Las Vegas Sands Corp vs Bhasin Infotech & Infrastructure ...
2012 Latest Caselaw 3747 Del

*IN THE HIGH COURT OF DELHI AT NEW DELHI

+I.A. No. 3504/2012 (u/O 39 R 1 & 2 r/w Sec. 151 CPC by
defendant no. 1) and I.A. No. 3277/2012 (u/O 39 R 4 CPC r/w
Sec. 151 CPC by defendant no. 1) in CS(OS) 3/2012

                                      Reserved on 31st May, 2012

                                        Decided on 2nd July, 2012

       LAS VEGAS SANDS CORP                ..... Plaintiff
                    Through: Mr. Pravin Anand and Ms.
                             T. Saukshamya, Advs.

                  Versus


       BHASIN INFOTECH & INFRASTRUCTURE
       PVT. LTD & ORS.                    ..... Defendants
                     Through: Mr. Sudhir Chandra, Sr.
                              Advocate with Mr. Jenis
                              Francis, Mr. Gaurav Beri
                              and Mr. Sriram Kamal,
                              Advs. for D-1.

Coram:
HON'BLE MR. JUSTICE A.K. PATHAK

A.K. PATHAK, J.

1. By this order I shall dispose of both the above noted

applications.

2. Plaintiff has filed this suit for permanent injunction

restraining passing off, dilution, damages, rendition of accounts,

delivery up etc. against the defendants. Case of the plaintiff is that

it is the leading global developer of „integrated resorts‟ in U.S.A.,

Macau and Singapore under the mark "Venetian", which offers

world-class services and amenities including premium

accommodation, gaming, entertainment, shopping, event and

exhibition facilities, restaurants, leisure facilities etc.

3. One of the Plaintiff‟s earliest and well-known properties is

the "Venetian" hotel and casino which is located on the Las Vegas

Strip, Las Vegas, Nevada. The Venetian opened for business on 3rd

May, 1999 and was built at a cost of 1.5 billion dollars. The

Venetian and its adjacent property, the "Palazzo" form the largest

five-diamond hotel and resort complex in the world. It has a total

of 4,027 suites wherein 3,014 suites, 35 storey three winged tower

rises above the casino and the 1,013 suites, 12 storey "Venezia"

tower is situated above a parking garage. The casino has

approximately 1,20,000 square feet of gaming space, which

includes 110 table games and 1,370 slot machines. The "Venezia"

is a $275 million "hotel-within-a-hotel" tower which opened in the

year 2003. It has own private pool garden, the award-winning

Bouchon Restaurant and one of the most romantic wedding chapel.

The Venezia offers its guests an oasis of tranquility and an

unparalleled forum for commerce. The Venetian provides a

holistic service experience for its guests with luxurious suites, spa

facilities and private gaming rooms; a Canyon Ranch Spa Club;

theater/entertainment complex facilitating a wide variety of

entertainment. The Venetian also includes enclosed retail

shopping, dining and entertainment complex and Grand Canal

Shoppes located within the Venetian is an extensive 5,00,000

square feet themed, indoor retail mall. Plaintiff‟s services and

business extend beyond Las Vegas. The "Venetian Macau" was

opened in 2007 and is a 40 storey largest single structure hotel

building in Asia, the 6th largest building in the world by area, and

the largest casino in the world. The resort has 3000 suites with

enormous convention space, retail areas, casino space with 3400

slot machines and 800 gambling tables as also a 15,000 seats arena

for entertainment/sports events.

4. Plaintiff‟s property is visited by the tourists across the globe.

Plaintiff has a long, uninterrupted and continuous use of its trade

marks "Venetian" and "Venezia" right from 1999 and 2003,

respectively. By way of continuous use of said marks same have

become synonymous with the plaintiff and its business, inasmuch

as, plaintiff has acquired reputation and goodwill in relation to

these marks.

5. Plaintiff is the first and sole entity in the world that has

envisioned, combined, created, used and associated the said marks

for its services in its uniquely conceived Venice-themed property.

Plaintiff has been conferred with several awards and accolades

over the years in relation to its business and services, including

being featured in the Guinness Book of World Records in the year

2003. Plaintiff‟s services offered under the marks "Venetian" and

"Venezia", have been described in numerous newspapers and

articles published in various newspapers and magazines having

international circulation, inasmuch as, have featured in music

videos, television shows and movies. Articles about services of the

plaintiff are also published in leading Indian newspapers, inasmuch

as, are contained in the travel guides, which are circulated in India.

