Delhi High Court
M/S Bright Enterprises Private Limited ... vs Mj Bizcraft Llp & Anr on 8 August, 2016
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 8th August, 2016 + CS(COMM) No.850/2016, IA No.8343/2016 (u/O 39 R-1&2 CPC) and IA No.8345/2016 (u/S 149 CPC for exemption for filing court fees). M/S BRIGHT ENTERPRISES PRIVATE LIMITED & ANR ..... Plaintiffs Through: Mr. Akhil Sibal, Mr. Mohit Goel, Mr. Sidhant Goel, Ms. Sangeeta Goel, Ms. Ritika Pachnanda, Mr. Dhruv Gautam and Ms. Janhavi Mitra, Advs. Versus MJ BIZCRAFT LLP & ANR ..... Defendants Through: None. CORAM:- HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The two plaintiffs viz. M/s Bright Enterprises Pvt. Ltd. and M/s AKM Enterprises Pvt. Ltd. have instituted this suit for permanent injunction to restrain the two defendants viz. MJ Bizcraft LLP and Shangri-La‟s Eros Hotel from using for any of their business activities the trademark "PRIVEE" or any other trademark or logo / device which is identical to or deceptively similar to the plaintiffs‟ trademark "MBD PRIVE" and "PRIVE" or which incorporates the word "PRIVE" or any other trademark or logo or device which is identical to or deceptively similar to the plaintiffs‟ trademark and for ancillary reliefs. CS(COMM) No.850/2016 Page 1 of 19 2. Being of a prima facie view that the plaintiffs have not made out any case, the counsel for the plaintiffs was on 22nd July, 2016 heard at length on admission and orders reserved. 3. It is the case of the plaintiffs: (i) that the plaintiff companies form part of the MBD Group; (ii) that the plaintiff no.1 and the plaintiff no.2 have made foray into premium and luxury mixed used developments primarily entailing hotel, retail and entertainment under the brand names like "MBD NEOPOLIS" and "MBD PRIVE" which are currently under operation in areas including but not limited to Noida, Ludhiana and Jalandhar; (iii) that the plaintiffs have been in the service of managing and operating a five star luxury hotel by the name of „The Radisson Blue MBD Hotel‟ in Noida, Ludhiana and Jalandhar; (iv) that the plaintiff no.1 coined the trademarks "MBD PRIVE" and "PRIVE" and has exclusively and continuously along with the plaintiff no.2 used the same for a luxury wing of rooms in the Radisson Blue MBD Hotels; these luxury rooms inside the Radisson Blue MBD Hotels are also well known as the "PRIVE CS(COMM) No.850/2016 Page 2 of 19 COLLECTION" rooms and are also promoted by the name of "MBD PRIVE"; (v) that the trademark "MBD PRIVE" and "PRIVE" are inherently distinctive and are exclusively associated by consumers as indicative of trade source of the plaintiffs; as such the trademarks "MBD PRIVE" and "PRIVE" distinguishes services and business of the plaintiffs from those of others in the course of trade; (vi) that the plaintiff no.1 has obtained six registrations for the trademark "MBD PRIVE" in Classes 8,16,21,29 & 30 and applications for registration of the trademark "PRIVE" in Classes 36,41 and 43 and of "MBD PRIVE" in Classes 36 and 41 are pending; (vii) that the plaintiffs by continuous and extensive use of the trademarks "MBD PRIVE" and "PRIVE" have also acquired common law rights to the exclusive use of the said trademarks, either independently or conjunctively with other words, marks or logos; CS(COMM) No.850/2016 Page 3 of 19 (viii) that the trademark "MBD PRIVE" and "PRIVE" feature prominently in print and electronic media including trade journals, directories, magazines and periodicals having wide coverage and circulation; (ix) that the trademarks "MBD PRIVE" and "PRIVE" have thus attained the designation of a well known trademark within the meaning of Trademarks Act, 1999; (x) that the defendant no.1 MJ Bizcraft LLP is carrying on business relating to nightclubs and discotheques; (xi) that the plaintiffs in the month of January, 2016 acquired knowledge and information that there is a nightclub / discotheque running in defendant no.2 Shangri-La‟s Eros Hotel at Ashoka Road, Connaught Place, New Delhi under the infringing trademark "PRIVEE"; (xii) that on contacting the defendant no.2 Shangi-La‟s Eros Hotel, it was learnt that the discotheque in the name of "PRIVEE" is being run by the defendant no.1 MJ Bizcraft LLP; (xiii) that the defendant no.1 MJ Bizcraft LLP