Delhi District Court
Oravel Stays Pvt. Ltd vs . Hotel Royal Aashiyana. on 9 September, 2019
Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
IN THE COURT OF SH. NIKHIL CHOPRA, ADDL. DISTRICT
JUDGE, ROOM NO. 606, SAKET COURTS, SOUTH DISTRICT,
NEW DELHI
In the matter of Digitally
signed by
TM No.6/2019 Nikhil Nikhil Chopra
Date:
Filing No.194/2019 Chopra 2019.09.13
CNR No. DLST010005482019 15:25:22
+0530
Oravel Stays Private Limited
Delhi Rectangle Regus, Level 4,
Rectangle 1, Commercial Complex,
D4, Saket, New Delhi - 110017, Delhi.
Through:
Authorized Representative
Mr. Yogesh Vishnoi
................Plaintiff
Versus
Hotel Royal Aashiyana
3A Kabir Marg, Bani Park,
Behind Shop's Bani Park,
Jaipur, Rajasthan302016.
.............Defendant
Date of Institution : 21.01.2019
Date of reserving the judgment: 22.08.2019
Date of pronouncement : 09.09.2019
Decision : Partly Decreed
TM No. 6/2019 Page No. 1 of 15
Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
SUIT FOR PERMANENT INJUNCTION, RESTRAINING
INFRINGEMENT OF TRADEMARK, COPYRIGHT, PASSING OFF,
AND DAMAGES.
JUDGMENT
1. Order disposes off a suit for permanent injunction, restraining infringement of trademark, Copyright, passing off and damages filed by the plaintiff claiming violation of its intellectual proprietary rights by defendant.
2. The case of the plaintiff, shorn off avoidable details, is that the plaintiff is a body corporate, having its registered office at Delhi Rectangle Regus Level 4, Rectangle 1, Commercial Complex D4, Saket, New Delhi110017 and Mr. Yogesh Vishnoi is the authorized representative of the plaintiff company to represent the company in these proceedings. It is averred that the plaintiff company is providing online hotel booking services and support to various travelers and consumers around the country under the registered Trademark "OYO/OYO ROOMS". It is also averred that the idea of operation and execution of the plaintiff's business was conceived, by its founder promoter after months of research and staying in over 100 bed and breakfast guest houses, and TM No. 6/2019 Page No. 2 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
small hotels. It is also averred that the plaintiff was thereafter formally incorporated and launched its business soon thereafter through its website, which was designed to enable listing and booking of budget accommodation. The plaintiff company expanded its operation and serves the customers and travelers in countries out of India such as United Kingdom, Malasiya, Indonesia, Dubai, Nepal etc. It is averred that the plaintiff has for the first time revolutionized the fragmented and legacydriven budget hospitality space in India by enabling standardization of services, amenities and inroom experience. It is averred that through use of its proprietary apps for inventorymanagement, roomservice, revenuemanagement and customerrelationship management, the plaintiff has delivered predictable, affordable and available budgetroom accommodation to millions of travelers in India. It is also averred that the popular 'OYO' app, enables guests to search and book rooms, request roomservice (food and beverages), book a cab and also search nearby restaurants. The plaintiff also offers a unique conciergelike assistance service through 'OYO' Captains - the company's local representatives at hotels who ensure onground support for hasslefree travelling and onstay experience. It is also averred that guest can avail their services by booking via call centre, app or website.
