Bangalore District Court
M & H Management Ltd vs Mr. Ravi Shankar on 20 April, 2015
IN THE COURT OF XVII ADDITIONAL CITY CIVIL AND
SESSIONS JUDGE, BENGALURU (C.C.H.16)
Present: Shri. G.R. Patil, B.A., LL.B.(Spl),
XVII Addl. City Civil & Sessions Judge.
Dated this 20th Day of April 2014
O.S. 5080/2008
Plaintiffs : 1. M & H Management Ltd.,
C/o DTOS Ltd.,
4th Floor, IBL House,
Caudan, Port Louis,
Republic of Mauritius
2. Minor International Public Co. Ltd.,
18th Floor, Berli Jucker House,
99 Soi Rubia,
Sukhumvit 42 Road,
Bangkok - 10110
[By Sri. Krishnappa N., Advocate]
-Vs-
Defendants : 1. Mr. Ravi Shankar,
Director and CEO
Anantara Hospitality Pvt. Ltd.,
No.136, 4th Jaksandra Block,
2nd Cross, Koramangala,
Bangalore - 34
2. Anantara Hospitality Pvt. Ltd.,
No.136, 4th Jaksandra Block,
2nd Cross, Koramangala,
Bangalore - 34
3. Sri. Vasudev Bhat,
ITechnologix India,
2
A/3-2, Cedmar Apartments,
Panaji, Goa - 403 001.
4. Anantara Hotels & Resorts Pvt. Ltd.,
No.136, 4th Jaksandra Block,
2nd Cross, Koramangala,
Bangalore - 34
5. Samarjit Choudhry,
Director,
Anantara Hotels & Resorts Pvt. Ltd.,
No.136, II Cross, 4th J Block,
Koramangala,
Bangalore - 34
6. Ajay Nair,
Director,
Anantara Hotels & Resorts Pvt. Ltd.,
No.136, II Cross, 4th J Block,
Koramangala,
Bangalore - 34
[D1,2,4,5 & 6 by Sri. D.S., Adv]
[D3 - Exparte]
Date of institution of the suit 01.08.2008
Nature of the suit Mandatory injunction
Date of commencement of 25.07.2011
recording the evidence
Date on which the judgment 20.04.2015
was pronounced
Total duration Years Months Days
06 08 19
(G.R. Patil),
XVII Addl. City Civil & Sessions Judge.
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JUDGMENT
The plaintiffs have filed this suit against the defendants to seeking for the relief of permanent injunction restraining the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them from passing off their goods and services and for the goods and services of the plaintiffs by using the trade mark 'Anantara' or any other trade mark identical or deceptively similar to the plaintiffs' 'Anantara' trade mark as a trade mark and/or as a part of their corporate name and/or as their trading style or in any other manner whatsoever and from passing their goods and services as and for the goods and services of the plaintiffs by using the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'Anantara' either as an address of a website or as part of an email address or by displaying the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'Anantara on any other website, including but not limited to websites hosted at www.amritara.co.in and www.amritara.in, or in any other form or manner whatsoever and also directing advertising in any manner and through any 4 media whatsoever and representing directly or indirectly to the members of the public and trade at large that they are associated or affiliated with the plaintiffs by using the trade mark 'Anantara or any other trade mark identical or deceptively similar to the plaintiffs' 'Anantara trade mark, as a trade mark or as a part of their corporate name and/or domain name.
The plaintiffs also sought for a decree of mandatory injunction against the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them, to immediately and forthwith (a) surrender to the plaintiffs or the plaintiffs' counsels for destruction all printed matter, publications, advertising materials, including the infringing broachers, pamphlets, stationary and any other materials bearing the mark 'Anantara' or any other trade mark identical or deceptively similar to the plaintiffs' 'Anantara' trade mark, (b) to take steps with the Registrar of Companies under intimation to the plaintiffs, to amend their corporate name so as to exclude there from any reference to the plaintiffs' trade mark 'Anantara' or any other mark deceptively or confusingly similar thereto; (c) Cancel or transfer to the plaintiffs the domain name www.anantara.in or 5 any other domain names that may have been registered by the defendants containing the plaintiffs' trade mark 'Anantara or any other trade mark deceptively or confusingly similar thereto.
The defendants also sought for a decree directing the defendants to pay an amount of Rs.20,00,000/- as and by way of damages, together with the interest at the rate of 10% p.a. from the date of filing of the suit till payment or realization or at the election of the plaintiffs the defendants be decreed. Ordered to render their accounts to pay to the plaintiffs such amount as may be found due on a true and faithful rendition of accounts of profit earned by the defendant No.2 by using 'Anantara' and also sought for awarding exemplary damages.
2. The brief facts of the case are as under : -
The plaintiff No.1 is a company incorporated under the law of Mauritius having its registered office at Mauritius and Mr.Stephen Andrew Chojnacki is constituted attorney of the plaintiff No.1. The plaintiff No.2 is a company incorporated under the law of Thailand having its registered office at Bangkok. The attorney of the plaintiff is duly authorized to institute the present proceedings. The plaintiff No.1 company is 6 a subsidiary of the plaintiff No.2 and among other things, holds the rights to the 'Anantara' trade mark. The plaintiff No.2 is the parent company that, through its group companies, operates and manages hotels, including those under the 'Anantara' trade mark. Both the plaintiffs are joined together in the instant suit as the right to relief claimed exists in the plaintiffs jointly and severally and same act and transaction and the same series of acts and transactions. Therefore, the plaintiffs include a reference to the plaintiff No.1 and 2 as well as their other affiliates and group companies.
3. The defendant No.1 is the Director and Chief Executive Officer of the defendant No.2 and is incharge and responsible for the conduct of its business and day to day affairs. The defendant No.2 is a private limited company registered under the companies act. As per the records of the Registrar of Companies, the defendant No.2 was incorporated with an authorized capital of Rs.5 lakhs on 16.9.2005. The defendant No.3 is the registrant of the offending website of the defendant No.2 hosted under the domain name www.anantara.in.
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4. The defendant No.4 is a private limited company incorporated with the Registrar of Companies, Karnataka, having its registered office at Jaksandra, Koramangala, Bangalore. The defendant Nos.5 and 6 are the directors and shareholders of the defendant No.4 and are also the subscribers to Memorandum of Association. Defendant No.5 is also a first director and subscriber to Memorandum of Association of the defendant No.2 while the defendant No.6 is the Director Finance with the defendant No.2. The registered office of the defendant No.4 is located at the same premises as the principal place of business of the defendant No.2 in Bangalore. Samarjit Choudhry and Mr. Ajay Nair are shareholders in the defendant No.2 as well as in the proposed defendant No.4. The defendant Nos.2 and 4 have common directors and shareholders and for all purposes are concerns owned, controlled, operated and managed by the same set of persons.
5. The defendants indulging in and are carrying out activities amounting to violation of the plaintiffs' trade mark rights forming subject matter of the instant suit. At present, the defendants misused the trade mark of the plaintiffs by using highly reputed and famous trade mark 'Anantara' in the same 8 hospitality/leisure industry in which the plaintiffs do business. The defendants are being joined in the present suit as the right to relief against them is in respect of and arises out of the act and series of acts and transactions, jointly, severally and in the alternative, and if separate suits were brought against them common questions of law and facts would arise giving rise to multiplicity of proceedings. The plaintiffs are amongst the largest hospitality and leisure companies in the Asia Pacific region with a portfolio of 20 hotels and resorts and over 1,100 restaurants that they have built and developed over the course of 32 years of operation. The plaintiffs also own and operate a highly successful spa business, consisting of over 30 branded spas in various parts of the world including Asia, Africa and the Middle East, which have been consistently named as the best in Asia and amongst the best in the world. The plaintiffs' hotels include those that it operates underits proprietary 'Anantara' trade name as well as hotels operated under the four seasons and Marriott brands.
