Calcutta High Court
Salt Lake Society For Hotel ... vs Gazi Murshidul Arefin & Ors on 3 September, 2021
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I.A G.A. No. 1 of 2020
In
CS No. 50 of 2020
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
Commercial Division
SALT LAKE SOCIETY FOR HOTEL MANAGEMENT & ANR
Vs.
GAZI MURSHIDUL AREFIN & ORS
For the Petitioners : Mr. S.N Mookherjee, Sr. Adv.
Mr. Soumabho Ghose, Adv.
Mr. Arunabha Deb, Adv.
Mr. Tanmoy Chakraborty, Adv.
Ms. Ashika Daga, Adv.
Ms. Tiana Bhattacharyya, Adv.
Mr. Tirthankar Das, Adv.
For the Defendent : Mr. Ranjan Bachawat, Sr. Adv.
Mr. Sudip Ghosh, Adv.
Mr. Supriyo Chattopadhyay, Adv.
Ms. Saswati Adhikary, Adv.
Ms. Arunima Lala, Adv.
Hearing concluded on : April 06, 2021
Judgment on : September 3, 2021
DEBANGSU BASAK, J. :-
1. In a suit for infringement of the registered trademark of the
plaintiffs and for passing off of the business and marks of the plaintiffs
by the defendants, the plaintiffs have sought interim protection in this
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application. This application has been heard after completion of
affidavits.
2. Learned senior advocate appearing for the plaintiffs has submitted
that, since December 19, 1994 the plaintiff No. 1 has been operating as
"IIHM" with the abbreviation "IIHM" forming a distinct and prominent
part of its registered trademarks. The trademarks have been registered in
classes 41 and 35. The registration of the trademark under class 35 has
expired on April 24, 2017. The plaintiffs have applied for renewal of the
same which is pending. The trademark registration in respect of class 41
has been renewed till July 17, 2027. He has contended that, the mark
and/or letters "IIHM" is the dominant and essential part of the
trademark registrations of the plaintiffs.
3. Learned senior advocate appearing for the plaintiffs has submitted
that, the plaintiffs have been using the trademarks and the abbreviation
"IIHM" extensively and have advertised the same with wide publicity in
various newspapers, print media and other social media. The plaintiffs
have published brochure from time to time bearing the registered
trademark as also the acronym. The plaintiffs have a domain name as
"iihm.ac.in" which also appears in the brochure. According to him, the
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abbreviation "IIHM" by customary usage over time has become
synonymous with the hotel management and catering service courses
offered by the plaintiff No. 1. He has contended that, the trademarks of
the plaintiffs have acquired substantial reputation and goodwill all over
India.
4. Learned senior advocate appearing for the plaintiffs has drawn the
attention of the court to the caution notice issued by the plaintiffs as also
the replies thereto. He has referred to the prior suit and the contempt
proceedings. He has submitted that, prior to the institution of the
present suit, the plaintiffs had filed CS No. 186 of 2010 complaining of
infringement and passing off against the defendants. He has submitted
that, an interim order was passed in July 15, 2010 restraining the
defendants from using "IIHM" as part of its name or literature or any
other matter without using the full form of its name in similar font and in
similar size used by the defendants to print "IIHM" in the relevant
literature or material. Such interim order had been confirmed on
December 24, 2010. He has contended that, the defendants did not
comply with such orders. The plaintiffs had filed four separate contempt
petitions. He has referred to the first contempt petition been CC No. 60 of
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2010 in which a Rule was issued and subsequently dismissed as the
Rule was not served upon the contemnors. In the second contempt
petition been CC No. 110 of 2011 a Rule had been issued and the same
was disposed of by the order dated January 21, 2011. The third
contempt petition been CC No. 87 of 2015 had been disposed of by an
order dated July 31, 2015 on the basis of the stand taken by the
contemnors therein. He has referred to the contempt petition of CC No.