adopted the infringing trademark only in December, 2015; CS(COMM) No.850/2016 Page 4 of 19 (xiv) that adoption by the defendants of the trademark "PRIVEE" constitutes infringement under Section 29 of the Trademarks Act; (xv) that the defendants are fraudulently enticing customers of the plaintiffs to purchase their services by selling the same under the infringing trademark "PRIVEE"; (xvi) that continued usage of the infringing trademark "PRIVEE" by the defendants for conducting their business activities relating to nightclub and discotheque is contrary to statutory provisions and is bound to lead to confusion in the mind of the public and is likely to result in dilution of goodwill of the plaintiffs‟ well known mark "MBD PRIVE" and "PRIVE"; (xvii) that the defendants are seeking to use the goodwill and reputation of the plaintiffs‟ mark as a springboard for their activities and to misrepresent to the general public that the services provided by them owe their origin to or are licensed by the plaintiffs; CS(COMM) No.850/2016 Page 5 of 19 (xviii) that use of infringing trademark "PRIVEE" is likely to erode the uniqueness and exclusivity associated with the plaintiffs‟ business activity; (xix) that the members of the public and the trade are likely to be induced to believe that the services of the defendants have a connection with those of the plaintiffs either in the form of a licensed use of tie up or some kind of business arrangement; (xx) that though a cease and desist notice dated 28th January, 2016 was sent to the defendant no2 but the defendant no.2 in response thereto refused to abide thereby. 4. The Certificates of Registration of Trademark, copies of which have been filed by the plaintiffs, show: (i) the registration dated 3rd November, 2009 of "MBD PRIVE" in respect of Goods Cutlery, Forks, Spoons, Knifes, Spatula, Can- Openers, Wine-Openers, Ice-Tongs, Non-Electric Cheese and Egg Slicers, Pizza Cutters (Non-Electric), Choppers and Shredders; (ii) the registration dated 22nd June, 2013 of "MBD PRIVE" in relation to Goods Glassware, Porcelain and Earthenware (not CS(COMM) No.850/2016 Page 6 of 19 included in other Classes), Bottle Opener, Bottles, Crockery, Beer Mugs, Wine Glasses, Cocktail Stirrers, Coasters, Confectioners Decorating Bags (Pastry Bags), Ice-Pails (Coolers), Menu Card Holders, Cocktail Shakers, Napkin Holders, Napkin Rings, Flower Pots, Bread Boards, Brushes for Footwear, Buckets, Butter Dish Covers, Carpet Sweepers, Chopsticks, Dustbins, Flasks, Jugs, Kettles, Toothpicks, Vegetable Dishes; (iii) the registration dated 20th April, 2010 of "MBD PRIVE" in relation to Cutlery, Forks, Spoons, Knifes Spatula, Can- Openers, Wine-Openers, Ice-Tongs, Non-Electric Cheese and Eggs Slicers, Pizza Cutters (Non-Electric), Choppers and Shredders; (iv) the registration dated 20th April, 2010 of "MBD PRIVE" in relation to Books, Printing Material, Brochure, Hoarding, Signage, Brochures, Pamphlets, Stickers, Brief, Write Ups, Advertisement, Pen, Pencil, Stationery Items, Calendar, Napkin, Paper Bags, any other article made of paper advertising material; CS(COMM) No.850/2016 Page 7 of 19 (v) the registration dated 20th April, 2010 of "MBD PRIVE" in relation to Glassware, Porcelain and Earthenware (not included in other Classes), Bottle Opener, Bottles, Crockery, Beer Mugs, Wine Glasses, Cocktail Stirrers, Coasters, Confectioners Decorating Bags (Pastry Bags), Ice-Pails (Coolers), Menu Card Holders, Cocktail Shakers, Napkin Holders, Napkin Rings, Flower Pots, Bread Boards, Brushes for Footwear, Buckets, Butter Dish Covers, Carpet Sweepers, Chopsticks, Dustbins, Flasks, Jugs, Kettles, Toothpicks, Vegetable Dishes; (vi) the registration dated 20th April, 2010 of "MBD PRIVE" in relation to Meat, Fish, Poultry and Game, Meat Extracts, Preserved, Dried and Cooked Fruits and Vegetables, Jellies, Jams, Eggs, Milk and Milk Products, Edible Oils and Fats, Salad Dressings, Preserves, Cheese, Pickles, Fruit based Snack Food, Preparations for making Soups, Tomato Puree and Yoghurt; (vii) the registration dated 20th April, 2010 of "MBD PRIVE" in relation to Coffee, Tea, Cocoa, Sugar, Tapioca, Sago, Artificial Coffee, Flour and preparation made from Cereal, Bread, Pastry, CS(COMM) No.850/2016 Page 8 of 19 Cakes and Confectionary, Chocolates, Cake Paste, Cake Powder, Ice-cream, Yoghurt (Frozen), Biscuits, Cookies, Sauces (Except salad dressings), Popcorn, Chocolate or Coffee or Cocoa based Beverages, Pizzas, Sausages, Semolina. 