Accor & Anr. vs Mr. Ajay Gupta & Ors.
2019 Latest Caselaw 2721 Del

$~40
*      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                           Date of Decision : 27th May, 2019
+                         CS(COMM) 191/2019
       ACCOR & ANR.                                           ..... Plaintiffs
                          Through      Mr. Peeyoosh Kalra, Mr. C.A. Brijesh
                                       and Ms. Shreyosi Pal, Advocates.

                          versus

       MR. AJAY GUPTA & ORS.                                ..... Defendants
                    Through            Ms. Payal Mittal, Advocate (M. No.
                                       9711969480) Defendant No.1 in
                                       person

       CORAM:
       JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (ORAL)

CS(COMM) 191/2019

1. The Plaintiff No. 1 - Accor, France, has filed the present suit seeking permanent injunction restraining infringement of its registered trademarks and service marks against the Defendants. The Plaintiff No. 2 - AAPC Indian Hotel Management Private Limited is the Indian subsidiary of the Plaintiff No. 1 French entity. The Plaintiffs claims to be a global hotel chain using the mark/name „ACCOR‟ and „ACCOR HOTELS‟. The details of the trademark registrations of the Plaintiffs are set out in paragraph 14 of the plaint. The Plaint also gives details of the global reputation, sales turnover and the promotions etc., of the Plaintiffs' mark „ACCOR‟.

2. The Defendants started using the name/trading style „ACCOR‟ and

„ACCOR INN‟ as also the logo style which is mentioned in the plaint and hence the suit. The Plaintiffs issued notice to the Defendants notifying them of the Plaintiff's rights. A perusal of the correspondence on record shows that the Defendants had reverted vide e-mail dated 23rd November, 2015 that it would close all the related activity of „ACCOR‟ including the website, social sites, company etc. However, despite this assurance having been given by the Defendants, the Plaintiffs came to know that the Defendants were continuing to use the infringing trading style and name and further notices were addressed. Vide reply dated 21st March, 2016, the Defendants gave an assurance that they have stopped all activities relating to „ACCOR‟ and have started marketing activity of „ACCORD INN‟. Finally, by e-mail dated 23rd March, 2017, the Defendants claimed that according to the Defendants, the worth of their mark „ACCOR INN‟ and „ACCORD INN‟ is around Rs. 40,00,000/-.

3. Under these circumstances, the present suit was filed by the Plaintiffs. Vide order dated 12th April, 2019 an ex-parte interim injunction was granted, the operative portion of which reads as under:

"13. The Plaintiff No.1 is clearly the registered owner of the mark „ACCOR‟. The marks „ACCOR INN‟ and „ACCORD INN‟ are both identical/ deceptively similar to the Plaintiff‟s mark. The use of the said trading style for hotel names or any other accommodation related services would be violative of the Plaintiff‟s rights in the mark and also create confusion between the Plaintiff‟s hotels and the Defendant‟s Inns/Hotels. Considering that travellers and tourists mostly use online platforms for making bookings, the use of the marks/names „ACCOR INN‟ and „ACCORD INN‟ is completely illegal and unlawful. It is even contrary to the interest of the

relevant section of the public and customers. The use of the domain names www.accorinn.com and www.accordinn.com is also infringement of the Plaintiff‟s marks. Accordingly, the Defendants are restrained from using the name „ACCOR INN‟ and „ACCORD INN‟ on any online platforms including the domain names www.accorinn.com and www.accordinn.com, till the next date."

4. Summons and notices in the suit were returnable today. The Defendants have filed an application praying that the parties may be referred to mediation. In the said application (I.A. 7869/2019) the Defendants have stated as under:

"1. That the Plaintiffs have filed the captioned commercial suit under section 134 and 135 of The Trademarks Act, 1999 for permanent injunction against infringement of trademark, passing off, unfair competition, rendition of accounts, damages and delivery up against the defendants herein and the same is pending adjudication before this Hon‟ble Court on 5th July, 2019.

2. That the' Defendants/Applicants herein have no intention of infringing or misusing the trademark of the Plaintiff firm in any manner whatsoever. Also, after going through the entire paper book of the present matter, the Defendants/Applicants herein believes that the present matter can be easily resolved through mediation.

