The Indian Hotels Company Limited versus Vivanta Hospitality Private Limited CS(Comm) 507/2022, I.A. 11684/2022
The Delhi High Court has, vide an order dated 28 April 2023 permanently injuncted Vivanta Hospitality Private Limited (‘the defendant’) from using the trade mark “VIVANTA” along with the domain name <www.vivantahospitality.com>. The Court had also imposed costs of INR 6 lakhs on the defendant.
The plaintiff, The Indian Hotels Company Limited which owns 35 VIVANTA hotels across 33 destinations, had first coined and adopted the mark VIVANTA for its hotels and other services in the year 2008. The plaintiff has a website at <www.vivantahotels.com> dedicated to the hotels under the brand name VIVANTA. The plaintiff is also the registered proprietor of the trademark “VIVANTA” (word/device) in Class 42 and 43, with the earliest registration dating back to 2008.
The defendant, offers its services in the hospitality sector and also provides tailor-made and customized holiday packages for its customers. Upon an investigation carried out by the plaintiff’s investigator, it had come to light that the defendant was initially incorporated on 5th July, 2010 as “R M Y BUILDERS & DEVELOPERS PRIVATE LIMITED” and later on 22nd February, 2021 changed its name to “VIVANTA HOSPITALITY PRIVATE LIMITED”. The domain name, www.vivantahospitalitty.com was registered by the defendant on 16th February, 2021.
The present suit was filed by the plaintiff seeking permanent injunction against the defendant from infringing the trademark VIVANTA of the plaintiff, passing off and other ancillary relief. The plaintiff contended that the services/packages provided by the defendant are bound to cause confusion in the minds of unwary consumers, who may associate the same with the plaintiff. The plaintiff further contended that the quality of services provided by the defendant as against the high quality services and standards of the plaintiff may dilute the goodwill and reputation of the plaintiff. The unauthorized use of the VIVANTA mark by the defendant would cause incalculable harm and injury to the business, goodwill and reputation associated with the plaintiff’s registered marks.
The Local Commissioner appointed by the Court had found a large stock of infringing material such as testimonial brochures, approval forms, gift sets, carry bags, stickers, envelopes, employment information sheets, membership cards, letter heads, survey forms, visiting cards, vouchers, coupons at the premises of the defendant, which had been placed on record.
In the same proceedings, the Court had passed an earlier granted an ex parte ad interim injunction order dated 27th July, 2022 in favour of the plaintiff restraining the defendant from using the plaintiff’s well-known trademark “VIVANTA” and had directed them to take down the website www.vivantahospitality.com.
The Counsel for the defendant submitted that the name of the company has been changed from “VIVANTA HOSPITALITY PRIVATE LIMITED” to “VVC HOSPITALITY PRIVATE LIMITED” and the defendant is no longer in the said business the Court may not impose damages and costs.
Noting that the defendant had failed to file written statement within the permissible period of 120 days, the Court held that since the defendant has not submitted the affidavit of admission/denial of documents filed by the plaintiff, the documents filed by the plaintiff shall be deemed to be admitted, in terms of Rule 4 of Chapter VII of the Delhi High Court (Original Side) Rules, 2018.
On the question of infringement and passing off of the plaintiff’s trademark by the defendant, the court observed that the plaintiff has established statutory as well as common law rights on account of the long usage of the trademark “VIVANTA”. The plaintiff has also been able to show its immense goodwill and reputation in respect of the aforesaid mark. On making a comparative analysis of the rival parties’ marks, the Court observed that defendant is using identical mark “VIVANTA” of the plaintiff by adding the expression “VACATION CLUB” as a suffix, which amounts to infringement of the plaintiff’s trademark as well as passing off to ride on the goodwill and reputation of the mark of the plaintiff. The Court further noted that the domain name of the defendant is also deceptively similar to that of the plaintiff and is likely to deceive the public of its association with the plaintiff. While granting the permanent injunction in favour of the plaintiff the Court also directed that –
· the domain name/website www.vivantahospitality.com shall stand transferred in favour of the plaintiff within one week.
· All the seized goods bearing the mark “VIVANTA” found in the premises of the defendant were directed to be destroyed by the defendant in the presence of the plaintiff’s representative.
· Further, considering that the plaintiff has deposited the Court fee and has also incurred expenses in executing the commission, the Court had imposed costs of Rs.6,00,000/- on the defendant.
To read the court order, click here.
Author: Sonu Shaji & Ruci Singh