A suit for injunction against passing off of a service mark is not maintainable under Sec. 120 of the Trade and Merchandise Marks Act, 1958.

Headnote:
PASSING OFF - INJUNCTION - SERVICE MARK - JURISDICTION - TRADE AND MERCHANDISE MARKS ACT, 1958 - SEC. 120 - APPLICABILITY - SUIT FOR INJUNCTION AGAINST PASSING OFF OF SERVICE MARK - MAINTAINABILITY - PRIMA FACIE CASE - BALANCE OF CONVENIENCE - INTERIM INJUNCTION.
Fact of the Case:

Plaintiff, CPHR, claimed ownership of the service mark 'Westin' and alleged that the defendant, WHSL, was passing off its services as that of CPHR by using the name 'Westinn' as part of its corporate name. WHSL denied the allegations and claimed that it had been using the word 'Westinn' since 1989 and had acquired goodwill in India. Both parties filed applications for injunctions.
Finding of the Court:

The court held that the suit filed by WHSL under Sec. 120 of the Trade and Merchandise Marks Act, 1958 was misconceived as the statutory provisions were inapplicable to service marks. The court also held that CPHR had failed to establish a prima facie case for the grant of a temporary injunction and that the balance of convenience was in favor of WHSL. The court dismissed the applications for injunctions filed by both parties.
Issues: 1. Whether the suit filed by WHSL under Sec. 120 of the Trade and Merchandise Marks Act, 1958 was maintainable? 2. Whether CPHR had established a prima facie case for the grant of a temporary injunction? 3. Whether the balance of convenience was in favor of WHSL?
Ratio Decidendi: 1. The court held that the suit filed by WHSL under Sec. 120 of the Trade and Merchandise Marks Act, 1958 was misconceived as the statutory provisions were inapplicable to service marks. The court observed that service marks are not registerable under the Act and that the suit could only be maintained in relation to trade marks as defined in the Act. 2. The court held that CPHR had failed to establish a prima facie case for the grant of a temporary injunction. The court observed that CPHR had not acquired any goodwill in India in relation to the mark 'Westin' and that there was no evidence of any misrepresentation by WHSL. 3. The court held that the balance of convenience was in favor of WHSL. The court observed that WHSL had been using the word 'Westinn' as part of its corporate name since 1989 and had acquired goodwill in India.
Final Decision: The court dismissed the applications for injunctions filed by both parties.

Judgment :-

R. Jayasimha Babu, J.

1. C.S.5/96 is filed by Westinn Hospitality Services Limited. Defendant therein Ceasar Park Hotels & Resorts Incorporated is the plaintiff in C.S.141/96. The parties are hereinafter referred to as WHSL and cphr respectively. The suit by WHSL purports to be under Sec.120 of the Trade and Merchandise Marks Act, 1958 alleging that the ere are groundless threats by CPHR in relation to the use of the mark WESTINN. That mark is not a registered trade mark in India. The mark is not claimed in relation to any goods but is claimed by CPHR as service mark. Service marks are not registerable under the Trade and Merchandise Marks Act.

2. WHSL was initially incorporated in August, 1989 as Westinn Consultants Private Limited which name was changed in the year 1991 as Westinn Hospitality Services Limited. It has been using the words 'Westinn' as part of its corporate name from the year 1989. The company had been carrying on business of consultancy services for hotel and resorts and for providing an automatic hotel reservation system. The company has among other divisions, a division providing for automatic hotel reservation system which business is carried on under the name and style of 'HOTLINK'. The Managing Director of WHSL had training in Caulifornia before the Company was incorporated in India in 1989. Westinn is also managing some hotels in south India.

3. CPHR is said to be the owner of the service mark 'Westin' which was part of the corporate name of its erstwhile subsidiary. Westin hotel company incorporated. Both companies are based in the city of Seattle, USA. Westin hotels company is said to have been incorporated for the first time in or about 1924 and was running a large number of hotel in the north west regions of USA and at the time of institution of the suit, was running about 60 hotels in 11 countries, including Singapore. There is no Westin hotel in India. Neither the westin hotel company nor CPHR has any branch office in India. In 1995 a re-organisation appears to have been taken place as a result of which, CPHR which is said to have acquired westin hotel company in or about 1988, retained only the intellictual property rights in relation to the mark 'Westin' for the Asian region while for the rest of the world, the rights in relation to that mark were retained by Westin Hotel Company Westin is not a part of the corporate name of CPHR.

4. WHSL took steps to make a public issue some time in the middle of 1995. It is thereafter that the CPHR called upon the WHSL to cease and desist from using the mark Westin which mark was claimed as service mark belonging exclusively to CPHR for whole of Asia. These two suits came to be filed thereafter, first by WHSL and the later by CPHR. The suits filed by CPHR is to restrain the WHSL from passing off its business so that of CPHR by using the name 'Westin' as part of its corporate name; besides, claiming damages and costs.

5. In each of these suits respective plaintiffs have sought injunctions. Interim injunction has not been granted in favour of either of the plaintiff, so far. The applications for injunctions O.A. 28/96 in C.S. 5/96 and O.S.Nos. 163 and 164*96 in C.S. 141/96 are being disposed of by this common order.

6. So far as the application for injunction in C.S. 5/96 is concerned, the application as also the suit are misconceived as the statutory provisions under which the suit has been filed is wholly inapplicable to service marks. Service mark is not in any manner regulated by the Trade and Merchandise Marks Act, 1958. The suit under Sec. 120 of that Act can only be maintained in relation to trade marks as it is defined in the Act namely marks in relation to goods. The mark 'westin' according to the case pleaded is not a trade mark in relation to any goods but is a mark used in relation to or in connection with service. The application in that suit OS 28/96 has therefore to be rejected.

7. In so far as the suit filed by CPHR is concerned, it is admi

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