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TMI Blog1998 (6) TMI 579X X X X Extracts X X X X X X X X Extracts X X X X ..... ame, 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 "Westin". The plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e suits by the respective parties, the plaintiff filed O.A, Nos. 163 and 164of 1996 for the interim reliefs in C.S. No. 141 of 1996 and the defendant WHSL filed O.A. No. 28 of 1996 for interim injunction against CPHR in C.S. No. 5 of 1996. 10. The learned single Judge in the impugned common order dismissed the applications filed by both the parties. According to the learned single Judge, the application as well as the suit filed by the WHSL in O.A. No. 28 of 1996 and C.S. No. 5 of 1996 are misconceived as the statutory provisions under which the suit was filed is wholly inapplicable to the service marks and the service mark is not in any manner regulated by the Trade and Merchandise Marks Act, 1958 and as such, the application in the above suit was liable to be rejected. Against this part of the order there is no appeal filed by the plaintiff in C.S. No. 5 of 1996, the defendant in the present suit. 11. In these appeals, filed by the plaintiff, we are called upon to go into the legality or otherwise of the order passed by the learned single Judge in O.A. Nos. 163 and 164 of 1996 rejecting the interim reliefs sought for. 12. The plaintiffs case is briefly as follows :-- "Th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s for hotels and resorts and providing an automatic hotel reservation system. In December, 1992 the defendant's name was changed to "Westinn Hospitality Services Private Limited. In March 1995 the Company was converted into a Public Limited Company. 15. In the year 1991 the defendant launched a division 'Hotlink', which provides instantaneous hotel marketing and reservation system. The defendant invented a Logo with the letter 'W' to connote and denote the consultancy services in the field of hotels and resorts. It has exclusive copyright in the artistic work 'W' Logo. The defendant has recently entered into a collaboration agreement with a popular US chain hotels M/s. Days Inn of America, by which the defendant would exclusively promote and market the said U.S. Company's services in India. 16. The defendant is only engaged in consultancy services for hotels and resorts and it has no intention to establish any hotel or resort anywhere in India under the name "Westinn". The plaintiff docs not have consultancy services for hotels, resorts and hospitality business anywhere in the world. The fields of activity of the defendant and the pl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ived the said claim of the appellant for the following reasons:-- (1) Admittedly, 'Westin' is not a part of the corporate name of the CPHR, the plaintiff. Westin is not a registered trade-mark in India. There is no branch office or regional office of either the Westin Hotel company or of CPHR in India. The mark has also not been extensively advertised in India. It had not advertised its name or logo on the television. There are only two advertisements announcing the appointment of the General Sales Agent in 1989. (2) The number of Indians staying in Westin Hotels as shown in the computer print is not over 200 in number. There has been no advertisement at all of Westin in India, except two announcements in 1989. The expenditure on advertisement is wholly insignificant in India. The word 'Westin' though it may be well known in U.S.A. or at Singapore, cannot be said to be well-known and had acquired goodwill in India. (3) The defendant was incorporated in 1989. The word 'Westinn' has remained a part of the corporate name throughout. The promoters of the defendant company had received training in U.S.A. in the hotel industry. The use of the word 'West& ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tation as well would afford sufficient basis for grant of injunction. If plaintiff acquired reputation in a place, where the plaintiff may not carry on business it is, also required to be protected by injunction. 26. Let us first refer to the decisions on this point, which are as follows :-- (1) Poiret v. Jules Poiret Ltd. and A. F. Nash, (1920) 37 RPC 177 Ch.D; (2) Sheraton Corporation of America v. Sheraton Motels Ltd., (1964) RPC 202 Ch D; (3) N. R. Dongre v. Whirlpool Corporation, (1996)5SCC714 ; (4) Haw Par Bros International Ltd. v. Tiger Balm Co. (P) Ltd., 1996 PTC 311; (5) Caterpillar Inc. v. Jorange, OSA No. 166 of 1997 D/- 1-10-1997; (6) Chelsea Man Menswear Ltd. v. Chelsea Girl Ltd., (1987) RPC 189 CA. 27. In Poiret v. Jules Poiret Ltd. and A. F. Nash, (1920) 37 RPC 177 Ch D, it has been held thus :-- "Notwithstanding that the plaintiff Paul Poiret had no place of business in London, he was entitled to the protection of his goodwill and reputation acquired in this country; the continued use by the defendant of the name Poiret in the business would lead lo confusion in the trade and among private customers; the defendant had not acquired in the circumstances any ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dia as well through commercial publicity made in magazines which are available in or about in India. The following is the gist of the finding :-- "The 'WHIRLPOOL' has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain the advertisement do have a circulation in the higher and upper middle income strata of Indian society. Therefore, the plaintiff acquired transborder reputation in respect of the trade mark 'WHIRLPOOL' and has a right to protect the invasion thereof." 31. The next decision is Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd., 1996 PTC 311. In this case, the learned single Judge of this Court while vacating interim injunction granted in the suit for passing off action observed that the plaintiff must establish goodwill and reputation in the geographical area where passing off is alleged and that the reputation of the plaintiff elsewhere is the irrelevant. The Division Bench of this Court headed by Hon'ble Justice Sriniv ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ace on duty free shops in India, by, the fact that advertisement of GLENFIDDICH whisky are to be found in various magazines, like the 'In House Magazine of Air India', and other foreign publications which are freely available in India, as a result of which in my view, GLENFIDDICH whisky has a live reputation in India. After referring to judgments relating "to persons selling their goods internationally all over the world, I have already held in the case of Apple Computer Inc. 1991 DL 319, that a person whose goods have an international reputation can maintain a passing off action in India." 