Ihhr Hospitality Pvt Ltd vs Bestech India Pvt Ltd
2011 Latest Caselaw 2922 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                    Judgment Reserved on:   25.05.2011
                     Judgment Pronounced on: 31.5.2011

+           CS(OS) No. 207/2011

IHHR HOSPITALITY PVT LTD                    .....Plaintiff

                           - versus -

BESTECH INDIA PVT LTD                       .....Defendant

Advocates who appeared in this case:
For the Plaintiff:      Mr. Neeraj Grover, Advocate
For the Defendant:      Mr. Arun Bhardwaj, Sr. Advocate
                        with Mr. Manish Sharma & Mr.
                        Amit Bhardwaj, Advs.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

Whether Reporters of local papers may be allowed to see the judgment? Yes

2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported Yes in Digest?

V.K. JAIN, J

IA No. 1376/2011 (O. 39 R. 1&2 CPC)

1. This is a suit for permanent injunction. The

plaintiff-company claims to be engaged in the ownership

and management of Destination Spas, luxury business and

leisure hotels in India and destinations around the world,

including Mauritius and is providing services under the

trade and service mark „Ananda‟, which if claims to be its

well-known mark in India and abroad. According to the

plaintiff-company, the aforesaid mark was adopted by it way

back in 1998 and it is registered in India under class 5 in

respect of Ayurvedic and herbal preparations; class 30 in

respect of breads, biscuits, cakes, pastries, confectioneries,

sauces and spices; class 03 in respect of bath salts for

toilets purposes; essential oils, shampoos, potpourri, herbs

and herbal preparations; class 21 in respect of potteries,

crockery and glassware; class 42 in respect of health resort,

hotels and spa. The plaintiff-company is running a hotel

and spa resort in the foothills of Himalayas under the name

„Ananda‟ which attracts numerous visitors and travellers

from India and other countries and has been voted as

world‟s best destination spa for three years. One spa has

been opened by the plaintiff in Mauritius under the name

„Shanti Ananda Maurice‟ which is a joint venture with C&C

Hospitality. It is also claimed that Ananda hotels of the

plaintiff-company have featured in various magazines and

newspapers, including New York Times; The Times; London,

Times of India and Economic Times. The plaintiff has

opened Ananda Spa Institute in the premises of its

luxurious hotel ISTA in Hyderabad. It is alleged that the

plaintiff-company incurred advertising and promotion

expenses of Rs 2,24,20,644/- Rs 3,93,30,123/- and

Rs.3,02,44,285/- in the years 2007, 2008 and 2009

respectively. The gross revenue of the plaintiff-company

from its spa properties is stated to be Rs 30,28,12,673/-, Rs

28,68,56,855/- and Rs 31,33,92,622/- respectively during

these years.

It is alleged that the mark Ananda has achieved

such distinctiveness and degree of association with the

plaintiff-company that use of an identical or a deceptively

similar mark in relation to any services or goods is likely

and bound to be taken as indicating a connection between

those goods or services and the services of the plaintiff

under the mark „Ananda‟.

2. It is alleged that in August 2010, the plaintiff‟s

attention was drawn to the pre-launch advertising campaign

of a residential complex under the name „Park View

Ananda‟. The defendant was thereby promoting residential

complex to be launched in Sector 81 of Gurgaon, near NH-8.

The proposed residential complex is to feature a number of

amenities like swimming pool, health club and gym. The

defendant has also been sending SMS, promoting its

property under the name „Park View Ananda‟. The plaintiff-

company sent a cease and desist notice to the defendant; in

reply to which, it was claimed by the defendant that it was

engaged in real estate and hospitality industry and was

primarily involved in establishment of a number of business

hotels and was also developing a resort besides development

of another property called 'Park View Spa in the vicinity of

the site for the „Park View Ananda‟. It is claimed that the

defendant has adopted the mark „Ananda‟ as the name of its

proposed residential complex in order to create an

association with the plaintiff‟s well-known Ananda

properties and to ride on the goodwill and reputation of the

plaintiff-company. It is also alleged that a number of

websites are promoting Park View Ananda on behalf of the

defendant though the board on the site no more displays

this name. The defendant also published an advertisement

in Times of India on January 12, 2011, promoting its project

„Park View Ananda‟ which is also to feature a club with

modern amenities, including a spa and separate Yoga Huts.

