Bombay High Court
Hotel Panchavati And Anr vs The Panchavati Hotel on 15 February, 2019
Author: S.J. Kathawalla
Bench: S.J. Kathawalla
Nitin 1 / 8
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION (L) NO.394 OF 2019
AND
LEAVE PETITION NO.54 OF 2019
IN
COMMERCIAL IP SUIT (L) NO.187 OF 2019
Hotel Panchavati & Anr. ..... Applicants
(Org. Plaintiffs)
In the matter between :
Hotel Panchavati & Anr. .....Plaintiffs
Versus
The Panchvati Hotel ....Defendant
Mr.Hiren Kamod, Advocate along with Mr. Vaibhav Keni and Mr. Sumeet Rane,
Advocates i/b Legasis Partners, for the Plaintiffs
None for the Defendant
CORAM : S.J. KATHAWALLA, J.
DATE : 15 th FEBRUARY 2019 P.C.:
1. This is an action for infringement of the Plaintiffs' registered trademarks combined with a cause of action for passing off. Mr. Kamod, Ld. Counsel for the Plaintiffs submitted that notice of this application along with papers thereof have been duly served upon the Defendant on 13th February 2019.
An affidavit of service dated 14th February 2019 proving the service of the documents is tendered before this Court. The same is taken on record. Despite service, no one is present on behalf of the Defendant.
::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 2 / 82. The Petition filed by the Plaintiffs seeking leave under Clause XIV of the Letters Patent (Bombay) to combine cause of action of passing off with the cause of action for infringement of the Plaintiffs' registered trademarks is allowed.
3. Mr. Kamod submitted that the Plaintiffs are today seeking ad-interim reliefs in terms of prayers (a) and (c) of the Notice of Motion and are not pressing for prayers (b) and (d) of the Notice of Motion and appointment of Court Receiver today.
4. It is stated that Plaintiffs, a part of the well-known "PANCHAVATI GROUP", are partnership firms and are engaged inter-alia in the business of providing services of restaurants, caterers, hotel, cafeterias and similar hospitality services, making and/or selling food and beverages and allied goods/ services and giving franchisees/licenses for the same. It is stated that as an arrangement between the Plaintiffs, Plaintiff No.1 has been running its business under the mark HOTEL PANCHAVATI whereas the Plaintiff No.2 has been running its business under the mark PANCHAVATI GAURAV. It is submitted that majority of the partners of the Plaintiffs are common and the connection in the course of trade between the Plaintiffs' PANCHAVATI group and their said goods/services offered under the PANCHAVATI marks is always maintained. It is stated that the Plaintiffs' PANCHAVATI Group is into hotel business since at least the past 4 decades with different hotels in Nashik, Pune, Mumbai, etc. and is a trusted name in the hotel industry. It is stated that the Plaintiffs have also secured registrations of the PANCHAVATI marks including in class 42. The details of the Plaintiffs' registrations for the PANCHAVATI marks are set out in paragraph 5 of the plaint and copies of Registration Certificates of the PANCHAVATI marks are at Exhibit "B-1" to Exhibit "B-8" to the plaint. I have perused the same.
