Tata Group's Indian Hotels Company Limited has succeeded in obtaining a permanent-injunction order against the hospitality firm Vivanta Hospitality Private Limited, for using its “Vivanta” mark from the prominent hotel chain Taj Vivanta.
The single-judge bench of Justice Amit Bansal in the suit filed for trademark infringement imposed a cost of ₹6 lakhs on the defendant and observed that they are using an identical mark to that of the plaintiff with only a suffix add-on.
"A comparison of the above marks shows that the defendant is using identical mark “VIVANTA” of the plaintiff by adding the expression “VACATION CLUB” as a suffix, which amounts to infringement of the plaintiff’s trademark as well as passing off," the court said.
Brief Facts of the Case
It was the plaintiff’s case that owing to its long, continuous, and consistent usage of the trademark “VIVANTA” since its inception in 2008 and the promotional and advertisement expenses incurred, the trademark “VIVANTA” has acquired secondary significance. It has further acquired the status of a ‘well-known trademark’ in terms of Section 2(1)(zg) of the Trade Marks Act, 1999.
The defendant, Vivanta Hospitality Private Limited offers its services in the hospitality sector and also provides tailor-made and customized holiday packages for its customers. It was initially incorporated on 5th July, 2010 as “R M Y BUILDERS & DEVELOPERS PRIVATE LIMITED” and later on 22nd February, 2021 changed its name to “VIVANTA HOSPITALITY PRIVATE LIMITED”.
The plaintiff bought into Court's notice inter-alia, the fact that there are more than 100 consumer complaints made by customers, who were under the impression that the defendant is associated with the plaintiff and was cheated by the defendant.
The plaintiff was thus aggrieved by the dishonest and infringing use of its registered trademark “VIVANTA” (word/device) by the defendant. It was its contention that the services/packages provided by the defendant are bound to cause confusion in the minds of unwary consumers, who may associate the same with the plaintiff. The functioning and quality of services provided by the defendant as against the high quality services and standards of the plaintiff may dilute the goodwill and reputation of the plaintiff and the services offered by it under the trademark “VIVANTA” and cause incalculable harm and injury to the business, goodwill and reputation associated with the plaintiff’s registered marks.
High Court's Observation
The Court stated that the defendant has used the trademark ‘VIVANTA’ in its trade name i.e., “VIVANTA VACATION CLUB”, which is identical to the plaintiffs’ name, with an intent to springboard its business by drawing association with the plaintiff and its trademark, to ride on the goodwill and reputation of the mark of the plaintiff.
"The acts of the defendant amount to infringement of the trademark of the plaintiff and passing off the services of the defendant as that of the plaintiff. Number of consumers were duped by the defendant under the pretext of its association with the plaintiff. The defendant has not only taken unfair advantage of the reputation and goodwill of the plaintiff’s mark but also deceived unwary consumers of their association with the plaintiffs. Such acts of the defendant would also lead to dilution and tarnishment of the plaintiff’s mark.", the Court added
Noting that the domain name of the defendant is also deceptively similar to that of the plaintiff and is likely to deceive the public of its association with the plaintiff, the Court cited Anugya Gupta v. Ajay Kumar and Anr wherein it was held that the right of a proprietor in a domain name is entitled to equal protection. The user traffic may be diverted due to the use of the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. A domain name may therefore, have all the characteristics of a trademark and could result in an act of passing off.
Similarly, the use of “VIVANTA VACATION CLUB” as a part of their trade name is also likely to deceive unwary consumers of their association with the plaintiffs, the court ruled.
"The defendant company at the time of registration was using a completely different name and was engaged in a totally unrelated business activity. The adoption of the infringing mark by the defendant in relation to a business identical to that of the plaintiff clearly depicts the intentional malafides of the defendant."
The Court was thus of the opinion that no purpose would be served by directing the plaintiff to lead ex parte evidence by filing an affidavit of examination in chief and in terms of Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 and a summary judgment decreeing the suit in favour of the plaintiff deserves to be passed.
Case Title: The Indian Hotels Company Limited vs Vivanta Hospitality Private Limited
Case Details: CS(COMM) 507/2022, I.A. 11684/2022 (O-XXXIX R-1 & 2 of CPC)
Coram: Hon'ble Mr. Justice Amit Bansal
Advocates for Petitioner: Mr.Pravin Anand, Mr.Achuthan Sreekumar, Mr.Rohil Bansal and Ms.Apoorva Prasad R., Advocates.
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