87 of 2015 and the affidavits filed therein. He has submitted that, the
defendants had admitted that the acronym "IIHM" was akin to the
abbreviation "IIHM" and undertook to use the same with the full name,
Indian Institute of Hotel Management in the same font and in the same
size or do away with it altogether. According to him, the stand of the
defendants had led to the passing of the order dated July 31, 2021. He
has submitted that, the defendants continued to violate the order dated
July 15, 2010 as confirmed by the order dated December 24, 2010. The
plaintiffs had filed the fourth contempt petition been CC No. 52 of 2016.
Such contempt petition had been disposed of by the order dated
September 23, 2016. He has contended that, such contempt proceedings
had been dropped since the operative part of the order dated July 15,
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2010 as confirmed on December 24, 2010 did not refer to the logo or the
pictorial depiction of the abbreviated form of the name of the institute
run by the defendants. The court had held that, on a strict interpretation
of the order dated July 15, 2010 it did not appear that the operative part
of the order dated July 15, 2010 as confirmed in December 24, 2010
dealt with the new logo and that the ornate and unusual logo used by
the defendants would not be in the contempt proceedings be seen to be
used as an abbreviated form of "IIHM".
5. Learned senior advocate appearing for the plaintiffs has submitted
that, the present suit is on the basis of a fresh cause of action. The
plaintiffs had come across advertisement in the newspaper on February
3, 2020 wherein the defendants published an advertisement by using the
logo of the plaintiffs without using the full form, Indian Institute of Hotel
Management alongside the acronym and in similar font and size. Such
advertisement has also shown the domain name "iihmkolkata.com". He
has submitted that, the defendants have thereafter continued to use the
acronym/logo "IIHM" without adhering to the same font and size
requirement when printing Indian Institute of Hotel Management. He has
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contended that, the defendants have done so in order to cash in on the
reputation and goodwill of the plaintiffs in the abbreviation "IIHM".
6. Learned senior advocate appearing for the plaintiffs has submitted
that, although the defendants had applied for a trademark and obtained
registration in respect thereof on June 15, 2015, the respondents have
not used the same. Rather they have been using the abbreviation and/or
acronym "IIHM". The defendants have not offered any explanation as to
why they are not using the registered trademark existing in their favour
after passing of the orders dated July 15, 2010 and December 24, 2010
in the earlier suit. He has contended that, the continued user of the
abbreviation "IIHM" by the defendants establishes the intention of the
defendants to trade on the reputation of the plaintiff No. 1. He has
referred to the sales figures of the defendants. He has pointed out that,
the defendants have used the mark of the plaintiffs in their domain
name. The defendants have started using the abbreviation and acronym
of the plaintiffs in school uniforms, banks and satchels of the students of
the defendants. He has referred to the user of the abbreviation and
acronym of the plaintiffs in such material by the defendants. He has
referred to the order dated December 2, 2020 passed in the instant suit
in which according to the plaintiffs, the defendants had admitted that
such user amounts to trading on the goodwill of the plaintiffs.
7. Learned senior advocate appearing for the plaintiff has submitted
that, the defendants have designed their website and domain name with
the purpose of trading on the reputation of the plaintiffs. He has
contended that, any person assessing the website of the defendants will
find that the domain name of the defendants is associated with the
International Institute of Hotel Management that is the institute run by
the plaintiffs. The defendants have not explained such conduct. The
defendants had caused its digital marketing service provider to hack into
the Google listing page of the plaintiffs. The plaintiffs had filed a police
complaint on July 15, 2020. The defendants had sought to settle the
matter which was communicated to the police by the representatives of
the defendants by the letter dated June 22, 2020. In spite of such
settlement the defendants have continued to pass off their business as
that of the plaintiffs. The defendants have been using the Twitter handle
"[email protected]" and Instagram page "kolkataiihm". The
defendants have been using email address as "[email protected]" and
the domain name "iihmkolkata.com" to trade on the goodwill and
reputation of the plaintiffs.
8. Learned senior advocate appearing for the plaintiffs has submitted
that, the defendants have misled the student community into believing
that the defendants are the institute of the plaintiffs. The plaintiffs have
received complaints from government bodies with regard to the institute
of the defendants. He has submitted that, the government authorities are
treating the institute of the defendants as part of the institute of the
plaintiffs. He has contended that, the public at large believe that, the
institute run by the defendants is the same as that of the institute run
by the plaintiffs. The user of the acronym of the plaintiffs is an attempt
on the part of the defendants to trade on the goodwill and reputation of
the plaintiffs.
