The Delhi High Court, in a recent judgment, vacated an ad-interim injunction granted in favour of Central Park Estates Private Limited (“Plaintiff”) against Samvara Buildtech Private Limited’s (“Defendant”) use of identical CENTRAL PARK marks, and instead directed the Defendant to ensure that the expression CENTRAL PARK is used in a smaller font with more prominence given to Defendant’s other registered marks and is never used in isolation.
The Plaintiff owns various registrations for the CENTRAL PARK marks and claims to enjoy unparallel goodwill and reputation under them. As per the Plaintiff, it came across the Defendant’s use of the infringing CENTRAL PARK mark on its websites in 2017. The Defendant, on the other hand, claimed that the Plaintiff is estopped from claiming exclusivity over the CENTRAL PARK marks owing to prosecution history estoppel. As per the Defendant, given that the Plaintiff had, while responding to objections raised by the Trade Marks Registry (“Registry”) during the examination of its trade mark applications, contended that the cited marks which comprised of the words CENTRAL PARK, were conceptually and visually different from its marks, it cannot now claim exclusive rights in these marks. The Defendant also argued that it is using the words CENTRAL PARK in a descriptive and generic sense. The Plaintiff, in response to the Defendant’s submissions, contended that the words CENTRAL PARK are the prominent and essential feature of both the rival parties’ marks and the Defendant’s stance that the mark CENTRAL PARK is generic cannot be sustained only on the ground that third parties are also using the mark.
The court took note of the Plaintiff’s stance before the Registry and observed that the Plaintiff cannot now take a contrary stand. In the court’s view, the ad-interim injunction deserves to be vacated on this ground alone. The court also prima facie observed that there is merit in the Defendant’s assertion that the mark CENTRAL PARK is per se descriptive in character and common to trade. Accordingly, the court was of the opinion that the Plaintiff was unable to make out a case of for an interim injunction. Pertinently, the court despite holding the Plaintiff’s marks to be generic and common to trade and vacating the interim order, observed that the manner of usage of the CENTRAL PARK mark by the Defendant is likely to cause confusion amongst the potential consumers. Therefore, the court restrained the Defendant from using the expression CENTRAL PARK in a standalone manner or in a font size conspicuously larger than the Defendant’s other registered marks.
Central Park Estates Pvt. Ltd. & Ors. v. Samvara Buildtech Private Limited & Anr., CS(Comm) 189/2017, Judgement dt. March 29, 2023
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