TM No. 6/2019 Page No. 3 of 15Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
3. It is averred that owing to the growing success of the plaintiff's business model and operations, it has acquired huge fame and reputation in the market segment. It is also averred that the plaintiff has received several awards and accolades such as Economic times Startup of the Year Award 2018; India's Mosst Promising Hotel Network (Holiday IQ Better Holiday Awards 2017); Express IT Startup of the Year Award (2015); NDTV Dream Chaser of the Year (2016) and IAMAI Digital Startup of the Year (2016). It is also averred that the plaintiff has also been recognized by Business Today as among the Coolest Start Ups in India (2016) and ranked by LinkedIn as one of the top employee attractors in India two years in a row (2016 & 2017). The plaintiff has also received backing by leading global investors, who have reposed their trust and faith in the plaintiff and have seen their investments grow in short span of time. It is further averred that the plaintiff has also registered its brand name and trade mark 'OYO' in India and abroad. It is also averred that the plaintiff also uses various artistic representations to represent its trade mark to the consumers and travellers, the copyright of which vests with plaintiff. It is also averred that the trade mark 'OYO' and other artistic logos form a main and essential feature of the entire representation. The plaintiff also owns the Copyright into the TM No. 6/2019 Page No. 4 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
unique artwork as represented above and its various variations as have been used for the services of the plaintiff The artwork has been created by the employees of the plaintiff is currently being owned by the plaintiff. It is also averred that plaintiff also has presence on social media website such as facebook, instagram etc., under the mark/name 'OYO/OYO ROOMS'. It is also averred that plaintiff has been continuously , regularly and by spending enormous amounts of monies, efforts and skills, promoting and advertising its business and services under the trade mark 'OYO/OYO ROOMS' through various means and modes. It is also averred that, 'OYO TM' have come out to be recognized as a major brands in the hospitality sector and the brand is owned by the plaintiff and is being used by them for their business operation. That with the above marketing strategy coupled with efficient services of the plaintiff, the 'OYO TM' have acquired immense goodwill in the minds of consumers and is recognized and associated with the plaintiff alone. It is also averred that the word and mark 'OYO' appearing at the entrance of any Hotel/establishment gives an increased confidence to the consumers and travellers, looking for a safe and comfortable stay experience. It is averred that the plaintiff's priority in adoption and use of its said trade mark and the high standards and quality of the plaintiff's TM No. 6/2019 Page No. 5 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
business and services there under, the plaintiff's trade mark "OYO / OYO ROOMS" enjoy strong, enduring and first class reputation in the market and trade. It is averred that the trade mark "OYO / OYO ROOMS" of the plaintiff enjoys distinctiveness, which is inherent in the name and has been acquired by way of long usage. It is averred that by virtue of above, the plaintiff's trade mark "OYO / OYO ROOMS" has acquired the status of a well known trade mark within the meaning of Section 2 (1) (zg) of the Trade Marks Act.
4. It is averred that the defendant is a Hotel property operating in the City of Jaipur, Rajasthan, and the defendant operates its business and activities independent from those of the plaintiff and currently has no business relation or transaction with the plaintiff or its brand. It is averred that the plaintiff recently come to the attentions that the defendant has been indulging in misuse of their wellknown trade mark "OYO", when it came come across the representation of their trade mark and logo being depicted in a negative manner by the defendant in front of the defendant's property, situated at the Jaipur, Rajasthan. It is averred that the acts of the defendant amounts to misusing and infringing of the plaintiff's valuable intellectual property and that the acts of the defendant amounts to taking unfair advantage of the plaintiff's TM No. 6/2019 Page No. 6 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
brand; using the same against the reputation of the trade mark / brand of the plaintiff; and causing detriment to the distinctive value of the plaintiff's trade mark and intellectual property.
5. It is averred that the defendant has also been indulging in unlawful activities of defaming the plaintiff by making false representations before the general public and authorities. It is also averred that the dishonest acts of the defendant have also led the public and authorities to suspect the values and aims of the plaintiff, which has caused a serious set back to the reputation built up by the plaintiff over the years. It is also averred that the plaintiff believes that the adoption and use of its "OYO TM" and logo by the defendant and representing the same in a negative manner is dishonest and has been made with the sole purpose of maligning the goodwill and reputation enjoyed by the plaintiff's earlier and wellknown mark "OYO ". It is averred that the willful acts of the defendant also create confusion in minds of the purchasing public whose confidence into the plaintiff and its services may have been put to question.
6. It is averred that the defendant dilute the distinctive character of the plaintiff's wellknown trademark "OYO" and also brings disrepute to the plaintiff. It is also averred that the TM No. 6/2019 Page No. 7 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
plaintiff sent a legal notice dated January 17, 2019 through its counsel to the defendant stating therein that the wrongful adoption and usage of plaintiff's trade mark by it and also the loss & damage being caused to the reputation of the plaintiff owing to the same and asked the defendant to immediately stop such misuse of its trade mark / brand name from its property and also stop defaming the plaintiff. It is also averred that the defendant did not respond and continues to misuse the plaintiff's trade mark / brand name in the same manner thereby causing harm to plaintiff's reputation. It is averred that the adoption of the trade mark of the plaintiff by the defendant, without there being any express permission for the same is dishonest and malafide and the defendant have left no stone unturned in defaming the plaintiff. It is averred that such dishonest act of the defendant is not just violating the plaintiff's valuable intellectual property rights, but also amount to cheating the innocent consumers and public who depose their trust on the plaintiff owing to its reputation and class of goods and services provided over a period of time.
