The judgment establishes the principle that a trademark must demonstrate distinctiveness and exclusive association with the business to claim protection. It also underscores the importance of proving misrepresentation and likelihood of confusion in passing off actions.

1. The two plaintiffs viz. M/s Bright Enterprises Pvt. Ltd. and M/s AKM Enterprises Pvt. Ltd. have instituted this suit for permanent injunction to restrain the two defendants viz. MJ Bizcraft LLP and Shangri-La’s Eros Hotel from using for any of their business activities the trademark “PRIVEE” or any other trademark or logo/device which is identical to or deceptively similar to the plaintiffs’ trademark “MBD PRIVE” and “PRIVE” or which incorporates the word “PRIVE” or any other trademark or logo or device which is identical to or deceptively similar to the plaintiffs trademark and for ancillary reliefs.

2. Being of a prima facie view that the plaintiffs have not made out any case, the counsel for the plaintiffs was on 22nd July, 2016 heard at length on admission and orders reserved.

3. It is the case of the plaintiffs:

(i) that the plaintiff companies form part of the MBD Group;

(ii) that the plaintiff no.1 and the plaintiff no.2 have made foray into premium and luxury mixed used developments primarily entailing hotel, retail and entertainment under the brand names like “MBD NEOPOLIS” and “MBD PRIVE” which are currently under operation in areas including but not limited to Noida, Ludhiana and Jalandhar;

(iii) that the plaintiffs have been in the service of managing and operating a five star luxury hotel by the name of The Radisson Blue MBD Hotel in Noida, Ludhiana and Jalandhar;

(iv) that the plaintiff no.1 coined the trademarks “MBD PRIVE” and “PRIVE” and has exclusively and continuously along with the plaintiff no.2 used the same for a luxury wing of rooms in the Radisson Blue MBD Hotels; these luxury rooms inside the Radisson Blue MBD Hotels are also well known as the “PRIVE COLLECTION” rooms and are also promoted by the name of “MBD PRIVE”;

(v) that the trademark “MBD PRIVE” and “PRIVE” are inherently distinctive and are exclusively associated by consumers as indicative of trade source of the plaintiffs; as such the trademarks “MBD PRIVE” and “PRIVE” distinguishes services and business of the plaintiffs from those of others in the course of trade;

(vi) that the plaintiff no.1 has obtained six registrations for the trademark “MBD PRIVE” in Classes 8,16,21,29 & 30 and applications for registration of the trademark “PRIVE” in Classes 36,41 and 43 and of “MBD PRIVE” in Classes 36 and 41 are pending;

(vii) that the plaintiffs by continuous and extensive use of the trademarks “MBD PRIVE” and “PRIVE” have also acquired common law rights to the exclusive use of the said trademarks, either independently or conjunctively with other words, marks or logos;

(viii) that the trademark “MBD PRIVE” and “PRIVE” feature prominently in print and electronic media including trade journals, directories, magazines and periodicals having wide coverage and circulation;

(ix) that the trademarks “MBD PRIVE” and “PRIVE” have thus attained the designation of a well known trademark within the meaning of Trademarks Act, 1999;

(x) that the defendant no.1 MJ Bizcraft LLP is carrying on business relating to nightclubs and discotheques;

(xi) that the plaintiffs in the month of January, 2016 acquired knowledge and information that there is a nightclub/discotheque running in defendant no.2 Shangri-La’s Eros Hotel at Ashoka Road, Connaught Place, New Delhi under the infringing trademark “PRIVEE”;

(xii) that on contacting the defendant no.2 Shangi-La’s Eros Hotel, it was learnt that the discotheque in the name of “PRIVEE” is being run by the defendant no.1 MJ Bizcraft LLP;

(xiii) that the defendant no.1 MJ Bizcraft LLP adopted the infringing trademark only in December, 2015;

(xiv) that adoption by the defendants of the trademark “PRIVEE” constitutes infringement under Section 29 of the Trademarks Act;

(xv) that the defendants are fraudulently enticing customers of the plaintiffs to purchase their services by selling the same under the infringing trademark “PRIVEE”;

(xvi) that continued usage of the infringing trademark “PRIVEE” by the defendants for conducting their bu