These travel guides provide details of the "Venetian" and

"Venezia". Plaintiff‟s services under the aforesaid marks are being

widely advertised world over through diverse media including

internet and expenditure incurred by the plaintiff stands to the tune

of millions of dollars. Plaintiff‟s unmatched reputation for the

said marks extends to India, which is evident from the large

number of Indian visitors, who have stayed and availed of the

plaintiff‟s services at Las Vegas and Macau. Plaintiff currently has

3038 Grazie Club members with addresses in India. Several guests

from India visited the "Venetian", Las Vegas. Total 143015 rooms

were booked at "Venetian", Macau by the guests with the

addresses of India from January, 2008 and June, 2011. Defendant

no. 2, Mr. Jatinder Singh Dhall, had visited and stayed "Venetian"

on 15th February, 2002 for 8 nights, 27th August, 2000 for at least 2

nights and 13th February, 2000 for 5 nights. As per the record of

the plaintiff, Mr. Jatinder Singh Dhall gambled at the "Venetian"

Las Vegas for 27 days from 1999 to 2004. The reputation of the

plaintiff in India is such that the "Venetian", Macau played host for

the 2009 International Indian Film Academy (IIFA) Awards and

the 2012 Zee Cine Awards.

6. It is alleged that defendant no. 1 has floated and is

constructing a project under the title "Grand Venezia" and the

project is described as a Venice theme mall with 250 rooms, Five

Star Hotel and corporate tower. The word "Venezia" is the

predominant feature of the defendants‟ logo. Defendant no. 1 has

also adopted the mark "Venezia" in its domain name and has been

actively advertising and promoting its project through the websites,

namely, www.thevenezia.com, www.grandvenezia.com/

grandvenezia.html and http://grandveneziacommercialtower.com.

Defendant no. 1 has registration for the mark "Venezia" in Class 39

for the services of "building construction and development".

Defendants have adopted and copied the identical mark as that of

the plaintiff with principal features of structure of the plaintiff‟s

hotel, resort and casino. The defendants‟ use of the mark

"Venezia" is identical to the plaintiff‟s mark "Venezia" and is

deceptively similar to the plaintiff‟s mark "Venetian". The mark

"Venezia" is distinctive of the plaintiff‟s services and signifies the

tower of the "Venetian", Las Vegas. Defendants, thus, have

attempted to pass off the impugned project by creating a false

impression that the said mall is associated or affiliated with the

plaintiff‟s business. Defendants have adopted the said mark with

dishonest intention and in order to benefit from the enormous

reputation and goodwill attached to the plaintiff‟s trademarks

"Venetian" and "Venezia". Defendants have intended to pass off

distinctiveness in their services as that of the plaintiff.

7. As against this, case of the defendants is that Bhasin Group

of Companies has formed defendant no. 1. Initially, Bhasin Group

started their business with the dealership in Maruti Automobiles

and subsequently, diversified its business and has entered into

various other branches including the field of real estate and

infrastructure development. Defendant no. 1, pursuant to its

incorporation in the year 2006 entered into the building

construction and development activities, inasmuch as, started its

project under the mark "Grand Venezia" at Greater Noida. A plot

of land was allotted by UPSIDC in the year 2006. Defendant no. 1

decided to develop a theme project based on the concept of the city

of Venice, Italy. For this reason, it was decided to name the project

as "Grand Venezia". The nomenclature "Venezia" is derived from

the Venice city in Italy. Defendant no. 1‟s mega project is in no

way connected to the plaintiff‟s business. Various purchasers have

already booked spaces on lease in the mall way back in the year

2006 itself. The name "Grand Venezia" is derived from the ancient

Veneti people, who inhabited the region by the 10th century B.C.,

thus, is beyond the regulations of any copyright, trademark or

intellectual property rights. The word "Venezia" is not a unique or

coined word and in fact is an Italian name of „Venice‟, which is a

city in northeast Italy renowned for its beauty of setting,

architecture and artworks. Plaintiff cannot claim any copyright or

exclusive right over the word "Venezia".