6. The plaintiffs adopted the trade mark Anantara in respect of their resorts and spas in the year 2000 and they announced their adoption of the Anantara trade mark through a 9 Pan-Asian mass postcard-mailing campaign to travel industry participants, hotel guest and business partners and the plaintiffs have continuously expanded their business under the said trade mark by opening Anantara resorts and spas in Thailand, Indonesia, Maldives, China, Tanzania and Abu Dhabi. The trade mark Anantara was first issued by the plaintiffs in the year 2000 when the plaintiffs obtained registration of their domain name www.anantara.com. In the year 2001, the plaintiffs re-branded the Royal Garden village resort in Hua Hin, Thailand as Anantara resort and Spa following an extensive renovation of the Anantara trade mark was announced by the plaintiffs through a Pan-Asian mass postcard-mailing campaign to travel industry participants, hotel guest and business partners. The plaintiffs have developed the resorts in various parts of Asia with their trade mark Anantara. The plaintiffs are also taking steps towards entering the Indian market in the near future.
7. The plaintiffs have also own and operate spas around the world under their trade mark Anantara. The plaintiffs' resort has a truly world class spa offering Ayurvedic healing treatments and consultations with certified 10 practitioners. The plaintiffs have also stand alone Anantara spas in different parts of the world including China, Zordan, Turkey and other various countries. Since 2000-01, the plaintiffs has used Anantara extensively in relatin to luxury resorts and spas, each of the plaintiffs Anantara resorts are prefixed with the trade mark Anantara. Similarly, the stand alone spas of the plaintiffs under the Anantara brand also have the trade mark Anantara prefixed to the name of the spa. By virtue of the beautiful locations of its resorts and spas and the excellent standards of service and unique experience provided by the plaintiffs to its guests, Anantara resorts and spas have become immensely popular and attract huge tourist from all around the world, including from India. The worldwide revenues earned by the plaintiffs through their various Anantara resorts and spas amounting to Rs.92.3 million, indicate the popularity of the plaintiffs Anantara resorts and spas. The business of the plaintiffs extensively promoted and marketed on a worldwide basis the various Anantara resorts and spas. The plaintiffs have expanded approximately US $ 5.7 million towards advertisement, promotion, marketing and branding of their Anantara trade mark from the year 2001 to 2008 amounting to 11 US $ 2,11,72,953.13. The plaintiffs having goodwill and reputation of their Anantara trade mark have well and truly reached India, even though at present the plaintiffs do not have a physical presence in India. The plaintiffs Anantara trade mark therefore, enjoys trans-border reputation in India.
8. The plaintiffs have also attended virtually all major international seminars and conferences concerning the hospitality industry, including in India. The plaintiffs have also publish promotional brochures and compact discs featuring their resorts and spas under the Anantara trade mark. These brochures and compact discs are distributed by the plaintiffs to travel agents and other members of the hospitality industry. Since 2001, tourists from India have continuously and extensively traveled and stayed at the various resorts and spas of the plaintiffs under the trade mark Anantara. From 2003 to 2007 3638 numbers of guests have visited. Therefore, the plaintiffs continuously and extensively using their Anantara trade mark in India and enjoy goodwill and reputation in India for Anantara trade mark at least since the year 2001. It is pertinent to mention here that the plaintiffs are about to open their first resort in India under the mark Anantara shortly. 12 Since 2001, the plaintiffs have also been dealing with various travel agents from India to provide them with bookings for Indian residents at their Anantara resorts. The plaintiffs have operated a website since the year 2000 that is accessible to the public worldwide, including India via URL http://www.anantara.com. The plaintiffs are also members of an association of hotels called 'Small Luxury Hotels of the World' since 2002. Over 440 hotels from 70 countries of the world are members of this association. The 'Small Luxury Hotels of the World' has a policy whereby their directories containing details of all their member hotels are placed in each guest room of each hotel that is a member. Indian members of this group currently include the Kumarakom Lake Resort, Kerala, The Oberoi Rajvilas, Jaipur, The Oberoi Vanyavilas, Sawai Madhopur, The Oberoi Udaivilas, Udaipur and The Oberoi Amarvilas, Agra. Thus many thousands of Indian guests staying in hundreds of hotel rooms in the above mentioned Indian hotels would have come across the plaintiffs Anantara resorts and spas. The plaintiffs have sufficiently establish the goodwill, reputation and use of the plaintiffs Anantara trade mark in India since 2001. The plaintiffs given the extensive use, huge 13 publicity of Anantara and goodwill and reputation arising there from, internationally including in India, Anantara has acquired a very high decree of distinctiveness and said Anantara has become exclusively associated with the plaintiffs and are identified by the members of the public and the trade across the globe, as well as in India, solely with the plaintiffs.
9. The plaintiffs recently surprised when they discovered the defendants' website www.anantara.in, which appeared to belong to persons engaged in the hospitality sector. Thereafter, the plaintiffs initiated discreet investigation to ascertain the persons behind the said website and discovered that the said website stood registered in the name of the defendant No.3 and was being used by the defendant Nos.1 and 2 for publicizing their activities under the mark Anantara. The investigation disclose that the defendants had adopted the corporate name Anantara Hospitality Private Limited for the defendant No.2, incorporating the plaintiffs' trade mark Anantara and were claiming to provide identical services as the plaintiffs, thus violating the plaintiffs' intellectual property rights to their Anantara trade mark and causing and spreading confusion in the market and public at large. As per the 14 information received by the plaintiffs, as a result of the investigations, the 2nd defendant incorporated in Goa on September 2005, as a private limited company with an authorized share capital of Rs.5 lakhs and a paid up capital of Rs.1 lakh and the 1st defendant was the Director and Chief Executive Officer of the 2nd defendant and also person chiefly responsible for the incorporation and running of the 2nd defendant.
10. The 2nd defendant was incorporated in the year 2005, the business of the said defendant appears to have commenced only in the year 2007, when it allegedly took over the management and marketing of a resort called the 'Shalimar Spice Garden' in Thekkady, Kerala. The 2nd defendant claims that it is presently managing two resorts namely 'Shalimar Spice Garden' in Thekkady and 'Our Native Village' in Hesaraghatta, Bengaluru, the websites of these resorts are www.shalimarkerala.net and www.ournativevillage.com. The defendants do not own any of these properties, which have been in existence much prior to the 2nd defendant allegedly taking over their management in the year 2007 and continued to be owned by their original owners. The word 'Anantara' does not 15 feature in the names of these resorts or on any materials available therein. The defendants also claim to be running a service apartment under the name 'Laika' which is situated in Bengaluru, yet to commence the operations.
11. The misuse of the plaintiffs' trade mark 'Anantara' by the defendants as part of the corporate names of the 2nd defendant in relation to hospitality services, which are identical to the services provided by the plaintiffs under the said trade mark and as a part of the domain name of the 2nd defendant and on the website operated under such domain name as well as those operated under the domain names has a strong likelihood of spreading confusion and deception amongst the relevant class of public and consumers. The injury to the plaintiffs is magnified on account of the fact that the plaintiffs are also about to enter the Indian market in near future.
12. The defendants have also registered a domain name www.anantara.in in the name of the defendant No.3 which incorporates the plaintiffs' trade mark 'Anantara'. The practices of procuring online bookings of hotels and resorts is increasing by the day. Majority of the consumers including tourists prefer 16 to book their accommodation and other necessities through the internet due to convenience, independence and the seemingly boundless information that this medium provides. The presence of the defendants on the internet under the domain name, which is virtually identical to the plaintiffs' trade mark and domain name, is likely to confuse and deceive the unwary tourists not only in India, but across the world. The plaintiffs believe that the registration of the above domain name by the defendants is deliberate and is calculated to deceive consumers including tourists who seek information and book facilities through the internet. The defendants, in registering their website, would certainly have come to know about plaintiffs www.anantara.com website, further indicating the deliberate and willful nature of the defendants' actions.
