Madras High Court
Westinn Hospitality Services Limited vs Caeser Park Hotels And Resorts Inc. on 29 April, 1997
Equivalent citations: 1998(3)CTC149
ORDER
1. C.S.No.5 of 1996 is filed by Westinn Hospitality Services Limited. Defendant therein Ceaser Park Hotels and Resorts Incorporated is the plaintiff in C.S. No.141 of 1996. The parties are hereinafter referred to as WHSL CPHR respectively. The suit by WHSL and purports to be under Sec. 120 of the Trade and Merchandise Marks Act, 1958 alleging that there are groundless threats by CPHR in relation to the use of the mark WESTINN. That mark is not a registered trade mark in India. The mark is not claimed in relation to any goods but is claimed by CPHR as service mark. Service marks are not registerable under the Trade and Merchandise Marks Act.
2. WHSL was initially incorporated in August, 1989 as Westinn Consultants Private Limited which name was changed in the year 1991 as Westinn Hospitality Services Limited. It has been using the words 'Westinn' as part of its corporate name from the year 1989. The company had been carrying on business of consultancy services for hotels and resorts and for providing an automatic hotel reservation system. The company has among other divisions, a division providing for automatic hotel reservation system which business is carried on under the name and style of 'Hotlink'. The Managing Director of WHSL had training in California before the Company was incorporated in India in 1989. Westinn is also managing some hotels in south India.
3. CPHR is said to be the owner of the service mark 'Westin' which was part of the corporate name of its erstwhile subsidiary. Westin Hotel Company incorporated. Both Companies are based in the city of Seattle, USA. Westin Hotels Company is said to have been incorporated for the first time in or about 1924 and was running a large number of hotels in the north west regions of USA and at the time of institution of the suit, was running about 60 hotels in 11 countries, including Singapore. There is no Westin hotel in India. Neither the westin hotel company nor CPHR has any branck office in India. In 1995 a reorganisation appears to have taken place as a result of which, CPHR which is said to have acquired Westin Hotel company in or about 1988, retained only the intellectual property rights in relation to the mark 'Westin' for the Asian region while for the rest of the world, the rights in relation to that mark were retained by Westin Hotel Company. Westin is not a part of the corporate name of CPHR.
4. WHSL took steps to make a public issue some time in the middle of 1995. It is thereafter that the CPHR called upon the WHSL to cease and desist from using the mark Westin which mark was claimed as service mark belonging exclusively to CPHR for whole of Asia. These two suits came to be filed thereafter, first by WHSL and the latter by CPHR. The suits filed by CPHR is to restrain the WHSL from passing off its business as that of CPHR by, using the name 'Westin' as part of its corporate name, besides, claiming damages and costs.
5. In each of these suits respective plaintiffs have sought injunctions. Interim injunction has not been granted in favour of either of the plaintiff, so far. The applications for injunctions O.A.No28 of 1996 in C.S.No5 of 1996 and O.S.Nos.163 and 164 of 1996 in C.S.141 of 1996 are being disposed of by this common order.
6. So far as the application for injunction in C.S.No.5 of 1996 is concerned, the application as also the suit are misconceived as the statutory provisions under which the suit has been filed is wholly in applicable to service marks. Service mark is not in any manner regulated by the Trade and Merchandise Marks Act, 1958. The suit under Sec. 120 of that Act can only be maintained in relation to trade marks as it is defined in the Act namely marks in relation to goods. The mark 'westin' according to the case pleaded is not a trade mark in relation to any goods but is a mark used in relation to or in connection with service. The application in that suit OS No.28 of 1996 has therefore to be rejected.
7. In so far as the suit filed by CPHR in concerned, it is admitted that 'Westin' is not a part of the corporate name of CPHR. Westin is not a registered trade mark in India. There is no branch office or regional office of either the Westin Hotel company or of CPHR in India. The mark also has not been extensively advertised in India. The advertisements produced by CPHR are mostly advertisements in the publication abroad which do not have any significant circulation in India. Advertisements in India in the print media produced by CPHR are two advertisements in Economic Times published in the year 1989 when announcing for the appointment of a General Sales Agent for Westin Commander and Westin Plaza Hotels in Singapore. Those hotels had hot advertised themselves in Indian Media. Mention of these hotels and the general sales agent appointed by them in India at Delhi has been made in one or two Indian magazines published in the year 1989 which magazines have been produced. This is all the published material concerning the Westin Hotels in India produced by the CPHR.
