Delhi High Court
Raffles International Ltd. vs Mr. Ramana on 30 April, 2014
$~67
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 882/2011
% Judgment dated 30th April, 2014
RAFFLES INTERNATIONAL LTD. ..... Plaintiffs
Through : Mr.Manav, Adv.
versus
MR. RAMANA ..... Defendants
Through : None.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S. SISTANI, J. (Oral)
1. Plaintiff has filed the present suit for permanent injunction restraining
passing off, for damages and accounts of profit.
2. Summons in the suit and notice in the application under order XXXIX
Rules 1 and 2 were issued on 08.04.2011. Counsel for defendants no. 1 to
3 entered appearance on 12.05.2011 and the court was informed that
defendant no. 2 had expired a few months back. Counsel for the
defendants also sought time to file written statement. On 04.08.2011, on
request of counsel for the defendants, by way of last opportunity, further
time was granted to the defendants to file written statement. However,
from the next date of hearing, i.e. 30.08.2011 neither counsel for the
defendants appeared nor any written statement was filed by the defendants.
Vide order dated 19.01.2012, fresh steps were taken to serve the
defendants. On 10.02.2012, summons were directed to be served by way of
affixation. As per order dated 30.03.2012, defendant no. 3 had refused to
accept summons. Defendant no. 1 was served by means of publication in
the newspaper "Hindu" edition dated 23.08.12. On 15.10.2012, on request
of counsel for the plaintiff, defendant no. 2 was deleted from the array of
parties as he had already expired. Since despite service on multiple
occasions, defendants no.1 and 3 failed to appear and file their written
statement, they were proceeded ex parte vide order dated 15.10.12. Ex
parte evidence of plaintiff was taken to be complete on 21.02.2014.
3. Plaintiff has filed affidavit by way of evidence of Mrs. Geeta Suresh, PW-
1, Constituted Attorney of the plaintiff.
4. PW-1 has deposed that the plaintiff‟s flagship property, the Raffles Hotel
Singapore, was established in the year 1887 in Singapore and that the
plaintiff and its affiliates own and/or manage hotels, resorts, properties and
spas operating under the RAFFLES HOTELS & RESORTS, RAFFLES
and AMRITA brands. It is further deposed that plaintiff is ultimately
owned by Fairmont Raffles Hotels International, a leading global hotel
company with over 85 hotels worldwide in operation under the Raffles,
Fairmont and Swissotel trademarks, including the historical Raffles Hotels
in Singapore as the flagship hotel for the Raffles brand.
5. It is next deposed by Ms.Geeta Suresh that the plaintiff, namely, Raffles
International Limited is one of the largest luxury management companies
in the world, with over 98 hotels worldwide in operation under the Raffles,
Fairmont and Swissotel trademarks. She has further deposed that the
RAFFLE‟s mark/name spans across the globe from the exotic destinations
to vibrant cities with 7 hotels and resort properties in existence and 14
properties under development all over the world. The plaintiff also offers
luxury residence for private ownership under the RAFFLES RESIDENCE
trademark. It is further deposed that rated as among the best in the world,
multiple award winning RAFFLES hotels, resorts and residences are often
described as one of a kind and recognized as landmarks wherever they are
located. Printout from the website showing a list of private residence that
are currently under development in Indonesia, Macau, the Philippines, and
Seychelles has been marked as Exhibit PW1/2.
6. PW-1 has also deposed that since its launch in 1887, the Raffles Hotels
Singapore has become well known, not only in Singapore, but also
worldwide. Among the distinguished guests that have visited or stayed at
the Raffles Hotel Singapore include the renowned authors Joseph Conrad,
and Rudyard Kipling, playwright, novelist and actor Noel Coward, actress
Ava Gardner and Elizabeth Taylor, Queen Elizabeth II and Prince Phillip,
as well as, the Duke of Edinburg. Printout from the website outlining the
historical timeline of the Raffles Hotels Singapore from 1887 to 2008 has
been marked as Exhibit PW1/3.
7. It is next deposed by PW-1 that in 1987, the Raffles Hotel Singapore was
designated as a National Monument by the Singapore government.
Printout evidencing historical timeline of the Raffles Hotel has been
marked as Exhibit PW1/4.
8. PW-1 has further deposed that as a part of hotel and hospitality services
provided by the plaintiff, the plaintiff‟s Raffles Hotel Singapore also hosts
meetings and events for corporate and social functions within the hotels
premises. In particular, the Raffles Hotel Singapore has a meeting
concierge service whereby a dedicated meeting coordinator assists in
planning meetings and events for corporate clients.