::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 3 / 85. It is stated that the PANCHAVATI marks have been used by the Plaintiffs openly, continuously and extensively since early 80's with a view to distinguish their said services and/or goods from those of others. During all these years, the Plaintiffs have done substantial business under their PANCHAVATI marks. It is stated that the Plaintiffs have also taken efforts and have spent substantial amount of money on publicity, advertisement and sales promotion to popularize the PANCHAVATI marks and the services offered thereunder. My attention is drawn to paragraph 8 of the plaint which contains a statement of annual sales turnover and advertisement expenses incurred by Plaintiff No.1 and Plaintiff No.2 and Exhibit "C-1" and Exhibit "C-2" to the plaint which are copies of certificates issued by Plaintiffs' Chartered Accountants certifying the correctness of the said figures. My attention is also drawn to Exhibit "D-1"
to Exhibit "D-20", Exhibit "E-1" to Exhibit "E-19", Exhibit "F-1" to Exhibit "F-19" and Exhibit "G-1" to Exhibit "G-5" to the plaint which are copies of newspapers cuttings, bills issued by the printers / advertisers, print outs obtained from various websites such as zomato, tripadvisor, etc. showing excellent review of the Plaintiffs' restaurants / hotels and photographs in respect of the PANCHAVATI marks, respectively. It is stated that Plaintiffs' websites with the domain names "panchavatihotels.com" and "panchavatigaurav.com" have been instant hits and many parties interested in taking a franchise from the Plaintiffs as also general customers have contacted the Plaintiffs after accessing the said websites. My attention is drawn to Exhibit "I-1" to Exhibit "I-7" to the plaint which are printouts of the homepage and some other pages of the said websites. I have perused the same.::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 4 / 8
6. It is stated that in view of the above, the Plaintiffs' PANCHAVATI marks and the services offered thereunder enjoy wide and enviable reputation and goodwill amongst the general public. It is stated that the Plaintiffs' PANCHAVATI marks have become distinctive of the Plaintiffs' said goods and services and connotes and denotes to the members of general public, the said goods and services of the Plaintiffs and of none else. It is stated that the Plaintiffs' trading name and style also contains the mark PANCHAVATI as its leading, prominent and essential part. It is stated that the Plaintiffs are in short known as PANCHAVATI / HOTEL PANCHAVATI / PANCHAVATI THALI.
7. It is stated that the Plaintiffs have been vigilant in protecting their rights in PANCHAVATI marks and have initiated actions from time to time, and have also successfully secured restraint orders from this Court in legal proceedings initiated against such infringers. My attention is drawn to Exhibit "J-1" to Exhibit "J-10" to the plaint which are copies of some of the restraint orders obtained by the Plaintiffs in suits filed by them in this Court for infringement of their PANCHAVATI marks and passing off.
8. Mr. Kamod submitted that in or about the third week of January 2019, one of the Plaintiffs' partner was surprised to receive a call congratulating him on opening a new hotel, THE PANCHVATI in Rajkot, Gujarat. He submitted that thereafter, the Plaintiffs immediately conducted a search on the internet and came across a domain name http://thepanchvatihotel.com and the website thepanchvatihotel.com, which revealed that the Defendant is running a hotel and rendering services in relation to hotel / restaurant / hospitality and/or selling goods under the trade mark THE PANCHVATI HOTEL and/or . He submitted that the said website ::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 5 / 8 thepanchvatihotel.com of the Defendant is accessible across India including in Mumbai and even bookings can be done online from the said website thepanchvatihotel.com of the Defendant. My attention is drawn to Exhibit "K-1" to Exhibit "K-5" to the plaint which are printouts of the pages of the Defendant's website thepanchvatihotel.com. I have perused the same. He further submitted that the Defendant's impugned mark / name contains the expression PANCHVATI as its only leading, essential and prominent feature. He submitted that the Defendant is also offering Gujarati and Rajasthani thali under the impugned mark. He submitted that even the Plaintiffs have been running thali restaurants / hotels / restaurants under the PANCHAVATI marks for a long period of time. He submitted that the Defendant has adopted and is using the impugned mark/name/domain name knowing fully well that due to its identity and/or close and deceptive similarity to the Plaintiffs' well-known PANCHAVATI marks, it will be able to trade upon the immense reputation and goodwill acquired by the Plaintiffs in the PANCHAVATI marks and thereby make unlawful gains and/or cash upon the Plaintiffs' goodwill and reputation in the PANCHAVATI marks. He submitted that the adoption and use of the impugned trade mark / name / domain name by the Defendant which is identical with and/or deceptively similar to the Plaintiffs' PANCHAVATI marks is dishonest and with a view to trade upon the reputation and goodwill acquired by the Plaintiffs in the PANCHAVATI marks and is in complete violation of the Plaintiffs' statutory and common law rights acquired by the Plaintiffs in the same. He submitted that in such circumstances, it is just and necessary that this Court issue a temporary injunction against the Defendant, restraining it from infringing the Plaintiffs' PANCHAVATI marks, passing off its goods and services as those of the Plaintiffs.
