Intercity Hotel Gmbh vs Hotel Intercity Delhi & Ors on 13 March, 2019

[Cites 22, Cited by 2]

Delhi High Court

Intercity Hotel Gmbh vs Hotel Intercity Delhi & Ors on 13 March, 2019

Equivalent citations: AIRONLINE 2019 DEL 903

1. This application is filed under Order 39 Rule 1 and 2 CPC seeking an interim injunction to restrain the defendants, their servants, partners etc. from using the mark „HOTEL INTERCITY DELHI‟ or any other mark identical or deceptively similar to the plaintiff‟s registered trademark INTERCITYHOTEL either as a trade mark/corporate name/domain name.

2. The plaintiff has filed the accompanying suit for permanent injunction against infringement of trade mark, passing off, unfair competition, rendition of accounts, damages and delivery up. The case of the plaintiff is that it forms part of the Deutsche Hospitality group of companies which comprises CS(COMM.) 1108/2018 Page 1 of 21 130 hotels in 17 countries on 3 continents. It is further pleaded that one of the leading brands of the plaintiff is INTERCITYHOTEL. The said trademark INTERCITYHOTEL is registered in numerous jurisdictions with the earlier registration dating back to September 1992 in Germany. In India, the mark was registered on 20.5.2011 in class 43 in respect of "temporary accommodation providing food and drink". The plaintiff also holds registration for the mark „INTERCITYHOTEL‟ (Device). Hence, it is pleaded that these registrations evidence the recognition of the distinctiveness of the said trade mark and the exclusive proprietorship of the plaintiff to the said trademark. It is further pleaded that the mark INTERCITYHOTEL has acquired extensive global reputation and goodwill on account of high quality of the services offered by the plaintiff. The plaintiff is said to have 37 modern city hotels in the mid-range segment at the heart of the cities in Germany and other international destinations plus additional 34 hotels with its cooperation partner in Brazil and Uruguay.

3. Defendant No.1 is located at 17A/42, W.E.A.,Gurudwara Road, Opp.Jesa Ram Hospital, Near Karol Bagh Metro Station, Karol Bagh, New Delhi and is engaged in the business of providing temporary accommodation, food and drinks. It is further pleaded that defendant No.1 is operating a hotel under the trade name „HOTEL INTERCITY DELHI‟ in Karol Bagh which amounts to infringement of the plaintiff‟s registered trademark.

4. It is pleaded that the public and trade in India identify, recognize and associate the trademark INTERCITYHOTEL with the plaintiff. There is a flow of tourists as well as flow of business people from foreign countries and a large number of Indians and foreign nationals come across the services of CS(COMM.) 1108/2018 Page 2 of 21 the plaintiff internationally. The plaintiff‟s services under the said trademark have been widely promoted. The plaintiff also maintains a website www.intercityhotel.com. It is further pleaded that on account of its priority in adoption, use and registration and exclusive rights as proprietor of the trade mark INTERCITYHOTEL, the adoption or use of the said trademark or any deceptively similar mark in relation to same or similar services will not only cause deception and confusion in the minds of people but it is also contrary to the protection afforded to a well-known registered trade mark under the Trademarks Act.

5. Defendants have filed their written statement. They have stated that the said trademark HOTEL INTERCITY DELHI is a trademark of defendant No.1 firm. It is pleaded that defendants have been using the said trademark continuously, extensively and openly in relation to their business since 2010. It is pleaded that the said trademark of the answering defendant has become distinctive and has acquired secondary affiliation in relation to the goods and services. It is also pleaded that the defendants have made substantial investment on publicity of the trademark/label. It is also pleaded that the word INTERCITY is common to the trade and cannot be monopolized in favour of the plaintiff. Even the Indian railways is using the word INTERCITY for several of their trains.