13. There could be no plausible reason for the defendants to adopt a corporate name identical to the trade mark of the plaintiffs, except to ride upon the goodwill and reputation of the plaintiffs and spread confusion and deception in the market. Being from the identical industry of hospitality services, which is global in nature, the defendants would surely have been well aware of the plaintiffs trade mark 'Anantara' 17 which has acquired global fame and repute in the said industry. Therefore, the adoption of the plaintiffs trade mark by the defendants is absolutely dishonest and motivated by the desire to make illegal profits at the cost of the plaintiffs. The plaintiffs are known globally for their hospitality and hotel services and provision of identical services by the defendants under a corporate name incorporating the plaintiffs' trade mark would seriously prejudice the goodwill and reputation of the plaintiffs in addition to spreading confusion in the market. The injury to the plaintiffs is enhanced since they are also on the verge of setting up their establishments in India. The standard of services provided by the plaintiffs are manifold better than the services provided by the defendants. The plaintiffs are the prior adopters of the trade mark 'Anantara' and they are entitled to its sole use to the exclusion of all subsequent adopters. The dishonesty of the defendants became all the more obvious by virtue of the fact that the 2nd defendant's Director of Food and Beverages and its Chef de Culiniare, was in the past involved with the Oberoi Group of hotels. A number of the hotels of the Oberoi Group are members of the 'Small Luxury Hotels of the World", of which the plaintiffs' 'Anantara' resorts are also a 18 member and therefore, the defendants are bound to have had knowledge of the plaintiffs' resorts and spas under their 'Anantara' trade mark before adopting the same as a part of their corporate name. The 1st defendant has been associated with the hospitality sector in India for a number of years and was earlier employed with the Le Meridian group of hotels. A number of high ranking employees of the Le Meridian Hotels have in the past moved over to the plaintiffs' 'Anantara' Resorts and Spas. Therefore, the 1st defendant ought to have had personal knowledge of the plaintiffs and their 'Anantara' Resorts and Spas and has deliberately mis-appropriated the same.
14. The plaintiffs through their counsel served upon the defendants a letter dated 6.2.2008 calling upon them to cease and desist from their offending activities and to refrain from the violating the plaintiffs' trade mark rights in future. Since no response to the aforesaid letter was received, the plaintiffs counsels sent a reminder letter on 20.2.2008 to the defendants and finally the plaintiffs received a letter on 25.2.2008 from one White Forest Law Offices purporting to write on behalf of the defendants, wherein all of plaintiffs' claim contained in the letter dated 02.2.2008 have been denied and false claims regarding 19 the extent and nature of use of the 'Anantara' trade mark by the defendants were made. In view of the reply made by the defendants, the plaintiffs sent a letter dated 3.3.2008 to enter into discussions with the defendants in order to seek a resolution of the dispute was conveyed, however it was clarified to the defendants that such discussion would be without any prejudice to the plaintiffs' right and contentions and the plaintiffs have reserved their right to withdraw from the discussion at any stage, should it appear to them that the real object of the defendants behind offering to hold discussions was to delay or frustrate the rights of the plaintiffs, the same was replied by the defendants, wherein a telephonic conversation with the plaintiffs counsel was proposed along with a proposed agenda of the discussion. In spite of that, they have not heeded to their request. Therefore, the plaintiffs have constrained to file the suit.
15. In pursuance of the suit summons, the defendants have appeared through their counsel. The defendant Nos.1 and 2 have filed the written statement. They have taken contention that it is a private limited company incorporated as per the Indian Companies Act, 1956, in the year 2005. As per the 20 provision of Companies Act and Rules framed thereunder, the Registrar of the Companies will not register a company by a particular name if any other companies have already been registered under similar names. No person in India had registered any company under the name 'Anantara' in any part of India. It is only after the Registrar of the Company was satisfied that the name is unique to the defendants, the defendants' company was incorporated in the name and style of 'Anantara Hospitality Private Limited'. The defendants' company is doing business under the company name M/s Anantara Hospitality Pvt. Ltd.' Since the year 2005. The mark 'Anantara' is the brand name and trade mark of the defendants. The defendants are doing the business of providing hospitality and leisure services since their incorporation. The defendants own manages several hotels, resorts and restaurants in Bengaluru and in various parts of India. The defendants being understanding the importance of creating a website in order to generate business and to create visibility of their company Anantara Hospitality Pvt. Ltd., across the World Wide Web, registered the domain name www.anantara.in in the year 2005 and developed a website which is functional and active ever 21 since. The country code domain .in is administered by the national internet exchange of India. The defendants have adopted the name 'Anantara' honestly and after exercising all diligence. The name was coined after extensive discussion and bearing in mind the fact that the defendants intended to create theme resorts giving importance to India values and health and wellness and in Sanskrit 'Anantara' means eternal, infinite, wellness, all of which have bearing on the theme resorts which the defendants wanted to start. The name was honestly adopted by the defendants way back in the year 2005 and have subsequently been using the name 'Anantara' extensively and on a large scale. The defendants have adopted the mark 'Anantara' as their brand after conducting a search with the Indian Trademark Registry. There was no trademark registered or applied with name 'Anantara' in India. Taking abundant caution, defendants conducted a search in the worlds largest economy, the United States of America's patent and Trademark Office, for any conflicting or similar work. The search result indicated that there was no similar mark registered or pending registration in United States of America.
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16. The defendants had applied for the domain name www.anantara.in before the Indian Registry on July 2005 and got the said domain name. To an Indian company to before deciding the corporate name these were the only options available under the Indian law to identify a non-conflicting mark or name. The defendants have searched in all these registries before finalizing their business name 'Anantara'. The defendants company started managing two resorts, one in Kerala as 'Shalimar Spice Garden' and another at Hesaraghatta as 'Our Native Village', the defendants' company has always been known by its name 'Anantara Hospitality Pvt. Ltd.'.
17. The defendants subsequently approached the single window Agency of State Government on 15.5.2006 for starting a resort and hotel at Ramanagar and the same came to be approved. The defendants also approached the KSFC requesting for loan for the said project at Ramanagar and accordingly on 7.8.2007, the KSFC sanctioned the loan of Rs.2.85 lakhs to the defendants. During the last few years, the defendants company also started other ventures like Service apartments and also started resorts at Ramanagaram, Rajasthan and Kerala. The defendants' company presently running 5 resorts and service 23 apartments of which the Resort at Ramanagar is nearing completion. The total number of employees and their family members who are dependent upon the running of these ventures by the defendants' company. The defendants' company has extensively advertised its resorts which carry the name 'Anantara' and also domain name. The large number of people from abroad have stayed in the resorts namely 'Shalimar Spice Garden' at Kerala and 'Our Native Village' at Hesaraghatta and even number of people from foreign countries have stayed in the resorts. The defendants' company's foreign tourists guests are predominantly from U.K. and other parts of Europe and the USA. The defendants' company has earned for the country from foreign tourists during the year 2007-08 is in excess of over Rs.7.5 crores. The defendants have received a notice dated 6.2.2008 from the plaintiffs through their lawyers claiming their rights over the mark 'Anantara' and alleged to misuse the name by the plaintiffs. The plaintiffs also threatened the defendants for legal proceedings and consequential actions in case the defendants fails to comply with their request and the defendants suitable replied to the said notice. Thereafter, the defendants' company has filed a caveat and later filed 24 OS.No.3221/2008 seeking for declaration that they have right to use the name 'Anantara' and also T.I. restraining the defendants from making threats. Subsequent to the suit filed by the defendants and after receipt of the notice, the plaintiffs filed the present suit.