9. Learned senior advocate appearing for the plaintiffs has submitted
that, the plaintiffs issued a notice dated January 7, 2021 complaining of
acts of deliberate and wilful disobedience of the order dated December 2,
2020.In response to such notice, the defendants by a letter dated
January 12, 2021 accepted the fact that there had been a violation of the
order dated December 2, 2020 but contended that some of the violations
that occurred due to inadvertence and the others have been due to acts
of agencies that had voluntarily uploaded such materials. The defendants
had preferred an appeal from the order dated December 2, 2020. The
plaintiffs have also filed a contempt petition being CC No. 8 of 2021 on
February 12, 2021.
10. Learned senior advocate appearing for the plaintiffs has relied upon
1997 Volume (1) Supreme Court Cases 99 (Bengal Waterproof Ltd
versus Bombay Waterproof Manufacturing Company and another)
in support of the contention that, the present suit is maintainable.
According to him, subsequent to the first suit, the actions of the
defendants have given rise to fresh cause of action for the plaintiffs to file
the instant suit.
11. Learned Senior advocate appearing for the defendants has
contended that, there exist registered trademarks in favour of both the
plaintiffs and the defendant. According to him, both the plaintiffs and the
defendants are having their respective marks registered as Label Mark
without having separate registration of each of the design elements for
the abbreviation separately, inasmuch as the tradename that is,
International Institute of Hotel Management and the abbreviation thereof
that is "IIHM". According to him, the abbreviation is required to be
separately registered under the provisions of Section 17 of the Trade
Marks Act, 1999. He has referred to the plaint of the previous suit of the
plaintiffs and the players made therein. He has also referred to the
introductory application filed by the plaintiffs in the previous suit. He
has referred to the orders passed in the previous suit namely the order
dated July 15, 2010 and December 24, 2010. According to him, none of
the parties to the previous suit have challenged the orders passed in the
previous suit and therefore, the order dated July 15, 2010 has become
final on the issue of user of the abbreviation "IIHM" between the parties.
He has referred to the repeated applications for contempt filed by the
plaintiffs. In particular, he has referred to the contempt petition being CC
No. 52 of 2016. He has contended that, the plaintiffs filed the present
suit after a lapse of more than five years from the date when the initial
cause of action had arisen. He has submitted that, the plaintiffs were
aware of the existence of the logo of the defendants as disclosed in CC
No. 87 of 2015.
12. Learned senior advocate appearing for the defendants has
submitted that, the previous suit and the present suit are between the
same parties relating to the same subject matter. According to him, the
user of the abbreviation "IIHM" has been conclusively decided between
the parties in the previous suit and is therefore no more res integra. He
has contended that, the present suit and the applications are nothing
but an attempt on the part of the plaintiffs to achieve something in a
circumlocutory manner which the plaintiffs could not have achieved
earlier. He has highlighted the fact that, the parties to the suit are
business rivals and that, the plaintiffs are trying to resist the prospect of
the defendants involved in the same business by whatever means
possible.
13. Learned senior advocate appearing for the defendants has
distinguished Bengal Waterproof Ltd (supra). He has contended that,
the facts of the present case are different to those obtaining in Bengal
Waterproof Ltd (supra). He has contended that, since the same issue
between the same parties has been raised in a subsequent suit,
provisions of Section 10 of the Code of Civil Procedure, 1908 are
attracted. According to him, the plaintiffs are seeking to review the earlier
decision of coordinate bench between the same parties involving the
same issue.
14. Learned senior advocate appearing for the defendant has submitted
that, the defendants have abandoned the domain name
www.iihmkolkata.com which the defendants have been using for the last
16 years despite the same having got enough popularity amongst all.
However the defendant shall use the domain name for one year from the
date of the order. He has submitted that, the defendants are using
"indianihm.com" and "indianihmkolkata.com" as the new domain names.
