Delhi High Court
Hilton International Co. vs Mohd. Iqbal Qureshi & Anr. on 8 November, 2011
Author: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
+ CS(OS) No.702/2006
% Judgment decided on: 08.11.2011
Hilton International Co. .......Plaintiff
Through: Mr. Saif Khan, Adv. with
Ms. Aparajita Asthana, Adv.
Versus
Mohd. Iqbal Qureshi & Anr. ........Defendants
Through: Defendants are ex-parte.
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment?
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported Yes
in the Digest?
MANMOHAN SINGH, J. (Oral)
1. The plaintiff has filed the present suit seeking permanent
injunction restraining the infringement of trade mark, passing off,
damages and delivery up.
2. The plaintiff, Hilton International is a company incorporated
under the laws of State of Delaware, United States of America having its
principal office at Maple Court, Central Park, Reeds Crescent, Watford,
Herts, WD24 4QQ, England.
3. The defendant No.1 is stated to be the proprietor f defendant
No.2 namely Hilton, situated outside Chandapole Gate, Khetri House
Road, Jaipur which is a business hotel.
4. The plaintiff is a well known hotel operator and on its own
and also through its subsidiaries affiliates and licenses, carries on
business of providing services in the field of hotels.
5. It is averred in the plaint that the plaintiff is the proprietor of
the trade mark and trade name HILTON and the said name is also a part
of the plaintiff‟s corporate name/trading style. The plaintiff has operates
hotels in 72 countries and has spent a substantial amount of money for
developing, advertising and promoting its hotels and related services in
those countries.
6. It is also stated that by virtue of long use and publicity the
name Hilton has acquired substantial goodwill which is a valuable asset
of the plaintiff. The plaintiff is the registered proprietor of the trade
marks worldwide for the word HILTON, the Hilton „H‟ device or
registrations in which the word Hilton is a dominant feature.
7. The classes of service mark registration include travel
arrangements, travel and tour information and travel and tour ticket
reservation services (Class 39); hotels, casinos, gambling, gaming and
betting services; nightclub services; health and leisure club services;
provisions of sports; leisure and recreational facilities, arranging and
conducting functions, conferences, conventions, exhibitions, seminar
etc. (Class 4) and accommodation, hotels, motels, bars, cafes etc. (Class
42).
8. The plaintiff has registered HILTON as a trademark in class
16 and wherever possible as a service mark in the relevant classes in
almost every country outside U.S.A. In India the plaintiff owns two
registered trademarks the details of which are give in para 6 of the plaint
and the plaintiff has also applied for registration of HILTON as a
service mark in class 41 and 43 (previously international class 42) under
the Trademarks act,1999 (hereinafter referred to as the Act)
9. Further, it is stated that in India the plaintiff has tied up with
EIH operator of the well known chain of hotels Oberoi and this joint
venture is co-branded as Trident HILTON. The Trident HILTON hotels
have come up in various cities like Mumbai, Jaipur, Agra, Bhubaneswar,
Chennai, Cochin, Udaipur and Gurgaon.
10. As per the plaintiff, the word HILTON was adopted the
plaintiff in relation to hotel services four decades ago and has been in
continuous use since then.
11. In the month of February 2006, one of the representatives of
the plaintiff came across the defendants hotel named "Hotel HILTON"
on the website www.hotelassociationjaipur.com/HotelHilton/index.htm.
Thereafter, the plaintiff investigated the activities if the defendants and
obtained samples of the defendants business card, invoices and
photographs of the defendant‟s premises and filed the instant suit for
injunction on 26.04.2006.
12. The defendants filed their written statement wherein it is
stated that the defendant No.1 has changed the name of his hotel since
March 2006 and therefore the present suit has become infructuous. As
per the defendant No.1 the name of his hotel has been changed to hotel
CHANDAPOLE PALACE. Thereafter, the parties made attempts to
reach a compromise but the same failed as the defendant No.1 stopped
contacting his counsel.
13. During the pendency of the proceedings, the impugned
trademarks of the plaintiff were assigned to HLT International IP LLC, a
limited company incorporated under the laws of State of Delaware
having its principal office at 9336 Civic Center Drive, Beverly Hills,
California 90210, U.S.A.
14. Vide order dated 24.10.2008 the defendants were proceeded
ex-parte.
15. The plaintiff adduced the ex-parte evidence by way of
affidavit of Ex. PW-1, Col. J.K. Sharma (Retd.) which is exhibited as
Ex. PW-1/A. In the said affidavit, he has proved the following
documents:
(i) Ex. PW-1/1 which is the power of Attorney dated 01.10.2003
authorizing him to swear the affidavit on behalf of the
plaintiff.
(ii) Ex. PW-1/2, The Hilton India Directory listing the plaintiff‟s
properties in India.
(iii) Ex. PW-1/3, the certified copy of the certificate of the trade
mark bearing registration number 495832B.
(iv) Ex. PW-1/4, the certified copy of the order dated 24.10.2008.
(v) Ex. PW-1/5, 6 and 7 are the samples of defendant‟s business
card, invoices and photographs of the defendant‟s premises
respectively.
(vi) Ex. PW-1/8, the affidavit of the defendants stating that they
have changed the name of the Hotel to HOTEL
CHANDAPOLE PALACE.
(vii) Ex. PW-1/9, the compromise application signed by the parties
but could not be foiled as the defendant had not signed and
notarized the supporting affidavit of the said application.
(viii) Ex. PW-1/10 the telephone directory indicating the name of
the U & I center in New Delhi.
16. The affidavit filed in ex-parte evidence has gone unrebutted
as no cross-examination of PW-1 was conducted by the defendants.
Therefore the evidence of the plaintiff has to be taken as correct. Under
these circumstances, the plaintiff is entitled to the decree for permanent
injunction. The suit of the plaintiff is decreed in terms of prayers (i),
(ii), (iv) & (vi) of para 22 of the plaint. As far as prayer (iii) of para 22
of the plaint is concerned, the plaintiff has not been able to prove the
damages. Therefore, the same is rejected. All pending applications
also stand disposed of.
MANMOHAN SINGH, J.
NOVEMBER 08, 2011