::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 6 / 89. I have heard the submissions in detail and perused the plaint and the documents produced therewith. Prima facie, it is clear that the Plaintiffs have secured statutory rights in the PANCHAVATI marks and it is evident from the documents annexed to the plaint that the PANCHAVATI marks have acquired immense reputation and goodwill. The use of the impugned trade mark / name / domain name THE PANCHVATI HOTEL and/or and/or http://thepanchvatihotel.com by Defendant cannot be termed as honest. Considering the close similarity in the rival trade marks / names / domain names and nature of rival services and/or business, the possibility of confusion and deception amongst the general public cannot be ruled out particularly when even the Defendant seems to be offering Gujarati and Rajasthani thali under the impugned mark / name. The reputation and goodwill of the Plaintiffs' PANCHAVATI marks is also likely to suffer by reasons of misrepresentation sought to be made by the Defendant by using the impugned trade mark / name / domain name. Moreover, the Defendant has not remained present today, despite service. There are no equities in favour of the Defendant.
10. According to me, Plaintiffs have made out a strong prima facie case. The balance of convenience is also in favour of the Plaintiffs. It is necessary to grant protection to the Plaintiffs by way of an interim order and there shall, accordingly, be an ad-interim order in terms of prayer clauses (a) and (c) of the Notice of Motion, which read as follows:
a. That pending the hearing and final disposal of the suit, the Defendant by itself, its proprietors, partners, servants, agents and all persons acting on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiffs' registered trademarks PANCHAVATI / PANCHAVATI GAURAV bearing registration Nos.1306627 in class 42, 978200 in ::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 7 / 8 class 30, 978198 in class 31, 978197 in class 32, 978193 in class 30, 978194 in class 29, 978195 in class 31 and 978196 in class 32 or any of them by the use of the Impugned mark/name/trading style/label THE PANCHVATI HOTEL and/or and/or any other Impugned mark/name/trading style/label containing the word PANCHVATI either together or individually and/or any other Impugned mark/name/trading style/label identical with and/or deceptively similar to the Plaintiffs' registered trademarks PANCHAVATI / PANCHAVATI GAURAV bearing registration Nos.1306627 in class 42, 978200 in class 30, 978198 in class 31, 978197 in class 32, 978193 in class 30, 978194 in class 29, 978195 in class 31 and 978196 in class 32 in respect of the business of providing services of restaurants, caterers, hotel, making and/or selling food and beverages and or allied goods/ services or in any manner whatsoever; c. That pending the hearing and final disposal of the suit, the Defendant by itself, its proprietors, partners, servants, agents and all persons acting on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from using the Impugned mark/name/trading style/label THE PANCHVATI HOTEL and/or and/or any other Impugned mark/name/trading style/label containing the word PANCHVATI either together or individually and/or any other Impugned mark/name/trading style/label identical with and/or deceptively similar to the Plaintiffs' well-known PANCHAVATI marks in respect of the business of providing services of restaurants, caterers, hotel, making and/or selling food and beverages and or allied goods/ services so as to pass off or enable others to pass off the Defendant's impugned services and/or business and/or goods as and for the Plaintiffs' well known services and/or business and/or goods, or in any other manner whatsoever;
11. Considering the fact that the Defendant is not present today and that they may take some time to remove the boards, hoardings etc., the Defendant is given two days' time to comply with this order so as to enable the Defendant to remove / change the boards, hoardings, menu cards, etc. ::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 ::: Nitin 8 / 8 bearing the impugned mark / name / trading style THE PANCHVATI HOTEL and/or .
12. List the Notice of Motion for further ad-interim reliefs on 20 th February 2019.
13. Liberty to the Defendant to apply for variation of this order with 24 hours prior written notice to the Plaintiffs' Advocates.
(S.J. KATHAWALLA, J.) ::: Uploaded on - 21/02/2019 ::: Downloaded on - 17/03/2019 14:41:58 :::