The defendant's use of a deceptively similar trade name and domain name to the plaintiff's trademark constituted trademark infringement and passing off, leading to the court's decision in favor of the plaintiff.

JUDGMENT

Amit Bansal, J. (Oral)--The present suit has been filed seeking the relief of permanent injunction restraining the defendant from infringing the trademark of the plaintiff, passing off and other ancillary relief.

BRIEF FACTS

2. Briefly the case set up by the plaintiff in the plaint is as under:

2.1. The plaintiff, the Indian Hotels Company Limited incorporated on 1st April, 1902 is a part of TATA Group of Companies and offers hospitality services. The plaintiff has a portfolio of 196 hotels including 40 under development globally across 4 continents, 12 countries. The plaintiff opened its first hotel in Mumbai in 1903.

2.2. The plaintiff first coined and adopted the mark VIVANTA for its hotels and other services in the year 2008. The plaintiff has a website at www.vivantahotels.com dedicated to its hotels under the brand name VIVANTA. The plaintiff has 35 VIVANTA hotels across 33 destinations.

2.3. The plaintiff is the registered proprietor of the trademark "VIVANTA" (word/device) in Class 42 and 43, details of which are given in paragraph 14 of the plaint. The earliest registration granted in favour of the plaintiff with respect to the mark "VIVANTA" dates back to the year 2008.

2.4. The plaintiff has given its annual turnover in respect of services rendered under the "VIVANTA" trademark from the financial year 2021-22. The turnover of the plaintiff in the year 2021-22 was Rs.668 crores, whereas the turnover in the financial year 2017-18 was around Rs.896 crores. The plaintiff has also provided the advertising and promotional expenses incurred by plaintiff in respect of the services rendered under the "VIVANTA" trademark. In the financial year 2017-18, the plaintiff spent around Rs.243 crores towards advertisement and promotional expenses.

2.5. It is the plaintiff's case that owing to its long, continuous and consistent usage of the trademark "VIVANTA" since its inception in 2008 and the promotional and advertisement expenses incurred, the trademark "VIVANTA" has acquired secondary significance. It has further acquired the status of a `well known trademark' in terms of Section 2(1)(zg) of the Trade Marks Act, 1999.

2.6. The defendant, Vivanta Hospitality Private Limited offers its services in the hospitality sector and also provides tailor-made and customized holiday packages for its customers.

2.7. On 21st March, 2022, the plaintiff received an email from Mr.Brajesh Sharma, informing them of the infringing activities of the defendant.

2.8. Upon an investigation carried out by the plaintiff's investigator, it came to light that the defendant was initially incorporated on 5th July, 2010 as "R M Y BUILDERS & DEVELOPERS PRIVATE LIMITED" and later on 22nd February, 2021 changed its name to "VIVANTA HOSPITALITY PRIVATE LIMITED". The domain name, www.vivantahospitalitty.com was registered by the defendant on 16th February, 2021. It was further revealed that there are more than 100 consumer complaints made by customers, who were under the impression that the defendant is associated with the plaintiff and were cheated by the defendant. Screenshots of a recent complaint dated 22nd June, 2022 have been given in paragraph 30 of the plaint.

2.9. On 23rd July, 2022, the plaintiff received another email by a customer informing the plaintiff that the defendant is claiming to be associated with the plaintiff and using the name "VIVANTA VACATION CLUB" on its websites, bills and promotional material in the following manner, [IMG], [IMG], [IMG] and [IMG].

2.10. The defendant has listed various properties belonging to the plaintiff on their website, screenshots of which have been given in paragraph 35 of the plaint.

2.11. The plaintiff is aggrieved by the dishonest and infringing use of its registered trademark "VIVANTA" (word/device) by the defendant. It is the plaintiff's case that the services/packages provided by the defendant are bound to cause confusion in the minds of unwary consumers, who may associate the same with the plaintiff