15. Learned senior advocate appearing for the defendants has referred
to 2010 (2) Calcutta High Court Notes (Cal) Page 217 (Three-N-
Products Private Ltd versus Emami Ltd). He has also relied upon
Sections 17 and 33 of the Trade Marks Act, 1999. According to him, the
plaintiffs have acquiesced their rights to raise any objections regarding
user of the logo "IIHM" by the defendants till the date of the filing of the
plaint on June 13, 2020. Therefore, according to him, the plaintiffs are
not entitled to any interim relief as prayed for otherwise.
16. In reply, learned senior advocate appearing for the plaintiffs has
submitted that, the defendants did not take any objection with regard to
Section 17 of the Act of 1999. In any event, Section 17 (2b) of the Act of
1999 itself recognises that where the trademark contains any matter
which is not common to the trade and is distinctive, the registration of
the trademark can confirm an exclusive right in the matter for which
only a part of the whole of the trademark is so registered. He has
contended that, the same has been recognised in Three-N-Products
Private Ltd (supra). In any event, the plaintiffs have applied for a
separate registration of the mark "IIHM". As the defendants have not
taken such point in the affidavit in opposition, such fact could not be
brought on record by way of an affidavit in reply. He has relied upon
Section 17 (2)(a)(i) of the Act of 1999 and contended that, the plaintiffs
can maintain an action for infringement of a part of their registered
trademark.
17. With regard to the orders dated July 15, 2010 as confirmed by the
order dated December 24, 2010 and the order dated September 23, 2016
passed in the previous suit and the contempt petition are concerned,
learned Senior advocate appearing for the plaintiffs has contended that,
the same assist the plaintiffs in obtaining the reliefs are sought for
hearing. So far as pendency of the previous suit is concerned, he has
relied upon Bengal Waterproof Ltd (supra). Referring to Section 33 of
the Act of 1999, learned Senior advocate appearing for the plaintiffs has
contended that, no case of acquiescence or waiver has been made out.
He has relied upon 2004 Volume (6) Supreme Court Cases 145
(Satyam Infoway Ltd versus Siffynet Solutions Private Limited) and
contended that, it has been recognised that a domain name is easy to
remember and use and is chosen as an instrument of commercial
enterprise.
18. The parties to the present suit have been litigating amongst
themselves for a considerable period of time. The plaintiffs had filed a
previous suit and four contempt petitions against the defendants. The
plaintiffs have filed the present suit and applied for interim protection
therein. In the present suit, the Court has passed an order dated
December 2, 2020 in terms of prayer (c) of the petition. The defendants
have preferred an appeal therefrom which is pending.
19. The issue of maintainability of the present suit has been decided on
December 2, 2020. The Court has found the present suit to be
maintainable. Although the defendants have preferred an appeal from
the order dated December 2, 2020, the finding of the Court returned on
December 2, 2020 on the issue of maintainability has not been set aside.
The issue of maintainability of the present suit having been decided by
the order dated December 2, 2020, no further discussion on such subject
is necessary.
20. The defendants have contended that, apart from the issue of
maintainability of the suit, there is an issue under Section 10 of the Code
of Civil Procedure, 1908. Whether all the issues raised in the present suit
are same as those raised in the previous suit are issues both of fact and
law and need not be decided at this stage as the defendants have failed
to establish conclusively at this stage that, all the issues raised in the
previous suit have been raised in the present suit.
21. Orders dated July 15, 2010 as confirmed on December 24, 2010
passed in the previous suit so also the order dated September 23, 2016
passed in CC No. 52 of 2016 have material bearing on the present
application. The plaintiff No. 1 and the defendant No. 3 have similar
business. They have been running hotel and catering management
school and educational training centres at Salt Lake, Kolkata. The
plaintiffs have been carrying on business under the name and style of
International Institute of Hotel Management. The defendants have been
carrying on business under the name and style of Indian Institute of
Hotel Management. Indisputably the plaintiffs have been using "iihm" to
describe and identify the institute run by it much prior in point of time
than that of the defendants. The plaintiffs have been using such mark
since December 19, 1994 as it prima facie appears from the Certificate of
Registration. In the previous suit, the Court had by the order dated July
15, 2010 restrained the defendant from using "IIHM" as part of its name
or literature or any other material without using the full form of its name
in similar font and similar size as the defendants print "IIHM" in the
relevant literature or material.