6. I have heard learned counsel for the parties. Learned counsel for the plaintiff has submitted as follows:-

(i) That the trademark INTERCITY HOTEL was registered in Germany on 10th September 1992 and has been registered in India in class 43 on 20.5.2011. The device registration was done on 26.4.2017. In contrast, it is pleaded that as per the documents filed by the defendant the earliest user is CS(COMM.) 1108/2018 Page 3 of 21 of 17.11.2011. The first invoice is dated 7.6.2012. Hence, the user of the impugned trademark HOTEL INTERCITY DELHI by the defendant is after the registration of the trademark by the plaintiff.

(ii) It is pleaded that the defendants have themselves applied for registration of the trademark on 16.01.2019 but have withdrawn the same. They have now made a second application for the said trade mark. Hence, the plea of the defendant that the word INTERCITY is common to trade and cannot be monopolized is a false and mischievous submission as the defendants themselves have applied for registration of the said trademark.

(iii) It is further pleaded that the judgment of the Supreme Court in the case of Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd. and Ors., AIR 2018 SC 167 has no application to the facts of the case. The concerned mark „PRIUS‟ which was the subject matter of that dispute was not a registered trademark until the car was released in 2009. In contrast the defendant in that case had obtained registration for the said mark in 2002 and had been continuously using the same since the year 2001. Hence, it is pleaded that facts of that case are different as in this case the mark for which the suit is filed is registered in favour of the plaintiff.

(iv) It is further pleaded that the domain name used by the plaintiff is www.intercityhotel.com which is functional since 1999. It is further stated that there have been 13572 visits from Indian customers from 1.6.2016 to 28.2.2018. It is pleaded that the defendant uses the domain name www.hotelintercitydelhi.com and are hence trading on the reputation and goodwill of the plaintiff‟s trademark Intercity Hotel.

7. Learned senior counsel appearing for the defendant has reiterated as follows:

CS(COMM.) 1108/2018 Page 4 of 21

(i) He relies upon judgment of the Supreme Court in Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd. and Ors. (supra) to contend that mere registration of the mark would not confer any rights on the plaintiffs to oust the defendant from using the said mark.

(ii) It is further pleaded that when the plaintiff applied for registration of the mark in 2011 the application clearly stated that they propose to use the mark in India. Even after registration till date it is pleaded that the plaintiffs have failed to use the said mark and there is no hotel with the said trademark in existence in India. Hence, reliance is placed on section 34 and 47 of the Trademarks Act to contend that the defendants cannot be restrained from using the trademark which they have used since 2010.

(iii) Reliance is also placed on judgment of this court in Kellogg Company vs. Pops Foods Products (P) Ltd., 2018 (73) PTC 569 (Del) to contend that where the party has not used the trademark for five year after registration the same is liable to be removed from the register.

8. It is a matter of fact that defendant has claimed user of the trademark since 2010. As far as the plaintiff is concerned the plaintiff had applied for registration on 20.5.2011. The registration was with respect to proposed user. It is also a matter of fact that till date the plaintiff has not launched any hotel or work place using the said trademark INTERCITY HOTEL which they have got registered.

9. In these facts reference may be had to section 34 of the Trademarks Act, 1999 which reads as follows:-

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34. Saving for vested rights. -

Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior-

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his, or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his.

Whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

10. Reference may also be had to the judgment of the Supreme Court in S.Syed Mohideen vs. P.Sulochana Bai, (2016) 2 SCC 683 where the Supreme Court held as follows:-

30.Firstly, the answer to this proposition can be seen by carefully looking at the provisions of the Trade Marks Act, 1999 (the Act). Collective reading of the provisions especially Sections 27, 28, 29 and 34 of the Trade Marks Act, 1999 would show that the rights conferred by registration are subject to the rights of the prior user of the trade mark. We have already reproduced Section 27 and Section 29 of the Act.