8. The project of defendant no. 1 "Grand Venezia" includes in

its ambit, shopping mall, commercial tower, multiplexes, gondola

rides, hotel, aquarium etc., which is inspired from the city

"Venezia" in northeast Italy. This mega project of `700 crores was

started in the year 2006 and in fact was nearing completion.

Defendant no. 1 has incurred huge expenditure to the tune of `6

crores on publicity and promotion of its project. Defendant no. 1,

by virtue of its long, continuous and uninterrupted use of trademark

"Venezia", has acquired distinctiveness through its usage and has

created a strong brand value and secondary meaning to its

trademark "Venezia" and the public associates the defendant no. 1

with the said trade mark as far India is concerned. The trademark

"Venezia" has no trans-border reputation as plaintiff‟s tower is

within The Venetian, Las Vegas. Said tower has no presence in

The Venetian Macao and Marina Bay Sands, Singapore. Plaintiff

has not advertised the mark "Venezia" in India at any point of time,

but its news and articles were about the "Venetian", Macao, where

"Venezia Tower" is not in existence. The word "Venezia", being

the name of geographical area, is being used by various

establishments all over the world including India. It is denied that

mark "Venezia" has acquired secondary meaning with regard to

plaintiff‟s business. It is also denied that defendant no. 1 has

misrepresented the public at large that its mega project as is

associated with the plaintiff. It is further alleged that there was no

chance of confusion or deception, inasmuch as, plaintiff was

mainly known for its casino and allied games; whereas project of

defendant no. 1 includes mall, kids gaming zone, food courts,

hotel, multiplex, etc. Plaintiff‟s mark was "Venezia Tower";

whereas defendant no. 1 is using the mark "Grand Venezia", which

is distinct. Plaintiff had applied for registration of the mark

"Venezia Arena" in Classes 39, 41 and 42 and not "Venezia"

alone, inasmuch as, the said applications have been withdrawn by

the plaintiff‟s Attorney, vide letter dated 13th March, 2008.

Plaintiff‟s mark "Venetian" is phonetically and materially

dissimilar from the mark of defendant no. 1 and there is no

similarity, resemblance or relation between the two marks

sufficient enough to create any confusion.

9. Vide ex-parte order dated 3rd January, 2012, defendants

have been restrained from passing off its business or products or

services as being that of plaintiff‟s or like or resembling the

plaintiff‟s business, products or services or doing any other act

amounting to passing off, dilution, tarnishment and trading on the

plaintiff‟s business and goodwill. Defendants have been further

restrained from advertising, selling, offering for sale or soliciting

any customers through the websites

www.thevenzia.com;www.grandvenezia.com;www.sarharealestate.

com,http://grandveneziacommercialtower.com and from

constructing, operating, selling, offering for sale, importing,

advertising and in any manner dealing with services/products under

the impugned mark "The Grand Venezia" or any deceptively

similar trademarks as that of the plaintiff. Vide IA No.3277/2012,

defendants have prayed for vacation of this order.

10. I have heard learned counsel for the plaintiff, learned Senior

Counsel for the defendants and have perused the record. Learned

Senior counsel for the defendants has vehemently contended that

the plaintiff‟s mark "Venetian" is descriptive and is, therefore, in

the public domain. Plaintiff cannot claim any monopoly or

exclusivity in such a mark. Reliance has been placed on the certain

passages from McCarthy on Trade Marks and Unfair Competition

as also from Kerly‟s Law of Trade Marks and Trade Names, 15 th

Edition. As per McCarthy: "A mark is descriptive that directly and

immediately conveys some knowledge of the characteristic of

product or service which shows a desirable characteristic of the

goods or services". Reliance has further been placed on para 11:18

which says as under:-

"The law would not secure to any person the exclusive use of a trademark consisting merely of words descriptive of the qualities, ingredients, or characteristics of an article of trade. This for the reason that the function of a trademark is to point distinctively, whether by its own meaning or by association, to the origin or ownership of the wares to which it is applied and words merely descriptive of qualities, ingredients, or characteristics, when used alone, do not do this."

11. As regards Kerly, it describes „descriptive name‟ as follows:-

"Whether claimant‟s name is descriptive of its business (or is geographically descriptive) the mere fact that the defendant adopts a name

containing the same descriptive words will not establish any sort of case of passing off; a trader cannot monopolize a mere description."

