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2022 Supreme(Del) 1033
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Kerzner International Limited - Appellant
Versus
Vikas Aggarwal & Ors. - Respondents
CS (Comm) 321 of 2022 and I.As. 7580-84 of 2022
Decided On : 13-05-2022
Mr. Chander M. Lall, Sr. Advocate, Along, Ms. Nancy Roy, Mr. Raghav Malik, Ms. Prakriti Varshney, Ms. Annanya Chugh, Advocates, for the Appellant.
The judgment established the importance of reputation and overlap of services in trademark disputes, and the application of injunctions under Section 12A of the Commercial Courts Act, 2015 and Order XXXIX Rules 1 & 2 CPC.
Headnote:
TRADEMARK - ATLANTIS - Commercial Courts Act, 2015 - Section 12A, Order XXXIX Rules 1 & 2 CPC - Section 11 of the Trade Marks Act, 1999
Fact of the Case:
The Plaintiff, Kerzner International Limited, sought protection of its trademark 'ATLANTIS' used in respect of entertainment services, hotels, resorts, and other connected services. The Defendants applied to register the trademark 'ATLANTIS PARK BALLROOM' for services including providing food and drink, and temporary accommodation. The Plaintiff claimed reputation in India and objected to the Defendants' use of the mark.
Finding of the Court:
The Court found that the Plaintiff had established a prima facie case for grant of an injunction. It restrained the Defendants from making fresh bookings under the name 'ATLANTIS PARK BALLROOM' but allowed them to provide services for bookings already made. The Defendants were directed to file a list of bookings already made within two weeks.
Issues: The issues involved the use of the trademark 'ATLANTIS' in India, the overlap of services between the Plaintiff and Defendants, and the application of Section 11 of the Trade Marks Act, 1999.
Ratio Decidendi: The Court applied Section 12A of the Commercial Courts Act, 2015 to allow exemption from instituting prelitigation mediation. It also considered Order XXXIX Rules 1 & 2 CPC in granting the injunction. The Court's analysis focused on the reputation of the Plaintiff's mark in India, the overlapping services, and the prominent feature of the mark 'ATLANTIS' in the Defendants' mark.
Final Decision: The Defendants were restrained from making fresh bookings under the name 'ATLANTIS PARK BALLROOM' and directed to file a list of bookings already made within two weeks. The application was listed for hearing on 25th July, 2022.
ORDER
1. This hearing has been done through hybrid mode.
I.A. 7582/2022 (for exemption)
2. Allowed, subject to all just exceptions. I.A. 7582/2022 is disposed of.
I.A. 7583/2022 (u/S 12A)
3. This is an application seeking exemption from instituting prelitigation mediation. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, the application is allowed.
4. I.A. 7583/2022 is disposed of.
I.A. 7581/2022 (for Additional documents)
5. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015. The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
6. I.A. 7581/2022 is disposed of.
I.A. 7584/2022 (for directions)
7. This is an application seeking directions to allow the counsels for the Plaintiff to apply for the court fees and extension of time to file the same. The e-Court fee is directed to be issued through the counsel. Let the court fee be deposited within two weeks.
8. I.A. 7584/2022 is disposed of.
CS (COMM) 321/2022
9. Let the plaint be registered as a suit.
10. Issue summons to the Defendants through all modes upon filing of Process Fee.
11. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
12. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
13. List before Court on 25th July, 2022.
I.A. 7580/2022 (u/O XXXIX Rules 1 & 2 CPC)
14. The Plaintiff- Kerzner International Limited has filed the present suit seeking protection of its trademark 'ATLANTIS' used in respect of entertainment services, hotels, resorts and other connected services. It is the case of the Plaintiff that it is one of the world's renowned and leading global service provider engaged in management, development and operation of destination resorts, properties, luxury resort hotels, etc. It manages more than 15 hotels in approximately 10 countries. The Plaintiff adopted the mark 'ATLANTIS' in 1994. The Plaintiff company was incorporated in the Commonwealth of the Bahamas in 2002.
15. The first flagship property of the Plaintiff under the trademark 'ATLANTIS' is stated to be the Paradise Island mega-resort complex in the Bahamas. Thereafter a water themed resort- ATLANTIS, The Palm, Dubai was opened in 2008 which is located at the crescent of the man-made Palm Jumeirah in Dubai. It also claims to have 'ATLANTIS' resort in Sanya, China which is a resort rising from the South China Sea. It is the case of the Plaintiff that its resorts are unique, ocean-themed destinations offering a wide variety of entertainment experiences. The Plaintiff owns and operates the website www.atlantis.com for providing information about the 'ATLANTIS' properties around the world which is stated to be registered in the name of the Plaintiff since 1993.
16. The mark 'ATLANTIS' has been applied for registration in India and internationally. In India, the Plaintiff owns various registrations in Classes 35, 36,39, and 41. The Plaintiff also has registration in Class- 42 under trade mark number 1416284 qua the following services:
'PROVIDING TEMPORARY ACCOMMODATION; PROVIDING HOTEL ACCOMMODATION, HOTEL SERVICES, RESORT HOTEL SERVICES ; ARRANGEMENT OF ACCOMMODATION IN RESORTS; PROVIDING CONVENTION FACILITIES AND SERVICES; TRAVEL AGENCY SER