30.1. From the reading of Section 27(2) of the Act, it is clear that the right of action of any person for passing off the goods/services of another person and remedies thereof are not affected by the provisions of the Act. Thus, the rights in passing off are emanating from the common law and not from the CS(COMM.) 1108/2018 Page 6 of 21 provisions of the Act and they are independent from the rights conferred by the Act. This is evident from the reading of the opening words of Section 27(2) which are "Nothing in this Act shall be deemed to affect rights...."

30.2. Likewise, the registration of the mark shall give exclusive rights to the use of the trade mark subject to the other provisions of this Act. Thus, the rights granted by the registration in the form of exclusivity are not absolute but are subject to the provisions of the Act.

30.3. Section 28(3) of the Act provides that the rights of two registered proprietors of identical or nearly resembling trade marks shall not be enforced against each other. However, they shall be same against the third parties. Section 28(3) merely provides that there shall be no rights of one registered proprietor vis-à-vis another but only for the purpose of registration. The said provision 28(3) nowhere comments about the rights of passing off which shall remain unaffected due to overriding effect of Section 27(2) of the Act and thus the rights emanating from the common law shall remain undisturbed by the enactment of Section 28(3) which clearly states that the rights of one registered proprietor shall not be enforced against the another person.

30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in this Act shall entitle the registered proprietor or registered user to interfere with the rights of prior user. Conjoint reading of Sections 34, 27 and 28 would show that the rights of registration are subject to Section 34 which can be seen from the opening words of Section 28 of the Act which states "Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor...."

and also the opening words of Section 34 which states "Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere...." Thus, the scheme of the Act is such where rights of prior user are recognised superior than that of the registration and even the registered proprietor CS(COMM.) 1108/2018 Page 7 of 21 cannot disturb/interfere with the rights of prior user. The overall effect of collective reading of the provisions of the Act is that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act. This proposition has been discussed in extenso in N.R. Dongre v. Whirlpool Corpn.[N.R. Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del 310 : AIR 1995 Del 300] wherein the Division Bench of the Delhi High Court recognised that the registration is not an indefeasible right and the same is subject to rights of prior user. The said decision of Whirlpool [N.R. Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del 310 : AIR 1995 Del 300] was further affirmed by the Supreme Court of India in N.R. Dongrev. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714] ...

32.2. From the reading of the aforementioned excerpts from Kerly's Law of Trade Marks and Trade Names, it can be said that not merely it is recognised in India but in other jurisdictions also including England/UK (Provisions of the UK Trade Marks Act, 1994 are analogous to the Indian Trade Marks Act, 1999) that the registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action. In such an event, the rights conferred by the Act under the provisions of Section 28 have to be subject to the provisions of Section 27(2) of the Act and thus the passing off action has to be considered independent "Iruttukadai Halwa" under the provisions of the Trade Marks Act, 1999.

....

33.2. We uphold the said view which has been followed and relied upon by the courts in India over a long time. The said views emanating from the courts in India clearly speak in one voice, which is, that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of the rights pre-existing in common law CS(COMM.) 1108/2018 Page 8 of 21 and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognised in the form of the registration by the Act."

11. Reference in this context may also be had to the judgment of the Supreme Court in Neon Laboratories Ltd. vs. Medical Technologies Ltd. and Ors., 2016(2) SCC 672 where the Supreme Court held as follows:-

7. Section 34 of the Trade Marks Act, 1999 (the Act) deserves reproduction herein:

34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior-

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

This Section palpably holds that a proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to CS(COMM.) 1108/2018 Page 9 of 21 the user or date of registration of the proprietor. This "first user"

rule is a seminal part of the Act. While the case of the Plaintiff- Respondents is furthered by the fact that their user commenced prior to that of the Defendant-Appellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the Defendant-Appellant filed for registration in 1992, six years prior to the commencement of user by the Plaintiff- Respondents. The Defendant-Appellant was, thus, not prevented from restraining the Plaintiff-Respondents' use of the similar mark PROFOL, but the intention of the Section, which is to protect the prior user from the proprietor who is not exercising the user of its mark prima facie appears to be in favour of the Plaintiff- Respondents.