It is also claimed that the overseas clients of the plaintiff-

company are likely to be attracted to the project of the

defendant under the mistaken belief that the plaintiff-

company is in some way connected to the aforesaid complex

and in case the excellence which is available in the spas of

the plaintiff, is not found in the complex of the defendant,

they would form an unfavourable perception about the

brand of the plaintiff-company and would also cease to

associate the mark Ananda exclusively with the plaintiff-

company, thereby causing irreparable damage to the

plaintiff-company and its reputation and goodwill. The

plaintiff has accordingly sought an injunction, restraining

the defendant from using the mark „Ananda‟ with or without

the conjunction of any other mark which is deceptively

similar to the plaintiff‟s registered mark „Ananda‟.

3. The defendant has contested the suit and has

stated that the words being used by it to describe its

products are "Bestech Parkview Ananda" with three words

being used conjunctively and written in a particular artistic

manner with an artistic logo in the middle of the three

words and there is absolutely no similarity between the

visual manner and context of the word „Ananda‟ as used by

the defendant vis-à-vis the word „Ananda‟, used by the

plaintiff. It is also alleged that the plaintiff is not in the same

business of the defendant and the mark of the plaintiff-

company has not become a well-known trademark, within

the meaning of Section 11 of Trademarks Act. It is also

pointed out that the business of the plaintiff is located in

Tehri Garwal while the business of the defendant is located

at Gurgaon. It is also stated that the revenue of the

defendant-company was Rs 1,02,97,00,504/-, Rs

2,25,02,13,525/- and Rs 2,61,60,52,083/- in the years

2008, 2009 and 2010 respectively. It is also submitted that

the defendant has applied for registration of its trademark

in classes 36 and 37 and is awaiting registration.

It is also alleged by the defendant that the word

„Ananda‟ is not a coined word and the plaintiff can claim no

exclusive right to its usage, the word signifying one of the

two female forms of the male Indian name, Anand. It is also

claimed that the root for the name Ananda is a Sanskrit

word meaning "bliss" and, therefore, the meaning of Ananda

can be said to be great joy and great happiness and

denoting the state of mind of happiness and the same is not

confined to the hotels of the plaintiff. It is also alleged that

registration has been granted to Ananda Utsav with label,

Anandam with label, Ananda Valley, Ananda Sai with logo

and Anandamaya Wellness Centre, all in class 42 in which

the plaintiff claims registration which shows that even in its

own class, the plaintiff does not have exclusive, distinct and

sole right to use of the trademark „Ananda‟.

4. I had an opportunity to examine the concept of a

well-known mark in CS(OS) No.264/2008, decided on 28th

March, 2011. This Court, referring to the concept of a well-

known trade mark, inter alia, observed as under:-

"A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, , more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand

their business activities under those marks to other jurisdictions as well.

The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark.

The doctrine of dilution, which has recently gained momentum, particularly in respect of well known trademarks emphasizes that use of a well known mark even in respect of goods or services, which are not similar to those provided by the trademark owner, though it may not cause confusion amongst the consumer as to the source of goods or services, may cause damage to the reputation which the well known trademark enjoys by reducing or diluting the trademark‟s power to indicate the source of goods or services.

Another reason for growing acceptance of trans-border reputation is that a person using a well known trademark even in respect of goods or services which are not similar tries to take unfair advantage of the trans-border reputation which that brand enjoys in the market and thereby tries to exploit and capitalize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person‟s well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition.