8. It is not the case of the plaintiff CPHR that it had advertised its name or logo on the television and that it had been viewed by a large number of persons in India. The correspondence with the sales agents and with some of the persons who had stayed in the hotels in Singapore has been filed. They are private letters between the hotels and the persons who had stayed in the hotels in Singapore. A computer print out said to contain the names of persons from India and who stayed in the hotels at Singapore and one said to be the members of the special group called Westin Premier Club, had been filed. The authenticity of the print outs has been questioned by the defendant. No affidavit has been filed thereafter; nor any other record filed to establish the authenticity or the accuracy of that computer print out. Even the print out filed, does not show that the persons mentioned therein had stayed in the hotel at Singapore for significantly long periods and the names shown in the print out less than 200.
9. CPHR has averred that the Westin Hotels have a combined turn over of 1 1/2 billion US dollars and that it has spent for the whole group over 20 million dollars on advertisements. It is obvious from the documents produced that infinite similarly minute fraction of the total expenditure on advertisement has been incurred in India. What has been produced is one or two advertisements announcing the appointment of the general sales agent in the year 1989. No other advertisement made in India before or after that has been produced.
10. CPHR however claims that its mark 'Westin' is well-known all over the world, that it had acquired goodwill in the business of hotels and hospitality services and it has the exclusive right to use that mark in relation to hospitality service in India. The documents produced by CPHR do not show that it was among the top 10 hotels under any of the categories in which the hotels have been listed namely First Class, Premier, Luxury etc. No hotel in India owned by Westin directly or in collaboration with others or any hotel under licence from Westin is mentioned in any of these documents filed by the CPHR.
11. It has been averred in the plaint that CPHR became aware of the existence of WHSL after its write ups appeared in the year 1995 about the proposed public issue of WHSL and it came to know about the licence agreement between WHSL and M/s. Days INN of America Inc. USA under which WHSL became a licensee for the establishment and management of hotels under the name 'Days Inn'. That agreement also prohibited WHSL from establishing or running hotels under any name other than 'Days Inn' The Correspondence exchanged between CPHR and Days Inn has been produced which shows that CPHR had called upon Days Inn to prevent WHSL from using the word 'Westin' and that Days Inn had regretted its inability to do so but could only agree to indicate that the rights granted to WHSL do not extend beyond India and the WHSL is not in any way connected with Westin of U.S.A.
12. Learned counsel for CPHR contended that by reason of the appointment of a General Sales Agent of Westin in Delhi in the year 1989, the announcement made in the newspapers regarding the same, the write ups that appeared in some magazines about 'Westin' and the fact that a number of Indians had stayed in Westin Hotels abroad and used the services of the hotels, establish the goodwill that has been acquired for the service mark "Westin" in India. That mark it was submitted, was old and well established mark and it is being used in many other countries and that applications for registration of the mark are pending in India as well. The total turnover of the Hotels in that group was said to be over 1500 million. U.S.dollars. Counsel submitted that the word westin is a mark which had been used by CPHR and its predecessors in title for several decades and that it had become a well known work and had acquired goodwill in India as well. This goodwill, it was submitted, was sought to be capitalised on deceptively by WHSL by wrongfully using the word 'Westin' and such use was deliberate and dishonest. The public patronising the Westin Hotels and utilising the Hospitality services offered by CPHR under that mark Westin are likely to be misled by the use of the deceptively similar name 'Westinn' by WHSL in relation to hotel and hospitality services.
13. Learned counsel for the WHSL on the other hand, submitted that CPHR had not acquired any goodwill in India in relation to the mark Westin and no question of capitalising of their goodwill would arise. It was submitted that the goodwill in fact had been acquired by WHSL which had used the word "Westinn" which word according to the counsel is an invented word being combination of two words "West" and "Inn" which signified the western training of those running the company and the hotel industry in relation to which service was being rendered. The name was being used from the year 1989 and earlier, as the name of the partnership firm in which the Managing Director of the Company was a partner. The name of the company was initially Westinn consultancy and that was later on changed into Westin Hospitality services but the name 'Westinn' remained part of the corporate name throughout. The company had undertaken several consultancy contracts with hotels in India and it had also provided hotel management services to more than one hotel in South India. The company's hotlink division had turned to be a popular and successful division providing hotel reservations services to over 700 hotels all over India. This company, it was submitted, had established goodwill by its business activities and it had increased its volume of business over the years though that volume may not be comparable to that of CPHR. Nevertheless this business activity was carried on in India throughout and it had come to be known in the Indian market for the services offered by this company.