7. It is averred that the defendant has further displayed its mala fide intent by making false and fraudulent claims and representation to public at large, who have started to doubt the quality of services as associated with the plaintiff. It is also TM No. 6/2019 Page No. 8 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
averred that the manner in which the defendant has been operating and making fraudulent claims, the plaintiff has a genuine and bonafide threat that the defendant may expand the usage of the offending representation and may try and influence other Hotels and properties across the country through various modes, which may reach the consumers and customers of the plaintiff based across the Country and more specifically in Delhi . It is also averred that such act of the defendants are and will cause irreparable loss, harm and injury to the plaintiff by confusing, deceiving and diluting the plaintiff's well known trademark amongst the members of the public and those of the trade. It is averred that the use of offending representation of plaintiff's trade mark by the defendant is diluting the distinctive character of the plaintiff's trademark and reputation and the same is likely to debased and eroded. It is also averred that such debasement and erosion of the plaintiff's reputation and goodwill strikes at the very root of their existence and is not measurable in terms of money for which the plaintiff cannot be adequately compensated monetarily. It is averred that in view of the above, the plaintiff is not left with much choice but to approach this Court and seek an appropriate relief to restrain the defendant from misusing and infringing its well known TM No. 6/2019 Page No. 9 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
trade mark "OYO/OYO ROOMS'' or any other mark/name deceptively similar to the same and the logos and representations as associated with it.
8. It is averred that the plaintiff is currently not aware of the exact composition of the defendant and the names and details of person(s) / Entity (ies) running and managing the same. It is also averred that the cause of action in the present suit first arose on January 15, 2019, when the defendant unlawfully adopted and used the offending representation of plaintiff's trade mark / brand name in front of its property situated at Jaipur, Rajasthan.
9. Defendants were served with summons of the suit and notice of the application U/o XXXIX Rule 1 & 2 CPC. On 02.02.2019, Ld. Counsel for the plaintiff has filed an affidavit of service. As per the affidavit of AR of the plaintiff company, the summons of the suit and also the application U/o XXXIX Rule 1 & 2 CPC were refused to be accepted by the defendant, and the defendant were accordingly, proceeded against exparte.
EVIDENCE ADDUCED BY THE PLAINTIFF
10. Plaintiff examined Sh. Yogesh Vishnoi, who has tendered his affidavit in evidence as Ex.PW1/A. He proved the TM No. 6/2019 Page No. 10 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
following documents;
1. The letter of authority as Ex.PW1/1.
2. Copy of articles downloaded from internet showing awards received by the plaintiff as Ex.PW1/2. (colly).
3. Copy of newspaper articles showing reputation of the plaintiff as Ex.PW1/3. (colly)
4. Copies of trademark registration certificate of the plaintiff's trademark as Ex.PW1/4. (Colly)
5. Printout of image of the defendant's property showing the offending banner containing infringing trademark as Ex.PW1/5.
6. Copy of legal notice dated 17th January, 2019 sent to the defendant as Ex.PW1/6.
7. Original postal and courier receipts of the above notice as Ex.PW1/7.
11. Plaintiff has also examined Sh. Sandeep Bhardwaj as PW 2, who proved his affidavit in evidence as Ex.PW2/A. He proved copy of email dated 18.1.2019 form the plaintiff to the counsel of the plaintiff as Ex.PW2/1.
12. I have heard the Ld. Counsel for the plaintiff and have through the record.
13. It is the contention of Ld. Counsel for the plaintiff that TM No. 6/2019 Page No. 11 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
it is not only the user in connection with trade but any user of the trade mark for the purpose disparagement would also be covered under Section 134 & 135 of the Trade Mark Act and has also relied upon "Reckitt & Colman of India Ltd Vs Kiwi T.T.K. Ltd, 1996 PTC (16) & Reckitt & Colman of India Ltd Vs M.P. Ramchandran & Anr, 1999 PTC (19) 741.
