HON’BLE MR. JUSTICE S.RAVINDRA BHAT

I.A. Nos. 12940/2009 (Under Order 39 Rule 1 & 2), 12941/2009 (Under Section 151 CPC) & 12942/2009 (Under Section 149)

1. This order will dispose of the said application under Order 39 Rules 1 and 2 (I.A. No. 12940/2009.

2. The plaintiff (hereafterreferred to as“ITC”) contends being one of India?s largest private sector companies with an annual turn-over of Rs.23,144 crores. It mentions being rated amongst “World?s Best Big Companies”, “Asia?s „FAB-50?” concerns and being listed in the Forbes magazine as one of the “World?s Most Reputable Companies”. It claims also being rated amongst India?s most respected companies by the Business World and also amongst India?s most valuable companies by Business Today. The suit refers to various publications, containing laudatory descriptions of the plaintiff. The plaintiff claims having diverse business in products and services such as hotels, paperboards, speciality papers, packaging, agro-business, Fast Moving Consumer Goods (FMCG), including cigarettes; foods, confectionary, Information Technology, branded-apparel, personal care, stationery etc. It also contends being one of the country?s largest foreign exchange earners. Para 11 of the suit lists several achievements to the plaintiff?s credit, including the “World Business Award”, instituted jointly inter alia by UNDP; it?s restaurant Bukhara at ITC Maurya in New Delhi having been declared as the “Best Indian Restaurant in the world” by =The Restaurant Magazine‘, UK; ITC Sonar in Kolkata being described as one of the best hotels in the world by the Association of British Travel Agents (ABTA); its Kaya Kalp – The Royal Spa at its hotel, ITC Mughal Agra as “World?s Best City Spa”; a Golden Peacock Award bagged by it for “Corporate Social Responsibility (Asia)” in 2007 and also it being the only FMCG to have featured in the Forbes 2000 list.

3. ITC launched its hotel business in 1975; it claims to be using the “WELCOMGROUP” logo since 1975. The suit describes 14 hotels under the ITC “WELCOMGROUP” banner in various locales and cities in India, including ITC Maurya in New Delhi; ITC Windsor in Bengaluru; ITC Maratha at Mumbai; ITC Sonar at Calcutta; ITC Grand at Mumbai and ITC Mughal at Agra. ITC claims that its “WELCOMGROUP”mark/logo has been in continuous and extensive use on its products and packaging of its famous “Kitchens of India” range of ready-to-eat food products.

4. ITC mentions about the long, continuous and extensive use of the “WELCOMGROUP”logo which was adopted and used since 1975, i.e. 34 years ago. That logo along with its derivatives is asserted as an essential feature of several registered trademarks of ITC; the details of such registrations are mentioned in para 13 of the suit; they include classes-8, 30, 34 and 42, in relation to various products and services. ITC also mentions that it owns trademark registrations in several classes in as many as 14 other countries. ITC has provided, in support of the averments, copies of trademark registrations in India as well as abroad. In para 16 of the suit, ITC contends that the “WELCOMGROUP” mark/logo with its derivative is written in a descriptive manner and is an original creation, for which artistic work it owns copyright; the description of copyright registrations obtained in relation to the logos used by different hotels have been set-out in the suit.

5. ITC states that the third defendant is a company existing under Indian laws, doing business in tobacco, FMCG, cosmetics, retail business etc. It states that from recent media reports, it became aware that the second defendant (hereafter referred to as “Philip Morris”) is a member of the “Philip Morris Group of Companies”. The first defendant, Philip Morris Products SA, ownsthe trademark “Marlboro”; the defendantsare hereafter collectively referred to as “Philip Morris”. Philip Morris has introduced its cigarettes in India by the name “Marlboro”. The third defendant is licensed to