18. The plaintiffs have not approached the court with clean hands, they have already filed OS.No.3221/08 on 13.5.2008. The plaintiffs are not carrying on the business in India and defendants' company has been carrying on the business in India under the name and style "Anantara Hospitality Pvt. Ltd.' for several years and the defendants' company has got domain name as www.anantara.in in the year 2005 itself and same is using since 2005. Under no circumstances, it can be assumed that the plaintiffs were unaware of the existence of the defendants' company until very recently. A web site being in the public domain relating to a party who is in the same line of business would have to be in the knowledge of the plaintiff every since the domain name was registered. The plaintiffs have not raised any objections or tried to stop the usage of the mark 'Anantara' by the defendants at any point of time since the year 2005. The defendants at that 25 point of time, have spent huge amount in advertising the mark 'Anantara' in India and have created an independent identity and distinctiveness for the mark 'Anantara. The plaintiffs above action amount to acquiescence. The plaintiffs have chosen to remain quiet till this point of time has waived their right over the mark 'Anantara' in India and is estopped from taking any actions to restrain the defendants from using the mark 'Anantara' in India.
19. The plaintiffs operations were insignificant till 2006. The plaintiffs operations were confined to Thailand till 2006. They have started their operations any where outside Thailand only after 2006 much after the defendants company was formed and started using the name in India. The plaintiffs have not created any goodwill and reputation in India by way of various advertisement and promotional activities and the plaintiffs have not made or conducted any marketing methods or have given any advertisements for the mark 'Anantara' in India, they are bound to prove the same that they have created goodwill and reputation in India. The plaintiffs have failed to prove that they are enjoying any trans-border reputation as claimed by them. The plaintiffs cannot claim any right or ownership over the 26 trade mark, but they can claim to be the owners of the mark 'Anantara' logo only from the beginning of the year 2007, which has been assigned to the plaintiffs and rest of the case of the plaintiffs has been denied and sought for dismissal of the suit.
20. On the basis of the above pleadings, following issues and additional issues have been framed:-
(1) Whether plaintiffs prove that the defendants indulged in passing off their goods and services by adopting a mark which is identical or deceptively similar to the their mark 'Anantara'?
(2) Whether plaintiffs prove that the defendants have registered domain name www.anantara.in with intention to pass off their goods and services as and for the goods and services of the plaintiffs?
(3) Whether plaintiffs are entitled for the reliefs claimed in the suit?
(4) Whether plaintiffs prove that they have suffered damages due to the defendants passing of their goods and services by adopting mark which is similar or deceptively similar to their trademark?
(5) What Order or Decree the parties are entitled to?27
Additional Issues:
1(a) Whether the plaintiffs prove that they are the prior user of word mark 'Anantara' by using it in relation to hospitality services?
21. In order to substantiate the case, on behalf of the plaintiffs, one Stephen Andrew Chojnacki, the power of attorney holder of the plaintiff company has been examined as PW.1 and got marked the documents at Ex.P1 to P77 and also got marked the documents Ex.P78 to P97 during the course of cross- examination of DW.1 and closed the evidence. On behalf of the defendants, the 1st defendant Ravi Shankar examined himself as DW.1 and got marked the documents at Ex.D1 to D11 and closed the evidence.
22. Arguments heard for both sides.
23. My findings on the above issues are as under:-
Issue No.1: In the affirmative Issue No.2: In the affirmative Issue No.3: Partly in the affirmative Issue No.4: In the negative Issue No.5: As per final order, for the following:
Addl. Issue No.1(a) : In the affirmative REASONS
24. Addl. Issue No.1(a): The learned advocate for the plaintiffs has advanced the arguments and vehemently 28 contended that the defendants have specifically admitted in the written statement that the plaintiffs have no worldwide reputation till 2007, they have claiming the rights through assignment of the trademark under Ex.P3 only from 2007 onwards and the plaintiff has have not registered their trademark in India till today, itself shows that the plaintiffs have got trademark 'Anantara' in various countries. Because, the plaintiffs 1 and 2 have got assigned rights under Ex.P3. Originally, the said trademark was owned and controlled by the Royal Garden Resort and they have got registered the trademark under the document Ex.P42(a) to (c) in the year 1997 itself. These documents have not been denied by the defendants. The plaintiffs have also produced the documents to show that they have got the registered trademark and it has got worldwide publication in many foreign countries and those documents have not been denied. The main contention of the plaintiffs is that under the document Ex.P3, the plaintiffs have got their right of assignment of trademark in the year 1997 i.e., Royal Garden Resort, they have got registered the same in the year 1997 under the document Ex.P42(a) to (c). Subsequently, they have got transferred their rights including the trademark in 29 favour of the plaintiffs and also advanced arguments that, it is admitted that the plaintiffs and the defendants have not registered the trademark and both the applications are pending for registration. Though the plaintiffs have not registered their trademark in India, they have got registered the trademark in Thailand in the year 1997 itself, they have got trans-border reputation and also advanced arguments that, number of Indian travelers have visited and stayed in the hotels and resorts belonged to the plaintiffs as per the document Ex.P17.
25. He has also advanced arguments that one of the famous event of the plaintiffs which they have conducting every year is Elephant Polo. This is also not disputed by the defendants. But the defendants have contended that the plaintiffs have not done any advertisements in India before the defendants have adopted the name 'Anantara'. Even they have also not produced the documents to that effect. This contention cannot be accepted, because, even though the plaintiffs have no business in India, but they have established that they have got trans-border reputation, this itself is sufficient. If any Indian traveler visit and having knowledge of the trademark, itself sufficient to held that the plaintiffs has got trans-border 30 reputation. It is the specific contention of the defendants that they have got adopted the said trademark 'Anantara' only in the year 2006 and they are not the adopter of the said trademark prior to 2006. Therefore, the plaintiffs have proved that they are the prior adopter of the trademark and he has also advanced arguments and contended that the plaintiffs have produced the documents as per the provisions of section 65(b) of the Indian Evidence Act to prove that the computerized documents have been obtained from computer provider which is also maintained by the plaintiffs' office and the officials of the plaintiffs are the controller of the computer provider. Therefore, the PW.1 is also competent to produce the certificate in this regard. Hence, these documents cannot be rejected.
26. The learned advocate for the plaintiffs has relied upon the ruling reported in AIR 1995 Delhi 300 in case of N.R.Dongre and others Vs. Whirlpool Corporation and others and (2006) 32 PTC 495 (Cal) in case of Allergan Inc Vs. Sun Pharmaceuticals Industries Ltd., and contended that the trademark can acquire extra-territorial reputation not only through import but also by advertisement and marketing of goods in another territory where it requires reputation. 31
27. The learned advocate for the plaintiffs has also advanced arguments that the documents exhibited cannot be challenged by the defendants, the assignor i.e., RGR International Limited have to challenge who is the assignor in favour of the plaintiffs. In support of his contention, he has relied upon the ruling reported in 2000 PTC 244 [DB] High Court of Delhi in case of J.K.Jain and others Vs. Ziff-Davies Inc. He has also contended that since the parties are not Indians to the document Ex.D2 and it is relating to movable property, in this regard stamp duty need not be paid to this document. In support of his contention, he has relied upon the rulings reported in 1) (1993) 95 BOMLR 817 in case of Anil Purushottam Kakad and another Vs. Tax recovery Officer and others and 2) (2004) 192 CTR (AAR) 193.
28. The learned advocate for the plaintiffs has also advanced arguments that once the document has been admitted, subsequently cannot be challenged the same. In support of his contention, he has relied upon the ruling reported in [2004] 192 CTR [AAR] 193 and ILR 1999 KAR 4634 in case of K.Amarnath Vs. Smt. Puttamma. He has also advanced arguments and vehemently contended that the 32 plaintiffs are the prior users of the trademark in foreign countries and applied for registration in the year 1992 and same has been registered in the year 1997 and renewed in the year 2001 under Ex.P42 and also advanced arguments that the plaintiffs are the prior users of the trademark and there is a statement of accounts, broachers, advertisements. All these documents clearly show that the plaintiffs are the prior users and adopter of the trademark 'Anantara' and number of Indian travelers have visited and stayed in the hotels and resorts of the plaintiffs' which is run by the plaintiffs under the trademark 'Anantara'. Even though the plaintiffs have not established their business in India, they are the adopter and prior users of the trademark 'Anantara' and even otherwise the plaintiffs are using the trademark by publication and advertisements. Therefore, the plaintiffs are the prior adopter and users of the trademark 'Anantara' and sought for decree of the suit as prayed.
