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2015 Supreme(Del) 3233
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN SINGH, J.
BANYAN TREE HOLDINGS (P) LIMITED - Plaintiff
Vs.
MR. JAMSHYAD SETHNA & ANR - Defendants
CS(OS) No.2172/2007
Decided on : 20.11.2015
Mr. Pravin Anand, Adv. with Mr. Aditya Gupta & Mr. Vishnu Rege, Advs.
Mr. Riju Raj Jamwal, Adv.
The evolving nature of reputation in the modern business landscape and the continuous cause of action in passing off cases.
Headnote:
PASSING OFF - TRADEMARK - [Order XXXIX Rules 1 and 2 CPC, Section 24 CPC, Order VI Rule 17 CPC, Order VII Rule 11 CPC] - The court discussed the concept of goodwill, trans-border reputation, and the test of confusion and deception in the context of passing off. It emphasized the importance of reputation and goodwill in establishing a cause of action for passing off and highlighted the evolving nature of reputation in the modern business landscape. The court also addressed the issue of delay and laches, emphasizing that a fresh cause of action arises with each deceitful act committed by the defendant. The court rejected the defendant's plea of limitation, stating that the suit was not barred by limitation due to the continuous cause of action.
Fact of the Case:
The plaintiff, a publicly listed company, filed a suit for permanent injunction against the defendants, alleging passing off, unfair competition, and dilution of trademark. The plaintiff claimed to be the registered owner of the trademark BANYAN TREE and its device, while the defendants were accused of adopting a deceptively similar mark. The defendants raised defenses including limitation, lack of trade connection, and prior use of the trademark.
Finding of the Court:
The court found in favor of the plaintiff, granting an ad-interim injunction restraining the defendants from using the name/mark BANYAN or its device. The court rejected the defendant's plea of limitation, stating that the suit was not barred by limitation due to the continuous cause of action.
Issues: The key issues included the establishment of goodwill and reputation, the evolving nature of reputation in the modern business landscape, the test of confusion and deception in passing off, and the plea of limitation raised by the defendants.
Ratio Decidendi: The court emphasized the importance of reputation and goodwill in establishing a cause of action for passing off. It highlighted the evolving nature of reputation in the modern business landscape and rejected the defendant's plea of limitation, stating that the suit was not barred by limitation due to the continuous cause of action.
Final Decision: The court granted an ad-interim injunction restraining the defendants from using the name/mark BANYAN or its device, except for the use of the mark BANYAN pertaining to the activities of travel agent under the name of Banyan Tours and Travels Private Limited during the pendency of the suit.
MANMOHAN SINGH, J.
1. By way of this order, I propose to decide the following applications filed by the parties:
i. I.A. No.12577/2007, under Order XXXIX Rules 1 and 2 CPC, filed by the plaintiff;
ii. I.A. No.12925/2015, under Section 24 CPC, filed by the plaintiff;
iii. I.A. No.16501/2015, under Order VI Rule 17 CPC, filed by the defendant; and
iv. I.A. No.2072/2009, under Order VII Rule 11 CPC, filed by the defendant.
2. The plaintiff has filed the present suit for permanent injunction restraining passing off, unfair competition, dilution of trademark, rendition of accounts of profits, delivery up, damages, etc. against the defendants.
I.A. No.12577/2007(u/o XXXIX R.1 & 2 CPC)
3. The abovementioned application has been filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 CPC seeking ad-interim injunction.
4. Brief facts of the case are that the plaintiff is a Company publicly listed, organized and existing under the laws of Singapore having its registered office at 211, Upper Bukit Timah Road, Singapore 588182. Mr. Lee Kin Meng is duly authorised to sign, verify and institute the present suit.
5. The plaintiff’s group of companies is one of the world’s most famous and well known hotel and resort chain group using the trademark BANYAN TREE and its device.
6. The plaintiff’s flagship company Banyan Tree Resort was launched in 1994 in Laguna Phuket under the trademark BANYAN TREE and its device. It is averred in the plaint that this was the first time the plaintiff’s predecessor-in-title coined, adopted and used the trademark BANYAN and its device. It is submitted that the mark BANYAN TREE and its device were adopted as arbitrary marks and were also not being used by a third party for commercial use in relation to hotels, resorts or spas, etc. Hence, the mark is inherently distinctive of the business and products of the plaintiff and the continuous use of the trademark BANYAN TREE by the plaintiff group since the year 1994 has created goodwill and reputation in the said mark that is associated with the plaintiff and the plaintiff alone.
7. The plaintiff Group's services and products under the trademarks BANYAN TREE and its device have been widely promoted inter alia through print and audio-visual media including television programmes, advertisements, articles and write-ups appearing in leading newspapers, magazines, journals, etc. all of which enjoy a wide viewer ship, circulation and readership all over the world. Many of these forms of media also have a substantial reach and circulation in India and are viewed by millions of Indians who travel abroad or who subscribe to the same in India every year. In addition, many people from all over the world including India access the plaintiff Group's websites: www.banyantree.com, www.banyantreespa.com, www.banyantreegallery.com, www.banyanresorts.com that have been registered since as early as 1996 and become acquainted with the plaintiff Group's business, services and products which further contributed to the reputation and notoriety of the mark BANYAN TREE and its device of the plaintiff.
8. The plaintiff Group, being prior in the adoption and use of the mark BANYANTREE and its device, is its proprietor and thus, entitled to the use of these marks under common law rights, to the exclusion of all others. Apart from having common law rights in the mark BANYAN TREE and its device, the plaintiff also has statutory right in the same. It is submitted that the plaintiff has registered or has sought to register the mark BANYAN TREE and its device in more than 30 countries of the world.
9. The plaintiff is, thus, the registered owner of the trademark BANYAN TREE as well as the device of BANYAN in various countries. This ownership of the said marks was transferred to the plaintiff vide a Deed of Assignment in favour of the plaintiff along with all the goodwill by one Tropical Resorts Management Co. Ltd., a company with contact address at 211, Upper Bukit Tim
