Delhi High Court - Orders
The Indian Hotels Company Limited vs Sagar Wadhwani And Ors on 16 May, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~44
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 406/2024
THE INDIAN HOTELS COMPANY LIMITED ..... Plaintiff
Through: Ms. Shwetasree Majumder, Mr.
Prithvi Singh, Mr. Rohan Krishna
Seth and Mr. Shiv Mehrotra,
Advocates.
versus
SAGAR WADHWANI AND ORS. ..... Defendants
Through: Mr. Piyush Beriwal, Mr. Kamal Deep
and Mr. Nikhil Chaubey, Advocates
for D-5 & 6.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 16.05.2024 I.A. 11288/2024 (u/Section 12A of Commercial Courts Act, 2015 r/w Section 151 of CPC, 1908)
1. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
2. Disposed of.
I.A. 11289/2024 (seeking leave to file additional documents)
3. This is an application seeking leave to file additional documents under 1 2023 SCC OnLine SC 1382.
CS(COMM) 406/2024 Page 1 of 10This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:16 the Commercial Courts Act, 2015.
4. Applicant, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
5. Accordingly, the application stands disposed of.
I.A. 11290/2024 (seeking exemption from serving Defendant No. 2)
6. For the grounds and reasons stated in the application, exemption is granted. Subject to all just exceptions.
7. The application is disposed of.
I.A. 11291/2024 (seeking exemptions from filing originals, clear copies and documents with proper margins)
8. Exemption is granted, subject to all just exceptions.
9. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
10. Accordingly, the application stands disposed of.
I.A. 11292/2024 (seeking extension from filing court fees)
11. For the grounds and reasons stated therein, the application is allowed. Plaintiff is granted one week's time to file court fees.
12. The application is disposed of.
CS(COMM) 406/2024
13. Let the plaint be registered as a suit.
14. Issue summons. Summons are accepted by Mr. Piyush Beriwal, counsel for Defendant Nos. 5 & 6. He confirms the receipt of paperbook and waives his right of formal service of summons. Written statement(s) shall be filed on behalf of the said Defendants within 30 days from today. Upon CS(COMM) 406/2024 Page 2 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:16 filing of process fee, issue summons to the remaining Defendants, by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
15. Liberty is given to the Plaintiff to file a replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
16. List before the Joint Registrar for marking of exhibits on 21st August, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
17. List before Court for framing of issues thereafter.
I.A. 11287/2024 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of CPC, 1908)
18. Ms. Shwetasree Majumder, counsel for Plaintiff, sets up the Plaintiff's case as follows:
18.1. The Plaintiff has filed the present suit seeking inter-alia permanent injunction restraining Defendants No.1-3 from using the tradename/trademark "GINGER TREE/ ", "Ginger Tree Goveia Suites," "Ginger Tree Boutique Hotel" and " " and/or any other CS(COMM) 406/2024 Page 3 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:16 mark identical or deceptively similar to the Plaintiff's registered mark "GINGER" amounting to trademark infringement and passing off of the Plaintiff's mark.
18.2. The Plaintiff - Indian Hotels Company Limited, is part of the 'TATA group of Companies'. Plaintiff is engaged in the hospitality industry, managing a large portfolio of hotels, resorts, jungle safaris, palaces etc. under various brands, one of which is named "GINGER". 18.3. The Plaintiff is the registered proprietor of the GINGER trademarks details thereof are provided below2:
The said marks are registered in respect of goods and services under class 43 (hotels, motels, inns; hotel, motel, restaurant, cafeteria, lounge, tea-room, concierge, lodging and bar services, hotel reservation services; hotel resort; computer services, namely providing on-line information in the field of hotel and restaurant services; provision of temporary accommodation; provision of facilities for meetings, conferences and exhibitions; consultancy services relating to hotels and restaurants; assisstance in relation to trademark and brand administration in connection with hotel and restaurant activities.) 2 Collectively referred to as Plaintiff's marks CS(COMM) 406/2024 Page 4 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 Furthermore, the said marks have been exclusively and extensively used by the Plaintiff, and as such, the trademarks have aquired a distinctive character and are associated solely with the Plaintiff. Thus, the Plaintiff claims statutory as well as common law rights in its trademarks. 18.4. Plaintiff also owns a registered domain "gingerhotels.com" and operates a dedicated website "www.gingerhotels.com", which extensively display the Plaintiff's brand, trademarks and copyrights - in order to promote its hotels and services. The website facilitates online reservations of hotel rooms, dining and meeting/conference halls in the Plantiff's hotels, from any corner of the world. Plaintiff also operates various social media accounts for promoting its business.
18.5. Apart from the above, the Plaintiff's hotels are authentically listed on several accomodation and travel booking websites such as "www.makemytrip.com", "www.easemytrip.com", "www.tripadvisor.in", "www.goibibo.com", "www.trivago.in", "www.bookings.com", "www.agoda.com", etc. 18.6. Owing to the long and continuous use of the Plaintiff's trademarks, as well as promotional and advertisment activities, Plaintiff has aquired goodwill and reputation in its brands and trademarks. This is reflected from its financial records, as per which, for the FY 2022-23, Plaintiff's revenue amounted to more than INR 300 crores. Plaintiff has also received various awards as delineated in Paragraph No. 24 of plaint.
