products.

Kalpataru also found a website hosted by the Kolkata firm with the impugned mark — www.kalpatarugroup.com. This domain name appears to have been registered by a partner of the Kolkata company.

In its submission to the court, Kalpataru stated that it had conceived and adopted the trademark Kalpataru in 1969, when it began using it for its various business activities.

The matter has now been listed for final hearing in the week of September 28.

In the other case, Lokhandwala Builders Private Limited, which has constructed the Lokhandwala complex in Oshiwara, had approached the court, seeking directions to restrain the infrastructure company from using its trademark. The plea was pending for over nine years for hearing.

The plaintiff, Lokhandwala Builders, in its suit claimed that they started construction in 1979-80 under the name Lokhandwala, using it as their mark or brand. Various partnership firms, companies and other commercial entities were set up or incorporated by them using this name, the suit added.

In 2002, the plaintiff issued a notice to the infrastructure company, alleging that it had dishonestly adopted the name Lokhandwala and was using it in the same field of construction and housing. The defendant was called on to cease and desist from using the name.

The defendant opposed the plea, saying that principally the word 'Lokhandwala' is a family name or surname and carries no exclusivity. It also contended that it's the surname of the defendant's own promoter, and that the plaintiff took a long time to raise the issue.

The court, after going through the arguments and supporting documents, noted, "In Mumbai, there is incessant construction. There are advertisements daily and 'construction' companies or enterprises abound. Many use the names — proper nouns or surnames. In this crowded field of builders jostling for projects, some, using their names, have acquired considerable goodwill and a reputation for standards and quality."