8. Section 47 of the Act is in the same vein and statutory strain inasmuch as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trademark was registered, there was no bona fide use thereof. In the case in hand, prima facie, it appears that for over five years after a registration application was made by the Defendant-Appellant, the mark was not used. Facially, the Act does not permit the hoarding of or appropriation without utilization of a trademark; nay the Defendant-Appellant has allowed or acquiesced in the user of the Plaintiff-Respondents for several years. The legislative intent behind this Section was to ordain that an applicant of a trademark does not have a permanent right by virtue of its application alone. Such a right is lost if it is not exercised within a reasonable time.

Hence, under section 34 of the Trade Marks Act, 1999 the registered proprietor of the trademark cannot interfere with the rights of prior user by a defendant to a proceeding.

CS(COMM.) 1108/2018 Page 10 of 21

12. Reference may also be had to section 47 of the Trademarks Act which reads as follows:-

"47. Removal from register and imposition of limitations on ground of non-use.--

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either--

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being: Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to-

(i) goods or services of the same description; or

(ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered.

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CS(COMM.) 1108/2018 Page 11 of 21

13. A registered trademark may be taken off the register where on request of a person aggrieved where a continuous period of five years from the date on which the trademark was actually registered in the Registry has lapsed during which period there has been no bona fide use in relation to the goods and services by any proprietor of the trademark.

14. The facts of the present case are that the defendant claims user of the trademark since 2010. The plaintiff had applied for registration on 20th May 2011 in India which was the registration for proposed user. More than five years have lapsed and the plaintiff has admittedly not used the trademark Intercity Hotel in India inasmuch as there is no hotel or any other establishment set up by the plaintiff which uses the said trademark. However, the plaintiff claims reputation and goodwill based on its user abroad. It is claimed that the mark was registered in Germany on 10th September, 1992. It is pleaded that the said mark has acquired extensive global reputation and goodwill. The plaintiff has 37 hotels in the world plus 34 more in collaboration.

15. In these facts, reference may also be had to the judgment of the Supreme Court in Toyota Jidosha Kabushiki Kaisha vs.Prius Auto Industries Ltd. and Ors. (supra). That was a case in which the plaintiff filed a suit for permanent injunction for infringement of trademark, passing off and damages. According to the plaintiff it launched world‟s first commercial hybrid car called „Prius‟ in 1997. In India the car was released in 2009. There was no registration till that point of time of the trademark Prius in India. In contrast the defendants had got the trademark Prius registered in 2002-03 for all types of auto parts and accessories. The defendants had claimed that they had not obtained CS(COMM.) 1108/2018 Page 12 of 21 registration of the trademark in 2002 and have been continuously using the same since 2001. The Supreme Court held as follows:-

22. The following passage from Kerly's 'Law of Trade Marks and Trade Names'1 noticed in S. Syed Mohideen (supra) may be reiterated herein for a clear exposition of the principles laying down the test for judging an action of passing off in the Indian jurisdiction.

The provisions in the Indian Trade Marks Act, 1999 incidentally are analogous to those in the U.K. Trade Marks Act, 1994

- 34. Subject to possibly one qualification, nothing in the Trade Marks Act, 1994 affects a trader's right against another in an action for passing off. It is, therefore, no bar to an action for passing off that the trade name, get up or any other of the badges identified with the claimant's business, which are alleged to have been copies or imitated by the Defendant, might have been, but are not registered as, trade marks, even though the evidence is wholly addressed to what may be a mark capable of registration. Again, it is no defence to passing off that the Defendant's mark is registered. The Act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing off that the false representation relied upon is an imitation of a trade mark that is incapable of registration. A passing off action can even lie against a registered proprietor of the mark sued upon. The fact that a claimant is using a mark registered by another party (or even the Defendant) does not of itself prevent goodwill being generated by the use of the mark, or prevent such a claimant from relying on such goodwill in an action against the registered proprietor. Such unregistered marks are frequently referred to as 'common law trade marks'.