9. PW-1 has next deposed that amongst the prestigious meetings, events and
concerts held at Raffles Hotels Singapore, is the Raffles Wine, Food and
Arts Experience which is staged annually at Raffles Hotel Singapore since
1995 and which sees the gathering of internationally acclaimed chefs,
vintners and special guests from all around the world, all at one event for
five consecutive days, the Raffles‟ Annual Gala Christmas Tree Dinner
and Auction which has been held annually at Raffles Hotels Singapore for
17 years. Printout from the website evidencing these functions has been
filed and marked as Exhibit PW1/5.
10. PW-1 has further gone on to depose that as a part of its food and beverage
services under the hospitality arm, Raffles Hotel Singapore also has an
institution, RAFFLES CULINARY ACADEMY which offers a variety of
cooking and speciality classes to gourmets, food hobbyists and amateur
chefs. It is next deposed that classes are conducted at the Raffles Hotel
Arcade by a team of award-winning culinary professionals and the most
sought - after visiting chefs from around the world. Apart from hands-on
cooking classes and cooking events, the RAFFLES CULINARY
ACADEMY also has a private dining room which is available to guests for
private and corporate events. Printout from the website evidencing the
same has been filed and marked as Exhibit PW1/6.
11. PW-1 has also deposed that the plaintiff‟s affiliate, Raffles Hotels &
Resorts, is also involved in the educational sector. In March 2008, Raffles
Hotels & Resorts in collaboration with Republic Polytechnic established
the Raffles School of Hospitality at Republic Polytechnic which is a
significant milestone in education history as for the first time in Singapore,
a Singapore polytechnic has collaborated with an international award
winning hotel chain. Printout from the website evidencing the same has
been marked as Exhibit PW1/7. Print out of the press release at the time
of the launch of the Republic Polytechnic has been filed and marked as
Exhibit PW1/8. Plaintiff has further deposed that following statements in
the Republic Polytechnic‟s press release establishes the great reputation
enjoyed by them:
"Collaboration with premier hospitality brand brings poly
hospitality education and training to a new level".
"With the adoption of the Raffles brand, which is synonymous with
excellence in hospitality business, [email protected] will be a premier
hospitality school that produces graduates who are not only
academically endowed but also proficient in the service skill-sets
and mindsets required by leading organizations in the hospitality
industry."
12. PW-1 has further stated that from the above statements it is evident that the
brand RAFFLES is a premier hospitality brand and is synonymous with
excellence in the hospitality business. PW-1 has further deposed that
plaintiff and its affiliates have invested a lot of time, effort and money in
the promotion and marketing of the RAFFLES trade mark and the
RAFFLES family of trade marks in Singapore and worldwide. One of the
forms of promotion and publicity is the plaintiff‟s corporate website at
www.raffles.com which is available and accessible to the public all over
the world. The website has, inter alia, an online media room which
contains numerous press releases showing use of the RAFFLES trade mark
and RAFFLES family of marks available at (http://www.raffles.com/EN
RA/LeftFooterNavigation/Media Room/press release). The plaintiff also
has a newsletter titled "Rafflesworld" which is readily available online at
http://rafflesworld.raffles.com and copies of the same are also widely
circulated to the plaintiff‟s clientele all over the world. Articles published
in Rafflesworld and various magazines have been collectively marked as
Exhibit PW1/9. PW-1 has also deposed that the plaintiff frequently
advertises its services under the RAFFLES trade mark and the RAFFLES
family of trade marks in various newspapers, magazines and printed
publications and that the mark/name RAFFLES is inextricably associated
with the plaintiff and the same connotes and denotes only the plaintiff.
13. PW-1 has also deposed that the plaintiff‟s premium and luxury-class hotels
and resorts have secured numerous international awards and accolades,
including Conde Nast World‟s "Best places to stay" and Travel & Leisure
"World‟s best awards". The plaintiff‟s flagship property, the Raffles Hotel
Singapore, was named "Best Boutique Hotel in Asia" in 2009 by readers
of Business Travel Asia Pacific and Raffles Hotel Singapore was also
selected as one of the top 500 Hotels of the world by Travel+Leisure in
2009. Raffles Hotel Singapore was also ranked 3rd among the best
Overseas Hotel by Luxury Travels Gold List awards 2009. Raffles Hotel
Singapore also features in the Conde Nast Traveler‟s 2009 Gold List. PW-
1 has further deposed that plaintiff has grown to become renowned and
amongst the largest luxury hotel management companies in the world. A
printout from the website showing a list of some of the awards and
accolades received by the plaintiff and its affiliates and also the awards
won by the plaintiff reported in magazine has been marked as Exhibit
PW1/10.