12. I need not to dwell much on this proposition for the simple

reason that the defendant no. 1 itself is using the mark "Venezia",

inasmuch, as has got it registered for "Building and Construction"

purposes. Thus, it does not lie in the mouth of the defendants to

say that the word "Venezia" is a descriptive expression. In

Automatic Electric Limited vs. R.K. Dhawan & Anr. 77 (1999)

DLT 292, trademark "DIMMER DOT" was in issue. Defendant

had taken a plea that the word "DIMMER" is a generic expression

and nobody could have claimed monopoly or proprietary right over

the said word. A Single Judge held that since the defendant itself

has sought to claim trade proprietary right and monopoly in

"DIMMER DOT", it does not lie in their mouth to say that the

word "DIMMER" is a generic expression. Judgment of the Single

Judge was accepted by a Division Bench of this Court with the

approval in Indian Hotels Company Ltd. & Anr. vs. Jiva Institute

of Vedic Science & Culture, 2008 (37) PTC 468 (Del.) (DB). It

was held that since the appellant had itself applied for registration

"JIVA" as a trademark and cannot, therefore, argue that the mark is

descriptive. In this case, defendant no. 1 has registered trademark

"Venezia" in respect of building construction and development

etc., inasmuch as, has adopted mark "Grand Venezia" in respect of

project in question. Thus, in my view, defendants cannot be

permitted to contend that plaintiff cannot put forth any grievance in

respect of use of mark "Venezia", being descriptive in nature.

13. Learned counsel for the plaintiff has vehemently contended

that the adoption of mark "Venezia" by the defendants is dishonest,

as is evident from the articles published in the magazines and from

the interviews given by defendant no. 1‟s Director. Documents

placed on record, that is, from pages 281 to 289 in the list of

documents dated 2nd January, 2012, records admissions of the

defendant no. 1 that its project was modeled similarly on the lines

of the "Venetian", Las Vegas and "Venetian", Macau. In the press

release contained in the Business Standard, which has been placed

at pages 49 to 50 in the list of documents dated 26 th March, 2012.

Director of defendant no. 1 has admitted that he thought up the

Venice theme after he saw malls based on a similar theme in Las

Vegas and Macau. In the Financial Chronicle at pages 51 to 52 of

the list of documents dated 26th March, 2012, Director of the

defendant no. 1 admits that the project "Grand Venezia" was

modeled on the lines of the "Venetian", Las Vegas and "Venetian",

Macau. He further submits that defendant no. 2 had visited the

hotel and casino many times and was aware of the plaintiff‟s marks

before the impugned project was started. Defendant no. 2 has a

large chunk of shares in the defendant no. 1. Defendants were

having prior knowledge of the plaintiff‟s business and services as

also the "Venezia Tower" and for malafide reasons not only the

theme but mark "Venezia" has also been adopted, which shows

that defendants‟ adoption is tainted and when the adoption of a

mark is dishonest, great attention has to be paid on the items of

similarity and less to the items of dissimilarity.

14. I have perused the material placed on record including the

documents referred to by the plaintiff‟s counsel and I find

substantial force in the above contentions. It appears that the

shareholders/directors of defendants had been visiting the

plaintiff‟s properties and have modeled their project on the same

lines, inasmuch as, have adopted the mark "Venezia" having been

inspired by the "Venezia Tower". Prima facie, I am of the view

that adoption of mark "Venezia" is not honest. In Munday vs.

Carey, 1905 RPC 273, it has been held thus: "I believe that if a

rank use of dishonesty and where you see dishonesty, then even

though the similarity were less than it is here, you ought, I think, to

pay great attention to the items of similarity and less to the items of

dissimilarity." In J.R. Parkington and Coy. Ld. vs. Frederick

Robinson, Ld. (1946) RPC 17, it was held that if the user in its

inception was tainted it would be difficult in most cases to purify it

subsequently. I am of the view that when a party succeeds in

showing that the adoption of its mark by other party is dishonest,

injunction must follow. Court has to look for similarity, then to go

into dissimilarities, thus, prefixing of the word "Grand" before the

word "Venezia" will be of no significance and inconsequential.

15. Learned Senior Counsel for defendant no. 1 has contended

that plaintiff‟s business has not attained trans-border reputation,

inasmuch as, this question has to be decided during the trial.