14. In Reckitt & Colman of India Ltd Vs M.P. Ramchandran & Anr, the Hon'ble High Court of Calcutta had observed as under: "It is true that one can boast about technological superiority of his product and while doing so can also compare the advantages of his product with those which are available in the market. He can also boast about the relative advantages of his own product over the other products available in the market. He can also say that the technology of the products available in the market has become old or obsolete. He can further add that the new technology available to him is far more superior to the known technology, but he cannot say that the known technology is bad and harmful or that the product made with the known technology is bad and harmful. What he can claim is only that his product and his technology is superior. While comparing the technology and the products manufactured on the basis thereof, he can say that by reason of the new superior technology available to him, his product is much superior to others. He cannot, however, while so comparing say that the available technology and the products in TM No. 6/2019 Page No. 12 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
accordance therewith are bad and harmful."
15. In "Reckitt & Colmar of India Ltd Vs Kiwi T.T.K. Ltd, the Hon'ble High Court of Delhi observed as follows: "A manufacturer is entitled to make a statement that his goods are the best and also make some statements for puffing of his goods and the same will not give a cause of action to other traders or manufacturers of similar goods to institute proceedings as there is no disparagement or defamation to the goods of the manufacturer so doing. However, a manufacturer is not entitled to say that his competitor's goods are bad so as to puff and promote his goods. It, therefore, appears that if an action lies for defamation an injunction may be granted".
16. It is the submission of Ld. Counsel for the plaintiff that Ex.PW1/5 clearly reflects that the Trademark of the plaintiff with a "X" put thereon had deliberately been done by defendant in order to lower down the reputation of the defendant in the view of the public and that such misuse is an infringement in terms of Section 134 & 135 of the Trade Marks Act, 1999.
17. Section 134 & 135 read with Section 29 (8) of the Trade Marks Act, 1999, shows that such an action is quiet maintainable, in case involving misuse of the trademark.
18. Having regard to the fact that the Trademark of the TM No. 6/2019 Page No. 13 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
plaintiff is a registered one, the user as is reflected evident from Ex.PW1/5, and further considering the fact defendant had not turned up either to controvert what has been stated by the plaintiff, the inevitable conclusion which this Court arrives is that there is a deliberate and conscious attempt of defendant to disparage and denigrate the plaintiff's intellectual property rights as far as the trademark "OYO" is concerned. The very depiction of the plaintiff's trademark with a 'X' there on is not only disparaging, but also its public display can clearly seen as an attempt to bring the trade mark/tradename of the plaintiff in poor light, vis a vis defendant's own business/tradename.
19. Further considering the fact that such act also constitute infringement in terms of Section 29 (8), of the Trade Marks Act, 1999, there is no ambiguity, nor there is any hesitation with this Court to hold the defendant is liable to be restrained permanently from violating intellectual property rights of the plaintiff, including in the manner being done by the defendant. RELIEF
20. Although, plaintiff has also claimed relief of accounts, damages and mandatory injunction no case is made out for such relief.
21. As a sequel to the findings above, the defendant its management, owners/proprietors, employees, staff, servants TM No. 6/2019 Page No. 14 of 15 Oravel Stays Pvt. Ltd vs. Hotel Royal Aashiyana.
etc are hereby restrained from using a trademark /tradename of the plaintiff perse or using the trademark/tradename of the plaintiff in conjunction with any other combination or words or graphics, in any manner whatsoever, either in connection with its own business or otherwise, and from further disparaging it by adopting the tradename/trademark or any imitation thereof or any deceptively similar mark, thereby infringing the trademark of the plaintiff. The defendant is further permanently restrained from displaying the trademark of the plaintiff in any manner, whatsoever.
22. The suit is accordingly, partly decreed.
23. No orders as to cost. Decree sheet be drawn accordingly. Thereafter, file be consigned to record room after due compliance.
ANNOUNCED IN THE OPEN (NIKHIL CHOPRA)
COURT ON 09.09.2019 ADDL. DISTRICT JUDGE02
SOUTH, SAKET COURTS,
NEW DELHI
TM No. 6/2019 Page No. 15 of 15