29. The learned advocate for the defendants has filed the written arguments and also advanced arguments similar to the contentions taken in the written statement that though the plaintiffs has contended that they have got the trademark in 33 Thailand, but not at all registered. Even if registered, it is only Logo under Ex.D2 and not the trademark. He has also contended that the plaintiffs have started their business under Ex.D2 only in the year 2007 and the plaintiffs have failed to prove that they have registered the trademark in the year 2000 and all the documents produced by the plaintiffs are some of the Xerox copies and photo copies. There is no certificate under section 65(b) of the Indian Evidence Act from the person who is the controller of the computer provider. In other words, the certificate issued by the computer provider not admissible in evidence and the plaintiffs have failed to establish that they are the prior user of the trademark and the plaintiffs have not established their business in India. The defendants are honest prior adopter and user of the trademark 'Anantara' since 2005. This fact has been admitted by the plaintiffs and the plaintiffs have not used the trademark 'Anantara' in India. All the documents produced by the plaintiffs cannot be taken into consideration, because when the defendants have filed the I.A. under Order 11 Rule 12 and 14 of CPC and asked the plaintiffs to produce the relevant documents in support of I.A. filed on 19.4.2011, the plaintiffs have filed objections and refused to 34 produce the same. Now, they cannot produce the documents and mark as exhibits in view of section1 64 of the Evidence Act and also contended that all the group of companies of the plaintiffs as alleged have not been made as parties to the suit. Hence, the suit of the plaintiff is bad for non-joinder of necessary parties. All the photocopies and internet printouts produced by the plaintiffs are not evidence and the plaintiffs have contended that some of the plaint averments have not been denied by the defendants. Even if the defendants have not denied the case of the plaintiffs, the burden is upon the plaintiffs to prove their case independently without depending upon the weakness of the defendants and sought for dismissal of the suit.
30. Now, the question arises, whether the document Ex.D2 is to be challenged by the defendants. The defendants have got marked the document Ex.D2 in the cross-examination of PW.1 though produced by the plaintiffs. If the document is insufficiently stamped, ought not to be tendered in the evidence by the defendants. The said document tendered in the evidence and got it admitted in the evidence through PW.1 and hence, 35 cannot challenge the same, in view of the rulings relied upon by the plaintiffs as referred above.
31. The document Ex.D2 cannot be challenged by the defendants. Only the parties to the document either the plaintiffs or the RGR International Limited is entitled to challenge the same. The plaintiffs have produced the document Ex.P42(a) to (c), these documents pertain to the registration of the trademark.
32. The trademark registration application submitted on 20.4.2001 and the same is registered on 26.4.2002 for a period of 10 years and the document Ex.P42(c) is also for the period from 30.4.2001 to 30.4.2011 issued on 26.2.2004 registered in Malaysia. These documents clearly made out a case that the plaintiffs have got registered the trademark in the year 2001 itself for 10 years. Whereas, the defendants have got started the business in the year 2006. So, it clearly shows that the plaintiffs are the prior users of the trademark 'Anantara'. But, now the question arises regarding user of the trademark 'Anantara' by the plaintiffs, whether the plaintiffs prove that they have got trans-border reputation. In other words, they have 36 got the trademark in India or whether the court has to accept that though there is no worldwide publication since 2001, number of travelers from foreign countries including India have visited the hotels and resorts of the plaintiffs and they have knowledge about the same, therefore, the plaintiffs have got trans-border reputation or whether the defendants prove that they are the prior users of the trademark 'Anantara' as honest users and the plaintiffs have no worldwide publicity, as they have no business in India, these aspects are to be considered.
33. As already stated above, as per the documents Ex.P42(a) to (c), the plaintiffs have got registered the trademark in the year 2001 and they have got prior registration and user of the same. Even prior to 2005, they are using the said trademark. In order to support of the case of the plaintiffs, they have produced the document Ex.P8 series, the broachers, these documents do not disclose the year, but these documents disclose that the plaintiffs have got worldwide publication in Maldives, Bali, Thailand and other countries. The document Ex.P5 series, is the annual reports from the year 2002 to 2007. These documents clearly establish that they have got registered the trademark and they are using the same. The said 37 documents have nowhere denied in the cross-examination by DW.1 and eve there is no rebuttal evidence in this regard, in order to disprove the same. The document Ex.P18(d) shows that, this is a magazine by name Lonely Planet published in Thailand during the month of August 2003, wherein in page 582, it disclose about the 'Anantara' Resort and Spa and even the website address. This document clearly establishes that the plaintiffs have got registered the trademark 'Anantara' since 2002 and there was annual report from 2002 to 2010. These documents have neither denied nor cross-examined in order to disprove the contents of these documents and not at all disputed by the defendants.
34. Likewise, the documents Ex.P15 and P16 are also not at all disputed by the defendants. These documents are corroborated with the documents Ex.P42(a) to (c). these documents amply proves that the plaintiffs adopted and registered the trademark 'Anantara' in respect of their business. The document Ex.P13 series is the financial statements produced by the plaintiffs, which is also not in dispute. The document Ex.P12 is regard article of Anantara trademark, wherein it disclose that they are also doing business in the year 38 2009 i.e., subsequent to filing of the suit, under Anantara trademark. These documents referred above clearly made out a case that the plaintiffs are the prior users and adopter of the trademark. The document Ex.P39(a) to (e) are the directories pertaining to the year 2006 to 2010. These documents corroborated with other documents Ex.P12 to P15. At the cost of repetition, I would like to say that these documents have not been denied by the defendants. These documents clearly establish that the plaintiffs have got registered the trademark Anantara and running the business.
35. The defendants specifically admitted that the plaintiffs have got their business established only confined to Thailand till 2005 and after 2005, the plaintiffs trying to establish their business in India though they have not registered and no business has been established and no sufficient advertisement or sponsored trademark in India. Therefore, the defendants honestly prior users of the 'Anantara' trademark in India and having wide established business in India.
39
36. The document Ex.P6 is the notarized copy of original Notarized certificate of Incorporation issued by the British Virgin Islands, wherein name has been changed to R.G.R. International Limited with effect from 27.9.1995. The defendants have contended that the said certificate issued by the Registry of Companies, British Virgin Islands. Therefore, their business has been confined only to that country. This contention cannot be accepted without there being any pleading and evidence. Now, the question arises as to whether the defendants have got advertisement or circulation or sponsors regarding establishment of their business in India or whether the plaintiffs prove that number of customers or travelers from India have visited their hotel and resorts and they have got trans-border reputation of the trademark 'Anantara'. In support of this contention, the plaintiffs have relied upon the document Ex.P35 and P37. These documents show that number of travelers and visitors have visited from India for the period from 01.01.2006 to 31.12.2010. The documents Ex.P25(a) and (b) are the printouts and paper cuttings, which show that during the year 2002, the plaintiffs company conducted Elephant Polo tournament called King's Cup Elephant Polo Tournament. These 40 documents have not been denied. No doubt, some of the documents are photocopies, but all the documents are not photocopies, these documents have not been denied. So, it is clear that these documents come into existence at an undisputed point of time and number of travelers and guests from foreign countries including India have participated in the Elephant Polo tournament. The documents Ex.P36(a) to (e) disclose that number of Indian guests have visited Thailand. The learned advocate for the defendants has advanced arguments and vehemently contended that these documents are the printouts taken from the third party computer source and no certificate issued by the service provider of the computer. It is not the third party computer source, these documents are pertaining to the plaintiffs' computer services. These documents are under the control of PW.1. One Mr. Rawat who is the senior member of I.T. Department is the controller, as deposed in the cross-examination and there was a suggestion that that person was not working in the plaintiffs company. The persons who are controller of the computer source and accordingly issued these documents. The documents are authenticated documents. It clearly establish that Indian guests have visited Thailand and 41 stayed the hotel and resorts of the plaintiffs which is run by them under the trademark 'Anantara'. These documents also corroborated and supported the case of the plaintiffs with the documents Ex.P36(a) to (c).