5. The plaintiffs however in the plaint have not pleaded use of the registered trademark in relation to the goods for which the aforesaid registrations have been obtained. The only plea in the plaint of use of "MBD PRIVE" and "PRIVE" is in relation to the luxury wing of rooms in the Radisson Blue MBD Hotels at Noida, Ludhiana and Jalandhar. 6. It is perhaps for this reason only that though the plaintiffs in the plaint have claimed the reliefs, also on the basis of infringement of trademark but the counsel for the plaintiffs on specific enquiry during the hearing, pegged the case of the plaintiffs on the anvil of passing off only and classified that the plaintiffs are not claiming the relief on the anvil of infringement. 7. I had during the course of hearing enquired from the counsel for the plaintiffs whether not the use, even if prior, by the plaintiffs of the word "PRIVE" in relation to a luxury / exclusive wing of the hotels bearing the trade name "MBD" of the plaintiff is unlikely to confuse anyone that a nightclub in another branded hotel has any connection / association with the CS(COMM) No.850/2016 Page 9 of 19 plaintiffs. Radisson and Shangri-La‟s are two well known international brands in the hotel / hospitality industry which are separately identified by the patrons and it was / is felt by me that none is likely to associate a nightclub in Shangri-La‟s Eros Hotel, even if by the same name as an exclusive wing of the Radisson Blue MBD Hotels, as having any connection with the plaintiffs. 8. I further enquired from the counsel for the plaintiffs, whether not the essential ingredient of passing off, on the anvil whereof as distinct from infringement, the counsel for the plaintiffs argued, is confusion or association and whether not owing to the distinctive brands of the plaintiffs‟ and the defendant no.2‟s hotel and the distinctive services therein with respect to which the word "PRIVE" / "PRIVEE" are used, there is no possibility of confusion / association. 9. The counsel for the plaintiffs, after the order was reserved, has handed over copies of judgments in:- (i) Kirloskar Diesel Recon. (P) Ltd. Vs. Kirloskar Proprietory Ltd. 1997 PTC (17) 469. (ii) Satyam Infoway Ltd. Vs. Sifynet Solutions (P) Ltd. (2004) 6 SCC 145. CS(COMM) No.850/2016 Page 10 of 19 (iii) Laxmikant V. Patel Vs. Chetanbai Shah (2002) 3 SCC 65. (iv) Bloomberg Finance LP Vs. Prafull Saklecha MANU/DE/3673/2013. (v) Reckitt Benckiser (India) Ltd. Vs. Dabur India Ltd. 2014 (60) PTC 634 (Del). (vi) Century Traders Vs. Roshan Lal Duggar AIR 1978 Delhi 250. 10. "PRIVE" is a word from old French and was derived from the Latin word „privatus‟ and translated in English language meant „private‟ or „a private place‟ and has been found by me to be common to the hospitality industry particularly the hotels, with areas / zones in hotels which are not meant to be accessible to all the guests of the hotel being marked therewith. As far as I recollect, the business centre of erstwhile hotel Holiday Inn at Barakhamba Road, New Delhi, now Hotel The Lalit, was also called "PRIVE" and the business centre facility at hotel Dusit Devarana now is called "PRIVE". It is for this reason only that I entertained doubts as to the maintainability of the case made out by the plaintiffs, of use by the defendants of the word "PRIVEE" in relation to a nightclub, not a stand- alone nightclub but in hotel Shangri-La‟s Eros, would amount to passing off by the defendants of their business of a nightclub as that of the plaintiffs - CS(COMM) No.850/2016 Page 11 of 19 the simple law of passing off being that one man is not entitled to sell his goods under such circumstances as to induce the public to believe that they are of someone else. 11. Not only so, a „Google‟ search of the word "PRIVE" throws up use of the said word in "CLUB PRIVE" at hotel Dusit Devarana, New Delhi and "PRIVEE" at Shangri-La‟s Eros Hotel, New Delhi and "MBD PRIVE" appears much much later, even after hotel "PICASSO PRIVE" at A-14, Naraina Vihar, New Delhi and a host of other hotels providing services or having restaurant or spa with the name "PRIVE". 