M/S Vasanta Bhavan Hotels India Private Limited v. Hotel Jain Vasantha Bhavan
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 28.06.2024
CORAM
THE HONOURABLE Mr. JUSTICE P.VELMURUGAN Civil Suit (Comm.Div.) No. 236 of 2023 M/s.Vasanta Bhavan Hotels India Private Limited Represented by its Director Mr.Anand Krishnan Having its office at No.34 Developed Plots (South Phase) Industrial Estate, Guindy, Chennai - 600 032.
... Plaintiff Vs.
Hotel Jain Vasantha Bhavan No.474 + R26, Gingee - Tindivanam Road Kalayiyur, Tamil Nadu - 604 206.
... Defendant Plaint has been filed under Order VII Rule I of the Code of Civil Procedure read with Order IV, Rule 1 of High Court Original Side Rules and Sections 134 and 135 of the Trade Marks Act, 1999, and plaint numbered as C.S.(Comm.Div.) No.236 of 2023 praying for judgment and decree as follows :
a) granting a permanent injunction restraining the defendant, their men, servants, agents or anyone claiming through or under them from in 1/14
any manner infringing the plaintiff Trade Mark and Trading style ''VASANTA BHAVAN'' by using the offending Trade Mark and Trading style ''HOTEL JAIN VASANTHA BHAVAN'' or any other mark or marks which are similar or in any way deceptively similar to or a colorable imitation of the plaintiff's Trade Mark ''VASANTA BHAVAN''.
b) granting a permanent injunction restraining the defendant, their men, servants, agents or anyone claiming through or under them from in any manner Passing-off the plaintiff Trade Mark and Trading style ''VASANTA BHAVAN'' by using the offending Trade Mark and Trading style ''HOTEL JAIN VASANTHA BHAVAN'' or any other mark or marks which are similar or in any way deceptively similar to or a colorable imitation of the plaintiff's Trade Mark ''VASANTA BHAVAN''.
c) directing the defendant to render a true and faithful account of the profits earned by them through the sale of food products bearing the offending trade mark ''HOTEL JAIN VASANTHA BHAVAN'' and directing payment of such profits to the plaintiff by way of damages for 2/14
infringement committed by the defendant.
d) directing the defendant to surrender to plaintiff the entire stock of unused offending goods with Trade Mark ''HOTEL JAIN VASANTHA BHAVAN'' with name boards, labels, wrappers, boxes, covers, bags, packets, cartons, bills, advertisements, materials, reports, envelops, brochures, printing blocks etc., bearing the offending Trademark for destruction.
e) directing the defendant to pay the plaintiff the costs of the suit. For Plaintiff :
Mr.Vijayan Subramanian For Defendant :
Set ex-parte on 03.06.2024 --------
J U D G M E N T
The suit has been filed seeking for (i) permanent injunction restraining the defendant, their men, servants, agents or anyone claiming through or under them from in any manner infringing the plaintiff Trade Mark and Trading style ''VASANTA BHAVAN'' by using the offending Trade Mark and Trading style ''HOTEL JAIN VASANTHA BHAVAN'' 3/14
or any other mark or marks which are similar or in any way deceptively similar to or a colorable imitation of the plaintiff's Trade Mark ''VASANTA BHAVAN''; (ii) permanent injunction restraining the defendant, their men, servants, agents or anyone claiming through or under them from in any manner Passing-off the plaintiff Trade Mark and Trading style ''VASANTA BHAVAN'' by using the offending Trade Mark and Trading style ''HOTEL JAIN VASANTHA BHAVAN'' or any other mark or marks which are similar or in any way deceptively similar to or a colorable imitation of the plaintiff's Trade Mark ''VASANTA BHAVAN''; (iii) directing the defendant to render a true and faithful account of the profits earned by them through the sale of food products bearing the offending trade mark ''HOTEL JAIN VASANTHA BHAVAN'' and directing payment of such profits to the plaintiff by way of damages for infringement committed by the defendant; (iv) directing the defendant to surrender to plaintiff the entire stock of unused offending goods with Trade Mark ''HOTEL JAIN VASANTHA BHAVAN'' with name boards, labels, wrappers, boxes, covers, bags, packets, cartons, bills, advertisements, materials, reports, envelops, 4/14
brochures, printing blocks etc., bearing the offending Trademark for destruction; and for costs.
2.1.