37. The defendants have objected to mark the documents while marking the documents Ex.P44 and P45 pertaining to the defendants. Though these documents are Xerox copies, these documents have not been denied. The documents produced by the defendants at Ex.D6 to D11 are belongs to the defendants regarding their trademark. These documents are only subsequent to 2005. It is the definite case of the defendants that since 2005 they are adopting the trademark 'Anantara'. As I have already discussed above, the plaintiffs have got registered their trademark in the year 2001 under the document Ex.P42(a) to (c). The documents marked at Ex.P51 to P56 are the correspondences made between the plaintiffs and the defendants before institution of the suit as well as regarding OS.No.3221/2008 as per Ex.P58. The document at P59(a) is the certificate of incorporation of the defendants i.e., on 22.9.2005. Likewise, the document Ex.P59(b) is regarding balance sheet of the defendants, it shows that they 42 started their business in the year 2005. The documents produced by the plaintiffs under Ex.P27 to P31 and Ex.P50 and P61 are the printouts of various websites of the plaintiffs. The existence of the websites of the plaintiffs are not in dispute. At the cost of repetition, I would like to say that the printouts of these documents have been taken from the computer service provider under the control of Mr. Rawat and another. Therefore, these documents are to be accepted as secondary evidence. Even in the absence evidence of these persons, the plaintiffs have established their existence and use of the trademark 'Anantara'.
38. The documents Ex.P75 series are the scanned copies of media reports and articles. Though these documents are copies and no certificate under section 65(b) of Evidence Act is produced. These documents are repeatedly marked, as these documents already covered under some other documents. Therefore, at this stage, the plaintiffs have made out a prima facie case that they are the prior users of 'Anantara' trademark in foreign countries like Maldives and other countries and number of Indian travelers have visited Thailand and stayed in their hotels and resorts and there is sufficient advertisement 43 and the plaintiffs business is within the knowledge of the Indian guests that the plaintiffs trademark is 'Anantara' is well established and it is in existence since 2001.
39. Further, the main contention of the defendants is that the even though it is assumed that the plaintiffs have got registered and using the trademark and their trademark is confined only to the Thailand till 2005 and after 2005, no business has been established and no proper advertisement and publication in India. This contention cannot be accepted. Even though the plaintiffs are not well established their business in India or their business is in small scale, but if the plaintiffs are able to establish that their trademark is well established and they are the prior users of the same in foreign countries, if it is less business or less circulation, even under those circumstances, the plaintiffs are entitled to use the trademark under the trans-border reputation. This principle has been laid down in the ruling relied upon by the plaintiffs as referred above in his arguments. In view of the discussion made above, the contention of the defendants that they are the prior adopter of trademark 'Anantara' prior to use of the plaintiffs cannot be accepted and even they have failed to establish that they are the 44 honest and prior user of the trademark. The defendants have also taken contention that the plaintiffs are not the members of the Paris Convention Treatee. Therefore, they are not entitled for the protection of their trademark 'anantara' and the suit of the plaintiffs is bad for non-joinder of necessary parties, as the 'anantara' trademark are also using by some other companies, those companies are not made as parties to the suit. The defendants have not taken such defence in the written statement and no evidence has been adduced to that effect. In the absence of the pleadings and evidence, any amount of defence cannot be accepted. Therefore, in this regard there is no necessity to discuss in detail. However, the plaintiffs are the members of the Paris Convention Treatee.
40. In order to establish the fact of trans-border reputation, even though the foreign plaintiff who has no actual business in India but whose goods or services are well known internationally may file an action for passing off in India, if he can establish the following aspects:-
1) Its goods or services has acquired international reputation and goodwill.
2) Travelers from India to foreign countries have purchased the goods and brought them to India which is a form of importation.
3) The goods or services have been advertised in international magazines which have circulation in 45 India and many potential customers of the goods or the services have subscribed to such magazines or seen the advertisements.
4) The goods have been sold in India on a scale which though not very extensive is not insignificant.
5) The defendant could not furnish a satisfactory explanation for the adoption of the mark in question.
The above principle has been held in the following rulings reported in:-
1) 1995 IPLR 83 (Cal.) in case of Calvin Klein V. International Apparel;
2) (1977) FSR 364 in case of Maxim Vs. Dye;
3) 1998 PTC 580 (Del.) in case of Baker Hughes Ltd. Vs. Hiroo Khushalani.
41. In a decision reported in Caterpiller Inc. Vs. Jorange, 1998 IPLR 326; 1998 PTC 31 (Mad) (DB) the plaintiffs were proprietors of the marks 'Cat' and 'Caterpillar' registered and used in many countries including India in respect of machine tools, tractors and vehicles. They had also used the marks extensively in foreign countries in respect of ready made garments, but not in India, though there was some evidence of advertisement of their ready made garments in India. The defendants used the same marks in India for ready made garments. The single Judge refused interim injunction. An appeal was allowed granting injunction. Transborder reputation considered.
46
42. All these Hon'ble Courts have held that even though the plaintiffs have no business in India, if the plaintiffs able to establish their business in foreign countries and their goodwill and reputation has been known to Indian travelers, it is sufficient to claim the trans-border reputation. Admittedly, both the plaintiffs and the defendants are doing same business.
43. The documents Ex.P63 to 70 are pertaining to the trademark application and objections of both the parties before the Trademark Registry, Chennai. The documents Ex.P11 is the broachers disclose that the plaintiffs have started their Hotel and Spa in Asia and this document disclose that from 2003 to 2009 establishment of hotels and spas. It disclose that they have got their network in Thailand, Maldives etc. These documents have not been denied by the defendants. The document Ex.P10 is the license and royalty agreement entered between the plaintiffs and Samui Resort and Spa Limited and other companies in the year 2006 and 2009, prior to filing of the suit. The document Ex.P46 is the printouts pertaining to the trademark of the defendants. Ex.P7 is the certificate of incorporation of the defendants and document Ex.P8 is the computer printouts and the broachers pertaining to the 47 defendants' trademark. Likewise, the documents Ex.P60 and
61. All these documents are pertaining to the defendants and they are subsequent to the year 2005. Therefore, in view of the discussion made above, the plaintiffs have prove that they are the prior users and adopters of the trademark 'anantara' with logo which was assigned by the RGR International Limited to the plaintiffs under the document Ex.D2, the same has been got registered under the document Ex.P42(a) to (c) in the year 2001. 'Anantara' trademark originally belongs to the plaintiffs, they have taken the same by way of assignment from RGR International Limited in the year 1997. So, all these documents clearly establish that the plaintiffs are the prior users and adopter of the trademark 'anantara' in foreign countries like Maldives, Bali, Thailand and they have also got trans-border reputation as number of Indian guests have visited Thailand and stayed in the hotels and resorts of the plaintiffs. Therefore, the plaintiffs have proved the above issue, accordingly, it is answered in the affirmative.
