The judgment emphasizes the importance of prior use and trans-border reputation in trademark infringement cases, as well as the provisions of the Trademarks Act regarding non-use of registered trademarks.

Jayant Nath, J.

Ia No.12193/2018

1. This application is filed under Order 39 Rule 1 and 2 CPC seeking an interim injunction to restrain the defendants, their servants, partners etc. from using the mark "HOTEL INTERCITY DELHI" or any other mark identical or deceptively similar to the plaintiff's registered trademark INTERCITYHOTEL either as a trade mark/corporate name/domain name.

2. The plaintiff has filed the accompanying suit for permanent injunction against infringement of trade mark, passing off, unfair competition, rendition of accounts, damages and delivery up. The case of the plaintiff is that it forms part of the Deutsche Hospitality group of companies which comprises 130 hotels in 17 countries on 3 continents. It is further pleaded that one of the leading brands of the plaintiff is INTERCITYHOTEL. The said trademark INTERCITYHOTEL is registered in numerous jurisdictions with the earlier registration dating back to September 1992 in Germany. In India, the mark was registered on 20.5.2011 in class 43 in respect of "temporary accommodation providing food and drink". The plaintiff also holds registration for the mark "INTERCITYHOTEL" (Device). Hence, it is pleaded that these registrations evidence the recognition of the distinctiveness of the said trade mark and the exclusive proprietorship of the plaintiff to the said trademark. It is further pleaded that the mark INTERCITYHOTEL has acquired extensive global reputation and goodwill on account of high quality of the services offered by the plaintiff. The plaintiff is said to have 37 modern city hotels in the mid-range segment at the heart of the cities in Germany and other international destinations plus additional 34 hotels with its cooperation partner in Brazil and Uruguay.

3. Defendant No.1 is located at 17A/42, W.E.A.,Gurudwara Road, Opp.Jesa Ram Hospital, Near Karol Bagh Metro Station, Karol Bagh, New Delhi and is engaged in the business of providing temporary accommodation, food and drinks. It is further pleaded that defendant No.1 is operating a hotel under the trade name "HOTEL INTERCITY DELHI" in Karol Bagh which amounts to infringement of the plaintiff's registered trademark.

4. It is pleaded that the public and trade in India identify, recognize and associate the trademark INTERCITYHOTEL with the plaintiff. There is a flow of tourists as well as flow of business people from foreign countries and a large number of Indians and foreign nationals come across the services of the plaintiff internationally. The plaintiff's services under the said trademark have been widely promoted. The plaintiff also maintains a website www.intercityhotel.com. It is further pleaded that on account of its priority in adoption, use and registration and exclusive rights as proprietor of the trade mark INTERCITYHOTEL, the adoption or use of the said trademark or any deceptively similar mark in relation to same or similar services will not only cause deception and confusion in the minds of people but it is also contrary to the protection afforded to a well-known registered trade mark under the Trademarks Act.

5. Defendants have filed their written statement. They have stated that the said trademark HOTEL INTERCITY DELHI is a trademark of defendant No.1 firm. It is pleaded that defendants have been using the said trademark continuously, extensively and openly in relation to their business since 2010. It is pleaded that the said trademark of the answering defendant has become distinctive and has acquired secondary affiliation in relation to the goods and services. It is also pleaded that the defendants have made substantial investment on publicity of the trademark/label. It is also pleaded that the word INTERCITY is common to the trade and cannot be monopolized in favour of the plaintiff. Even the Indian railways is using the word INTERCITY for several of their trains.

6. I have heard learned counsel for the parties. Learned counsel for the plaintiff has submitted as follows:-

(i) That th