Delhi High Court - Orders
Elementia Wellness Private Limited vs Tes Beauty Services Private Limited & ... on 6 August, 2020
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ I.A. 6305/20202, IA 2625/2020 in CS(COMM) 88/2020
ELEMENTIA WELLNESS PRIVATE LIMITED .... Plaintiff
Through Ms. Nancy Roy, Adv.
versus
TES BEAUTY SERVICES
PRIVATE LIMITED & ANR. .... Defendants
Through None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 06.08.2020 (Video-Conferencing) I.A.6305/2020
1. Subject to the notarized affidavit being filed, and deficient court fee being paid within 72 hours of resumption of normal court work, exemption, as sought, is granted for the present.
2. The application is disposed of.
IA 2625/2020 (Order XXXIX Rules 1 and 2 CPC)
1. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) filed by the plaintiff in the suit.
2. Notice was issued, of this application, as far back as on 25 th Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 1 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 February, 2020. On the last date of hearing, learned counsel had also appeared on behalf of Defendant 2.
3. Today, however, despite the matter having been passed over once, there is no appearance on behalf of either of the defendants, either on the first call or on the second call.
4. Neither has any reply been filed to this application, nor has any written statement, been filed in response to the plaint, till date.
5. I have heard Ms. Nancy Roy, learned counsel appearing for the plaintiff and proceed, therefore, to decide the present application.
6. The prayer clause, in this application, reads thus:
"48. IN THE PREMISES STATED ABOVE, IT IS THEREFORE, MOST RESPECTFULLY PRAYED THAT, THIS HON'BLE COURT MAY BE PLEASED TO:
A. Pass an ex-parte ad-interim injunction order against the Defendants, their partners, directors, principals, proprietors, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns thereby restraining them:
i. using the Impugned Marks" i.e.,
, ,
TATVA SPA, or
any other mark which is deceptively and confusing similar to the Plaintiff's Earlier Well- Known Trade Mark TATTVA SPA and TATTVA SPA formatives and/or, part of the Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 2 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Plaintiff's corporate / trade name ELEMENTS either as a trade mark or part of a trade mark, trade name or part of a trade name; corporate name, electronic-mail, domain name or part of a domain name, or in any manner which would amount to infringement of the registered trade mark of the Plaintiff;
ii. using the Impugned Marks i.e
, ,
TATVA SPA, or
any other mark which is deceptively and confusing similar to the Plaintiff's Earlier Well- Known Trade Mark TATTVA SPA and TATTV A SPA formatives and/or part of the Plaintiff's corporate / trade name ELEMENTS either as a trade mark or part of a trade mark, trade name or part or a trade name, corporate name, electronic-mail, domain name, or part of a domain name or in any manner which would amount to passing: off their services as and for the services of the Plaintiff;
iii. disposing off or dealing with its assets, including the properties mentioned in the cause title of the Plaint, in a manner which may adversely affect the Plaintiff's ability to recover damages, costs or other pecuniary remedies that may be finally awarded to the Plaintiff;
B. The Defendants, its directors, employees, servants, agents, distributors, partners, franchises, representatives, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns be directed during the pendency of the suit to:
(i) to recall all marketing, promotional and advertising materials bearing the Impugned Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 3 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Marks i.e. , , ), TATVA SPA, or any other mark/name which contains a mark/name identical or deceptively and confusingly similar to the Plaintiff's Earlier Well-Known Trade Marks TATTCA SPA and TATTVA SPA formatives and/or part of the Plaintiff's corporate / trade name ELEMENTS and forward the same to the attorneys or representatives of the Plaintiff;
(ii) to make a full and fair disclosure of any trade mark application(s)/copyright applications filed for registration(s) obtained for the Impugned Marks i.e. , , , TATVA SPA, or any other mark which contains a mark which is identical or deceptively and confusingly similar to the Plaintiff's Earlier Well-Known Trade Mark TATTVA SPA and TATTVA SPA formatives and/or part of the Plaintiff's corporate / trade name ELEMENTS, and immediately withdraw the same under intimation to the Plaintiff's Counsels;
(iii) to change the Trade Name of the Defendant No.1, TATVA SPA, to any other name which does not contain the Plaintiff's Earlier Well-Known Trade Mark TATTVA SPA, or any other mark which is deceptively and confusingly similar to the Plaintiff's Earlier Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 4 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Well-Known Trade Mark TATTVA SPA, or in alternative cancel the same;
(iv) to make a full and fair disclosure of any company name/trade name which contains the Plaintiff's Earlier Well-Known Trade Mark TATTVA SPA and take steps to change the same;
(v) to shut down the website
www.tatvaspa.com and transfer the said
Impugned Domains to the Plaintiff;
(vi) to provide a full and fair disclosure of any other websites/domain names registered and/or operated by or on behalf of the Defendants which contains a mark/name identical or deceptively and confusingly similar to the Plaintiff's Earlier Well-Known Trade Mark TATTVA SPA and TATTVA SPA formatives and immediately take steps to transfer the same to the Plaintiff;
(vii) to shut down / remove the Facebook page @ https://www.facebook.com/Tatva-
Salon-Spa-133047986900 312/, YouTube page @ https://www.youtube.com/watch?v=4OY0nogU PIk,Instagram page @ https://www.instagram.com/tatvasalonandspa/ effective immediately, and provide a full and fair disclosure of any other social media pages, operated by or on behalf of the Defendants, bearing and/or advertising the Impugned Marks, i.e. , , , TATVA SPA, or any other mark which contains a mark which is identical or deceptively and confusingly similar Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 5 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 to the Plaintiff's Earlier Well-Known Trade Mark TATTVA SPA and TATTVA SPA formatives and immediately take steps to shut down the same.