14. It was further submitted that CPHR has no activity in India. Service marks are not registerable in India and the applications said to have been made by it for registration of service mark cannot possibly yield any result and it had not been shown that CPHR carried on business and had acquired goodwill for the mark in India. The documents produced by CPHR did not show that the name had been widely recognised in India and that there were a large number of clients who had used the services offered by CPHR by relying on the mark Westin.
15. It was also submitted that the word and the logo used by CPHR are not the same as that of WHSL. The word used by WHSL comprised of two words and these two words merely indicate the fact that the people had training in a Western country and that they were engaged in the hotel business. The word/mark 'Westin' used by CPHR does not carry any meaning by itself and even when it is split as "West" and "Inn", does not convey any meaning as the word "Westinn" used by WHSL. The logo used by the two were different. The manner in which the letter "W" was written in the logo of CPHR which claims ownership of the Westin mark is different from the manner in which that letter "W" is written as logo of WHSL. No monopoly can be claimed by any one over any alphabet in the English language. The manner of writing of the letter is distinct and different and can be easily distinguished by any common man. There is no scope whatsoever for comparing this company with CPHR or the Westin hotel company or for associating the Westin mark with WHSL. It was also his submission that there was absolutely no dishonest motive in the adoption of the word Westin as part of the corporate name. Counsel also disputed the claim made by CPHR that its hotels all over the world. It was pointed out that unlike other names were well known in India like Hilton, Shereton, Taj, the name "Westin" is not known in India except perhaps to a few individuals who may have stayed in those hotels while travelling abroad and to the sales agent through whom the bookings had been made. The people who use such hotels, the cost of to the rooms being high are persons who travel abroad; and generally well educated; and can easily distinguish between the Westin mark of CPHR and Westinn which is part of the corporate name of WHSL. They are not persons who are likely to be misled. They are persons of more than average intelligence who are wordly travellers and who are conscious of the quality of the service for which they pay large sums, and such persons will have no difficulty whatsoever in clearly recognising and distinguishing the Westinn of WHSL from the 'Westin' of CPHR.
16. It was contended by the learned counsel for the CPHR that the materials produced is sufficient to establish the use of the word and its reputation and that though the service marks are not registerable, this being a passing off action, CPHR can maintain this action against the defendants to injunct them from passing off its service as that of CPHR.
17. The materials produced by CPHR are far from sufficient to make out a prima fade case that goodwill had been established in India or the work "Westin" in relation to hotels and hospitality service. The fact that a few travellers from India had stayed in the hotel at Singapore does not render that name westin used by CPHR well known to the general body of international travellers of India; nor does the appointment of General Sales Agent made in the year 1989 and the announcement made in relation thereto, establish that the name Westin had become widely known in relation to hotels and hospitality services in India. As already noticed the number of Indians staying in Westin Hotels is not large the number shown in the computer prints out, authenticity and accuracy of which is disputed by WHSL is not over 200 in number. There has been no advertisement at all of Westin in India except two announcements in 1989. The expenditure on advertisement is wholly in significant in India. There is no claim that it was advertised in any other media such as Radio or Television. The word westin though it may be well known in USA or at Singapore, cannot be said to be well known and had acquired goodwill in India.
18. The very first requirement for injuncting against any passing off not having been established, CPHR clearly is not entitled to any relief in this suit. It cannot also be said that there is any misrepresentation by WHSL. It was incorporated in 1989 and Westin has remained a part of the Corporate name throughout.
19. The case pleaded by WHSL cannot be brushed aside as imaginary. It is common ground that the promoters of the company had received training in USA in the hotel industry. The use of the word "Westin" which part of the world they received, training with the word "Inn" cannot be regarded as dishonest and intended to deceive the public. The "persons who dealt with WHSL were at all times aware of the fact that it was an Indian Company. Days Inn of USA when inentered into licence agreement with WHSL had no misconceptions about WHSL. They were aware of the fact that they are dealing with an Indian Company which was not in any way associated with the Westin Hotel companies in USA.
20. There is no scope for confusion as there is no westin hotel in India.
CPHR does not render any service to any hotel in India. Service performed by the General Sales Agent for the Westin Hotel at Singapore by booking rooms for those who desire to stay in Singapore is wholly insufficient to hold that Westin mark is widely known in India. The volume of the business generated by it from India is also insignificant even according to the computer print outs furnished by CPHR.
21. Learned Senior counsel for CPHR relied upon a number of decisions in support of his case. It is however not necessary to refer those decisions in detail.