22. Satyam Infoway Ltd (supra) has recognized that given the nature
of the business, it may become necessary to maintain exclusive identity
which a domain name requires. It has recognized that domain name has
become associated with the nature of business and maintains the
exclusivity of such business. In the virtual world, where commerce is
conducted, domain name identifies the business. It is therefore
imperative that a domain name which has identified itself with the
business should be allowed to maintain its exclusivity.
23. Section 17 of the Act of 1999 has dealt with the effects of
registration of parts of a mark. Sub-section (1) of Section 17 of the Act of
1999 has provided that when a trademark consists of several matters its
registration has conferred on the proprietor exclusive right to use of the
trademark taken as a whole. The exception thereto has been provided in
sub-Section (2) of the Act of Section 17. It has provided that, when a
trademark contains any part which is not a subject of a separate
application by the proprietor for registration as a trademark or which is
not separately registered by the proprietor as a trademark or contains
any matter which is common to the trade or is otherwise of a non-
distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the
trademark so registered. Section 33 of the Act of 1999 has dealt with the
effect of acquiescence. It has provided that where the proprietor of an
earlier trademark has acquiesced for a continuous period of five years in
the use of a registered trademark being aware of that use, he shall no
longer be entitled on the basis of that trademark to apply for a
declaration that the registration of the later trade mark is invalid or to
oppose the use of the later trademark in relation to the goods or services
in relation to which it has been so used, unless registration of the later
trademark was not applied in good faith.
24. The plaintiffs have registration of trademarks in classes 41 and 35.
The registration of the trade mark of the plaintiffs under class 35 had
expired on April 24, 2017 and the plaintiffs had applied for the renewal
of the same. The renewal application has not been disposed of. The
plaintiffs have registration in respect of class 41 till July 17, 2027.
25. The plaintiffs have been continuously using the mark and letter
"IIHM". The user has been prior in point of time than the defendants. In
the facts of the present case at the prima facie stage, it cannot be said
conclusively that, the plaintiffs have acquiesced in the use of the
abbreviation "IIHM" by the defendants so as to attract Section 33 of the
Act of 1999. The defendants have to establish that, they come within the
purview of Section 33 of the Act of 1999. The history of litigation that the
parties to the suit have, does not allow one to arrive at a conclusion at
the prima facie stage that the plaintiffs have acquiesced in the
defendants using IIHM.
26. Three-N-Products Private Ltd (supra) has held that registration of
a composite mark by itself does not confer any exclusive right as to the
part of the composite mark. It has noted Section 17 and Section 29 of the
Act of 1999. The facts scenario in the present case is different.
27. The orders dated July 15, 2010 as confirmed on July 24, 2010 and
the conduct of the defendants thereunder have been considered by the
Court while passing the ad interim order on December 2, 2020.
Admittedly the defendants have been using a logo on the dress of the
students and the bags used by the students. Both the plaintiffs and the
defendants are engaged in the similar type of business, that is, running
an educational institute. The logo that the defendants have been using
on the dress of the students as well as on the bags used by the students
have striking semblance with that of the logo used by the plaintiffs. In
the present times, the students utilise the internet facility more than
ever. In the virtual world, the existing domain name of the plaintiffs and
the defendants are strikingly similar. At the interim stage, prima facie, it
appears that the defendants are using the domain name of the plaintiffs
in order to pass off the products of the defendants as that of the
plaintiffs.
28. In such circumstances, a view different than that returned by the
Court on December 2, 2020 at the interim stage need not be taken. The
order dated December 2, 2020 is confirmed. Interim order in term of
prayer (c) of the Notice of Motion taken out by the plaintiffs on October
15, 2020 will continue till the disposal of the suit.
29. I.A G.A No. 1 of 2020 in CS No. 50 of 2020 is disposed of
accordingly.
[DEBANGSU BASAK, J.]