It is the case of the plaintiff/Company that one Late Muthukrishnan, who is the father of M.Ravi and grandfather of Anand Krishnan, entered into the hotel business in the year 1974 under the name and style ''VASANTA BHAVAN'' and they are running chain of Hotels in all over the world mainly in Tamil Nadu and they are also running restaurants along with the prefix ''Namma Veedu Vasanta Bhavan'' also. The essential feature of the plaintiff's trademark is ''VASANTA BHAVAN''. On account of long, continuous and extensive use of their unique trademark, tremendous amount of goodwill and reputation had accrued in favour of the plaintiff's trademark for the past 50 years. Further, several newspapers/magazines have carried articles about the plaintiff's Hotel and they have also invested a substantial sum of money in order to create the awareness among the public with regard to the high-quality hotel ''VASANTA BHAVAN''. 5/14
2.2. It is stated that the trademark and trading style ''VASANTA BHAVAN'' has acquired the secondary meaning to denote and connote the product of the plaintiff, which assures the public a unique taste and standard in the food preparations. Further, the Registrar of Trademarks, Government of India, Mumbai had issued the certificate of registration on 15.07.2021 for the mark ''VASANTA BHAVAN'' in the name of the plaintiff/Company. The plaintiff has also obtained the legal usage certificate, dated 19.04.2022 from the Trademark Registry, Intellectual Property Building, Guindy, Chennai. It is clearly mentioned in the said certificate that the plaintiff's trademark was used since 30.10.1974 and the said registration is valid till 15.07.2031. It is further stated that plaintiff has also obtained certificate of registration on 27.01.
2012 for the trademark ''NAMMA VEEDU VASANTA BHAVAN'' and also obtained Legal usage certificate on 19.04.2022, in which, it was clearly mentioned that the plaintiff's trademark ''NAMMA VEEDU VASANTA BHAVAN'' was used since 30.10.1974 and the said registration is valid till 27.01.2032.
reputation of the plaintiff, are now resorting to adopt the said trademark and trading style '' VASANTA BHAVAN'' or ''VASANTHA BHAVAN'' or ''VASANTHAM'' for their hotels and restaurant business. Except the plaintiff no one has any right to use the said trademark and/or trading style.
2.3. It is the case of the plaintiff that they came to know that the defendant is dishonestly using the mark as ''HOTEL JAIN VASANTHA BHAVAN'', which is deceptively similar to that of the plaintiff's trademark and trading style. The defendant adopted the identical trademark and trading style ''HOTEL JAIN VASANTHA BHAVAN'' only to deceive the general public and to make them believe the food preparations served at the defendant's place, has the connection with the plaintiff's hotel and the defendant is associated with the plaintiff. The defendant has no manner of right to adopt and use the said offending trademark and/or trading style as ''HOTEL JAIN VASANTHA BHAVAN''. If the defendant is allowed to continue the illegal acts in adopting the plaintiff's celebrated trademark and vend food preparations 7/14
under the offending trademark, the plaintiff would be put to irreparable loss, hardship and injury. Apart from the loss, the plaintiff's also fear that their well-earned reputation would be spoiled by the substandard foods being served at the defendant's business premises. It is further stated that the acts of the defendant also constitute criminal offences under the Trademark Act, 1999.
2.4. It is the further claim of the plaintiff that the defendant has made a clear attempt to pass-off their goods as that of the plaintiff's, by adopting the mark ''HOTEL JAIN VASANTHA BHAVAN'', which is visually, structurally, phonetically and deceptively identical to that of the plaintiff's trademark ''VASANTA BHAVAN''. Hence, the plaintiff has sent a Cease and Desist notice, dated 06.04.2023 and the same was received by the defendant on 19.04.2022. However, the defendant neither sent a reply notice nor had taken steps to change their hotel's name. The defendant is infringing the plaintiff's trademark, which is not permissible under law and hence, the plaintiff has filed the present suit for injuncting 8/14
the defendant from using the infringing trademark ''HOTEL JAIN VASANTHA BHAVAN''.
3. Since the defendant has not filed written statement, the defendant was set ex-parte by this Court on 03.06.2024.
4. On the side of the plaintiff, the Authorized Signatory of the plaintiff/Company, Mr.R.Jayaprakash, was examined as P.W.1 and he has reiterated the averments made in the plaint and also marked 45 documents as Exs.P1 to P45.
5. Heard the learned counsel appearing for the plaintiff and perused the materials available on record.
6. On a perusal of the plaint averments and also Proof Affidavit of the plaintiff and documents marked on behalf of them, this Court finds that the suit claim is proved by the plaintiff, and hence, the plaintiff is entitled to the decree as sought for in the plaint. Accordingly, the suit is 9/14
decreed as prayed for, with costs. Consequently, connected pending applications, if any, are closed.
28.06.2024 Index: Yes/No Speaking Order : Yes/No ms List of Witness examined on the side of the plaintiffs R.Jayaprakash - PW1 List of documents marked on the side of the plaintiffs SL.
No Exhibits DESCRIPTION OF DOCUMENTS DATED 1.
P1 Photocopy of the Lease Deed to run the restaurant named Vasanta Bhavan 26.10.1974 2.
P2 Printout of the Paper advertisement in Dinamani of the inauguration of plaintiff's restaurant at Egmore, Chennai 30.10.1974 3.