Knowledge of a very few number of people of the existence of the

plaintiff‟s resort "The Venetian" does not meet the requirement of

an established reputation. Even otherwise, the benefit of trans-

border reputation can be claimed in cases of passing off only if the

plaintiff has a project in India or intend to start the same in India.

Plaintiff has no intention to come to India, as there is no mention

about this fact in the plaint. Reliance has been placed on Milmet

Oftho Industries and Ors. vs. Allergen Inc. 2004 (12) SCC 624. I

have considered the above contention and have perused the

judgment relied upon but I find it to be in the context of different

facts and of no help to the defendants. In the present case,

sufficient material has been placed on record to suggest that large

number of people from India have visited the plaintiff‟s resorts at

Las Vegas as well as Macau. Plaintiff has attained immense

reputation amongst the consumers in India who travel abroad for

business or leisure trips. Plaintiff‟s resorts are being advertised in

the newspapers, magazines and also through internet. Hosting the

big events like IIFA and Zee Cine Award at the "Venetian", Macau

is also indication of plaintiff‟s reputation amongst the people of

this country. The travelers, visiting Las Vegas, would be familiar

with the marks "Venetian" and the "Venezia". Prima facie, I am of

the view that plaintiff has attained reputation in India with regard

to the nature of services as provided by it. Article in the Business

Standard dated 28th April, 2009 clearly indicates that even

defendants have been inspired by the plaintiff‟s properties at Las

Vegas and Macau to develop the similar project in Greater Noida.

This is in the words of Mr. Bhasin, one of the Directors of the

defendant no. 1. This further shows that defendants were aware of

the "Venezia" tower. Even otherwise, in trans-border reputation it

is not always necessary that the plaintiff has its business in India.

If it is shown that reputation of a foreign company has traveled to

India and the people are aware about its products/services, same

would be sufficient to establish trans-border reputation of such a

party.

16. In William Grant & Sons Ltd. vs. McDowell & Company

Ltd., 55 (1994) DLT 80, a Single Judge of this Court has held

thus:-

"(111) I had occasion to deal with trans-

border reputation and observations of Lord J Diplock in acase AppleComputcrlnc.v.AppealLeasing&lnd ustries, 1992 (1) Arb. L.R.93. After referring to the cases of Irish Courts in C & A Modes 1978 Fsr 126, and other cases Panhard Levassor's case (1901) 18 Rpc 405; Poiret v. Jules Poiret Ltd. (1920) 37 Rpc 177; Sheraton Corporation 1916 (4) Rpc 202 and Globe Elegance 1974 Rpc 603, I said that the Indian Courts have

recognised the existence of trans-border reputation. The trans- border reputation had, particularly, been recognised in thecase reported Kamal Trading Co. & Ors. v. Gillette U.K. Ltd. (1988) 1 PLR

(112) These cases recognized that the reputation of a trader, trading or carrying on the business in another country, can travel to a country where he had carried no business. The traders trans- border reputation can be on the basis of the extensive advertisements and publicity. Such a trader could obtain an injunction in a Court where he was not trading, to protect his reputation. The Indian Courts also recognise the existence of trans-border reputation, particularly, the Bombay High Court in Kamal Trading Co. & others v. Gillette U.I. Ltd.. In the last mentioned- case, the Division Bench expressed the view that good-will or reputation or goods or mark, does not depend upon its availability in the particular country. The Delhi High Court recognised trans-border reputation in an unreported judgment in Blue Cross &: Blue Shield Association v. Blue Cross Health Clinic and others, Suit No.2458 of 1988, dated 05.09.1989. In the case Centrol industrial Alliunce Ltd. and anothci- v.Gillette U.K. Ltd., Appeal No..368 of 1986, the Division Bench of the Bombay High Court had noted that publicity does not take place merely by advertisement in India. Advertisement in foreign newspapers and magazines, circulated in India, and freely imported in

India, are read. Besides this, large number of Indians go abroad temporarily to other countries, and can have the opportunity to use the goods (goods in question in the case is 7 o'clock safety razor blade), and, in my view, on return of those persons to India, the reputation of the goods used by those who go abroad, will stay in their minds, and the memories of those goods would be revived by advertisements seen in foreign magazines and newspapers which are available in India."