14. PW-1 has also deposed that the hotel and resort properties owned and/or
managed by the plaintiff and its affiliates under the RAFFLES trade mark
all over the world include:
a. Raffles Hotels in Singapore;
b. Raffles Grand Hotel d‟Angkor, in Siem Reap, Combodia;
c. Raffles Hotel Le Royal, in Phnom Penh, Combodia;
d. Raffles Beijing Hotel in China;
e. Raffles Dubai in the United Arab Emirates;
f. Raffles L‟Ermitage Beverly Hills in the U.S.; and
g. Raffles Resort Canouan Island in The Grenadines.
15. PW-1 has further deposed that in addition to the already existing hotels,
RAFFES hotels and resorts which are in the pipeline include:
a) Paris in France;
b) Sanya and Tianjin in China;
c) Bali and Jakarta in Indonesia;
d) Macau;
e) Makati in the Philippines;
f) Da Nang in Vietnam;
g) Praslin in Seychelles;
h) Marrakech and Taghazout in Morocco;
i) Moscow in Russia;
j) San Cristobal in Mexico; and
k) Olympia in Greece.
Printout from the website showing the worldwide locations of the
plaintiff‟s hotels and resorts in operation under the RAFFLES mark, as
well as, hotels and resorts that are under development has been filed and
marked as Exhibit PW1/11.
16. PW-1 has next deposed that RAFFLES mark is also used by the plaintiff
and its related companies in the sporting arena. The RAFFLES HOTELS
& RESORTS CUP, often referred to as the RAFFLES CUP, is a
prestigious horse-racing event in Singapore since 2000. Each of the races
is named after a Raffles Hotel and resort and is broadcasted live via cable
television. It has further been deposed that some of the statements made
about Raffles Hotel by third parties, hence illustrating that the Raffles
Hotel is well known and widely recognized in Singapore are as follows:
"Not just any hotel, mind you - but the world-famous Raffles
Hotel, a Singapore icon and part of the Raffles Hotel & Resort
Grou..."
The New Paper on 27 October 2007.
"We are delighted to renew our partnership with Raffles Hotels &
Resorts. Like the legendry Raffles brand..."
Yu Pang Fey, President and Chief Executive of Singapore Turf
Club.
17. PW-1 has also deposed that by virtue of the long and extensive use and
publicity of the plaintiff‟s RAFFLES mark and RAFFLES family of
marks, in Singapore and worldwide, the plaintiff has acquired substantial
goodwill and reputation both locally and globally. The use of the
mark/name RAFFLES and variations thereof in respect of hotels, resorts,
residences, hospitality services and educational services is firmly
embedded in the minds of travellers worldwide as being exclusively
associated with the plaintiff and its affiliates and their quality service and
excellence, and with no other.
18. It is also deposed by PW-1 that apart from its enormous goodwill and
reputation, the Raffles mark is also registered by the plaintiff in many
countries of the world including Australia, Brunei, Cambodia, China,
Ecuador, Honk Kong, Indonesia, Japan, Korea, Macau, Malaysia, Mexico,
Morocco, New Zealand, Peru, Philippines, Russia, Sabah, Sarawak,
Singapore, Switzerland, Thailand, United Arab Emirates, United States of
America,United Kingdom and Vietnam. Copies of the global registrations
of the Raffles mark in the name of the plaintiff are collectively marked as
Exhibit PW1/12.
19. PW-1 has next deposed that the plaintiff has also secured legal protection
for its Raffles mark via Community Trade Marks at the office for
Harmonization in the International Market, which, ensures legal protection
across numerous countries, in particular as a registered Community Trade
Mark and in this regard, protection is secured under numerous countries
including the European Union [that comprises of registrations held valid in
all the members of the European Union], USA, Australia, India, Egypt,
Hong Kong, Malaysia, Mexico, Philippines, Singapore, Turkey and
Vietnam. Copy of Community Trade Mark Registration Certificate is
marked as Exhibit PW1/13.
20. It is also deposed by PW-1 that in order to secure protection for its reputed
Raffles mark in India, the plaintiff has filed applications for registration of
its mark/name RAFFLES. Copy of the Trademark application of the
plaintiff pertaining to the mark RAFFLES pending before the Trade Mark
Registry has been marked as Exhibit PW1/14.
21. PW-1 has further deposed that the Raffles mark/name is an internationally
famous mark/name and has acquired an extensive and valuable reputation
and goodwill as a mark/name owned by the plaintiff.
22. She further goes on to state that plaintiff has also spent huge amounts on
advertisements and the advertisement expenditure incurred by the plaintiff
for the Raffles mark/name for the period 2004 to 2009 has been stated in
the plaint and the same is true and correct. PW-1 has next deposed that the
plaintiff‟s hotels under the well known Raffles mark/name also generate
revenue running into millions of rupees. The annual financial statements of
the plaintiff for the period 2008 - 2009 have been marked as Exhibit
PW1/15.
