The Indian Hotels Company Limited vs Vivanta Hospitality Private Limited on 27 July, 2022

[Cites 3, Cited by 0]

Delhi High Court - Orders

The Indian Hotels Company Limited vs Vivanta Hospitality Private Limited on 27 July, 2022

1. Subject to the Plaintiff filing originals, clearer copies, certified copies of original, translated copies and documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.

2. Application is allowed and disposed of.

I.A. 11688/2022 (Exemption from advance service)

3. Since there is an urgency in the matter and the same is being heard today, Plaintiff is exempted from serving advance notice on Defendant.

4. For the reasons stated in the application, the same is allowed and disposed of.

CS(COMM) 507/2022 Page 1 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

I.A. 11686/2022 (Additional documents)

5. Present application has been preferred on behalf of the Plaintiff seeking leave to file additional documents under Order 11 Rule 1(4) CPC.

6. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.

7. Application is allowed and disposed of.

CS(COMM) 507/2022

8. Let plaint be registered as a suit.

9. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable on 10.10.2022 before the learned Joint Registrar.

10. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents filed by the Plaintiff.

11. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiff.

12. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 11684/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiff)

13. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.

CS(COMM) 507/2022 Page 2 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

14. Issue notice to the Defendant through all permissible modes, returnable on 23.11.2022 before Court.

15. It is averred that Plaintiff is a part of the TATA Group of Companies, which is India's oldest, largest, most trusted and best-known business conglomerate. TATA Group of Companies, its subsidiaries as well as the companies promoted by it collectively are India's largest private-sector employer, comprising of over 100 major operating companies. There are about 29 publicly listed Tata Companies with a combined market capitalization of about Rs.17,80,000 Crores as on 31.03.2021. Tata companies have employed over 8,00,000 people worldwide. 'TATA' name has been respected in India for over 150 years for its adherence to strong values and business ethics. Plaintiff and its subsidiaries bring together a group of brands and businesses that offer a fusion of warm Indian hospitality and world-class service which include Taj - the hallmark of iconic hospitality.

16. It is stated in the plaint that Plaintiff has a portfolio of 196 hotels globally including 40 under development, across 4 continents, 12 countries and in over 80 locations. Plaintiff is South Asia's largest hospitality company by market capitalization and is primarily listed on the Bombay Stock Exchange and National Stock Exchange of India.

17. It is averred in the plaint that Plaintiff first coined and adopted the mark VIVANTA for its hotels and other services in the year 2008, which is invented word and inherently distinctive. Plaintiff is a registered proprietor of the well-known trademark VIVANTA and its formative marks in Classes 42 and 43 since 01.06.2018, the details of which are given below:-

CS(COMM) 507/2022 Page 3 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

                                      MARK                       Particulars
                                   VIVANTA       TM Reg. No. 1715100
                                  (Word mark)    Dated: 28.07.2008
                                                 CLASS 42.
                              VIVANTA BY TAJ     TM Reg. No. 1715101
                                  (Word mark)    Dated: 28.07.2008
                                                 CLASS 42.
                                                 TM Reg. No. 3849550

                                 (Device mark)   Dated: 01.06.2018
                                                 [CLASS : 43]
                                                 Services for providing food and drink;
                                                 temporary accommodation.
                                                 TM Reg. No. 3858431
                                                 Dated: 13.06.2018
                                 (Device mark)
                                                 [CLASS : 43]
                                                 Services for providing food and drink;
                                                 temporary accommodation.
                                                 TM Reg. No. 3849549
                                                 Dated: 01.06.2018
                                                 [CLASS : 43]
                                                 Services for providing food and drink;
                                                 temporary accommodation.
                                 (Device mark)
                                                 TM Reg. No. 3858430
                                                 Dated: 13.06.2018
                                                 [CLASS : 43]
                                                 Services for providing food and drink;
                                                 temporary accommodation.
                                 (Device mark)

                          CS(COMM) 507/2022                                   Page 4 of 11
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:26.08.2022
15:29:17

18. It is further stated in the plaint that Plaintiff's intellectual property including its registered trademark VIVANTA as well as goodwill and reputation associated with Plaintiff's various trademarks and brands have been built over the years due to extensive use, efforts and monies expended on promotion and advertising, awards and accolades received and the sales of the goods and provision of services under the said mark.

19. It is averred that as a result of long, continuous and extensive use of Plaintiff's unique, distinctive and peculiar trademark VIVANTA, over a long period of time spanning a wide geographical area, Plaintiff's said trademark enjoys an unparalleled reputation and goodwill and the same has acquired the status of 'well-known trademark'.

20. It is further averred that Plaintiff has a huge turnover for the various services rendered by it and the financial highlights of Plaintiff for the year 2021-22 is Rs.668 Crores and the expenditure incurred on promotion for the year 2021-22 is Rs. 3.05 Crores, with respect to the VIVANTA brand and trademark.

21. It is stated in the plaint that Defendant is a Company called Vivanta Hospitality Private Limited. Defendant has a website at www.vivantahospitality.com, where Defendant claims that:

"Vivanta Vacation Club, a part of the Leisure and Hospitality sector of the Vivanta Hospitality Pvt. Ltd., offers quality family holidays primarily through vacation ownership memberships and brings to the industry values such as reliability, trust, and customer satisfaction. Started in 2010, the company's flagship brand 'Vivanta Vacation Club', today has a growing list of members, who can holiday at 100+ resorts in India and abroad."

