Delhi High Court: A Single Judge Bench of Amit Bansal, J.* held that the various registrations and the long usage of trade mark ‘VIVANTA' by the plaintiff, and the goodwill vested in the ‘VIVANTA' trade mark, entitled the plaintiff for grant of permanent injunction. The Court further directed that all the seized goods bearing the mark ‘VIVANTA' on the premises of the defendant should be destroyed by the defendant in the presence of the plaintiff's representative.
Background
The plaintiff was a part of TATA Group of Companies and offered hospitality services. The plaintiff first coined and adopted the mark ‘VIVANTA' for its hotels and other services in 2008 and had a website at www.vivantahotels.com dedicated to its hotels under the brand name ‘VIVANTA'. The plaintiff was the registered proprietor of the trade mark ‘VIVANTA' (word/device) in Classes 42 and 43. The defendant offered its services in the hospitality sector and provided tailor-made and customized holiday packages for its customers. The plaintiff received an email informing them of the infringing activities of the defendant and upon investigation, it was found that the defendant was initially incorporated as ‘R M Y Builders & Developers (P) Ltd.' and later changed its name to ‘Vivanta Hospitality (P) Ltd. '. The domain name, www.vivantahospitalitty.com was registered by the defendant, and it was further revealed that there were more than 100 consumer complaints made by customers, who were under the impression that the defendant was associated with the plaintiff and were cheated by the defendant. In 2022, the plaintiff received another email by a customer informing them that the defendant was claiming to be associated with the plaintiff and used the name ‘VIVANTA VACATION CLUB' on its websites, bills, and promotional material, in the following manner:
Analysis, Law, and Decision
This Court in its earlier Order had granted an ex parte injunction in favour of the plaintiff restraining the defendant from using the trade mark ‘VIVANTA'. In the present case, the Court opined that the plaintiff had been able to prove that it was the registered proprietor of the trade mark ‘VIVANTA' (word/device) in Classes 42 and 43 and had been using the said mark since 2008. The Court also observed that the Local Commissioner's Report showed that the defendant was engaged in the business similar to the plaintiff, under the trade name identical/deceptively similar to that of the plaintiff and the inventory prepared by the Local Commissioner showed that a large stock of infringing material was found at the premises of the defendant.
Comparative analysis of the marks of the plaintiff and the defendant
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Thus, the Court opined that the defendant was using identical mark ‘VIVANTA' of the plaintiff by adding the expression ‘VACATION CLUB' as a suffix, which amounted to infringement of the plaintiff's trade mark as well as passing off. The Court further opined that “number of consumers were duped by the defendant under the pretext of its association with the plaintiff. The defendant had not only taken unfair advantage of the reputation and goodwill of the plaintiff's mark but also deceived unwary consumers of their association with the plaintiff. Such acts of the defendant would also lead to dilution and tarnishment of the plaintiff's mark ”.
The Court further opined that the domain name of the defendant was also deceptively similar to that of the plaintiff and was likely to deceive the public of its association with the plaintiff. The Court relied on Anugya Gupta v. Ajay Kumar, 2022 SCC OnLine Del 1922 wherein this Court held that the right of a proprietor in a domain name was entitled to equal protection as the user traffic might be diverted due to the use of the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. Thus, the Court opined that the use of ‘VIVANTA VACATION CLUB' as a part of the defendant's trade name was also likely to deceive unwary consumers of their association with the plaintiff as a domain name might have all the characteristics of a trade mark and could result in an act of passing off. The Court noted that the defendant’s company at the time of registration was using a completely different name and was engaged in an unrelated business activity. Therefore, the Court opined that the adoption of the infringing mark by the defendant in relation to a business identical to that of the plaintiff clearly depicted the intentional malafide of the defendant.
Thus, the Court held that the various registrations and the long usage of the trade mark ‘VIVANTA' by the plaintiff, and the goodwill vested in the ‘VIVANTA' trade mark, entitled the plaintiff for grant of permanent injunction. Further, the Court directed that all the seized goods bearing the mark ‘VIVANTA' in the premises of the defendant should be destroyed by the defendant in the presence of the plaintiff's representative. The Court disposed of the present petition and imposed costs of Rs. 6,00,000 on the defendant.
[Indian Hotels Co. Ltd. v. Vivanta Hospitality (P) Ltd., CS(COMM) 507 of 2022, decided on 28-4-2023]
Advocates who appeared in this case :
For the Plaintiff: Pravin Anand, Achuthan Sreekumar, Rohil Bansal, Apoorva Prasad R., Advocates
*Judgment authored by: Justice Amit Bansal