23. Ms.Suresh has further deposed that the reputation and goodwill of the
Raffles mark/name is not limited to the shores of any one country and has
flowed into India as well. There is also a large expatriate population of
Indians in Singapore through whom the Raffles mark/name is well known
to the people in India. Further, a lot of Indians also travel to Singapore as
tourists. The details of the number of Indians travelling to Singapore,
according to Tourism Board for the period 2007 - 2010 have been marked
as Exhibit PW1/16. She has also deposed that due to advertisements in
magazines and other forms of media reaching India, the reputation and
goodwill of the Raffles mark has also spilled over into India.
24. It has further been deposed that Dubai Shopping Festival organized by the
Dubai Government every year, attracts a large number of Indians to the
Gulf Emirate to shop and enjoy their holidays with their families and
friends and are thus exposed to the plaintiff‟s well known and famous
Raffles Hotel in Dubai.
25. It has also been deposed by PW-1 that plaintiff has been vigilant in seeking
recognition and protection of their statutory and proprietary rights in the
Raffles mark. The favorable decisions obtained by the plaintiff recognising
the fact that plaintiff‟s Raffles mark is considered as a famous mark are
marked as Exhibit PW1/18.
26. PW-1 has next deposed that defendant 1 and 2, as partners, are running a
hotel under the name and style of Defendant no.3 namely Raffles
Residency in Hyderabad. She has also deposed that the Defendants have
without the plaintiff‟s consent, used the RAFFLES name/mark that too in
relation to an identical business; i.e., hotel industry. The defendants are
displaying the word RAFFLES and RAFFLES RESIDENCY prominently
and mischievously outside their hotel as well as on their stationary and
documents such as business cards, brochures, envelopes etc. The aforesaid
wrongful act of the Defendants in using an identical name in respect of an
identical business constitutes violation of the plaintiff‟s common law
rights.
27. PW-1 has also deposed that the plaintiff first learnt about the Defendants‟
business in the month of October 2009 wherein the Defendants were using
the mark/name RAFFLES in respect of Hotel business. The plaintiff
immediately issued a Cease & Desist Legal notice dated 23 rd October 2009
upon the Defendants thereby directing them to restrain their illegitimate
use of the Raffles mark as the said mark/name RAFFLES is exclusively
associated with the plaintiffs. An office copy of the cease and desist notice
dated 23rd October, 2009, addressed to the Defendants has been marked as
Exhibit PW1/19. She also deposed that as the defendant failed to comply
with the requisitions elucidated in the cease and desist notice dated 23 rd
October 2009, a further reminder notice was sent to the Defendants on 30 th
November, 2009, asking them to comply with requisitions of the notice
dated 23rd of October 2009. Office copy of the reminder notice dated 30 th
November, 2009, has been marked as Exhibit PW1/20. Thereafter, the
plaintiff has on numerous occasions telephonically contacted the
Defendants‟ representatives asking them to cease use of the Raffles name
and also comply with the requisitions as stated in the cease and desist
notice dated 23rd October, 2009. However despite the plaintiff‟s repeated
follow-ups subsequent to the legal notice and reminders thereof the
Defendants has continued their illegal activities under the mark/name
RAFFLES. It is evident that the Defendants were undoubtedly aware of
the plaintiff‟s Raffles mark which is being used by the plaintiff for decades
all across the world in an identical business. The malafide conduct of the
Defendants are further excerpted from the fact that despite being put on
notice by the plaintiff of its rights and violation thereof by the Defendants
the Defendants have chosen to ignore the rights of the plaintiff and
continued their illegal activities at its own peril thereby causing irreparable
hardships and loss to the plaintiff.
28. It is further deposed by PW-1 that the activities of the Defendants are
deliberate as the Defendants cannot claim to be unaware of the plaintiff‟s
Raffles trade mark, which is a well-known and renowned trade mark
throughout the world. The adoption of the word RAFFLES by the
defendants is malafide and the same cannot be a matter of coincidence.
And the same has been done with sole motive of encashing upon the
goodwill and reputation of the plaintiff. It is deposed by PW-1 that the
Defendants have in fact maliciously appropriated a trade mark / trade name
identical to that of the plaintiff in respect of identical business so as to
capitalize on the goodwill, reputation and ready-acceptance of the
plaintiff‟s Raffles mark/name and to obtain illegal pecuniary and other
advantages from its use.
