Bombay High Court
Hotel Panchavati And Anr vs Panchavati Bhel Bhatta And Anr on 21 December, 2018
Author: S.J. Kathawalla
Bench: S.J. Kathawalla
Nitin 1 / 6
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION (L) NO. 3193 OF 2018
IN
COMMERCIAL IP SUIT (L) NO. 1757 OF 2018
Hotel Panchavati & Anr. ..... Applicants
(Org. Plaintiffs)
In the matter between :
Hotel Panchavati & Anr. .....Plaintiffs
VERSUS
Panchavati Bhel Bhatta & Anr. ....Defendants
Mr. Hiren Kamod, Advocate alongwith Mr. Sumeet Rane, Advocate i/b Legasis
Partners, Advocates for the Plaintiffs
None for the Defendants
CORAM : S.J. KATHAWALLA, J.
DATE : 21st DECEMBER 2018 P.C.:
1. This is an action for infringement of the Plaintiffs' registered trade marks combined with a cause of action for passing off. Mr. Kamod submitted that since 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 trade marks has not been obtained, the Plaintiffs are presently not pressing for the relief of passing off and shall press for the relief after obtaining such relief. He submitted that notice of this application along with papers thereof have been duly served upon the Defendants. An affidavit of service dated 21 st December 2018 proving the service of the documents is tendered before this Court and is taken on record.::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 ::: Nitin 2 / 6
2. 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.
3. 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 its said services and/or goods from those of others. During all these years, the Plaintiffs have done substantial business under its 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 ::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 ::: Nitin 3 / 6 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-44", Exhibit "E-1" to Exhibit "E-19", Exhibit "F-1" to Exhibit "F-12" and Exhibit "G-1" to Exhibit "G-4" 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. I have perused the same.
4. It is stated that Plaintiffs run websites with the domain names "panchavatihotels.com" and "panchavatigaurav.com" which 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 home page and some of the other pages of the of the said websites. I have perused the same.
5. 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 trade mark PANCHAVATI as its leading, prominent and essential part. It is stated that the Plaintiffs are in short known as PANCHAVATI/HOTEL PANCHAVATI.::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 ::: Nitin 4 / 6
6. 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.
7. It is stated that in or about the second week of December 2018, the Plaintiffs came across a journal advertisement in Trade Marks Journal No.1864 dated 27th August 2018 wherein the Defendants' application bearing No.3023224 in class 43 for "providing good (bhel)" seeking registration of the trade mark was advertised. It is stated that the said journal advertisement revealed that the Defendants are trading as and/or carrying on business under the impugned trade mark / name PANCHAVATI BHEL BHATTA. It is stated that the Plaintiffs are in the process of filing notice of opposition against the registration of the impugned trade mark. My attention is drawn to Exhibit 'J" to the plaint which is a journal extract of the Defendants' application bearing no.3023224 in class 43. I have perused the same.
8. Mr. Kamod submitted that the Defendant's impugned trade mark / name contains the expression PANCHAVATI as its only leading, essential and prominent feature. He submitted that the Defendants have adopted and are using the impugned mark/name knowing fully well that due to its identity and/or close and deceptive similarity to the Plaintiffs' well-
known PANCHAVATI marks, they 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 of the impugned trade mark / name which is ::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 ::: Nitin 5 / 6 identical with and/or deceptively similar to the Plaintiffs' PANCHAVATI marks is deliberate and 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.
9. 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 PANCHAVATI BHEL BHATTA by Defendants cannot be termed as honest. Considering the close similarity in the rival trade marks / names and nature of rival services and/or business, the possibility of confusion and deception amongst the general public cannot be ruled out. The reputation and goodwill of the Plaintiffs / PANCHAVATI marks is also likely to suffer by reasons of misrepresentation sought to be made by the Defendants by using the impugned trade mark / name PANCHAVATI BHEL BHATTA. Moreover, the Defendants have not remained present today, despite service. There are no equities in favour of the Defendants.
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 clause (a) of the Notice of Motion, which reads as follows:
a. That pending the hearing and final disposal of the suit, the Defendants by themselves, their proprietors, partners, servants, agents and all persons acting on their behalf be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiffs' registered ::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 ::: Nitin 6 / 6 trade marks PANCHAVATI / PANCHAVATI GAURAV bearing registration Nos. 1306627 in class 42, 978200 in class 30, 978198 in class 31, 978197 in class 32, 978193in class 30, 978194in class 29, 978195 in class 31 and 978196in class 32 or any of them by the use of the Impugned mark/name/trading style PANCHAVATI BHEL BHATTA and/or any other Impugned mark/name/trading style/label containing the words PANCHAVATI and/or any other Impugned mark/name/trading style identical with and/or deceptively similar to the Plaintiffs' registered trade marks 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;
11. Liberty to the Defendants to apply for variation of this order with 24 hours prior written notice to the Plaintiffs' Advocates.
12. List the Notice of Motion for further ad-interim reliefs on 7th January, 2019 alongwith the Clause XIV Petition.
( S.J. KATHAWALLA, J. ) ::: Uploaded on - 28/12/2018 ::: Downloaded on - 28/12/2018 22:34:57 :::