44. Issue Nos.1 and 2 :- The learned advocate for the plaintiffs has advanced arguments and vehemently contended that the trademark of the plaintiffs 'anantara' and the 48 trademark used by the defendants as 'anantara' are one and the same. Any ordinary person by hearing and seeing the trademark of the plaintiffs and trademark of the defendants will definitely come to the conclusion that the same will create confusion in the mind of any person and public at large and more particularly in India. The said name 'anantara' can easily create confusion in the mind of public at large, because the name itself is one and the same, there may be dissimilarities in colour, mark and design etc., it cannot be considered and compare both the trademarks or logo by keeping both the trademarks side by side and cannot be compared and it is also difficult for the foreign guests to compare these two trademarks or logo and it is impossible to adopt such type of comparison. If the plaintiffs are able to demonstrate and establish their case that the alleged trademark adopted by the defendants is similar or resemble to the trademark of the plaintiffs, is sufficient to establish that the defendants are using the trademark and also passing off their goods and services by adopting the said trademark. In support of his contention, he has relied upon the rulings reported in (1972) 1 S.C.C. 618 in case of Parle Products [P] Ltd. Vs. J.P. and Co., Mysore, (2001) 5 S.C.C. 73 in case of 49 Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., and (2004) 6 S.C.C. 145 in case of Sathyam Infoway Ltd., Vs. Sifynet Solutions [P] Ltd.
45. The learned advocate for the defendants has advanced arguments and mainly relied upon the trademark and logo of the plaintiffs and the defendants and contended that the trademark of the defendants is entirely different with the trademark of the plaintiff, except the word 'anantara' is one and the same. Even the style and the logo is also different, even the alphabet is also different. The defendants have contended in the written arguments that there is dissimilarity in both the trademarks and log and it will not create any confusion in the minds of the people and the defendants are not passing off the goods or services in the name and trademark of the plaintiffs. The defendants are the prior and honest users and adopter of the trademark. Therefore, there are no similarities in the trademarks. In support of his contention, he has relied upon the ruling reported in 2004 (28) PTC 585 (SC) in case of Milmet Oftho Industries and others Vs. Allergan Inc., the same ruling relied by the plaintiffs and sought for dismissal of the suit. 50
46. The documents produced by the defendants regarding the trademark or logo is concerned at Ex.D6 to D9 and comparing the documents produced by the plaintiffs at Ex.P15, P16 series and Ex.P18 series, it clearly show that, any ordinary person by seeing these trademarks and logos, can come to conclusion that it is one and the same and definitely it will create confusion in the mind of people, as both the trademarks are seems to be similar. No doubt, there is some difference in mark, design and style of the alphabet and main difference is that there is a tree logo in the trademark of the defendants. But, this does not mean that both are not same and there is dissimilarities in the logo and the trademark as stated above and any ordinary person by seeing the said trademarks can come to conclusion that both the trademarks are one and the same. This principle has been made observation in the ruling reported in AIR 1939 Rang 113 at 114 in case of National Carbon Vs. Sei Sin, wherein it is held that, in deciding whether the defendants' label is likely to deceive intending purchasers, the eye of the Judge is, in the last resort, the final arbiter, but the Judge must look at the articles not with his own eyes but with the eyes of the public who may be expected to buiy the 51 goods. In another ruling reported in [1962] RPC 265 at 291 in case of Parker Knoll Vs. Knoll International, wherein it is held that:-
"What the judge has to decide in a passing off case is whether the public at large is likely to be deceived. What would the effect of the representation be upon the reasonable prospective purchaser? Instances of actual deception may be useful as examples, and evidence of persons experienced in the ways of purchasers of a particular class of goods will assist the Judge. But his decision does not depend solely or even primarily on the evaluation of such evidence. The court must in the end trust to its own perception into the mind of the reasonable man."
47. The nature of business and service is concerned, it is one and the same, because the plaintiffs and the defendants are running the business of hotels and resorts and their business and object of the plaintiffs and the business is to provide services of hotels and resorts and since they are involved and doing business of hotels and resorts and when they are in the same business, definitely it will create confusion in the minds of the public. Both the trademarks and logo, there is phonetic similarities and it will create confusion in the minds of public. This principle has been held in the ruling reported in (2001) 5 S.C.C. 73 in case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., and (2004) 6 S.C.C. 145 in case if 52 Sathyam Infoway Ltd. Vs. Sifynet Solutions [P] Ltd., wherein it is held that, apart from the close visual similarity between 'Sify' and 'Siffy', there is phonetic similarity in between these two words. There is phonetic similarity between two names. Therefore, there is no distinct and separate trademarks between the trademarks of the plaintiffs and the defendants. As already stated above, no person will take both the trademarks or logo and compare them word by word or design or color of the trademarks and come to conclusion as to whether they are one and the same or different.
48. The defendants have started their business in the year 2006 and they have also registered the domain name 'anantara' in the year 2005 itself. Since the trademark of the plaintiffs and the defendants are one and the same and there is no dissimilarities, definitely it will create confusion in the minds of the public at large. As already stated above, the trademark of the plaintiffs is distinctive in character and it has established good reputation more particularly trans-border reputation and if any person by seeing the trademark of the plaintiffs can definitely say that the trademark of the defendants is that of the plaintiffs. When the plaintiffs have proved that they have got 53 registered their trademark much earlier to use of the defendants and when the defendants have started using the trademark which is phonetically, deceptively similar to the trademark of the plaintiffs, it is amount to passing off goods and services of the defendants by adopting the mark which is identical or deceptively similar to the 'anantara' trademark of the plaintiffs. Therefore, the defendants have got registered the domain name www.anantara.in only with an intention to passing of goods and services of the plaintiffs. Therefore, the plaintiffs have proved the above two issues, accordingly they are answered in the affirmative.
49. Issue No.4 :- Now, the question arises as to whether the plaintiffs prove that they have suffered damages due to the defendants passing of their goods and services by adopting the mark which is phonetically identical or deceptively similar to the trademark of the plaintiffs. In this regard, both sides have not advanced any arguments, more particularly the plaintiffs. The advocate for the defendants has advanced arguments that the revenue of the plaintiffs or the business of the plaintiffs, has not been reduced and the plaintiffs have put to any loss on the ground that the defendants have indulged in passing of the 54 goods and services by adopting the mark which is phonetically identical or deceptively similar to the trademark of the plaintiffs. Therefore, they are not entitled for any damages as prayed for.
50. As already stated, the plaintiffs have not adduced any evidence regarding how much the plaintiffs have put to loss and to what extent their income or revenue reduced due to the adoption or user of the trademark 'anantara' by the defendants. The documents produced by the plaintiffs show that the business of the plaintiffs has been increased year by year. In order to establish that the income of the plaintiffs has been reduced from the year 2005 to 2008 or from the date of suit till today, no such material has been placed and there is no reduction in the income of the plaintiffs. Therefore, the plaintiffs are not entitled for any damages from the defendants. Hence, I answer the above issue in the negative.
51. Issue No.3 :- In view of the discussion made above, the plaintiffs are entitled for the relief of permanent injunction restraining the defendants from passing off the goods and services of the plaintiffs by using the plaintiffs' trade mark 'anantara' or any other trade mark which is identical or 55 deceptively similar to the said trade mark and they also restrained from using the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'anantara' and also restrained from using the trademark of the plaintiffs which is identical or deceptively similar to the trademark of the plaintiffs. The plaintiffs are not entitled for other reliefs as prayed for. Since the plaintiffs have not yet established their business in India though the Indians are visiting Thailand and other foreign countries, since there is no reduce in business or revenue or income of the plaintiffs, therefore, it is just and proper to direct both the parties to bear their own costs of the suit. Therefore, I answer the above issue partly in the affirmative.
52. Issue No.5:- In view of the above discussion, I proceed to pass the following :-
ORDER The suit of the plaintiffs is partly decreed.
The defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are hereby restrained by way of 56 permanent injunction from passing off the goods and services of the plaintiffs by using the trade mark 'ANANTARA or any other trade mark identical or deceptively similar to the plaintiffs' 'ANANTARA trade mark as a trade mark and/or as a part of their corporate name and/or as their trading style or in any other manner whatsoever.
Further, the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are hereby restrained by way of permanent injunction from passing their goods and services as and for the goods and services of the plaintiffs by using the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'ANANTARA either as an address of a website or as part of an email address or by displaying the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'ANANTARA.