CS(COMM) 507/2022 Page 5 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

22. In order to demonstrate the infringing activities of the Defendant, Plaintiff has as illustrations enumerated the following:-

(a) As part of the company/corporate name i.e. 'VIVANTA HOSPITALITY PRIVATE LIMITED' and 'VIVANTA VACATION CLUB';

(b) As part of the domain www.vivantahospitality.com; and

(c) On their website, bills and promotional material/signage i.e., , , and .

23. It is averred that the Defendant Company was initially incorporated on 05.07.2010 as 'R M Y BUILDERS & DEVELOPERS PRIVATE LIMITED' and as the name suggests it appeared to be initially involved in the business of building and property developing. Subsequently, on 22.02.2021, the company name was changed to the current name i.e., VIVANTA HOSPITALITY PRIVATE LIMITED. Defendant's domain/ website www.vivantahospitality.com was registered on 16.02.2021.

24. It is also averred that the online searches made on www.consumercomplaints.in revealed that there are more than 100 consumer complaints made by disgruntled customers who were cheated by the Defendant.

25. It is further stated that the malafides of Defendant can clearly be deduced from the fact that Defendant has not only copied the registered and well-known word mark VIVANTA of Plaintiff, but they have also copied CS(COMM) 507/2022 Page 6 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 Plaintiff's registered device marks and . This case is, therefore, a classic case of trademark infringement and passing off and Defendant and its directors have dishonestly adopted the said marks as recently as in February, 2021 fully conscious of the Plaintiff's reputation and association with these trademarks.

26. It is also stated in the plaint that Defendant with malafide intent to cheat and deceive the customers, has also listed various properties belonging to the Plaintiff on its website www.vivantahospitality.com. Screenshots of Defendant's website reflecting Plaintiff's properties are as under:-

27. Plaintiff has received e-mails addressed by persons who have been cheated by the Defendant under an impression that Defendant is associated with the Plaintiff/TAJ/TATA Group. Customers have paid huge amounts of money to the Defendant as subscription fee for holiday packages covering National and International destinations, the details whereof are furnished in the plaint with supporting documents on record. On account of these complaints which are nearly hundred in number, some of them addressed to CS(COMM) 507/2022 Page 7 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 the Police Authorities, immense damage is being caused to the reputation of the Plaintiff besides infringement of its well-known trademark and passing off the services of the Defendants as that of the Plaintiff.

28. Having heard learned counsel for Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction in respect of trademarks and logos aforementioned. Balance of convenience lies in favour of Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

29. Accordingly, Defendant, its Directors, officers, servants and agents, etc. are restrained from using Plaintiff's well-known and registered trademarks VIVANTA, , , , and/or any other mark deceptively similar to Plaintiff's aforesaid trademarks and permutations/combinations thereof, in any form or manner, amounting to infringement and passing off, till the next date of hearing.

30. Defendant and the concerned Domain Registrar are directed to take down the website www.vivantahospitality.com, forthwith.

31. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within a period of one week from the date of execution of the local commission.

I.A. 11685/2022(for appointment of local commissioner)

32. Present application has been preferred by Plaintiff under Order 26 Rules 4, 9 and 10 and Order 39 Rule 7 read with Section 151 CPC, seeking appointment of a Local Commissioner.

CS(COMM) 507/2022 Page 8 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

33. Upon hearing, the application is allowed.

34. Accordingly, Ms. Amrit Sharma, Advocate (Mobile No. 9971432165) is appointed as Local Commissioner, who shall visit the premises of Defendant at the following address:-

Vivanta Vacation Club B-41, Sector 2, Noida 201301, Uttar Pradesh

35. Local Commissioner shall visit the aforesaid premises and search and take into custody the infringing products and other incriminating materials including packaging materials, advertising, promotional materials, banners, signage, business cards, cartons, stationery, literature, computer device, software programme, etc. bearing the impugned trademarks and/or any other deceptively similar name/mark and prepare an inventory of the same.

36. Local Commissioner shall demand the disclosure of the address(s) of any other outlet(s)/premises of the Defendant, where the infringing material may be stored. In case of any such other premise being discovered, the Local Commissioner shall visit the same and carry out the exercise of taking into custody the infringing products and other materials and make an inventory of the same.

37. Local Commissioner along with the Representative of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendant.

38. Local Commissioner shall seize the infringing products and hand over the same to Defendant on superdari, upon Defendant furnishing an undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.

CS(COMM) 507/2022 Page 9 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

39. Local Commissioner shall make copies and sign books of accounts including ledgers, cash books, purchase and sale records etc., as found in the premises of Defendant.

40. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. She shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.

41. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.

42. Plaintiff shall serve a copy of this order upon the Defendant along with paper book of the suit at the time of execution of the proceedings.

43. Fee of the Local Commissioner is fixed at Rs.1,50,000/- in addition to miscellaneous out-of-pocket expenses for the execution of the Commission at the address mentioned above or any other address being found. Fees of the Local Commissioner shall be paid in advance by the Plaintiff.

44. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.

45. Plaintiff shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter, Registry shall issue summons of the suit to the Defendant.

46. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.

47. Application is accordingly disposed of.

CS(COMM) 507/2022 Page 10 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

48. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.

JYOTI SINGH, J JULY 27, 2022/rk CS(COMM) 507/2022 Page 11 of 11 Signature Not Verified Digitally Signed By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17

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Delhi High Court - Orders