17. In WWF International vs. Mahavir Spinning Mills Ltd. 1994

PTC 250, a Single Judge of this Court has held that a mere fact that

the plaintiff has never manufactured any products in this country

does not prevent it from acquiring the goodwill here in its

trademark. A Single Judge of this Court in Whirlpool Co. & Anr.

vs. N.R. Dongre & Ors. 1996 PTC (16) held thus: "the reputation

was travelling trans-border to India as well through commercial

publicity made in magazines which are available in or brought in

India. These magazines do have a circulation in the higher and

upper middle income strata of Indian society. Washing machine is

a household appliance used by the middle and upper class of the

society. The plaintiff no. 1 can bank upon trans-border reputation

of its product washing machine for the purpose of maintaining

passing off action in India." This decision was upheld by the

Division Bench. Appeal titled N.R. Dongre and Ors. vs. Whirlpool

Corpn. and Anr., (1996) 5 SCC 714 was taken to Supreme Court

wherein it was held thus: "on the above concurrent findings, the

weight of equity at this stage is in favour of the plaintiffs and

against the defendants. It has also to be borne in mind that a mark

in the form of a word which is not a derivative of the product,

points to the source of the product. The mark/name 'WHIRLPOOL'

is associated for long, much prior to the defendants' application in

1986 with the Whirlpool Corporation - plaintiff No. 1. In view of

the prior user of the mark by plaintiff No. 1 and its trans-border

reputation extending to India, the trade mark 'WHIRLPOOL' gives

an indication of the origin of the goods as emanating from or

relating to the Whirlpool Corporation - plaintiff No. 1. The High

Court has recorded its satisfaction that use of the 'WHIRLPOOL'

mark by the defendants indicates prima facie an intention to pass-

off defendants' washing machines as those of plaintiffs' or at least

the likelihood of the buyers being confused or misled into that

belief." Supreme Court affirmed the view taken by the High Court

with regard to the trans-border reputation.

18. In Kamal Trading Co., Bombay and Others vs. Gillette U.K.

Limited, Middle Sex, England, 1988 PTC-1, Bombay High Court

has held, thus:-

"In our judgment, it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The result is that though the goods are not available in a country, the goods and the mark under which they are sold acquires wide reputation."

19. In this case, plaintiff has, prima facie, succeeded in making

out a case that plaintiff has trans-border reputation as sufficient

material has been placed on record to show that hospitality

services, offered by the plaintiff, are being advertised in India

through magazines, travel guides, website etc., inasmuch as, large

number of visitors from this country have visited the properties of

the plaintiff at Las Vegas as well as Macau, inasmuch as, two

important events pertaining to entertainment industries have been

organized at "Venetian", Macau.

20. Learned Senior Counsel for the defendant no. 1 has next

contended that the defendant no. 1 has got its trademark registered

in the year 2006 in Class 37 which was widely advertised in the

trademark journal, thus, plaintiff cannot feign ignorance about the

mark being used by the defendant no. 1 since the year 2006. That

apart, plaintiff has itself admitted that it became aware about

defendant no. 1‟s project in the month of January, 2011. In spite of

this, plaintiff allowed the defendant no. 1 to continue with its

project under the mark "Grand Venezia", thus, is not entitled to

injunction. Delay in initiating the legal action is fatal to the

plaintiff‟s cause. Reliance has been placed on B.L. and Co. & Ors.

vs. Pfizer Products Incl. , 93 (2001) DLT 346, wherein it has been

held as under:-

"17. As regards the delay in institution of the suit and its effect for the purpose of grant of ex parte restraint, the settled legal

position is that while the delay in institution of a suit for an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex parties/interlocutory injunction. Reference in this regard is invited to the 'THE LAW OF PASSING- OFF' by Christopher Wadlow. Learned Author while dealing with the motions of interlocutory relevance has observed as under:-

"Delay in applying for interlocutory reliefs is a very serious matter. As a rule of thumb, delay of up to about a month, or perhaps six weeks, generally has no adverse effect on an inter parties application and delay of up to twice that period need not be fatal if it can be explained and the plaintiff's case is otherwise strong. On an ex parte application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiff's case, even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is Therefore a short, safe and simple basis for refusing relief."

