High Court of DelhiC.O. (COMM.IPD-TM)/280/2022

Travelodge Hotels India (Ip) Pte. Ltd. v. Travelodge Hotels Limited And The Registrar Of Trademarks.

2024-04-08Hon'Ble Mr. Justice Anish Dayal8 pages

$~4 * IN THE HIGH COURT OF DELHI AT NEW DELHI + C.O. (COMM.IPD-TM) 280/2022 TRAVELODGE HOTELS INDIA (IP) PTE. LTD. ..... Petitioner Through:

versus TRAVELODGE HOTELS LIMITED AND THE REGISTRAR OF TRADEMARKS.

..... Respondent Through:

None for Respondent no.1.

Mr. Harish Vaidyanathan Shankar, CGSC, with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Mr.

Lakshay Gunawat, and Mr. Krishnan V. for Respondent no. 2

CORAM:

HON'BLE MR. JUSTICE ANISH DAYAL

O R D E R

% 08.04.2024 1.

This rectification petition has been filed for removal of the respondent no.1's trademark TRAVELODGE registered in class 42 (No. 1277414, applied on 07.04.2024, on proposed basis and granted on 09.12.2005). 2.

The petition was originally filed before the International Property Appellate Board and later pursuant to the abolition of the IPAB, was transferred to this Court in 2021. Since then, notices have been issued to respondent No.1, however, as noted in the order dated 06.10.2022, no one appeared.

Thereafter on 23.03.2023 notice was accepted on behalf of Remfry and Sagar, the trademark Attorneys of respondent No.1. On 03.08.2023, the counsel for Remfry and Sagar stated that they have no instructions in the said The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

matter and the Court directed to inform the respondent No.1 about the next date of hearing. Despite the same, no one has appeared on behalf of respondent No.1 till date, and therefore, the Court does not have the benefit of either counsel or party's presence or any other pleading, necessitating an assessment on the basis of records.

Counsel for the petitioner has drawn the attention to the fact that petitioner holds trademark registration for the trademark 'TRAVELODGE' as well (No. 517417 in Class 3 filed on 25.09.1989 and No. 3038903 in Class 43) 5.

It is stated that pursuant to 1999 Act, the aspect of "services" was included in the trademark classes. Initially, registration of trademark was made in class 3, per force, since no category of services was available. 6.

Petitioner is duly incorporated in Singapore with Travelodge Hotels Asia (IP) PTE Ltd. being the Limited Company. As regards India, the following registrations were claimed when the petition was originally filed in 2018.

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However, as stated above, registrations were granted subsequently (No. 3038903) as well.

As regards other countries in the world, petitioner claimed registrations at the time of filing of petition, as under:

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Counsel for the petitioner points out that the earliest use of the petitioner's trademark 'TRAVELODGE' can be ascertained from the affidavit filed on 16.10.2019 by Mr. Jan Smits who had stated that he was deputed to India as General Manager of Regency Travelodge Resort, Goa in August 1994. Further, it is pointed out that the respondent's predecessor interest was an entity called the Travelodge Corporation which is admitted in the reply to the examination report filed in the impugned trademark registration. The Travelodge Corporation was succeeded by entity Forte USA Inc. and documents relating thereto (of the USA PTO) have been filed in the proceedings.

10.

It is stated that Forte USA Inc. filed opposition against the petitioner's earliest trademark 517417 for 'TRAVELODGE' but later filed withdrawal of opposition vide letter dated 21.03.2007 which was taken on record vide order The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

dated 18.12.2012 by the Trademark Registry, and has been placed on record. There is yet another trademark dispute inter se parties in the People's Repulic of China which was decided in favour of the petitioner and has been appended along with the petition as part of additional documents dated 25.08.2020. 11.

Aside from the prior use by petitioner, their counsel points out to nonuse by the respondent of the impugned trademark. For this purpose, he has relied upon the investigator's affidavit dated 15.06.2016 who conducted a full market survey in Delhi, Chennai, Mumbai and Kolkata with various tourist operators and travel agents querying them as to knowledge/ awareness of Travelodge U.K., their services and website www.travelodge.co.uk. It was informed that they had not heard of any such website, any such entity providing services, and had not availed of the services at any point of time. 12.

It has been held by the Coordinate Bench of this Court in Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan, 2023:DHC:5556 that in case the respondents have not appeared, averments of the petitioner will stand unrebutted and reliance can be placed on investigator's affidavit with respect to non-use.

13.

In these facts and circumstances and applying principles enunciated in Russell Corpn. (supra), the Court is of the opinion that respondent no.1's mark is liable to be taken of the Registrar under Section 47 of the Act, if not otherwise under Section 11 of the Act, as well, due to petitioner's prior registration, and identity of marks to that of the petitioner. 14.

Accordingly, the petition is allowed. The impugned mark TRAVELODGE registered in favour of the respondent no.1 under Number 1277414 in Class 42 be removed from the Register. The website of the registered trademark be also updated and the said removal be carried out within the period of 06 weeks.

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15.

The petition is allowed in the above said terms and is disposed of. 16.

Pending applications, if any, are also disposed of as infructuous. 17.

Registry is directed to supply the copy of the present order to the Office of the Controller General on e-mail llc-ipo@gov.in for compliance of this order.

18.

Order be uploaded on the website of this Court. ANISH DAYAL, J APRIL 8, 2024/MR/ig Click here to check corrigendum, if any The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.