23. Whether a trade mark is to be governed by the territoriality principle or by universality doctrine? Prof. Cristopher Wadlow CS(COMM.) 1108/2018 Page 13 of 21 in his book "The Law of Passing-Off" has analysed the problem and its possible resolution in the following words:

in the worst case, an international company seeking to expand into a new territory may find itself blocked by a small business already trading under the same name or style, perhaps on a miniscule scale; and perhaps having been set up for the very same purpose of blocking anticipated expansion by the claimant or being bought out for a large sum. On the other hand, a Rule of law dealing with this situation has to avoid the opposite scenario of bona fide domestic traders finding themselves open to litigation at the suit of unknown or barely-known claimants from almost anywhere in the world. Some of the more radical proposals for changing the law to assist foreign claimants ignore the need for this balancing exercise, without which the opportunities for abuse are simply increased, and further uncertainty created."

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25. It seems that in Starbucks v. British Sky Broadcasting (supra), the Apex Court of UK had really refined and reiterated an earlier view in Athletes' Foot Marketing Associates Inc. v. Cobra Sports Ltd. (1980) R.P.C. 343 to the following effect:

...no trader can complain of passing-off as against him in any territory...in which he has no customers, nobody who is in trade relation with him. This will normally shortly be expressed by stating that he does not carry on any trade in that particular country...but the inwardness of it will be that he has no customers in that country...

26. A passing reference to a similar view of the Federal Court of Australia in Taco Bell v. Taco Co. of Australia 1981 60 FLR 60 may also be made.

CS(COMM.) 1108/2018 Page 14 of 21

27. Prof. Cristopher Wadlow's view on the subject appears to be that the test of whether a foreign claimant may succeed in a passing-off action is whether his business has a goodwill in a particular jurisdiction, which criterion is broader than the "obsolete" test of whether a claimant has a business/place of business in that jurisdiction. If there are customers for the claimant's products in that jurisdiction, then the claimant stands in the same position as a domestic trader.

28. The overwhelming judicial and academic opinion all over the globe, therefore, seems to be in favour of the territoriality principle. We do not see why the same should not apply to this Country.

29. To give effect to the territoriality principle, the courts must necessarily have to determine if there has been a spill over of the reputation and goodwill of the mark used by the claimant who has brought the passing off action. In the course of such determination it may be necessary to seek and ascertain the existence of not necessarily a real market but the presence of the claimant through its mark within a particular territorial jurisdiction in a more subtle form which can best be manifested by the following illustrations, though they arise from decisions of Courts which may not be final in that particular jurisdiction."

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16. Hence, the Supreme Court noted that the Courts would necessarily have to determine if there has been a spill over of the reputation and goodwill of the mark used by the claimant who has brought the passing off action in the State territory. It would be necessary to see the existence and the presence of the claim through its mark within a particular territorial jurisdiction.

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17. Similarly, a Co-ordinate Bench of this Court in Choice Hotels International Inc. vs. M.Sanjay Kumar and Ors., 2015 (62) PTC 269 (Del) held as follows:-

34. The Courts in India have started recognizing the global character of the brand names and have started giving them protection merely on the basis of global nature of reputation without insisting any localized business which was significant departure from the classic trinity laid down by Lord Diplock in the case of Erven Warnink (Supra). The position of law up till Milment has been followed that the Courts in India by placing reliance on the said decision have proceeded to grant interim orders to the multi-nationals having their brands which are of global character and prevented the misuse of the said brands by protecting trans-border reputation subject to fulfilling of essential characteristics necessary to prove trans-border reputation. The decision in the case of Milment was also rendered in the year 2004 when the impact of internet, e-commerce, social media was yet to be seen and realized.

