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2019 SCC OnLine Del 7644
The Plaintiff; Intercity Hotel GMBH is in the business of providing temporary accommodations with food and drinks.
The Defendant Hotel Intercity Delhi is also in the business of providing temporary accommodation with food and drinks and is operating a hotel in Karol Bagh.
Plaintiff’s trademark INTERCITYHOTEL is registered in multiple jurisdictions, dating as far back as 1992 in Germany. In India, it was registered in the year 2011, in class 43 – temporary accommodation providing food and drink. The plaintiff also has the registered device mark for the same.
The defendant is using the trade mark ‘HOTEL INTERCITY DELHI’ in respect of his hotel in Karol Bagh.
The defendant has been using the trademark in India since 2010.
The plaintiff, on the other hand, had applied for registration on 20-05- 2011 as a proposed user. Admittedly, more than five years elapsed and the plaintiff did not use the trade mark in India. Evidently, no hotel or any similar establishment was set up by the plaintiff in India to make use of the said trade mark.
Effectively, the only ground on which the plaintiff is claiming protection of his trade mark is that it has acquired a global reputation and goodwill in light of plaintiff’s 37 hotels abroad.
Whether a trade mark is to be governed by the principle of territoriality or by the doctrine of universality?
Whether the plaintiff is entitled to seek an interim injunction despite not having commenced business in India using the registered trademark?
Section 34 of the Trademarks Act, 1999
The plaintiff argued that even though they had not commenced business in India under the registered trademark, in light of their global repute and goodwill, defendants should be stopped from using the deceptively similar trade mark.
The defendant claimed to be a prior user of the said trademark.
The Hon’ble High Court of Delhi referred to a number of Supreme Court judgments and concluded that it is necessary to inspect whether there has been any spill-over of the global goodwill and reputation within the relevant geographical territory.
The Hon’ble Court noted that the plaintiff had failed to show any spill- over of the global reputation in India. No details or evidence was adduced with regard to advertisement and promotion done in India.
The Hon’ble Court held that in light of the above, balance of convenience did not favor the plaintiff and hence no injunction can be granted.
In the interests of justice however, the Court ordered the defendant to declare on their website that defendant hotel is in no manner associated with Intercity Hotel GMBH, Frankfurt, Germany.
Author: Tarun Khurana (Partner and Patent Attorney), Abhishek Pandurangi (Partner and Patent Attorney) and Niharika Sanadhya, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at email@example.com.