(viii) to remove its advertisement and listing from third party website including but not limited to www.massagespaindia.com and immediately make a full and fair disclosure of any other online advertisement of its hotel on any other website;
C. Costs of the present Application be awarded to the Plaintiff; and D. Any other relief which the Hon'ble Court deems proper in the facts and circumstances of the case be allowed in favor of the Plaintiff and against the Defendants."
7. According to the recitals in the plaint, and the submissions of Ms Roy, the plaintiff was established in 2009, and provides spa services, under the name and style "TATTVA SPA". It operates under the domain name www.tattvaspa.com, which is also stated to have been registered in 2009. It is further averred, in the plaint, that the services of the plaintiff are available in Agra, Aurangabad, Bengaluru, Chennai, Faridabad, Goa, Gurgaon, Guwahati, Haridwar, Hyderabad, Jaipur, Jaisalmer, Jim Corbett, Khajuraho, Kandla, Kodaikanal, Kochi, Lonavala, Mumbai, Mysore, Nainital, Noida, Ooty, Patna, Pune, Raipur, Rishikesh, Udaipur and Yercaud. Inter alia, therefore, the services of the plaintiff are available in Goa, where the defendants also operate. The plaint acknowledges that the defendants are, till now, not known to have spread their wings outside Goa.
8. The plaintiff has the following registrations, of "TATTVA"
Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 6 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15trade mark in different styles:
Trade Mark Registration Registration Class Number Date 1879286 November 44 03, 2009 Services: spa and salon services TATTVA SPA 2462008 January 17, 44 2013 Services: spa and salon services
9. These registrations, points out Ms Roy, constitute prima facie validity of the trade marks, in view of Section 31 of the Trade Marks Act, 1999 (hereinafter referred to as "the Act").
10. The plaint also acknowledges the fact that these trade marks were originally filed in the name of one Mr. Karan Goyal, but that they were assigned to the plaintiff, vide an Assignment Agreement, dated 15th July, 2014.
11. The plaintiff asserts that it has, over a period of time, amassed a formidable reputation within the spa sector, with steady increase in its sale figures, in support whereof the following tabular statement is to be found in para 13 of the plaint:
Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 7 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Year Net Revenue (in INR)
2012 37,66,868
2013 93,43,064
2014 1,06,31,256
2015 1,51,84,536
2016 3,29,17,380
2017 4,88,16,307
2018 7,84,75,413
2019 10,98,33,570
12. The plaintiff also submits that it has sustained promotional expenses, for maintaining its business, during the period 2012 to 2019, as under:
Year Promotion expense
(in INR.)
2012 2,15,556
2013 1,93,828
2014 1,25,055
2015 2,89,565
2016 20,30,754
2017 22,69,975
2018 33,82,756
2019 44,85,068
13. The reputation that the plaintiff has amassed, over a period of time, Ms Roy asserts, has resulted in the trade mark of the plaintiff becoming a "well known trade mark" as defined in clause (zg) of Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 8 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Section 2(1) of the Act.