35. Recently, this Court has rendered a decision in the case of Cadbury U.K. Limited & Anr. vs. Lotte India Corporation Ltd., reported in 2014(57) PTC 422 (Delhi) wherein the decision of law relating to trans-border reputation has been further strengthened and has been taken to another level wherein the court has not merely relied upon the decision of Milment (supra) and Whirlpool (supra) but has also extended the principle of trans-border reputation by observing that the existence of a merchant on web pages which are of foreign origin and social media are sufficient to show the trans-border nature of reputation without having any activity in India at the relevant time. Though it is very broad extension of the concept of trans-border reputation, but it is a question of fact in each case as to how the internet documents are sufficient to show the global character of the trademark and the reputation attached to the same. The impact of the said decision which has been given very recently is yet to be seen and analyzed by the other Courts in India in the upcoming times.

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38. It is pertinent to mention here that similar issue of the plea raised by the defendants was discussed by this Court in the case of Madhubhan Holiday Inn Vs. Holiday Inn Inc., MANU/DE/1085/2002 : 100 (2002) DLT 306 where the plaintiff/respondent company Holiday Inn Inc, a registered company of United States of America had filed a case against the defendants/appellants for adoption of the words "Holiday Inn" by the appellants who had before "Holiday Inn", used prefix "Madhuban" and "Kapoor" in their mark. It was held in appeal that adoption of the words "Holiday Inn" by the appellants is ex facie fraudulent and malafide from the very inception. The words "Holiday Inn" have been adopted by the appellant to ride on the global reputation of the respondent. The appellant was actuated by bad faith and dishonest motive. In the facts and circumstances, the learned Single Judge was fully justified in granting the injunction and decreeing the suits in order to protect the commercial goodwill and to ensure that the global business reputation of the respondent is not exploited by the appellants in a clandestine manner. In this case of Madhubhan Holiday Inn (supra), the Court referred to the following decisions:

(i) Rainforest Cafe Inc v. Rainforest Cafe & Ors.

MANU/DE/1666/2001 : 91 (2001) DLT 508. In this case the plaintiff Rainforest Cafe Inc has 37 restaurants world wide and is planning to open many more restaurants throughout the globe and particularly in India. The plaintiff has advertised in the leading and premier magazines and newspapers. It is mentioned in the plaint that the revenues/sales in 1997 and 1998 were to the tune of US $ 108 millions and US $ 213 millions, respectively. It is also incorporated in the plaint that because of its success, largely because due to its particular unusual and novel name, ambience and decor of its outlets, its shares are even quoted on the New York Stock Exchange. It has its own web-site. Consequent to its phenomenal progress, the plaintiff has been receiving trade inquiries from all corners of world. The defendant opened a restaurant with the name of "Rainforest Cafe"

masquerading as one of the outlets of the plaintiff. The defendant CS(COMM.) 1108/2018 Page 17 of 21 has copied the plaintiff's name, as also the tagline of "A WILD PLACE TO EAT'. There is a certainty that because of the shoddy manner in which the restaurant is presently running, irreparable injury will be caused to the reputation and good will of the plaintiff world wide, and will also have adverse ramifications on the impending enquiries for its franchise in New Delhi as well as other parts of India. On consideration of the totality of the facts and circumstances, the Court found the balance of convenience in favor of the plaintiff and observed that the plaintiff is likely to suffer irreparable injury, if the defendant continues to run its restaurant in its present name and style which is a poor but blind copy of the plaintiff's cafes world wide. On consideration of the totality of the facts the Court granted injunction in favor of the plaintiff.

(ii) In Caesar Park Hotels v. Westinn Hospitality Services Ltd.

1999 PTC (19) 123, the Division Bench of Madras High Court while setting aside the judgment of the learned Single Judge applied the principle of transborder reputation and restrained the defendant from using the word "West inn" for Its business.

(iii) In Poddar Tyres Ltd. v. Bedrock Sales Corporation, Bedrock Ltd. MANU/MH/0038/1993 : (1993) 18 IPLR 153, the Court held that the trading style and name of defendant No. 1 containing the word 'Bedrock' did amount to infringement and passing off since such adoption of the mark in the business name was neither honest nor bonafide so as to claim valid use under Section 34 of the Act.