29. PW-1 has further deposed that the Defendants are not only wrongfully
using an identical name/mark Raffles in the same line of business but they
are also operating a website www.rafflesresidency.com in respect of their
hotel business. A printout of the Defendant‟s website
www.rafflesresidency.com has been marked as Exhibit PW1/21. The very
use of the said website by the Defendants wherein the word RAFFLES is a
prominent part amounts to gross violation of the plaintiff‟s intellectual
property rights. The Defendant‟s use of the website
www.rafflesresidency.com if permitted to be continued, would enhance the
chances of confusion and deception among the trade and public as any
person accessing the said website shall in all probabilities associate and
link the Defendant‟s hotel and business under the name Raffles Residency
as having affiliation and association with the famous and well know
Raffles Hotel of the plaintiff thereby causing misrepresentation in the eyes
of public at large and in turn also leading to dilution of the RAFFLES
mark/name of the plaintiff. The defendants have not restricted their
website www.rafflesresidency.com to a mere informative website alone
but are also soliciting and working for gain through the said website. The
Defendants‟ website www.rafflesresidency.com is an interactive website
whereby the Defendants are making online booking of rooms in their
hotel. PW-1 has further deposed that plaintiff had instructed her to book a
room in the Defendants‟ hotel for one day on 24th of March, 2011, through
the Defendant‟s website www.rafflesresidency.com. The relevant
document showing booking of the room from the website
www.rafflesresidency.com of the defendant has been marked as Exhibit
PW1/22. She has further deposed that the defendant‟s interactive website
www.rafflesresidency.com evidences the fact that they are soliciting,
carrying on business and working for gain all over the India including
Delhi. The defendants have every intention to further expand their already
existing business in Delhi and if the activities of the Defendants under the
name/mark RAFFLES are not put to halt, the threat apprehended by the
plaintiff of the Defendants further expanding their already existing
business in Delhi would materialize. PW-1 has next deposed that the
booking at the hotel of the defendant is not only restricted to its website
www.rafflesresidency.com but the same can also be done from other links
wherein the said id facility is available. The Defendants‟ Raffles residency
is also found on the links namely:
http://hotels.makemytrip.com/makemytrip/hotel.
30. PW-1 has also deposed that the Defendants have deliberately and
maliciously adopted the word RAFFLES as part of their name and
websites. The very adoption of an identical word to the plaintiff‟s well-
known Raffles mark/name is only with intention to pass-off their own
services as those either directly originating from the plaintiff or at least
consisting of some commercial or operational connection to the plaintiff
such as licensing, an agency and so on. The Defendants have also
misrepresented themselves and/or the potential services to be offered under
the Raffles Residency as being some way connected with the plaintiff in
order to deceive the general public at large who have placed so much faith
in the plaintiff‟s Raffles Hotels that they are highly likely to be deceived
by the services provided by the Defendants under the name „Raffles
Residency‟ in expectation that the Defendants have either a direct trade
connection to the plaintiff or at least have an authorisation or a commercial
connection to the plaintiff.
31. PW-1 has also deposed that the defendants have malafidely and
wrongfully adopted and used the plaintiff‟s Raffles mark/name with a view
to trade unfairly upon the plaintiff‟s long established reputation and
goodwill. It is next deposed that the adoption and use of an identical
"Raffles" mark/name by the Defendants in respect of the same services is
prima facie fraudulent, dishonest and is bound to deceive and cause
confusion amongst the public at large and further injure the long
established reputation and goodwill of the plaintiff which spreads all
across the world. It has further been deposed that plaintiff is the prior
adopter of the mark RAFFLES and has the exclusive right to its use and
also prevent any unauthorized use of the same.
32. PW-1 has further deposed that the said adoption of the word Raffles as part
of name/mark by the defendants will undoubtedly injure the plaintiff who
will as a result of such use suffer irreparable damage to its reputation as it
cannot by any stretch of imagination have any control over the quality of
service being provided by the Defendants under the banner Raffles
Residency. The result of such use will erode the goodwill and reputation
that the plaintiff has painstakingly built for the mark/name RAFFLES for
the last so many decades.
33. It is next deposed by PW-1 that in addition to the reputation, goodwill,
consumer recognition and patronage acquired by the plaintiff‟s trade mark
worldwide through the above mentioned use, the recognition and
patronage for the Raffles mark has also „spilled over‟ to India on account
of various other factors and circumstances, inclusive of but not limited to,
inter alia, the following:-
a) That there are large communities of Indians living in Singapore,
America, Europe, United Kingdom, Middle East and South East
Asian countries who are indeed well aware of the high
reputation of the Raffles mark and as such these communities
are a part and parcel of the society of such countries and most of
them are the citizens of such countries who have experienced
staying at the Raffles Hotels & Resorts and have therefore
contributed to the plaintiff‟s expansion of its brand RAFFLES to
India.
b) Similarly, there is a great flow of tourists, as well as, business
professionals, students, government and semi-government
officials who are travelling between India and foreign countries,
as well as, foreign nationals who must have seen the raffles
hotels & resorts in Singapore, USA, Europe, UK, or other
countries or must have at least been aware of the Raffles mark
as one of the most popular trade marks in the world.
c) That the plaintiff‟s Raffles mark has also acquired an excellent
reputation and goodwill all across the world on account of the
long use, high quality of the plaintiff‟s services and extensive
advertising in international print and audio-visual media. The
said reputation and goodwill exists, as well as, extends to India
on account of information in media and also on account of stays
at Raffles Hotels & Resorts by Indians on tour or residing in
foreign countries.
