The judgment established the significance of phonetic similarity, prior use, and likelihood of confusion in determining trademark infringement under the Trade Marks Act, 1999.

Sanjeev Sachdeva, J.

IA No. 3052/2012 (under Order 39 Rule 1 & 2 CPC), IA No. 5844/2012 (under Order 39 Rule 4 CPC) and IA No. 7826/2012 (under Section 124 of Trademarks Act, 1999)

1. The Plaintiff has filed the present suit for permanent injunction thereby restraining the Defendants from infringing the registered trademark of the Plaintiff.

2. The Plaintiff claims to be the owner of a chain of hotels referred to as Taj Group of Hotels. The Plaintiff in the year 2004 adopted the mark JIVA in relation to the business of SPA. The said mark is claimed to have been continuously used and promoted by the Plaintiff world over and the public refers to the Plaintiff’s SPA services as JIVA. The first JIVA SPA was opened by the Plaintiff at Usha Kiran Palace, Gwalior. Thereafter Plaintiff claims to have launched its JIVA SPA at various locations and at the time of filing of the suit, Plaintiff claims that there were 24 JIVA SPAs located across India and abroad.

3. The Plaintiff claims to have extensively used and publicised its mark JIVA through various publicity mediums. Substantial amount is claimed to have been spent on sales promotion and promotion of the mark JIVA by the Plaintiff. The Plaintiff’s JIVA SPA is stated to have won various awards and accolades both in India and abroad. The mark of the Plaintiff is also advertised on the internet.

4. The Plaintiff claims that the trademark of the Plaintiff JIVA has been recognized by various Courts in India. The Plaintiff claims to be the registered proprietor of the trademark JIVA in India as well as in several countries. The Plaintiff claims to have registered the trademark JIVA in India and five other countries, namely, France, South Africa, Indonesia, United Kingdom and Maldives.

5. As per the Plaintiff, the Plaintiff recently became aware of the use by the Defendants of a phonetically and visually deceptively similar trade mark ‘ZIVA’. The Defendants are using the said mark ‘ZIVA’ also for the purposes of SPA. The Defendants also have a domain name www.zivaspa.com. As per the Plaintiff, the Defendants are using the mark for the services identical to that of the Plaintiff and the two marks are deceptively similar inasmuch as pronunciation of the letter Z or J is very similar. As per the Plaintiff, Defendants have dishonestly adopted the mark ‘ZIVA’ to take undue advantage of Plaintiff’s goodwill and reputation. The use of the mark ZIVA in identical services to the services of the Plaintiff is likely to create confusion in the minds of the consumers. The Plaintiff claims to have become aware of the use of the impugned mark ZIVA by the Defendants in January, 2012. The Plaintiff filed the suit in February, 2012.

6. By an ex parte order dated 17.02.2012, the Defendants were restrained from dealing in any manner with the service or goods infringing, divulging or passing of the Plaintiff’s mark ‘JIVA’.

7. Defendants No. 1 and 2 have filed their written statement claiming that the mark of the Defendants ‘ZIVA’ is registered since 01.10.2009 and the Defendants claimed users since 01.02.2007 in Class-42. The Defendants contend that the Plaintiff being in the same business should have been awareof the use of the mark ZIVA by the Defendants and the registration in favour of the Defendants. Learned counsel for the Defendants contends that the Plaintiff chose to sit back and wait for the Defendants to grow and as such have disentitled them from obtaining an interim order.

8. The Defendants further contend that the Plaintiff was restrained from using the mark ‘JIVA’by a Single Judge of this Court and the Division Bench has permitted the Plaintiff to use the mark JIVA subject to giving an undertaking that the Plaintiff shall not start any SPA independently of any hotel owned/leased or mortgaged by it under the name JIVA. The Defendants claim that they are using the mark ZIVA in locations where the Plaintiff as per its own undertaking given to the Court is not entitled to operate.

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