(iv) This Court in Virendra Dresses v. Varindra Garments, MANU/DE/0292/1982 : AIR 1982 Delhi 482 held that the trade names of plaintiffs and defendants are similar, sufficient to give rise to confusion. Similarity and confusion to be determined from the point of view of a common man. A man in the street will remember the name Varindra he may not be able to make a distinction between the 'Garments' and 'Dresses'. A customer intending to go to the business premises of the plaintiffs is likely CS(COMM.) 1108/2018 Page 18 of 21 to visit the business premises of the defendant when the two trading names are so similar.

(v) In Tata Iron & Steel Co. Ltd. v. Mahavir Steel and Ors. I.A. Nos. 6215 and 8804 of 1990 dated February 25, 1992 this Court observed "An imitation remains an imitation whether it is done by many. It acquires no legitimacy. A wrong is not righted by the following it musters."

18. Hence, one of the aspects also considered by this Court for the purpose of granting injunction is that interim orders can be granted to multinationals having brand which are of global category so as to protect trans-border nature of reputation subject to verifying essential characteristics necessary to prove trans-border reputation.

19. To determine as to whether the plaintiff would be entitled to seek an interim injunction despite not having commenced business in India this Court would have to see and determine as to whether there is a spill over in India of the reputation and goodwill of the mark used by the plaintiff.

20. Unfortunately, the facts as pleaded in the plaint do not show any spill over of the reputation and goodwill of the mark of the plaintiff in India. The plaint states that the plaintiff has a global reputation and goodwill and is a well-known brand based on flow of tourism and people engaged in business to foreign countries from India. An averment is also made that the promotion has taken place through the medium of magazines and newspapers Presumably in India. However, the names of such magazine and newspapers are not stated. Reliance is also placed on promotion as well as advertisement but no details are forthcoming. Along with the plaint documents have been filed including copies of advertisements. However, all these advertisements appear to have circulation abroad.

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21. The defendant states that they have user since 2010. There are some documents on record which show prima facie user since 2010-11 including a Trade license which is dated 25.8.2010, an application for grant of alleged license of the hotel which states user/existence of the place since 30.9.2010 etc.

22. At this stage, prima facie, it appears that the user of the trademark by the defendant is prior to even the application for registration of the trademark filed by the plaintiff. That apart, the plaintiff has got its trademark registered on 20th May 2011. Despite lapse of almost seven years there is no user of the said trademark within the country. Prima facie there is not much to show about the trans-border reputation of the plaintiff within India.

23. Keeping in view the above facts, in my opinion, the plaintiff has failed to make a prima facie case. Balance of convenience is also not in favour of the plaintiff as the defendant has a prima facie user since 2010.

24. I may now deal with the contention of the plaintiff regarding the domain name used by the defendant which is substantially the same as that of the plaintiff and that the defendant is trading on the reputation and goodwill of the plaintiff‟s trademark Intercity Hotel. The plaintiff has averred that there were 13,572 visits from Indian customers from 01.06.2016 to 28.02.2018 at the said website. Keeping in view the said allegation being made by the plaintiff and also the fact that there is a commonality in the domain name being used by the parties it would be in the interest of justice that a direction be passed to the defendant to prominently display on its website i.e. hotelintercitydelhi.com that the defendant hotel is not in any manner connected with Intercity Hotel GMBH Frankfurt, Germany. This CS(COMM.) 1108/2018 Page 20 of 21 clarification shall be carried out by the defendant on its website at a prominent place on the home/first page. It is ordered accordingly.

25. It is also directed that the defendant will keep proper accounts and will file its statement of account biannually. Application stands disposed of with above directions.

(JAYANT NATH) JUDGE MARCH 13, 2019/n CS(COMM.) 1108/2018 Page 21 of 21

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Delhi High Court