After the termination of a license agreement, any use of the trademark by the licensee would amount to infringement of the trademark and the rights of the proprietor.

Navin Chawla, J.

1. This petition under Section 9 of the Arbitration and Conciliation Act, 1996 (hereinafter referred to as the ‘Act’) has been filed by the petitioner inter alia seeking the following reliefs:

“(a) pass an interim order of injunction thereby restraining the Respondent, its agents, employees, officers, Directors, etc. from using or permitting to be used or making any reference of the Sub-Licensed Mark in any manner whatsoever, directly or indirectly, including but not limited for and from the Hotel or any part concerning the same, and from all displays, hoardings, stationery, listings, internet, promotional material, advertisements, reference, on all internet channels (e.g. websites, third-party websites (online travel agencies), online publications, and domain names) or from using the same in any other manner whatsoever, etc. until the adjudication of the disputes by the Sale Arbitrator.”

2. It is the case of the petitioner that the petitioner is the Master Licencee for India, Sri Lanka and Bangladesh of Best Western International Inc. (hereinafter referred to as the ‘BWI’) which is a lodging industry service organization and is the owner of several trademarks. The Master Licence Agreement dated 03.09.2015 has been executed between the petitioner and BWI and whereby the petitioner was granted the right to grant sub-licence to entities/organizations/companies involved in the operation of Hotels to use the specified registered trademarks. It is further claimed that BWI is the sole and absolute owner of the trade mark “Best Western”. It is further claimed that BWI has global network of approximately 4,200 hotels in more than 100 countries of which ‘Best Western’ is an important mark as far as the name of the hotels are concerned.

3. It is the case of the petitioner that a Sub-Licence Agreement dated 01.04.2016 was executed between the parties in terms of which a limited, non-exclusive, nontransferable and restricted license to use the mark “Best Western” was granted by the Petitioner to the respondent. As the respondent did not adhere to the terms of the Sub-Licence Agreement in spite of repeated notices, the petitioner terminated the said Agreement vide notice dated 17.04.2017 which was followed with the reminders dated 07.06.2017 and 01.12.2017.

4. Learned counsel for the petitioner draws my attention to the photograph showing the use of the mark “Best Western” as the bill-board on the property as also to email dated 27.11.2017 to show that the respondent is also using “Best Western” as part of its email even after termination of the Sub-Licence Agreement. He further draws my attention to the screenshot of the website of the respondent using the said mark and logo.

5. Learned counsel for the petitioner submits that once the Sub-Licence Agreement has been terminated by the petitioner, the use of mark “Best Western” or Logo by the respondent is unauthorized and, in fact, mis-leading to the general public as it conveys continuing relationship between the petitioner and the respondent. He further draws my attention to certain terms and conditions of the Sub-Licence Agreement to contend that the respondent had been authorized to use the mark only during the term of the agreement and had specifically undertaken in the agreement not to use the said mark upon expiry of the said agreement. He places reliance to the Clause 1.1, 3.1, 18.1, 18.4 and 18.6 of Sub-Licence Agreement, which are reproduced herein below:

“Article 1.

Limited Sub-Licence

1.1 Licensor hereby grants to the Licensee a non-transferable, non-exclusive, limited and restricted sub-license permitting the Licensee to use the Sub-licensed Mark for the operation of the Hotel only during the Term and validity of this Agreement, and subject to and on the terms and conditions contained in this Agreement.

xxxxx

Article 3

Terms

3.1 The sub-license hereby granted in favour of the Licensee is for a fixed period of 10 (Ten) years (‘Term’) commencing from the Effective D