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2013 Supreme(Cal) 273
High Court of Judicature at Calcutta
SUBHRO KAMAL MUKHERJEE & ASIM KUMAR MONDAL, JJ.
Sea Hawk (India) Private Limited
Versus
Hotel New Sea Hawk
F.M.A. No. 204 of 2013
Decided on : 17-05-2013.
For the Appellant:Ranjan Bachawat, Prithviraj Sinha, Victor Dutta, Ms. Sreemoyee Roychowdhury, Ms. Mitul Dasgupta, Sandeep Bose, Advocates.
For the Respondent:Swapan Kumar Mallick, Prasun Ghosh, Advocates.
The principle of res judicata is not applicable where the earlier suit was based on passing off an unregistered trademark, while the present suit is based on infringement of a registered trademark.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - RES JUDICATA - APPLICABILITY - REGISTERED TRADEMARK - INJUNCTION - BALANCE OF CONVENIENCE: The court held that the principle of res judicata was not applicable in the present case as the earlier suit was based on passing off an unregistered trademark, while the present suit was based on infringement of a registered trademark.
Fact of the Case:
The plaintiff, a hotel owner, filed a suit for infringement of its registered trademark 'SEA HAWK' against the defendant, who was also running a hotel under the name 'HOTEL NEW SEA HAWK'. The plaintiff alleged that the defendant's use of the mark was causing confusion and deception among the public. The defendant contended that the suit was barred by the principle of res judicata as an earlier suit between the parties on the same issue had been dismissed and an appeal was pending before the High Court.
Finding of the Court:
The court held that the principle of res judicata was not applicable in the present case as the earlier suit was based on passing off an unregistered trademark, while the present suit was based on infringement of a registered trademark. The court also held that the balance of convenience tilted in favor of the defendant as the defendant had been running the business for a long time and had even changed the name of the hotel at the request of the plaintiff.
Issues: 1. Whether the principle of res judicata was applicable in the present case? 2. Whether the balance of convenience tilted in favor of the plaintiff or the defendant?
Ratio Decidendi: 1. The principle of res judicata is not applicable where the earlier suit was based on passing off an unregistered trademark, while the present suit is based on infringement of a registered trademark. 2. The balance of convenience tilts in favor of the defendant where the defendant has been running the business for a long time and has even changed the name of the hotel at the request of the plaintiff.
Final Decision: The court allowed the appeal and directed the defendant to insert in all their advertisements and papers that the Hotel New Sea Hawk, Puri, is no way connected or related with the Hotel Sea Hawk, Digha. The defendant was also directed to maintain the audited accounts of the business of Hotel Sea Hawk, Puri, and to submit such accounts quarterly in the court below.
Asim Kumar Mondal, J.
In the instant appeal the appellant/plaintiff challenges the impugned order dated July 17, 2012, passed by the learned 5th Additional District Judge, at Alipore in T.S. no.7 of 2012 whereby the learned Judge refused to grant ad interim injunction to the appellant against the respondents.
The plaintiff is a private limited company incorporated under the Companies Act, 1956, having its registered office at 334, Joshor Road, Kalindi, Kolkata-89 and, also, a place of business at P111, Kalindi Housing Estate Calcutta-89. The plaintiff is an established Hotel running a business of, inter alia, providing hotel and lodging services since 1974. The plaintiff’s principal hotel is situated at Digha under the name and style of Hotel “SEA HAW K”. The said hotel of the plaintiff has grown to become a popular name in the hotel business. The trade name “SEA HAWK”/”HOTEL SEA HAWK” is being used by the plaintiff since 1974. The plaintiff obtained registration of the trade mark “SEA HAW K” (word) under the numbers 1261503 in class 42 of Schedule IV of Trademarks Act, 1999 with effect from January 16, 2004.
The defendant/respondent is, also, engaged in similar business of running a hotel in coastal city of Puri in the State of Orissa. From the various state magazines, the plaintiff, in course of its business, came to know that the respondent/defendant runs a hotel under identical name as that of the plaintiff’s hotel “SEA HAW K” at Puri, Orissa.
The plaintiff requested the respondent to change the name its hotel to avoid confusion amongst the relevant section of trade and public.
The respondent assured the plaintiff that it will change the name its hotel in due course. The respondent merely added the word “new” to the same making it “HOTEL NEW SEA HAW K”. The respondent illegally and dishonestly adopted the trade name “HOTEL NEW SEA HAWK” by copying the registered trade mark “SEA HAWK” of the plaintiff. The defendant/respondent claims to have opened hotel “SEA HAWK” at Puri in good faith corrected its name from “SEA HAWK” to “NEW SEA HAWK”, which is/was calculated to cause confusion among the general public, who presumed the hotel of the respondent to be a new hotel built by the plaintiff at Puri and due to which the plaintiff has suffered and still continues to suffer loss and prejudice.
The plaintiff filed a suit for “passing off” of under Section 105 (c) of the Trade and Merchandise Marks Act, 1958, before learned District Judge at Alipore being T.S. No. 97 of 1995 (subsequently re-numbered as T.S. no.1 of 1995) for decrees for permanent injunction and damages. The said T.S. no.1 of 1995 was dismissed. On context, it was, inter alia, held that the court had no territorial jurisdiction to entertain the suit; the suit was hopelessly barred by limitation; “SEA HAWK” was not a trade mark as a hotelier private services (and does not trade in goods); the trade and Trade and Merchandise Marks Act, 1958, does not give protection against copying of business names.
Being aggrieved and dissatisfied by the said judgment and decree passed by learned 5th Additional District Judge, at Alipore, the appellant/plaintiff preferred an appeal before this Court being FAT No.2213 of 2000 and the same is awaiting disposal. The appellant/plaintiff obtained registration of its trade name “SEA HAW K” during the pendency of the aforementioned appeal. Thus, the registration of its trade name “SEA HAW K” confers the plaintiff’s statutory right over its trade mark/trade name under the Section 28 of the trade marks Act, 1999.
The adoption and unauthorised use of the identical/deceptively similar trade mark in respect of same class of services by the respondent is in violation of rights of plaintiff and continues infringement and passing off the trade mark “SEA HAW K” “word” of the appellant. The plaintiff filed a suit being T.S. no. 25 of 2001 (subsequently renumbered as T.S. no. 7 of 2012) for infringement of plaintiff’s trade registered mar