3. That the Defendant No. 1/Applicant herein is a very small businessman and is not in a position to contest the present case in normality and that therefore, the Defendants/Applicants herein seek kind indulgence of Hon‟ble Court to refer the matter for an amid-settlement through the Delhi High Court Mediation Centre.

4. That grave prejudice shall be caused to the

Defendants/Applicants herein in case the present Application is not allowed. The present suit is at the initial stage and no prejudice shall be caused to any of the parties in case the present Application is allowed."

5. During the course of hearing, the parties have agreed to settle their disputes. Defendant No.1 - Mr. Ajay Gupta is present. It is submitted that Defendant No.2 Company is not conducting any business and is inoperative. Defendant No.1 is the proprietor of Defendant No.3 firm. He submits that the Defendants are willing to stop using the names „ACCOR‟, „ACCOR INN‟ and „ACCORD INN‟ and also to surrender the two domain names namely www.accorinn.com and www.accordinn.com. Defendant No.1 is also agreeable to pay a sum of Rs.5,00,000/- (Rupees Five Lakhs), to the Plaintiffs which shall be handed over to the learned counsel for the Plaintiffs on or before 15th July, 2019.

6. The Plaintiff No.1 is clearly the registered owner of the mark „ACCOR‟. The marks „ACCOR INN‟ and „ACCORD INN‟ are both identical/ deceptively similar to the Plaintiff's mark. The use of the said trading style for hotel names or any other accommodation related services would be violative of the Plaintiff's rights in the mark and also create confusion between the Plaintiff's hotels and the Defendant's Inns/Hotels. The Defendant No.1 has given an undertaking in the following terms:

"I am Ajay Gupta but also known as Ajay Kumar. I am the proprietor of Defendant No.3 - ACCOR Inn Hospitality Services. I undertake not to use the names/marks „ACCOR‟, „ACCOR INN‟ and „ACCORD INN‟ or the domain names namely www.accorinn.com and www.accordinn.com in respect of the any hospitality, hotel, restaurant or any other services. I also undertake to remove any references to these

names on the websites www.accorinn.com and www.accordinn.com as also any third-party internet platforms. I further undertake not to promote any company or firm with the name „ACCOR‟ or „ACCORD‟. I undertake to surrender both the domain names www.accorinn.com and www.accordinn.com to the Plaintiff. I shall hand over the admin rights to the Plaintiff‟s counsel on or before 15th June, 2019. I do not have any objection in the suit being decreed.

I undertake to pay a sum of Rs.5 lakhs as costs to the Plaintiff which shall be handed over to the counsel for the Plaintiff on or before 15th July, 2019."

7. In view of the above, the suit is decreed in the following terms:

i. A decree of permanent injunction is granted restraining the Defendants, their affiliates, licensees, franchisees, partners/proprietor as the case may be, employees, distributors, agents or anyone acting for and on their behalf from using the trade mark/trade name/logo ACCOR, ACCOR INN, ACCORD INN or any other trade mark or trade name or logo identical or deceptively similar thereto, either as a trade mark/ trade name or service mark or as part of a domain name, email address or any other manner including on social media. The Defendants are further restrained from using the corporate name of defendant no.2 which consists of the mark ACCOR as part of the corporate name.

ii. A decree of mandatory injunction is granted directing the Defendants to surrender the domain names www.accorinn.com and www.accordinn.com and handover the control of the said

domain names to the Plaintiffs on or before 15th June 2019. iii. Plaintiffs are awarded costs of Rs.5,00,000/- (Rupees Five Lakhs). The same shall be paid by the Defendants to the Plaintiffs' counsels on or before 15th July 2019.

The learned counsel for the Plaintiffs does not press the relief of damages and rendition of accounts. Suit and all pending I.As. are disposed of. Decree sheet be drawn in the above terms.

8. Since, the suit has been settled at the initial stage, 50% court fee is refunded. The refund of court fee be released in favour of the counsel for the Plaintiffs.

9. The dates already fixed i.e. 5th July, 2019 before the Joint Registrar and before the court on 30th July, 2019 stand cancelled.

10. List for compliance on 31st July, 2019. Defendant No.1 shall remain present on the said date.

PRATHIBA M. SINGH JUDGE MAY 27, 2019 b