21. Plaintiff has also placed reliance on BDA Pvt. Ltd. vs. Paul

P. John & Anr., 2008 (37) PTC 569 (Del.), to contend that on

account of delay plaintiff was not entitled to interim injunction. I

find the said judgment to be in the context of different facts,

inasmuch as, Court was of the view that plaintiff had suppressed

the material facts. There was undue delay in the said case in

initiating legal action. In my view, B.L. and Co. (supra) is also of

no help to the defendants for the reasons to follow in the

subsequent paras.

22. It may be worthwhile to note here that defendant no. 1 got

registered its mark "Venezia" in respect of Class 37 which is

relating to Building and construction activities. Plaintiff has no

registration with regard to the services such as hospitality, mall,

entertainment etc. In fact, defendant no. 1 had applied for

registration of the mark under Classes 36, 39, 41 and 43 which

covers the aforesaid activities, but has, subsequently, withdrawn

the same. Building and construction activities are not under

challenge. Plaintiff‟s main grouse is that the defendant no. 1

cannot use the mark for the similar project as that of plaintiff. It is

further the case of the plaintiff that such adoption is dishonest with

regard to the activities which are similar to that of plaintiff.

23. Besides this, in my view, adoption of the mark by the

defendants is dishonest and for this reason delay would not be

fatal. That apart, I do not find any inordinate delay in initiating the

legal action since the time plaintiff became aware of the project of

defendants, which otherwise is yet not complete and actual

business has yet to commence.

24. In Hindustan Pencils (P) Ltd. vs. India Stationery Products

Co. and Anr. AIR1990 Delhi 19, a Single Judge of this Court held

thus: "even though there may be some doubt as to whether latches

or acquiescence can deny the relief of a permanent injunction,

judicial opinion has been consistent in holding that if the defendant

acts fraudulently with the knowledge that he is violating the

plaintiff's rights then in that case, even if there is an inordinate

delay on the part of the plaintiff in taking action against the

defendant, the relief of injunction is not denied. The defense of

latches or inordinate delay is a defense in equity. In equity both the

parties must come to the Court with clean hands. An equitable

defense can be put up by a party who has acted fairly and honestly.

A person who is guilty of violating the law or infringing or

usurping somebody else's right cannot claim the continued misuse

of the usurped right. It was observed by Romer, J. in the matter of

an application brought by J.R Parkington and Coy. Ld 63 R.P.C.

171 that "in my judgment, the circumstances which attend the

adoption of a trade mark in the first instance are of considerable

importance when one comes to consider whether the use of that

mark has or has not been an honest user. If the user in its inception

was tainted it would be difficult in most cases to purify it

subsequently". It was further noted by the learned Judge in that

case that he could not regard the discreditable origin of the user as

cleansed by the subsequent history. In other words, the equitable

relief will be afforded only to that party who is not guilty of a fraud

and whose conduct shows that there had been, on his part, an

honest concurrent user of the mark in question. If a party, for no

apparent or a valid reason, adopts, with or without modifications, a

mark belonging to another, whether registered or not, it will be

difficult for that party to avoid an order of injunction because the

Court may rightly assume that such adoption of the mark by the

party was not an honest one. The Court would be justified in

concluding that the defendant, in such an action, wanted to cash in

on the plaintiff's name and reputation and that was the sole,

primary or the real motive of the defendant adopting such a mark.

Even if, in such a case, there may be an inordinate delay on the part

of the plaintiff in bringing a suit for injunction, the application of

the plaintiff for an interim injunction cannot be dismissed on the

ground that the defendant has been using the mark for a number of

years. Dealing with this aspect Harry D. Nims in his "The Law of

Unfair Competition and Trade-Marks". Fourth Edition, Volume

Two at page 1282 noted as follows:-

"WHERE infringement is deliberate and willful and the defendant

acts fraudulently with knowledge that he is violating plaintiff's

rights, essential elements of estoppel are lacking and in such a case

the protection of plaintiff's rights by injunctive relief never is

properly denied. "The doctrine of estoppel can only be invoked to

promote fair dealings.""

25. In Parle Products (P) Ltd. vs. J.P. and Co., Mysore 1972 (1)

SCC 618, reliance whereupon has been placed by the defendants.