14. As against this, the defendants operate under the domain name www.tatvaspa.com. They are said to be catering to the same customer base, through the same trade channels as the plaintiff, as they provide spa services to hotels and other associated establishments in Goa. A tabular statement, comparing the trademarks, of the plaintiff and the defendants, has been provided in the plaint, thus:
Plaintiff's Earlier Well Defendants' Impugned Marks Known Trade Marks Word Mark / Trade Name Impugned Word Mark / Trade Name TATTVA SPA TATVA SPA Logo Marks Impugned Logo Marks Domain Name Impugned Domain Name www.tattvaspa.com www.tatvaspa.com
15. Given the phonetic similarity, between the trade names under which the plaintiff and the defendants operate, it is asserted, by Ms Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 9 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Roy, that the public is found to be misled, into believing that the services provided by the defendants, are actually those of the plaintiff. This is augmented by the facts that the defendants provide identical services, though they are limited to the geographical area of Goa. Even so, points out Ms Roy, the defendants are making efforts to expand their business outside the territory of Goa, as is apparent from the website of the defendants, as well as the fact they have listed their services on a third party website, namely www.massagespaindia.com. It is also pointed out, in this regard, that the defendants participated in an expo, for spa services, conducted in "The Grand" Hotel, New Delhi.
16. Ms Roy further submits the defendants applied for registration of their trade marks , vide application no. 2588631, in class 44, on 1st January, 2013, for providing medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. The said application was refused by the Registrar, Trade Marks Registry, on 30th January, 2018. Ms. Roy submits, on instructions that, to the knowledge of her client, this refusal has not been assailed, by the defendants, by seeking recourse to any judicial proceedings.
18. In view of the above, it is stated that the triple identity test, which has been accorded the imprimatur of this Court as well as other courts, in, inter alia, Teleecare Network India Pvt. Ltd. vs. Asus Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 10 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 Technology Pvt Ltd1, Ahmed Ommerbhoy v. Gautam Tank2, Lal Sons Machines v. Sachar E & M Stores3 and Bihar Tubes Ltd v. Garg Ispat Ltd4, and which envisages deceptive visual and phonetic similarity, common customers/trade channels, and providing of similar goods/services, stands satisfied in the present case. The satisfaction of these tests, it is contended by Ms Roy, makes out a prima facie case in favour of the plaintiff.
19. It is also pointed out that the defendants had, in fact, approached the Radisson Hotel, Goa, to provide their services and that the Radisson Hotel had, in fact, initially provided the services of the defendants to its clients, but discontinued the same, on being intimated, by the plaintiff, regarding the alleged deception being practiced by the defendants.
20. The plaint also refers to the fact that, on 27th December, 2019, a notice was issued by the plaintiff to the defendants, calling on the defendants to cease and desist from using the mark . On such notice being received, it is stated that the defendants merely modified the marks to add "s" after "TATVA" to read "TATVAS" . This, submits the plaintiff, clearly indicates that the defendants acknowledge the deceptive similarity, between the marks of the 1 262 (2019) DLT 101 2 146 (2008) DLT 174 3 1986 Raj LR 165 4 166 (2010) DLT 109 Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 11 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15 plaintiff and the marks of the defendants.
21. As has been noticed towards the commencement of this order, despite the issuance of notice on this application, there is no response from the defendants. No reply, to this application, has been filed and, in fact, no written statement, in response to the plaint, has, either, been filed by the defendants. In view thereof, the averments and assertions in the plaint, as articulated by Ms Roy, have necessarily to be treated as untraversed, and meriting prima facie acceptance, on demurrer.
22. In view of the above recitals and the contentions of Ms. Nancy Roy, learned counsel for the plaintiff, there shall be an ad interim injunction, in favour of the plaintiff and against the defendants, in terms of prayers (i) and (ii).
23. The defendants are also directed to recall all marketing, promotional and advertising materials bearing the impugned marks i.e. , , ,TATVA SPA or any other mark/name identical or deceptively and confusingly similar to the plaintiff's Earlier Well-Known Trade Mark TATTVA SPA and to make a full and fair disclosure of any trade mark application(s)/copyright applications for registration(s) of the impugned marks, or any other mark deceptively or confusingly similar to the trade mark under which the plaintiff operates.
Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 12 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:1524. The defendants are also directed to forthwith discontinue any page or website, on the internet or on any social media platform, which depicts or advertises in any manner, the impugned marks, i.e. , , , TATVA SPA or any other mark identical or deceptively or confusingly similar to the plaintiff's trademarks. The defendants are also restrained from advertising their services, under the impugned marks, on any third party website, including www.massagespaindia.com.
25. The application stands allowed to the aforesaid extent.
C. HARI SHANKAR, J.
AUGUST 06, 2020 r.bararia Signature Not Verified Digitally Signed By:SUNIL CS(COMM) 88/2020 Page 13 of 13 SINGH NEGI Signing Date:10.08.2020 16:43:15