Bombay High Court
Hotel Panchavati And Anr vs Hotel Panchvati And Anr on 26 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.488 OF 2019
AND
LEAVE PETITION NO.81 OF 2019
IN
COMMERCIAL IP SUIT (L) NO.234 OF 2019
Hotel Panchavati & Anr. ... Applicants
(Org. Plaintiffs)
In the matter between :
Hotel Panchavati & Anr. ... Plaintiffs
VERSUS
Hotel Panchvati & Anr. ... Defendants
Mr.Hiren Kamod, Advocate along with Mr.Vaibhav Keni and Mr.Sumeet Rane,
Advocates i/b Legasis Partners, for the Plaintiffs
None for the Defendants
CORAM : S.J. KATHAWALLA, J.
DATE : 26 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 Defendant No.1 and Defendant No.2 on 23 rd February 2019 and 21st February 2019 respectively. An affidavit of service dated 26 th ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 2 / 8 February 2019 proving service of documents upon the Defendants is tendered before this Court. The same is taken on record. Despite service, no one is present on behalf of the Defendants.
2. 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), (b), (c) and (d) of the Notice of Motion and are not pressing for prayer for appointment of Court Receiver.
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 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 - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 3 / 8
5. 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-44", Exhibit "E-1" to Exhibit "E-19", Exhibit "F-1" to Exhibit "F-17" and Exhibit "G-1" to Exhibit "G-13" 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-10" to the plaint which are printouts of the homepage and some other pages of the said websites. I have perused the same.
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 ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 4 / 8 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 the 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 them in this Court for infringement of their PANCHAVATI marks and passing off. I have perused the same.
8. Mr. Kamod submitted that in or about the first week of February 2019, while conducting an online search on the internet, the Plaintiffs came across the domain name www.hotel-panchvati-pachmarhi-mptdc.hotelsgds.com and the website www.hotel-panchvati-pachmarhi-mptdc.hotelsgds.com, which revealed that Defendants are running a hotel and rendering services in relation to hotel / restaurant / hospitality under the trademark HOTEL PANCHVATI. He submitted that the said website www.hotel-panchvati-pachmarhi- mptdc.hotelsgds.com of the Defendants is accessible across India including in Mumbai and even bookings can be done online from the said website www.hotel- panchvati-pachmarhi-mptdc.hotelsgds.com of the Defendants. He submitted that further online searches on the internet revealed and/or indicated that apart from the trademark HOTEL PANCHVATI, the Defendants' also use the trademarks PANCHVATI HUTS AND COTTAGES and/or PANCHVATI COTTAGES and/ or PANCHVATI for their hotel and/or for rendering services in relation to hotel / restaurant / hospitality. My attention is drawn to Exhibit "K-1" to Exhibit "K-5" and Exhibit "L-1" to Exhibit "L-7" to the plaint which are printouts ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 5 / 8 obtained from the Defendants' website www.hotel-panchvati-pachmarhi- mptdc.hotelsgds.com and print outs obtained from the search conducted on the internet, respectively. I have perused the same. He submitted that even the Plaintiffs have been/were running thali restaurants / restaurants under the PANCHAVATI marks in Madhya Pradesh for a long period of time and that the Defendants cannot feign ignorance of the fact that they were aware of the same. He submitted that the Defendants have adopted and are 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, 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 and use of the impugned trade mark / name / domain name by the Defendants 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 Defendants, restraining them from infringing the Plaintiffs' PANCHAVATI marks, passing off their goods and services as those of the Plaintiffs.
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 PANCHAVATI marks and it is evident from the documents annexed to the plaint that PANCHAVATI marks have acquired immense reputation and goodwill. The use of the impugned trade mark / name / domain ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 6 / 8 name HOTEL PANCHVATI and/or PANCHVATI HUTS AND COTTAGES and/or PANCHVATI COTTAGES and/ or PANCHVATI and/or www.hotel- panchvati-pachmarhi-mptdc.hotelsgds.com by Defendants cannot be termed as honest. Considering the close similarity in the rival trademarks / 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. 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 trademark / name / domain name. 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 clauses (a), (b), (c) and
(d) of the Notice of Motion, which read as follows:
a. That pending the hearing and final disposal of the suit, the Defendants by themselves, their proprietors, directors, 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 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 or any of them by the use of the Impugned mark/name/trading style HOTEL PANCHVATI and/or PANCHVATI HUTS AND COTTAGES and/or PANCHVATI COTTAGES and/or PANCHVATI 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 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 ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 7 / 8 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;
b. That pending the hearing and final disposal of the suit, the Defendants by themselves, their proprietors, directors, 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 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 or any of them by the use of the Impugned domain name www.hotel-panchvati-pachmarhi- mptdc.hotelsgds.com and/or any other Impugned domain name containing the word PANCHVATI either together or individually and/or any other Impugned domain name 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 Defendants by themselves, their proprietors, directors, partners, servants, agents and all persons acting on their behalf be restrained by a temporary order and injunction of this Hon'ble Court from using the Impugned mark/name/trading style HOTEL PANCHVATI and/or PANCHVATI HUTS AND COTTAGES and/or PANCHVATI COTTAGES and/ or PANCHVATI 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 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 Defendants' impugned services and/or business as and for the Plaintiffs' well known services and/or business, or in any other manner whatsoever;::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 ::: Nitin 8 / 8
d. That pending the hearing and final disposal of the suit, the Defendants by themselves, their proprietors, directors, partners, servants, agents and all persons acting on their behalf be restrained by a temporary order and injunction of this Hon'ble Court from using the Impugned domain name www.hotel-panchvati-pachmarhi-mptdc.hotelsgds.com and/or any other Impugned domain name containing the word PANCHVATI either together or individually and/or any other Impugned domain name 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 Defendants' impugned services and/or business as and for the Plaintiffs' well known services and/or business, or in any other manner whatsoever;
11. Considering the fact that the Defendants are not present today and they are running hotel under the impugned mark, the Defendants are given three days time from the date of service of this Order on the Defendants to comply with this order so as to enable the Defendants to remove / change the boards, hoardings, menu cards and all other material bearing the Impugned mark/name/trading style HOTEL PANCHVATI and/or PANCHVATI HUTS AND COTTAGES and/or PANCHVATI COTTAGES and/ or PANCHVATI.
12. List the Notice of Motion for hearing on 11th March 2019.
13. The Plaintiffs shall forthwith serve a copy of this order upon the Defendants.
(S.J. KATHAWALLA, J.) ::: Uploaded on - 04/03/2019 ::: Downloaded on - 21/03/2019 18:47:30 :::