The concept of confusion in the mind of consumer is critical in actions for

trademark infringement and passing off, as well as in determining the registrability of the trademark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditionally principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well known marks. By doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark likely to be detrimental to the distinctive character or reputation of an earlier well known mark. Dilution of a well known trademark occurs when a well known trademark loses its ability to be uniquely and distinctively identify and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well known mark. Dilution may also occur when the well known trademark is used in respect of goods or services of inferior quality. If a brand which is well known for the quality of the products sold or services rendered under that name or a mark similar to that mark is used in respect of the products which are not of the quality which the consumer expects in respect of the products sold and/or services provided using that mark, that may evoke uncharitable thoughts in the mind of the consumer about the trademark owner‟s product and he can no more be confident that the product being sold or the service being rendered under that well known brand will prove to be of expected

standard or quality."

After noticing the provisions of Trademarks Act,

1999 with respect to well-known trademarks, this Court

observed as under:-

"Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including

(i) the extent of knowledge of the mark to, and its recognition by the relevant public;

(ii) the duration of the use of the mark;

(iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in

other countries, the controlling requirement being the reputation in the local jurisdiction."

5. As per plaintiff‟s own case, the mark „Ananda‟ in

respect of health resorts, hotels and spa is being used by it

since 22.09.2003. Though the plaintiff-company claims

registration in respect of ayurvedic and herbal preparations,

breads, biscuits, cakes, pastries, confectioneries, sauces

and spices, salts for toilets purposes, essential oils,

shampoos, potpourri, herbs and herbal preparations,

potteries, crockery and glassware, health resort, hotels and

spa, it does not claim any actual use of the trademark in

respect of the aforesaid products nor has it filed any

document to show use of the mark „Ananda‟ in respect of

these products. It appears that, the plaintiff-company has

only two resorts, one in Himalayas under the name Ananda,

the other in the name „Shanti Ananda‟ in Mauritius, which

is a joint venture; besides an institute in Hyderabad, where

it is running a spa institute under the name „Ananda‟.

Considering the duration for which the mark „Ananda‟ has

been used by the plaintiff, the extent of the services being

provided by the plaintiff-company, the expenditure it claims

to have incurred in advertising and promoting its services,

the geographical extent of the area in which spas are being

run by the plaintiff, the volume of the business and the spas

being run under the name Ananda either alone or in

conjunction with Shanti is generating, I find it difficult to

accept that the trademark „Ananda‟ has become a well-

known trademark or that it has come to be associated

exclusively with the plaintiff-company to such an extent

that any product sold or any service offered using the word

„Ananda‟ either alone or in conjunction with other words is

likely to indicate a connection between that goods/service

and the services being provided by the plaintiff-company. It

is difficult to accept that the persons who have stayed in the

resorts of the plaintiff-company or have otherwise come to

know of the reputation which these resorts claim to enjoy,

would, on seeing the advertisement of the defendant in

respect of its project being sold under the name „Bestech

Parkview Ananda‟, associates the project of the defendant-

company with the services being offered by the plaintiff-

company or would presume a connection between the

project of the defendant on one hand and the plaintiff-

company on the other hand. It has to be kept in mind that

the persons staying in luxury spas such as Ananda are

likely to be well-educated persons coming from rather

higher echelons of the society. Such persons on seeing

advertisements of a housing product in Gurgaon under the

name „Bestech Parkview Ananda‟ are not at all likely to

believe that the house project originates from the promoters

of Ananda resorts. Therefore, there is no likelihood of their

expecting any parity in the quality of the services being

rendered in the resort of the plaintiff-company and the

housing projects being developed by the defendant in

Gurgaon. It is difficult to say that merely because the

plaintiff-company has also opened a spa in Mauritius by

way of a joint venture with C&C Hospitality under the name

Shanti Ananda Maurice, the brand Ananda has come to

enjoy a trans-border reputation and, therefore, needs to be

protected in classes other than those in which it has

registered in the name of the plaintiff-company.