Apex Court has held, thus: "To decide the question as to whether

the plaintiffs' right to a trade mark has been infringed in a

particular case, the approach must not be that in an action for

passing off goods of the defendant as and for those of the plaintiff."

Judgment of Durga Dutt v. Navaratna Laboratories, AIR 1965 SC

980 was also referred whereby it was held as under:-

"While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is sine qua non in the case of an action for infringement."

26. By placing reliance on the above judgments learned Senior

Counsel has contended that the `deceit‟ is the primary

consideration in an action of passing off, which is missing in this

case. Learned Senior Counsel has further contended that the mark

"Grand Venezia" is different than the mark of the plaintiff

"Venetian". There is no phonetic or structural similarity between

these marks, thus, there is no chance of consumers being deceived

in availing services of defendants as that of plaintiff.

27. I do not find much force in the above contentions. Plaintiff

is prior user of the mark "Venezia" in respect of one of its towers

within the "Venetian" complex. Plaintiff has asserted its rights over

the mark "Venezia", besides "Venetian". Prefixing the word

"Grand" before the word "Venezia" is inconsequential, inasmuch

as, there is every likelihood of customers getting confused and

being deceived by taking the services of the defendants as that of

the plaintiff, since the same mark has been adopted by prefixing the

word "Grand" before the word "Venezia", in respect of similar

services. Both, that is, plaintiff as well as defendants are engaged

in the similar trade, thus, there is every likelihood of confusion,

more so, when nature of services more particularly hotel bookings

can be done through internet.

28. I do not find much force in the contention of learned Senior

Counsel that as the defendant no. 1 has incurred huge expenditures

for promoting its project under the mark "Grand Venezia",

inasmuch as, numerous approvals from statutory authorities have

been obtained in this name, defendant no. 1 shall suffer irreparable

loss and injury; whereas plaintiff shall not suffer much loss and

injury as compared to defendant no. 1, inasmuch as, they are

providing services outside India. In Wander Ltd. and Anr. Vs.

Antox India (P) Ltd., 1990 (Supp) SCC 727, Arbitration Law

Reporter 399, Apex Court has held that the object of the

interlocutory injunction, is to protect the plaintiff against injury by

violation of his rights for which he could not adequately be

compensated in damages recoverable in the action if the

uncertainty were resolved in his favour at the trial. The need for

such protection must be weighed against the corresponding need of

the defendant to be protected against injury resulting from his

having been prevented from exercising his own legal rights for

which he could not be adequately compensated. The Court must

weigh one need against another and determine where the "balance

of convenience lies". The interlocutory remedy is intended to

preserve in status quo, the rights of parties which may appear on a

prima facie. The Court also, in restraining a defendant from

exercising what he considers his legal right but what the plaintiff

would like to be prevented, puts into the scales, as a relevant

consideration whether the defendant has yet to commence his

enterprise or whether he has already been doing so in which latter

case considerations somewhat different from those that apply to a

case where the defendant is yet to commence his enterprise, are

attracted.

29. In this case, first of all, defendants have adopted the mark

„Venezia‟ knowing fully well about the plaintiff‟s mark in respect

of similar services, thus, have done at their own risk, cost and

consequences. Secondly, defendant no. 1 has yet to complete its

project and commence actual business; only booking of the spaces

will not make much difference more so, when mall as well as hotel

business has yet to commence. At this stage, change of name of

project would not have adverse impact on the business of the

defendants, inasmuch as, during the course of hearing, counsel for

the plaintiff has placed on record printouts of defendants‟ websites,

which indicates that the defendants have already adopted a

different name, that is, "Grand Venice".

30. In the light of the above discussions, I am of the view that

the plaintiff has succeded in disclosing a, prima facie, case in its

favour: that it is a prior user of mark "Venezia" and further that

there is likelihood of the costumers being deceived in accepting the

services of the defendants as that of plaintiff, on account of same

mark being used for similar services. In my view, plaintiff shall

suffer irreparable loss and injury if the defendants continue to use

the mark "Grand Venezia", inasmuch as, balance of convenience is

also in favour of the plaintiff.

31. For the foregoing reasons, interim order dated 3rd January,

2012 is confirmed during the pendency of the suit.

32. Application of the plaintiff is allowed and that of defendants

dismissed.

A.K. PATHAK, J.

JULY 02, 2012 rb