18.7. As on date the Plainfiff has set-up 62 GINGER HOTELS in 39 citities in India and 25 hotels are in the pipeline.
18.8. The Plaintiff's grievance arose in April 2024, when it came across the property under the name of 'Ginger Tree Boutique Resort' in Anjuna, Goa CS(COMM) 406/2024 Page 5 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 providing hospitality services under the mark 'GINGER TREE'/ ' ' which incorporates the Plaintiff's trademark "GINGER" entirely. The photographs of the said property are as follows:
18.9. Upon conducting further search, the Plaintiff also discovered a website- www.gingettreeresort.com and noticed that the Defendant No.1-3 were operating two properties under the name 'Ginger Tree Boutique CS(COMM) 406/2024 Page 6 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 Resort' in Anjuna (Goa) and 'Ginger Tree Goveia Suites' in Candolim (Goa). The screenshot of the Defendant No.1-3' websites, is as follows:
18.10. Although the Defendant No.2 applied for the registration of the mark ' ' under application no. 4132242 in Class 43, however, the same has been refused.
18.11. Thus, Defendant Nos 1 to 3 are providing hospitality services from CS(COMM) 406/2024 Page 7 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 their two properties under the names 'Ginger Tree Boutique Resort' in Anjuna (Goa) and 'Ginger Tree Goveia Suites' in Candolim (Goa), and in connection with these services, are using the marks "GINGER TREE/ ", "Ginger Tree Goveia Suites", "Ginger Tree Boutique Hotel", and " ".3 18.12. Upon further investigation into the Defendant No.1-3's activities, the Plaintiff also found out that they have a social media presence on Facebook (under the page 'Ginger Tree Boutique Resort, Anjuna') and Instagram (under the name '@gingertreeboutique'). Defendant Nos.1-3's Facebook and Instagram pages contain extensive use of the infringing marks as evident from the documents placed on record.
19. The Court has considered the above-noted submissions. Defendant No.1-3's marks 'GINGER TREE'/ ' ', 'Ginger Tree Goveia Suites', 'Ginger Tree Boutique Hotel', and wholly incorporate the Plaintiff's registered mark "GINGER". On a prima-facie view, the court finds that the infringing marks are phonetically, visually and structurally, deceptively similar to the Plaintiff's mark "GINGER" thereby amounting trademark infringement. Furthermore, the use of the infringing marks in respect of the same class of services as that of the Plaintiff- i.e., the hospitality sector, has the potential of creating a false nexus, affililiation and association with the Plaintiff. Such action of Defendant Nos.1-3 has the 3 hereinafter, collectively referred to as the "infringing marks".
CS(COMM) 406/2024 Page 8 of 10This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 potential of harming the Plaintiffs' reputation and goodwill by creating confusion in the minds of purchasing public regarding the source of the Defendant No1-3's services.
20. Considering the above, the Court finds that the Plaintiff has made out a prima facie case in his favour and in case no ex-parte ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendant Nos.1-3.
21. Accordingly, till the next date of hearing, Defendant Nos.1-3 or anybody acting on their behalf, are restrained from using marks "GINGER TREE"/ " ", "Ginger Tree Goveia Suites", "Ginger Tree Boutique Hotel", and " " or any other deceptively similar mark, either as a trademark, trade name, domain name, as part of their email addresses or in any other manner which amounts to trademark infringement and/ or passing off of the Plaintiff's marks.
22. Defendant No. 4 [Domain Name Registrar] is directed to block/ suspend access to the domain name gingertreeresort.com. They shall, within four weeks from today, file in a sealed cover, the complete KYC documents including payment details concerning the registrant of the aforesaid domain name. A copy of the said documents shall also be provided to counsel for Plaintiffs, which shall be strictly used by them for the purpose of investigation and identification of the perpetrators.
23. Defendants No. 5 and 6 [Ministry of Electronics and Information Technology and Department of Telecommunications, Ministry of CS(COMM) 406/2024 Page 9 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17 Communications and Information Technology, respectively] are directed to issue necessary directions to the telecom service providers and internet service providers to the block access to website https://www.gingertreeresort.com/.
24. Defendant No. 7 (Meta Platforms Inc.) is directed to block/remove the Facebook Page - "Ginger Tree Boutique Resort, Anjuna" and the Instagram Page - "gingertreeboutique" of the Defendants.
25. Issue notice. Mr. Piyush Beriwal, counsel for Defendant Nos. 5 & 6, accepts notice.
26. Issue notice to the remaining Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing.
27. Reply, if any, be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
28. List before the Court on 22nd October, 2024.
SANJEEV NARULA, J MAY 16, 2024 as CS(COMM) 406/2024 Page 10 of 10 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 20/05/2024 at 23:09:17