Introduction
This case involves a dispute between Sankalp Constructions Private Limited (Plaintiff), Shankalp Associates LLP and Mr. Santosh Bangrecha (Defendant No. 1 and 2) regarding trademark infringement and passing off claims. The Plaintiff alleged that the Defendants’ use of the trade name “SHANKALP” was deceptively similar to its registered trademark “SANKALP,” which was used in the real estate sector for decades. The Plaintiff sought a perpetual injunction against the Defendants, claiming that their actions would cause confusion in the market.
Facts
- Plaintiff’s Business:
- Sankalp Constructions Private Limited has been engaged in real estate development since 1989.
- It is the registered proprietor of the trademark “SANKALP” in Classes 36 and 37, related to ‘real estate development’ and ‘building construction’.
- The company has a well-established reputation and goodwill, particularly in Mysuru and Bengaluru, with several completed and ongoing projects.
- Defendants’ Infringing Actions:
- Shankalp Associates LLP, a registered entity, developed a project named “Shankalp Business Bay” in Bengaluru.
- Sankalp argued that this name infringed on its trademark and would confuse customers due to the similarity between “Sankalp” and “Shankalp.”
- Legal Proceedings:
- The Plaintiff issued a legal notice to the Defendants, which was met with an evasive response.
- Defendant No. 1, Shankalp, appeared in Court and filed a written statement, denying any trademark infringement, stating that they were not in the real estate business but merely named a single building as “SHANKALP BUSINESS BAY”
- Defendant No. 2, Mr. Santosh, was placed ex-parte due to his non-appearance.
Analysis
- Evidence Presented by the Plaintiff: The Plaintiff presented several documents, including trademark registration certificates, legal notices, turnover reports, and photographs showing the use of “Shankalp Business Bay.” Using this evidence, the Plaintiff emphasised its long-standing reputation in the real estate industry.
- Shankalp’s Defence: Shankalp argued that it was not in the real estate business but had merely constructed one building named “Shankalp Business Bay.” It did not intend to use the name in any deceptive manner and claimed there was no risk of confusion among customers. Shankalp supported this claim with company registration documents and certificates.
- Court’s Findings: After reviewing the evidence and comparing the marks, “SANKALP” and “SHANKALP”, the Court held that the names were not deceptively similar. The Court noted that the Plaintiff used its trademark with additional words (e.g., “Sankalp Trusted Excellence”), while Shankalp’s name was distinct, without an intention to deceive or cause confusion. A comparison of the Plaintiff’s name and logo with the name and logo of the Defendants clearly showed that there was no similarity in the marks. The Court also observed that customers purchasing real estate properties would not be confused due to the dissimilarities in the business models and trade names.
Order
The Court dismissed the suit filed by Sankalp Constructions Private Limited, concluding that the Plaintiff had failed to prove trademark infringement or passing off by the Defendants. The Court also dismissed the Plaintiff’s request for a mandatory injunction and rendition of accounts. The suit was dismissed, with costs awarded to the Defendants.
Conclusion
The Court emphasized that in trademark disputes, plaintiffs must establish that a defendants’ use of a similar name would likely cause confusion or deceive customers. In this case, the Court found no such likelihood, especially since the Defendants were not engaged in the same line of business (real estate development). This case reiterates the importance of clear evidence of deceptive similarity when claiming trademark infringement, especially when the businesses involved differ in scope.
Citation: Sankalp Constructions Private Limited vs. Shankalp Associates LLP, O.S. No. 5403/2022, Before the XVIII Additional City Civil Judge at Bangalore City, dated 2nd September 2024, available at: https://indiankanoon.org/doc/146975729/
Authored by Kavya Sadashivan, IP Innovation, Consulting & Strategy Team, BananaIP Counsels.
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