12. The plaintiffs, along with their documents at page 34 have filed the download from Google website of the search result "MBD PRIVE" and the counsel for the plaintiffs argued that the plaintiffs are prior user of the word "PRIVE" with the defendants having commenced used thereof only in January, 2016. In support thereof, the counsel for the plaintiff drew attention to the news reports of May, June and July, 2009 of introduction of the new room category "PRIVE" in the Radisson Blue MBD Hotel. However not only does a Google search again so discloses but the plaintiffs also along with their documents at page 76 have filed news reports of 18 th May, 2016 of launch of "all new MBD PRIVE COLLECTION" at the CS(COMM) No.850/2016 Page 12 of 19 plaintiffs‟ hotels. There is nothing to show that the "PRIVE" category of rooms which were launched in the plaintiffs‟ hotel in May and June, 2009 continued till now. 13. Though the plaintiffs in the plaint have given the figures of turnover of Radisson Blue MBD Hotels but have shied away from giving the turnover of the luxury wing of rooms in the said hotels under the names "MBD PRIVE", "PRIVE" and "PRIVE COLLECTION". 14. An action for passing off, Supreme Court in Satyam Infoway Ltd. supra held, as the phrase "passing off" itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its service in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets there first? It is not CS(COMM) No.850/2016 Page 13 of 19 essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public with the word "public" being understood to mean actual or potential customers or users to whom the goods or services are offered. Owing to the aforesaid tests, the third element of a passing off action is loss or the likelihood of it. 15. It is for the reason of not finding a) the plaintiffs to have even prima facie established any distinctiveness of the mark "PRIVE" used by them in conjunction with their mark „MBD‟ or b) of the same having come to be exclusively identified with the plaintiffs or c) of the plaintiffs having used it extensively, that the queries during the hearing were made from the counsel for the plaintiffs. The only reply of the counsel for the plaintiffs was that the patrons of the plaintiffs may enter the nightclub by associating it with the plaintiff. CS(COMM) No.850/2016 Page 14 of 19 16. I am however not satisfied with the aforesaid answer for the reasons already stated above. Radisson and Shangri-La and MBD and Eros are two separate distinct brands and the patrons of the two hotels rack rate of rooms wherein runs into thousands of rupees per day are unlikely to associate a service or a restaurant in a Shangri-La‟s Eros Hotel with a service in MBD Radisson Hotel. It is not the case of the plaintiff that "PRIVE" is a hotel within a hotel or is sold or marketed separately and independently of the Radisson Blue MBD Hotels. It is not as if the person claiming rights to the mark "PRIVE" is using the mark "PRIVE" for providing services whether it be of hotel or of a nightclub or of a restaurant, across the board, to whichever hotel may want such services, for it to be said that owing to the possibility of such services being any hotel the patrons of such services are likely to confuse provision thereof in another hotel to be of the person providing such services in other hotels. On the contrary the use claimed by the plaintiff of the mark "PRIVE" is in relation to exclusive wing of its Radisson Blue MBD hotel and which concept is in vogue in the hotel industry with most of the hotels having such exclusive wing meant for high end business travelers or for a category of patrons niche above the patrons of the remaining hotel. However such exclusive wings are managed by the CS(COMM) No.850/2016 Page 15 of 19 same owner / proprietor of the hotel and not by outsider. Instance thereof is available in the facts of the present case itself; while the owners/proprietors of the hotels are the MBD and Eros group respectively, use of the brand Radisson and Shangri-La‟s is by way of franchise. That is not the case with „PRIVE‟. 