34. PW-1 has also deposed that the distinctive and unique character of the
plaintiff‟s Raffles trade mark/trade name is the life and blood of the
business of the plaintiff. When an ordinary person mentions the Raffles
mark in Hotel industry, an ordinary mind with imperfect recollection shall
undoubtedly associate the services provided under the said mark as those
being emanating from the plaintiff‟s Raffles chain of hotels which has its
existence throughout the world.
35. It is next deposed that defendants have engaged in passing off their
services bearing the RAFFLES mark/name as that of the plaintiff thereby
encashing on the latter‟s goodwill and causing economic loss to them.
36. PW-1 has further deposed that the plaintiff had coined the mark/name
RAFFLES in respect of Hospitality business decades ago and the
Defendants cannot provide a plausible explanation for adopting an
identical name which has been coined and invented by the plaintiff in
respect of identical services.
37. PW-1 has further deposed that in view of the facts that the plaintiff‟s
RAFFLES trade mark/name has a high degree of inherent distinctiveness;
has been used extensively over a long period of time spanning a wide
geographical area; has been given tremendous publicity and attained
immense popularity; it is well recognized by members of the trade and
public, therefore, the plaintiff is entitled to protection against its
misappropriation for goods or services.
38. I have heard counsel for the plaintiff and perused the record. The affidavit
by way of evidence which has been filed and also the documents which
have been place on record, remain unrebutted. Printout from website
showing the worldwide locations of the plaintiff‟s hotels and resorts in
operation under the mark "RAFFLES" has been exhibited as Ex. PW-1/11.
Copies of global registrations of the "Raffles" mark in the name of the
plaintiff are marked as Ex. PW-1.12 (colly). Copy of Community Trade
Mark Registration certificate of the plaintiff is marked as Ex. PW-1/13.
Copy of the trademark registration application of the plaintiff, pending in
India is marked as Ex. PW-1/14. Printout evidencing the historical timeline
including designation of the Raffles Hotel, Singapore in 1987 as a national
monument by the Singapore Government has been exhibited as Ex. PW-
1/4. Printout from the website evidencing prestigious functions and events
organized by the plaintiff‟s hotels in Singapore, which are staged annually
ever since 1995 and which see the gathering of internationally acclaimed
chefs, vintners and special guests from all over the world, thus proving the
enormous goodwill and reputation enjoyed by the plaintiff in Singapore,
has been exhibited as Ex. PW-1/5. Printout from the website evidencing
the activities conducted by RAFFLES CULINARY ACADEMY, an
institution under the Raffles Hotel, Singapore which attracts award-
winning culinary professionals and the most sought after visiting chefs
from around the world, and thus, evidencing the large scale poularity of
the plaintiff‟s hotels under the mark "Raffles" is exhibited as Ex. PW-1/6.
Various press releases evidencing the large scale popularity, goodwill and
reputation enjoyed by the plaintiff in the hospitality industry under the
trade name/mark "RAFLES" have been exhibited as Ex. PW-1/8. Print
outs proving the extensive use of the domain name www.raffles.com and
the availability of widely read newsletter of plaintiff called "Rafflesworld"
which is circulated to the plaintiff‟s clintale all over the world are
exhibited as Ex. PW-1/9 (Colly). A printout from the website showing the
various awards and accolades received by the plaintiff is exhibited as Ex.
PW-1/10. Favourable decisions obtained by the plaintiff wherein plaintiff‟s
mark "Raffles" has been considered to be a famous mark are exhibited as
Ex. PW-1/18.
39. On the basis of the above mentioned documents, the plaintiff has been able
to establish beyond any shadow of doubt that the said mark of the plaintiff
i.e. "RAFFLES" has been put in use by the plaintiff in the hospitality
industry, since as far back as in 1887 in Singapore when the plaintiff
established its flagship property the "Raffles Hotel, Singapore". Plaintiff
has also established that since its launch in the year 1887 in Singapore,
over a period of time, the plaintiff‟s chain of hotels and resorts has become
well known not only in Singapore, but in numerous countries across the
globe wherein the plaintiff has also acquired registration of its trademark
"Raffles". The various press releases praising the excellent quality of
services provided by the plaintiff under the said mark in the hotel industry
further proves the goodwill and reputation enjoyed the plaintiff under the
said mark. Furthermore, the fact that some of the most renowned chefs
from world over have been gracing the events organized by the plaintiff on
annual basis and the fact that the plaintiff boasts of clintale comprising
some of the most renowned celebrities including actors, play writers,
Queen Elizabeth II, Prince Phillip, the Duke of Edenburg etc. and also the
fact that the plaintiff‟s hotel under the said mark has been designated as a
National Monument by the Singapore Government establish the fact that
the plaintiff‟s popularity, goodwill and reputation exists at a global level.
