Suit filed for disputed trade mark in 1996 held maintainable.

M. KARPAGAVINAYAGAM, J.

These appeals have been filed by the plaintiff in C.S. No. 141 of 1996, aggrieved by the order dated 29-4-1997 passed by the learned Single Judge in O.A. Nos. 163 of 164 of 1996 in the said suit. In this judgment, we will refer to the parties as they are described in the suit for convenience.

2. The plaintiff, Park Hotels and Resorts Inc., Seattle, Washington, U.S.A., hereinafter referred to as CPHR, filed the said suit seeking for permanent injunction restraining the defendant Westinn Hospitality Services Limited, Madras, hereinafter referred to as "WHSL", from passing-off its business as that of 'CPHR' by using the name "Westinn" as part of its corporate name, besides claiming damages and costs.

3. In the said suit, the plaintiff filed O.A. No. 163 of 1996 seeking for the grant of ad interim injunction restraining the defendant from passing off its business by using the expression "Westinn" or any other expression aurally, phonetically, or otherwise deceptively similar to it in the course of its business. It also filed O.A. No. 164 of 1996 seeking for ad-interim injunction restraining the defendant from proceeding further with respect to the proposed public issue of shares by making public announcements, or by receiving subscription from applicants pending disposal of the suit.

4. The learned single Judge after hearing both the parties, dismissed both the applications. The plaintiff, as stated above, has filed these appeals against the impugned order rejecting the interlocutory applications, before this court.

5. Briefly stated, the facts which are considered relevant and necessary for the purpose of disposal of these appeals are the following:

The plaintiff is one of the oldest international hotel management companies, rendering high class hospitality services under the mark/name "Westinn". The plaintiff and its predecessors have been in the hotel and hospitality service business for over 60 years. In 1988, the plaintiff acquired the Westinn Hotel Company, which owned reputed and high class hotels in different parts of the world including the Asia-Pacific Region. The service mark "Westinn" and "logo" are identified throughout the world. The high quality services are offered by the plaintiff and the "Westinn" name and logo have been acknowledged as a symbol of the plaintiff's high quality service and continue to be so in the Asia-Pacific Region including India.

6. In the year 1988, the plaintiff appointed a General Sales Agent in India, who was authorised to provide exclusive hotel representation services with respect to the Westinn Hotels all over the world.

7. The defendant was first incorporated under the name "Westinn Consultants Private Limited" in August, 1989. It is basically a consultancy company, providing consultancy services in civil construction, technical, financial, matters etc. With respect to projects including hotel projects. In 1991, the defendant launched a division 'Hotlink' for providing hotel marketing and reservation system with centre spread all over India. In December 1992, the defendant's name was changed to Westinn Hospitality Services Private Limited.

8. In 1995, the defendant entered into a collaboration agreement with Days Inn of American Inc., U.S.A., a popular US chain hotels by which the defendant would exclusively promote and market the said U.S. Company's services in India. When the plaintiff came to know of this through media reports that appeared in August 1995, and the defendant's operating commercially in India the hospitality services relating to the hotel industrial using the word "Westinn", the plaintiff sent a cease and desist notice to the defendant calling upon them not to use the word "Westin" or "Westinn" or any other similar words. Instead of acting upon the said notice, the defendant reacted by filing a suit in C.S. No. 5 of 1996 against the plaintiff under Section 120 of the Trade and Merchandise Marks Act, 1958 alleging groundless threat and sought