The Delhi High Court, in the case of Indian Hotel Company Limited v. Grand Vivanta Vacation Pvt. Ltd. [CS (COMM) 560/2022], decided on 26th September 2022, refrained the Defendant from using the word “VIVAN” or any other word which is deceptively similar to that of Tata’s “VIVANTA”.
The Indian Hotel Company Limited (hereinafter referred to as the “Plaintiff”) which, together with its subsidiaries, is owned by the renowned Tata Group of Companies, is engaged in the business of hotels, and offers hospitality services throughout India.
Grand Vivanta Vacation Private Limited (hereinafter referred to as the “Defendant”), previously known as NAP Polymers Specialties Private Limited, is also engaged in the hospitality business like that of the Plaintiff.
The Plaintiff registered the trademark “VIVANTA” in 2008, and since then, the Plaintiff has regularly and persistently used the aforementioned mark for a variety of properties, building tremendous goodwill and reputation in the process.
However, it came to the notice of the Plaintiff that the Defendant has been using an identical mark to that of the Plaintiff, for its business activities, which are also similar to that of the Plaintiff. Therefore, the Plaintiff filed the present suit for trademark infringement before the Delhi High Court (hereinafter referred to as the “High Court”).
ISSUE BEFORE THE HIGH COURT
Whether the word “VIVAN” is deceptively similar to that of “VIVANTA”?
CONTENTION OF THE PARTIES
The Plaintiff contended that the Defendant is not only using the impugned mark, but is also using the word VIVANTA in its domain name, www.grandvivanta.com. Subsequently, the Plaintiff brought it to the notice of the High Court that the Defendant is promoting the mark VIVANTA on several social media sites, such as Facebook, Instagram, and YouTube.
The Plaintiff further claimed that the Defendant is not only misusing the Plaintiff’s registered trademark VIVANTA, but is also utilizing the wordmark and the device mark of the Plaintiff on variety of brochures, signage, and other marketing materials. Additionally, the Defendant also has a mobile application called “GRAND VIVANTA” that is accessible on the Google Play Store.
The Plaintiff submitted that the Defendant’s misuse of the mark VIVANTA came to the knowledge of the Plaintiff after an inquiry was conducted and complaints were received from the clients who claimed the Defendant’s representative had contacted them offering pricey and tempting vacation packages, which they had bought under the impression that it was of the Plaintiff’s.
Subsequently, the Plaintiff also sent a legal notice to the Defendant on 27.08.2021, however, but no response was received.
Plaintiff prayed for a permanent injunction in addition to the removal of the domain name, website, social media profiles, and mobile application bearing the name VIVANTA. Additionally, the Plaintiff also sought financial compensation, account disclosures, and recognition of the mark VIVANTA as a well-known trademark.
Even after an ad interim injunction was ordered by the High Court in August, the Defendant did not cease its illegitimate activities and was found to be openly using the impugned mark and the name GRAND VIVANTA on its primary banners and other items, including packages and vouchers.
The Defendant thereafter sought the High Court’s order to alter the word “VIVANTA” with “VIVAN” and also sought time to change the name on its registration, website, and social media accounts.
In the light of the foregoing, the Plaintiff contended that the new name with GRAND VIVAN was unacceptable as it is derived from the word “VIVANTA” itself. The Plaintiff suggested that the Defendant may change its name to “GRAND VIHAN Vacations Private Limited” instead, provided that all other related domain names, mobile apps, social media handles, etc. of GRAND VIVAN or GRAND VIVANTA are completely given up by the Defendant.
DECISION AND FINDINGS
The High Court held that that the trademark VIVANTA, which has been registered as a word mark since 2008 in a variety of forms including VIVANTA, VIVANTA BY TAJ, and VIVANTA device marks, is rightfully owned by the Plaintiff. On the other hand, the Defendant has used the identical mark by merely prefixing the word VIVANTA with the laudatory term GRAND.
As a result, the names GRAND VIVANTA of the Defendant and VIVANTA of the Plaintiff are the same. The High Court also noted that since the Plaintiff was the bona fide user and owner of the mark VIVANTA for its properties across the nation, the adoption of this mark by the Defendant is completely unjustified.
The High Court stated that the present case is a case which does not require further evidence to be led and held that the Defendant is permanently injuncted from using the mark/name VIVANTA/VIVAN or any other mark/name which is deceptively similar to that of the Plaintiff’s mark – VIVANTA, with or without prefix or suffix in respect of any of its resorts, hotels, restaurants or any other combination for its hospitality services, resorts, hotels, restaurants or any other related services.
The High Court relied on the cases of Disney Enterprises Inc. & Anr. v. Balraj Muttneja & Ors. [CS (OS) 3466/2012], S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], and United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)].
Additionally, the High Court also ordered the Defendant to pay Rs. 6 Lakhs to the Plaintiff as damages.
In the present case, the Defendant was using the mark which was identical to that of the Plaintiff. Such unauthorized usage not only leads to reputational damage for the bona fide mark holder, but it also leads to monetary losses and affects the consumer base at large.
According to Section 11(1) of the Trademarks Act, 1999 (hereinafter referred to as “the Act”), a proprietor cannot use a mark which is deceptively similar to a registered trademark. The Act duly takes care of the interest of the entities or individuals holding registered trademarks so that no one can misuse their intangible assets and thus, provides individuals with a right to sue the defaulter accountable for infringing upon the registered mark.
– Team AMLEGALS assisted by Ms. Pratistha Vaidya (Intern)
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