6. There is no material on record to show that the

mark „Ananda‟ has acquired such a high brand equity in

India that its use by persons other than the plaintiff in

respect of totally unrelated goods/services will dilute the

reputation which the brand „Ananda‟ enjoys in India. In my

view, considering an altogether different nature of the

product being promoted by the defendant, coupled with the

use of the words „Bestech Parkview‟ before the word

Ananda, there is no reasonable possibility of any confusion

being caused among the consumers as regards the source of

the product being offered by the defendant nor is there any

reasonable probability of any damage to the reputation

which is claimed to be enjoyed by the trademark „Ananda‟ in

India. Considering the origin of the word Ananda which

means nothing, but bliss and which is used primarily to

express a state of mind of a human being, it is difficult to

say that this word has become distinctive with the plaintiff-

company and the defendant is trying to take an unfair

advantage by using this word as a part of the name being

used by it to promote its housing project in Gurgaon. In the

facts and circumstances of the case, I find it difficult to

accept that the attempt of the defendant-company by use of

the word „Ananda‟ as a part of the name of its project at

Gurgaon is to capitalize on the reputation which the

trademark „Ananda‟ claims to enjoy in hospitality sector.

7. The documents filed by the defendant shows that

the mark „ Anand Agency‟ has been registered in class 42 in

the name of „Daulat Ram Takhatmal Mehani‟ since

01.01.1990 vide Registration No. 1243892, the mark

Anandam (label) has been registered in class 42 in the name

of Raji Suresh since 01.08.2001 in respect of providing food

and drink in packet and non-packed forms, the mark

„Anandam‟ has been registered in the name of Daljeet

Gambhir in class 42 in respect of temporary accommodation

(guest/hotel house), the mark „Ananda Utsav‟ (label) has

been registered in the name of ABP Pvt. Ltd. in class 42 in

respect of computer programming, the mark Anandam

(label) has been registered in the name of M/s Anandam in

respect of Ayurvedic Treatment Services, the mark „Ananda

Valley Valley of Joy‟ (device) has been registered in class 42

in favour of Anand Ramlal Kataria in respect of service of

temporary accommodation, agricultural services family

week and service, eco tour, nature walk, corporate meet

treak, event, leisure, meditation service. The mark „Ananda

Sai‟ (logo) has been registered in class 42 in favour of K.

Venkat Rao in respect of Sweet and Bakery mall for the

State of Andhra Pradesh. There is no evidence of any legal

proceedings having been initiated by the plaintiff-company

against registration and/or user of the aforesaid marks

which on a comparative basis are much more close to the

registered mark „Ananda‟ of the plaintiff-company as

compared to the name „Bestech Parkview Ananda‟ being

used by the defendant-company. Another noteworthy

feature in this regard is that the aforesaid registrations are

in class of 42 in which the trademark of the plaintiff is

registered, whereas the services being provided by the

defendant-company fall in the class 36 and 37, which are

altogether different from the products/services referred in

Class 42. The abovereferred registrations using the word

„Ananda‟ alone or a word of which the words "Ananda‟ form

an integral part, coupled with failure of the plaintiff to stop

their user clearly indicates that the mark „Ananda‟ has not

become so much associated with the plaintiff company, as

to necessarily indicate a connection with the plaintiff

company or to identify the plaintiff company as the source

of those goods/services even when that goods/services are

in wholly unrelated categories and the word „Ananda‟ is

used in conjunction with other words.

8. For the reasons given in the preceding paragraphs,

I am of the view that the plaintiff-company has failed to

make any prima facie case for grant of injunction against

the defendant. The application is devoid of any merit and

the same stands disposed of. The observations made in this

order shall, however, not affect the decision of the suit on

merits.

CS(OS) No. 207/2011

The parties to appear before the Court for framing

of issues on 05th December, 2011.

(V.K. JAIN) JUDGE MAY 31, 2011 bg