17. As far as the judgments relied upon by the counsel for the plaintiffs are concerned, I am reminded of what was held in Amritdhara Pharmacy Vs. Satya Deo Gupta AIR 1963 SC 449 and reiterated in Cadila Health Care Limited Vs. Cadila Pharmaceuticals Limited (2001) 5 SCC 73. In Amritdhara Pharmacy it was held that "the Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion". In Cadila Health Care Limited it was added that the weightage to be given to each of the factors laid down therein for deciding the question of deceptive similarity in an action for passing off depends upon facts of each case and the same weightage cannot be given to each factor in every case. CS(COMM) No.850/2016 Page 16 of 19 18. „PRIVE‟, as I have already observed above, is a generic word meaning a private place. With respect to such words, as far back as in The Cellular Clothing Company Limited Vs. Maxton & Murray (1899) 16 RPC 397 (HL) it was held in relation to the word „Cellular‟ that it was an ordinary English word which appropriately and conveniently described the cloth of which the goods sold by the plaintiff in that case were manufactured and that the term had not been „proved‟ to have acquired a secondary or special meaning so as to denote only the goods of the plaintiff. With the aspect of „proof‟ I will deal hereunder. 19. The plaintiff has not made out any case of being the sole user of the word „PRIVE‟ in relation to hotels and there is abundant material available to show otherwise. Without the plaintiffs establishing a case of such generic word having acquired a secondary or special meaning so as to denote only the plaintiffs, the plaintiffs cannot maintain an action for passing off. The same test was applied by the Supreme Court in T.V. Venugopal vs Ushodaya Enterprises Ltd. (2011) 4 SCC 85 where the word „Eenadu‟ meaning „Today‟ in Telugu language, though generic was held to having acquired a secondary or subsidiary meaning by which the products and services of the plaintiff in that case were identified. The plaintiffs here, as CS(COMM) No.850/2016 Page 17 of 19 aforesaid, have not been marketing „PRIVE‟ collection of rooms in its MBD Radisson Hotels independently or separately from MBD Radisson Hotel. No pleading and documents of such marketing or of revenue as aforesaid are found in the case made by the plaintiffs. It is also not as if the said generic word has no relationship to the hotel industry for it to be said that the application thereof by the plaintiffs in the hotel industry is a „first‟. 20. The next question which must be answered is whether a suit can be dismissed in limine or an opportunity has to be necessarily given to the plaintiffs to prove that its mark has acquired distinctiveness. 21. It is not as if a civil suit necessarily has to be entertained and carried through the process of completion of pleadings, framing of issues and recording of evidence. It has been held in Dr. Zubair Ul Abidin Vs. Sameena Abidin (2014) 214 DLT 340 (DB) that suits which are doomed to fail and of which there is no chance of any success should be dismissed at whatever stage the Court finds it to be so. In relation to the passing off suits also, it has been held in Camlin Private Ltd. Vs. National Pencil Industries (1986) VI PTC 1 that the suit can be dismissed in limine. 22. There has also been a change in law now. The plaintiffs, though had an option to institute this suit before the District Judge, have chosen to file it CS(COMM) No.850/2016 Page 18 of 19 as a commercial suit before the Commercial Division of this Court. Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 has amended CPC vis-à-vis commercial disputes and Order 13A of the CPC as applicable to commercial disputes allows for summary dismissal of the suit. The plaintiffs having chosen to file the suit as a commercial suit have taken a chance of the suit being summarily dismissed. Even otherwise, today, when the Courts are facing the problem of docket explosion, unless the Courts weed out such suits which on the reading of the plaint and the documents filed therewith do not show any right in favour of the plaintiffs, the trial of such suits would be at the cost of expeditious disposal of deserving suits. 23. No case for admitting the suit is thus made out. 24. Dismissed. I refrain from imposing any costs. Decree sheet be prepared. RAJIV SAHAI ENDLAW, J.
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