Furthermore, the excellent services provided by the plaintiff under the said
trade mark in the hospitality industry is evident from the numerous awards
and accolades earned by the plaintiff and the annual turnover enjoyed by
the plaintiff. Furthermore, plaintiff has also proved extensive and long
standing use of the domain name www.raffles.com by the plaintiff in order
to advertise and make the services of its hotels available to its customers
world over, through the internet.
40. In view of the above, plaintiff has the exclusive right to use the trademark
"RAFFLES" and domain name www.raffles.com with respect to its goods
and services.
41. The Apex Court in the case of Laxmikant V Patel v. Chetanbhai Shah
And Another reported at (2002) 3 SCC 65, has laid down the test of
confusion/deception in order to prove the case of passing off. Relevant
para of the aforesaid judgment reads as under:-
"10. A person may sell his goods or deliver his services such as in
case of a profession under a trading name or style. With the lapse of
time such business or services associated with a person acquire a
reputation or goodwill which becomes a property which is
protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in
injury to the business of one who has the property in that name. The
law does not permit any one to carry on his business in such a way
as would persuade the customers or clients in believing that the
goods or services belonging to someone else are his or are
associated therewith. It does not matter whether the latter person
does so fraudulently or otherwise. The reasons are two. Firstly,
honesty and fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or intends to
adopt a name in connection with his business or services which
already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of someone else to
himself and thereby resulting in injury."
[Emphasis Supplied]
42. In the case of Madhuban Holiday Inn v. Holiday Inn Inc. reported at
(2002) 100 DLT 306, grant of permanent injunction for infringement of
trade mark and passing off was sought against the appellant company
which was in the same business as the respondents i.e. hotel industry, thus,
refraining them from using the words "Holiday Inn" as a part of their
trademark/trade name as it was deceptively similar to the trade name under
which the respondent company had been carrying on its business i.e.
"Hotel Inn Inc." Following observations were made by the court:
"50. The respondent company Holiday Inn Inc. is a registered
company in the United States of America. The company has acquired
immense global reputation. It has a large number of hotels in various
parts of the world. The adoption of the words "Holiday Inn" by the
appellants from the very inception was based on the doctrine of bad
faith. The appellants were fully aware of the considerable transborder
reputation of the respondent and they wanted to derive pecuniary
benefits from their reputation. The question that arises is that out of
the millions of words of English language why did the appellants
adopt only the words "Holiday Inn". The answer has to be that the
appellants deliberately adopted these words to ride on the immense
global reputation of the respondent. The intention of the appellants
becomes absolutely clear after seeing the computer print out of the
appellants and respondents pages taken from the internet under the
heading "Holiday Inn, Delhi". These documents were placed before us
by the respondent. Under the heading "Holiday Inn" in the internet
information about the respondent's hotel world wide is given.
Similarly the appellant, Kapoor Holiday Inn, also has a web site in the
internet under the heading "Kapoor Holiday Inn" giving its tariff,
location etc. and advertising itself as the "most distinguished address
in New Delhi". By giving all this description the appellants in fact
wanted to ride on the reputation of the respondent and derive
pecuniary benefit from it. As observed in Simatul Chemical Industries
Pvt. Ltd. (supra), the test to be applied is the test of an average person
with imperfect recollection. It would not be right to apply the test of a
man of extraordinary memory who remembers the spelling of the
name of each company or a person who jots down meticulously and
methodically the names of companies in his diary and brings out his
diary and contemplates whether he is dealing with one company or the
other. The average persons likely to be deceived by or confused with
the use of the words "Holiday Inn" by the appellants.
51. In our considered opinion, the adoption of the words "Holiday
Inn" by the appellants is ex facie fraudulent and mala fide from the
very inception. The words "Holiday Inn" have been adopted by the
appellant to ride on the global reputation of the respondent. The
appellant was actuated by bad faith and dishonest motive. In the facts
and circumstances, the learned Single Judge was fully justified in the
granting the injunction and decreeing the suits in order to protect the
commercial goodwill and to ensure that the global business reputation
of the respondent is not exploited by the appellants in a clandestine
manner."