Further, the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are also hereby restrained by way of permanent injunction from advertising in any manner and through any media whatsoever and representing directly or indirectly to the 57 members of the public and trade at large that they are associated or affiliated with the plaintiffs by using the trade mark 'ANANTARA' or any other trade mark identical or deceptively similar to the plaintiffs' 'ANANTARA' trade mark.
The relief of damages as claimed by the plaintiffs is hereby rejected.
The parties are directed to bear their own costs of the suit.
Draw decree accordingly.
(Dictated to the judgment writer, transcribed by him, corrected and then pronounced by me in the open court, on this the 20th day of April, 2015).
(G.R. Patil), XVII Addl. City Civil & Sessions Judge, Bengaluru.
ANNEXURE List of witnesses examined for plaintiffs:
PW.1 Stephen Andrew Chojnacki List of documents exhibited for plaintiffs:
Ex.P1 Power of Attorney dtd.4.07.2008
Ex.P2 Power of Attorney dtd.10.7.2008
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Ex.P3 Notarized constitution document &
certificate of incumbency
Ex.P4 Notarized Memorandum of Association &
Articles of Association
Ex.P5 Original annual reports
Ex.P6 Notarized certificate of incorporation
Ex.P7 Database obtained form www.whois.net
Ex.P8(a) to (e) Brochures of Anantara Resorts
Ex.P9(a) to (e) Brochures of Anantara Resorts
Ex.P10(a) to (j) Sample original license Agreements Ex.P11 Brochures of Website printouts of Anantara Spas Ex.P12 Sample press releases Ex.P13(a) to (e) Original audited balance sheets Ex.P14 Financial information derived from the management of accounts Ex.P15(a)to(m) Brochures and CDs.
Ex.P16(a)to(f) Additional Brochures and CDs Ex.P17 Seminars and Conferences
Ex.P18(a) to (c) Original publications, additional articles and media reports Ex.P19 Sample e-mail and Website printouts Ex.P20 Printouts of foreign magazines and journals Ex.P21 Printouts of foreign publications Ex.P22 Printouts of 'Google Search Engine' Ex.P23 Printout showing the list of travel agency Ex.P24 Printout of travel agent websites Ex.P25(a)to (b) Original paper cuts & Websites printouts of Elephant polo Ex.P26 Printouts of plaintiffs web pages Ex.P27 Printouts of plaintiffs web pages Ex.P28 Statistics generated by 'Google Analytics' Ex.P29 Printouts from internet achieve Wayback Machine 59 Ex.P30 Printout from http://web.archive.org/web Ex.P31 Printouts from Alexa.com Ex.P32 & 33 Printouts extracted from Yahoo search Ex.P34 Printouts of the reports and statistics Ex.P35 Updated list based on information regarding guests Ex.P36 Sample invoices Ex.P37 Printouts of sample folios of Anantara Resort Ex.P38 Scan copy from "Small Luxury Hotels of the World"
Ex.P39(a)to (e) Sample directories of "Small Luxury Hotels of the World"
Ex.P40 Printouts from Website www.slh.com Ex.P41 Printouts showing the global reach and reputation of SLH Ex.P42(a)to (c) Original trademark registration certificates Ex.P43 E-mail printout Ex.P44 Whois Search Report of Anantara Ex.P45 Recent Whois Search Report of Anantara Ex.P46 Printouts of defendants' website Ex.P47 Certified Memorandum of Association and Articles of Association of defendant No.2 Ex.P48(a) to(b) Printouts and brochures Ex.P49 Certified copies of annual reports and audited balance sheets Ex.P50 Printouts from the website Ex.P51 Photocopy of the legal notice Ex.P52 Photocopy of the reminder letter Ex.P53 Copy of reply letter Ex.P54 Printouts of the defendants' website Ex.P55 & 56 Copies of the correspondence exchanged Ex.P57 Printouts of e-mails exchanged Ex.P58 Copies of defendants' suit OS.3221/2008 Ex.P59(a) & (b) Certified copies of the Memorandum of 60 Association and Articles of Association Ex.P60 Printouts of Website Ex.P61 & 62 Printouts of recent website Ex.P63 Copy of e-mail having its I.D. Ex.P64 News reports Ex.P65 E-mail Ex.P66 Printout of the clarification Ex.P67 Certified copy of complete prosecution history Ex.P68 Printout of Net4.in Ex.P69 Printout of Google site Ex.P70 Certified copy of complete prosecution history Ex.P71(a)& (b) Printouts of Website Ex.P72 Photocopy of financial statements of Eutopia Holdings Pvt. Ltd.
Ex.P73 Photocopy of agreement/understanding Ex.P74 Photocopy of five license agreements Ex.P75(a) to(e) Printouts of electronically scanned copies, sample media reports, articles and editorials Ex.P76 Printouts of various documents and research papers Ex.P77 Printouts of WHOIS search results Ex.P78 Recent printouts of Web pages Ex.P79 Paper publication of Times of India and Mid-
Day, Bengaluru Edition
Ex.P80 Newspaper publication with regard to
clarification issued by the plaintiffs
Ex.P81 Original copy of the reply
Ex.P82 List of Indian Guests
Ex.P83 Copy of the Agreement
Ex.P84 Copy of the Memorandum of Understanding
Ex.P85 Copy of the extract of pay-roll
Ex.P86 True copy of the bank account opening
certificate
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Ex.P87 Copy of account head details and affidavit
Ex.P88 Photocopy of registration certificate of
establishment
Ex.P89 Copy of demographic statistics 2007-08
Ex.P90 Printout of whois search
Ex.P91 Printout of social networking site
Ex.P92 Anantara Screenshot original
Ex.P93 Printouts from website www.anantara.in
Ex.P94 Printout from website www.backmachine.org
Ex.P95 Certified copy of MFA.No.678/2009
Ex.P96 e-mail dtd.20.03.2008
Ex.P97 Copy of media article published in Travtalk
List of witnesses examined for defendants:
DW.1 Ravi Shankar List of documents exhibited for defendants:
Ex.D1 Certificate
Ex.D2 Deed of Assignment
Ex.D3 Website printout of Archive Wayback
Machine
Ex.D4 True copy of Bank Account opening
certificate
Ex.D5 Notarized true copy of proceedings
Ex.D6 Notarized true copy of letter
Ex.D7 True copy of the letter of KSFC
Ex.D8 Copies of Advertisements
Ex.D8(a) Relevant portion
Ex.D9 TTG Daily ATM magazine
Ex.D9(a) Interview by the defendant
Ex.D10 Advertisement
Ex.D10(a) Relevant portion
Ex.D11 C.D.
XVII Addl. City Civil & Sessions
Judge, Bengaluru.
62
(Judgment pronounced in open court vide separate Judgment) ORDER The suit of the plaintiffs is partly decreed.
The defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are hereby restrained by way of permanent injunction from passing off the goods and services of the plaintiffs by using the trade mark 'ANANTARA or any other trade mark identical or deceptively similar to the plaintiffs' 'ANANTARA 63 trade mark as a trade mark and/or as a part of their corporate name and/or as their trading style or in any other manner whatsoever.
Further, the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are hereby restrained by way of permanent injunction from passing their goods and services as and for the goods and services of the plaintiffs by using the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'ANANTARA either as an address of a website or as part of an email address or by displaying the domain name www.anantara.in or any other domain name incorporating the plaintiffs' trade mark 'ANANTARA.
Further, the defendants, their directors, promoters, franchisees, associates, licensees, agents, successors, assignees or any persons claiming through them are also hereby restrained by way of permanent injunction from advertising in any manner and through any media whatsoever and representing directly or indirectly to the members of the public and trade at large that they are associated or affiliated with the plaintiffs by using the trade mark 'ANANTARA' or any other 64 trade mark identical or deceptively similar to the plaintiffs' 'ANANTARA' trade mark.
The relief of damages as claimed by the plaintiffs is hereby rejected.
The parties are directed to bear their own costs of the suit.
Draw decree accordingly.
XVII Addl. City Civil & Sessions Judge, Bengaluru.