Bombay High Court
Kokanratna Holiday Resorts Limited vs Millennium And Copthorne ... on 7 January, 2019
Author: S.J. Kathawalla
Bench: S.J. Kathawalla
ssp 902 comip 11 of 2019.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL IP SUIT NO.11 OF 2019
WITH
NOTICE OF MOTION NO.21 OF 2019
Kokanratna Holiday Resorts Ltd. ... Plaintiff
versus
Millennium and Copthorne International
Ltd. ... Defendant
Mr. Hiren Kamod with Mr. Vaibhav Keni, Mr. Sumeet Rane I/by M/s. Legasis
Partners, for Plaintiff.
Mr. Mukul Baveja with Mr. Jeet Karia I/by Mr. Shardul Amarchand Mangldas and
Co., for Defendant.
CORAM: S.J. KATHAWALLA, J.
DATE: 7th JANUARY, 2019 P.C.:
1. Heard the learned Advocates for the parties and by consent, the following order is passed :
(i) The Plaintiff acknowledges the exclusive rights of the Defendant in the trade mark "MILLENNIUM" and acknowledges the Defendant's rights to use and/or register the trade mark MILLENNIUM and/or any other trade mark containing MILLENNIUM as a part thereof in India in classes 35 and 43 of the latest edition of the International Nice Classification of Goods and Services.
(ii) The Defendant is and/or has been made aware by the Plaintiff that the Plaintiff has been running a hotel named as "Hotel Millennium Park" at Panchagani, 1/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:37 ::: ssp 902 comip 11 of 2019.doc Mahabaleshwar, Maharashtra, India since the year 2001 and that the Plaintiff has been using the trade mark / label mark HOTEL MILLENNIUM PARK and/or in respect thereof. The Defendant is and/or has been made aware by the Plaintiff that the Plaintiff has also been using the website www.millenniumparkpanchgani.com since the year 2004 in connection with the said Hotel Millennium Park in Panchagani, Mahabaleshwar, Maharashtra, India.
(iii) The Plaintiff states that the Plaintiff has not applied for registration of the trade mark HOTEL MILLENNIUM PARK and/or in India or in any other jurisdiction outside India.
(iv) The Plaintiff states that the Plaintiff owns, runs and has only one hotel named as "Hotel Millennium Park" which is located at Panchagani, Mahabaleshwar, Maharashtra, India and the trade mark MILLENNIUM PARK and/or 2/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:37 ::: ssp 902 comip 11 of 2019.doc has been used by the Plaintiff only in respect of the said hotel of the Plaintiff located at Panchagani, Mahabaleshwar, Maharashtra, India and not for any other hotel of the Plaintiff.
(v) The Plaintiff states that the Plaintiff has no intention to use and will not use the trade mark MILLENNIUM PARK and/or and/or any other trade mark containing MILLENNIUM as a part of the trade mark in respect of any other hotel in India or abroad. The Plaintiff states that its only use of the trade mark MILLENNIUM PARK and/or is and shall be confined to the said hotel of the Plaintiff located at Panchagani, Mahabaleshwar, Maharashtra, India.
(vi) The Defendant states that the Defendant does not own, run and/or have any hotel in India using the trade mark MILLENNIUM or any other trade mark containing MILLENNIUM as a part of the name of such hotel as on the date of filing 3/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:37 ::: ssp 902 comip 11 of 2019.doc these consent terms.
(vii) The Plaintiff agrees that the Plaintiff will not make any application(s) in India or in any other jurisdiction outside India seeking registration of the trade mark HOTEL MILLENNIUM PARK and/or or any other trade mark which is similar to it in respect of any goods and/or services.
(viii) The Plaintiff undertakes that the Plaintiff shall not at any time object to and/or oppose the Defendant's application(s) for the registration of the trade mark MILLENNIUM nor will the Plaintiff file application(s) and/or petition(s) seeking cancellation of any of the registrations of the Defendant's trade mark MILLENNIUM and/or any other trade mark containing MILLENNIUM as a part thereof or otherwise challenge or object to the use, renewal or declaration pertaining to the said trade marks by the Defendant, its parent company and affiliates or subsidiaries in India or elsewhere subject to what is stated in clause 1 herein above.
(ix) The Plaintiff undertakes that the Plaintiff, at its own cost, shall file letters with the respective Trade Marks Offices for the withdrawal of the rectification applications filed by the Plaintiff for expunging and/or removing the registered trade marks of the Defendant bearing nos.1248334 in classes 35 and 42, 1248338 in classes 4/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:37 ::: ssp 902 comip 11 of 2019.doc 35 and 42, 1248339 in classes 35 and 42, 1248340 in classes 35 and 42, 1248341 in classes 35 and 42, 1248342 in classes 35 and 42, 1358152 in classes 37 and 42, 1403828 in classes 35,36 and 42, 1461163 in classes 35 and 42, 1522244 in classes 35 and 42, 1606761 in classes 35 and 42, 1608240 in classes 35 and 42, 1749926 in classes 35 and 42, 1830241 in classes 35, 36 and 42, 1833460 in classes 35, 36 and 42, 2925438 in classes 35 and 43 and 3078655 in classes 35 and 43 within a period of 15 days from the filing of these consent terms and shall furnish documentary evidence thereof to the Defendant's Advocates.