The general principles governing the grant of interlocutory relief in actions relating to passing off a trade mark are well known. Counsel referred to the case of K.M. Multani v. Paramount Takies, AIR 29 1942 Bom. 241; Ellora Industries v. Banarsi Das Geola, ;
Poiret v. Jules Poirned AF Nash, 1920 (37) RPC 177 Ch.D., Corn Products Refining Co. v. Shangrila Food Products Ltd., ; H.E. Randall Ltd. v. The British and American Shoe Co, 1902(2) Ch. 354; Ewing Trading as Butter Cup Dairy Co. v. Buttercup Margarine, 1917(2) C.D1; Horrods Ltd v. R. Harrod Ltd 1924(4l) RPC(74);
Reliance Rubber and Co.Ltd v. Reliance Tyre Co. Ltd ,1925(42) RPC 91;
Crystalite Gramaphone Record Manufacturing Co. Ltd V. British Crystalate Co. Ltd, 1934(51) RPC 315 Ch.D: Johan Haig and Co. Ltd v. John DD Haig Ltd. 1957 RPC 381; Polson Ltd v. Polson Dairy Ltd., 1995(1) IPC 15; Dolphin Laboratories Ltd v. Arun Kumar Bansal and others, 1995(2) IPC 23 and Montari overseas Ltd. V. Montari Industries Ltd, 1996 PTC(16) 142: 1996(1) DL11.
22. Learned counsel also relied upon the cases of Sheraton Corporation of America v. Sheraton Hotels Limited 1964 RPC 202 Ch.D. Hawpar Paper Brother International Limited v. Dr. D.A. Nirmala and another, 1995(2) ILR Mad. 209 in support of his submission that trans-border reputation affords sufficient basis for grant of injunction and that reputation acquired in a place where the plaintiff may not carry on business is required to be protected by injunction.
23. Learned counsel for WHSL also referred to numerous cases. Counsel referred to the case of Alain Bernardian Et Compagine v. Pavilion Properties Ltd., 1967 (81) RPC 581. It was held there in that user of some sort is required in the country in which injunction is sought.
24. Taco Company of Australia Inc and another v. Taco Bell pty. Ltd, and others, 42 ALR 177 wherein it was observed that parties seeking for relief for passing off must have good will in the geographical area for which injunction is sought and damage or likelihood of damage to that goodwill must be proven.
25. The Society of Motor Manufacturers and Traders Ltd v. Motor Manufacturers' and Traders Mutual Insurance co. Ltd., 1925(1) Ch. 675 wherein it was observed that unless a plaintiff can prove that his credit or business reputation has suffered damage or that there is a tangible risk or probability of his credit or business reputation suffering damage, no action will lie.
26. Conagra Inc v. Mc Cain Goods Aust Pvt. Ltd, 23 IPR 193 a decision of the Federal Court of Australia wherein it was held that the reputation must be established within the jurisdiction concerned that there are substantial number of persons who are aware of the plaintiffs products.
27. In the case of Haw Par Brothers International Limited v. Tiger Co. Pvt. Ltd and others, 1995 v. 1 IPC 79 it was found as a fact that the trade mark 'tiger balm' was being used since 1900 all over the world including India, that the advertisements of that mark appeared in various newspapers and magazines having large circulation in India, and that further it was also advertised on STAR TV which is beamed to India as well. It was found that the product continued to be available through tourist trade and other unofficial channels and that prior to the Second World War was being imported into India. The Court, on the facts found, held that the reputation for the mark in India had been established. Similarly in the case of Sheraton Corporation of America v. sheraton Hotels Ltd, 1964 v. 8 RPC 202 it was found that "Sheraton" name was well known in U.K. and the defendant therein had started business, with Sheraton as part of its corporate name for capitalising that reputation.
28. Each case in relation to infringement or passing off has to be decided on the basis of the facts established. Applying the principles evolved in the decisions relied upon by the respective counsel and having due regard to the well established principles governing the grant or refusal of the discretionary equitable relief namely, the prima facie case, the injury not being compensate in terms of money, the balance of convenience and the conduct of the parties, it must be held that CPHR has failed to make out a prima facie case for the grant of a temporary injunction. It has also failed to establish that it has suffered or likely to suffer substantial injury. That question would not really arise, when it is held that a prima facie case is not made out. The balance of convenience is clearly in favour of WHSL which has been using the word "Westinn" as part of its corporate name continuously from the year 1989 and has been carrying on business in India.
29. In the counter affidavit filed on behalf of WHSL it has been stated that WHSL has not established and does not intend establishing any hotel in India with the name Westin. This undertaking is placed on record.
30. In the result the applications for injunction filed by WHSL as also CPHR are dismissed.