P3 Photocopy of the Lease Deed to run the restaurant named Vasanta Bhavan 19.10.1979 4.
P4 Printout of the Paper advertisement in The Hindu Paper 06.04.1984 5.
P5 Photocopy of the Lease Deed to run 04.10.1984 10/14
the restaurant named Vasanta Bhavan 6.
P6 Printout of the Paper Advertisement in Maalai Malar 15.07.1987 7.
P7 Photocopy of the receipt received by Krishna Agro Industries Corporation in the name of Vasanta Bhavan 14.12.1987 8.
P8 Photocopy of the receipt received by Krishna Agro Industries Corporation in the name of Vasanta Bhavan 15.12.1987 9.
P9 Photocopy of the letter received by Krishna Agro Industries Corporation in the name of Vasanta Bhavan 15.12.1987 10.
P10 Printout of the Paper Advertisement in The Hindu 20.10.1989 11.
P11 Photocopy of the Lease Deed to run the restaurant named Vasanta Bhavan 15.10.1989 12.
P12 Photocopy of the plaint filed by M.S.Tourist Homes Private Limited 02.01.1995 13.
P13 Photocopy of the Vasanta Bhavan inauguration advertisement 19.09.1997 14.
P14 Printout of the Incorporation Certificate of plaintiff 07.11.2003 15.
P15 Photocopy of the advertisement bill issued by Amudha Surabhi 10.11.2004 16.
P16 Printout of the advertisement for Vasanta Bhavan in Dinamalar Newspaper 01.01.2005 17.
P17 Printout of the advertisement for Vasanta Bhavan in Dinamalar Newspaper 13.02.2005 18.
P18 Printout of the Advertisement for Vasanta Bhavan in Maalai Murasu Newspaper 16.03.2005 19.
P19 Printout of the advertisement for Vasanta Bhavan in Maalai Malar 17.03.2005 11/14
Newspaper 20.
P20 Photocopy of the advertisement bill issued by Maalai Malar 17.03.2005 P21 Printout of the advertisement for Vasanta Bhavan in Maalai Murasu Newspaper 13.04.2005 P22 Photocopy of the advertisement bill issued by Maalai Murasu 13.04.2005 23.
P23 Printout of the advertisement for Vasanta Bhavan in Maalai Murasu Newspaper 18.04.2005 24.
P24 Photocopy of the advertisement bill issued by Maalai Murasu 18.04.2005 25.
P25 Printout of the advertisement for Vasanta Bhavan in Maalai Murasu Newspaper 24.03.2005 26.
P26 Photocopy of the advertisement bill issued by Maalai Murasu 24.03.2005 27.
P27 Photocopy of the advertisement bill for Vasanta Bhavan in Maalai Murasu Newspaper 19.05.2005 28.
P28 Printout of the advertisement for Vasanta Bhavan in Maalai Murasu Newspaper 25.05.2005 29.
P29 Photocopy of the advertisement bill issued by Maalai Murasu 25.05.2005 30.
P30 Printout of the advertisement for Vasanta Bhavan in The Hindu Newspaper 02.07.2005 31.
P31 Printout of the advertisement for the plaintiff Hotel dated 2005 32.
P32 Printout of the advertisement for the plaintiff Hotel dated 2005 33.
P33 Photocopy of the certificate issued in the name of the plaintiff by Tamil 23.01.2018 12/14
Nadu Food Safety and Drugs and Administration Department 34.
P34 Printout of the ISO Certificate issued in the name of Vasanta Bhavan 22.08.2018 35.
P35 Photocopy of the Trademark Registration Certificate in the name of Vasanta Bhavan 23.12.2021 36.
P36 Board Resolution 06.06.2024 37.
P37 Printout of the Legal usage Certificate in the name of Vasanta Bhavan 19.04.2022 38.
P38 Printout of the Legal usage Certificate in the name of Namma Veedu Vasanta Bhavan 19.04.2022 39.
P39 Photocopy of the Certificate issued by the Chartered Accountant with regard to the turnover from 2003 to 2021 08.08.2022 40.
P40 Photocopy of the Cease and Desist notice sent by the plaintiff to the defendant 06.04.2023 41.
P41 Photocopy of the Inauguration Photo of the plaintiff Hotel by Actor Rajinikanth 42.
P42 Photocopy of the plaintiff Hotel ''Vasanta Bhavan'' by politicians, celebrities and businessman 43.
P43 Printout of the photograph of the plaintiff Hotel 44.
P44 Printout of the photograph of the defendant Hotel 45.
P45 Photocopy of the Comparison chart of plaintiff and defendant Hotel.
28.06.2024 13/14
P.VELMURUGAN, J ms C.S.(Comm.Div.)No.236 of 2023 28.06.2024 14/14