(x) The Plaintiff undertakes that the Plaintiff will not use the trade mark MILLENNIUM PARK and/or and/or any other trade mark containing MILLENNIUM as a part of the trade mark in respect of any other business offering temporary accommodation or hotel, apart from the said hotel of the Plaintiff located at Panchagani, Mahabaleshwar, Maharashtra, India nor will the Plaintiff permit any person acting on its behalf to use the trade mark MILLENNIUM PARK 5/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:37 ::: ssp 902 comip 11 of 2019.doc and/or and/or any other trade mark containing MILLENNIUM as a part of the trade mark in respect of any other hotel, or business offering temporary accommodation in India or elsewhere.
(xi) The Plaintiff undertakes that the Plaintiff will use the website www.millenniumparkpanchgani.com only in respect of the said hotel of the Plaintiff located at Panchagani, Mahabaleshwar, Maharashtra, India subject always to its undertakings in clause 12 herein below.
(xii) The Plaintiff undertakes that the Plaintiff will permanently display a disclaimer on the website www.millenniumparkpanchgani.com of the Plaintiff within a period of 15 days from the filing of these consent terms as follows : "A unit of Kokanratna Holiday Resorts Limited having no affiliation and/or association and/or connection whatsoever with Millennium & Copthorne International Limited and/or Millennium & Copthorne Hotels PLC and/or Millennium Hotels and Resorts Group". All the costs and expenses in relation to the displaying of the said disclaimer will be borne by the Plaintiff.
(xiii)The Plaintiff undertakes that the Plaintiff will permanently display a disclaimer in the lobby of the Plaintiff's hotel located at Panchagani, Mahabaleshwar, Maharashtra, India within a period of 15 days from the filing of these consent terms as 6/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:38 ::: ssp 902 comip 11 of 2019.doc follows : "A unit of Kokanratna Holiday Resorts Limited having no affiliation and/or association and/or connection whatsoever with Millennium & Copthorne International Limited and/or Millennium & Copthorne Hotels PLC and/or Millennium Hotels and Resorts Group". All the costs and expenses in relation to the displaying of the said disclaimer will be borne by the Plaintiff. The Plaintiff shall furnish photographic evidence of the aforesaid disclaimer to the Defendant's Advocates.
(xiv)The Defendant subject to the Plaintiff complying in full with the undertakings given herein and its obligations in clauses 12 and 13 herein above, undertakes that the Defendant shall not object to and/or take any action and/or initiate any proceedings against the Plaintiff for the use of the trade mark / trade name MILLENNIUM as a part of its "Hotel Millennium Park" at Panchagani, Mahabaleshwar, Maharashtra, India and/or against the use of the trade mark MILLENNIUM PARK and/or in relation to the said hotel at Panchagani, Mahabaleshwar, Maharashtra, India and/or against the use of the website www.millenniumparkpanchgani.com in relation to the said hotel of the Plaintiff located at Panchagani, Mahabaleshwar, Maharashtra, India and/or against the use of 7/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:38 ::: ssp 902 comip 11 of 2019.doc the trade mark MILLENNIUM PARK and/or on stationery, towels, cutlery, advertising, promotional material and/or other goods / material used in respect of the said hotel of the Plaintiff at Panchagani, Mahabaleshwar, Maharashtra, India. Save and except the above, the Plaintiff shall not be allowed and/or permitted to use the trade mark MILLENNIUM PARK and/or for any other property / hotel other than one situated at Panchagani, Mahabaleshwar, Maharashtra, India.
(xv) The above undertakings are accepted.
(xvi) In view of the above, the Plaintiff is not claiming any compensation and/or costs from the Defendant.
(xvii)The Parties agree that the terms 'Plaintiff' and 'Defendant' used hereinabove shall include its directors, officers, employees, agents, representatives, assignees of the respective parties and all persons claiming through the respective parties.
(xviii)The above Commercial Intellectual Property Suit No.11 of 2019 and 8/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:38 ::: ssp 902 comip 11 of 2019.doc the Notice of Motion in Commercial Division No. 21 of 2019 are, accordingly, disposed of. Refund of court fees as per rules.
( S.J.KATHAWALLA, J. ) 9/9 ::: Uploaded on - 10/01/2019 ::: Downloaded on - 11/01/2019 06:00:38 :::