[Emphasis Supplied]
43. The law with respect to application of legal norms to internet domain
names has been discussed in the case of Satyam Infoway Ltd. v Siffynet
Solutions (P) Ltd. Relevant paras are reproduced below:
"12.The original role of a domain name was no doubt to provide an
address for computers on the internet. But the internet has
developed from a mere means of communication to a mode of
carrying on commercial activity. With the increase of commercial
activity on the internet, a domain name is also used as a business
identifier. Therefore, the domain name not only serves as an
address for internet communication but also identifies the specific
internet site.
16. The use of the same or similar domain name may lead to a
diversion of users which could result from such users mistakenly
accessing one domain name instead of another. This may occur in
e-commerce with its rapid progress and instant (and theoretically
limitless) accessibility to users and potential customers and
particularly so in areas of specific overlap. Ordinary
consumers/users seeking to locate the functions available under one
domain name may be confused if they accidentally arrived at a
different but similar website which offers no such services. Such
users could well conclude that the first domain-name owner had
misrepresented its goods or services through its promotional
activities and the first domain-owner would thereby lose its
customer. It is apparent, therefore, that a domain name may have all
the characteristics of a trade mark and could found an action for
passing off."
[emphasis supplied]
44. Having regard to the evidence on record and applying the law laid down
above, I am of the view that the impugned trademark of the defendants i.e.
"Raffles/Raffles Residency" in the same line of business/identical business
as the plaintiff‟s i.e. hospitality business is wrongful, malafide, and
dishonest and in complete violation of the common law rights of the
plaintiff. It cannot be said that the defendants were not aware of the
existence of plaintiff‟s chain of hotels and resorts across the globe which
enjoy immense reputation and goodwill under the trademark "Raffles" and
that the use of the same mark by the defendants is a matter of mere
coincidence. In my opinion, the act of the defendants is deliberate and
with the sole motive of encashing upon the trans-border goodwill and
reputation enjoyed by the plaintiff and to obtain illegal pecuniary and other
advantages from the use of the impugned mark. Furthermore, use of
domain name "www.rafflesresidency.com" by the defendants, which is
deceptively similar to thedomain name of the plaintiff www.raffles.com
would undoubtedly enhance the chances of deception and confusion in the
minds of traders and general public as any person accessing the said
website shall in all probabilities associate and link the hotels run by
defendants under the name "Raffles Residency" as having affiliation and
association with the famous and well known "Raffles" Hotel of the
plaintiff thereby causing misrepresentation in the public at large and in
turn also leading to dilution of the Raffles mark of the plaintiff. In my
considered view, the defendants are passing off their services as those of
the plaintiff and/or misrepresenting themselves to be in
commercial/operational connection to the plaintiff thus causing confusion
among the general public with respect to the origin of services offered by
the defendants.
45. The plaintiff has also claimed damages on account of unlawful use of the
name/mark Raffles by the defendants.
46. In the case of 'M/s L.T. Overseas Ltd. v. M/s Guruji Trading Co. and
Anr. [CS (OS) No. 2711/1999] decided on 07.09.2005 this court had
granted Rs.3 lakhs damages to the plaintiff. In another case of Hindustan
Machines v. Royal Electrical Applies, 1999 PTC (19) 685, a sum of Rs.3
lakhs was awarded.
47. In the case of Proctor & Gamble Co. v Joy Creators reported at 2011 (45)
PTC 541 (Del), following observations were made by the court with
respect to grant of punitive damages:
"23. Also, the Court needs to take note of the fact that a lot of
energy and resources are spent in litigating against those who
infringe the trademark and copyright of others and try to encash
upon the goodwill and reputation of other brands by passing off
their goods and/or services as those of that well known brand. If
punitive damages are not awarded in such cases, it would only
encourage unscrupulous persons who actuated by dishonest
intention, use the well-reputed trademark of another person, so as to
encase on the goodwill and reputation which that mark enjoys in
the market, with impunity, and then avoid payment of damages by
remaining absent from the Court, thereby depriving the plaintiff an
opportunity to establish actual profit earned by him from use of the
infringing mark, which can be computed only on the basis of his
account books. This would, therefore, amount to putting premium
on dishonesty and give an unfair advantage to an unscrupulous
infringer over those who have a bona fide defense to make and
therefore come forward to contest the suit and place their case
before the Court."
48. For the reasons stated above, the plaintiff has made out a case for grant of
decree as prayed in the plaint. Accordingly, the suit is decreed in favour of
the plaintiff and against the defendants no. 1 and 3 with costs. Plaintiff is
also entitled to damages to the tune of Rs.2.00 Lacs. Decree sheet be
drawn up accordingly.
G.S.SISTANI, J.
APRIL 30, 2014 „msr-l‟