35. In yet another case in WWF International v. Mahavir Spinning Mills Ltd., 1994 PTC 250, the Delhi High Court considered the question at length and made the following observation :-- "Mere fact that the plaintiff has never manufactured any products in this country does not prevent it from acquiring the goodwill here in its trade mark. It is no doubt true that an action passing off relates to the business and it must be established "that the plaintiff has a reputation or goodwill of his business in this country. The foundation for the action for passing off is the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ies of the globe. National protection is no longer adequate to safeguard intellectual property rights which can easily be pirated or copied by nationals of other countries and exploited in their own market or even in international markets. International remedies for such infringement are necessary. .............. It would be comforting for the international community to know that reputation of trade marks of overseas companies is being recognised in India and there have been significant judicial precedents on the question of transborder or spill-over of international reputation." 38. Thus, it is manifestly clear that the plaintiff in order to get the relief of interim injunction restraining the defendant from using its service mark need not establish that they actually carry on business in this country. It is enough if they have got customers here. If they have got customers in India, it necessarily means that the plaintiff has got reputation in the general sense of the word in this country. The said reputation could be brought out by advertisement. Therefore, if the plaintiff had acquired ownership of the service mark in India, as a result of some business done in India and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 43. Both the parties have filed the documents before this Court. In so far as the appellant is concerned, we find that all the documents relied on by it find place in Volume II. The documents filed by the respondent/defendant are found in Volume III. There are totally 31 series of documents filed in the Volume II by the appellant which runs about 173 pages. 44. According to the plaintiff, it has been the proprietor of all intellectual property rights pertaining to the internationally reputed service mark "Westin" and its related logo/device. The plaintiff and its predecessors have been in the hotel business for over 60 years and have business operations all over the world, rendering high class hospitality services in the hotels and resorts under the service mark "Westin". Westin Hotel is the oldest of the international hotel management companies and is one of the leading hotel companies in the world managing about 70 first class Westin hotels and resorts in 16 countries. There are about 5 lakh members of Westin Premier, all over the world. The service mark "Westin" possesses a world wide recognition in connection with the high quality services rende ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mentioned as Westin Hotels are the worldwide, there are fewer than 60 Westin hotels, each has its own flavour and a personality as unique as the city it serves. In one of the periodicals, it is reported that the Westin hotel won the prize of the best hotel, which is as follows :-- "Westin Hotels & Resorts was awarded first prize for the "best booth" out of a field of 150 entrants at the recent LABTA." Another journal in 1985 as contained in page 28(E) reported the prize awarded to the Westin Hotels. This news is as follows :-- "Three Westin Hotels Receive ISO 9002 Three more Westin hotels have been awarded the prestigious International Organization for Standardization (ISO) 9002 certification for Total Quality: the Caesar Park Hotel and The Westin Stamford and The Westin Plaza in Singapore." 51. Some of the journals with worldwide circulation are found in page 91 (a). They are Time Magazine, Newsweek. The Economist, Fortune, Business Week, Far Eastern Economic Review, International Herald Tribune, Asia Week, Business Traveller and Asian Well Street Journal. Pages 92 to 105 give the particulars of the service mark "Westin" which was clai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ong the players on the upscale list. "To come in second against Westin is quite an accomplishment for Marriott", one analyst commented. "Marriott is not operating with the same level of staffing at Weslin, and its hotels are not quite as luxury-looking as Westins." ........ Corporate-owned and managed properties may be a key to the lead of Westin-Marriott-Hyatt over Sheraton and Hilton, which have more franchised properties. ....... Westin and Hyatt also tend to be higher priced than Sheraton and Hilton, which may boost their ratings. Other notable upscale segment results : Westin was first in the key corporate-rate-program category, followed by Sheraton, Marriott, Raddisson, Hyatt and Hilton. Curiously, among this group, Sheraton and Radisson, appear well down the list in overall price/value relation, which would seem to be a related category." 56. In page 166, the news about receipt of numerous awards by Westin Hotels is found. According to the business travel, news, Westin received an overall score of 8.21 out of 10 points and received its highest marks for ease in arranging group travel, Corporate Rate programmes, quality of food, and overall value ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... appointed in India, some in New Delhi, some in Bombay and others in Calcutta, etc. The advertisements of appointments appeared in prominent newspapers in India in March, 1989. The hospitality services rendered by the plaintiff company came to be available in India more prominently from the end of 1988 till April 1994 through the said General Sales Agents. 65. Pages 29 to 62 would contain the details of the letter correspondence between the Westin, the plaintiff and their Indian clients including these General Sales Agents. The reading of these letters would show that the several of these General Sales Agents booked the rooms in Westin hotels on behalf of the Indian clients situated in various countries. This would also make it clear that many Indian clients through the General Sales Agents stayed in the Westin Hotels at various countries and that thereafter the General Sales Agents also obtained their commission. 66. Besides this, the Westin Hotels maintain frequent guest recognition programme called 'Westin Premier'. This is an exclusive Club of individuals, who patronise the Westin Hotels world over. According to the plaintiff, there are about 5 lakh members of Westin P ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n Hotels not only in Singapore but also in various other countries, Therefore, it can be safely held that the reputation of Westin has been travelling trans-border to India through commercial publicity made in magazines and periodicals which have circulation in India and through the thousands of travellers who returned to India after business visits to major foreign countries. Even though the Westin Hotel does not exist in India as of now, the selling of "Weslin" services has been taking place in India at least from 1988. 72. Yet another significant factor has to be taken note of. Recently, the plaintiff came to know that Days Inn of America, Inc. has entered into an agreement with the defendant Westinn Hospitality Services to manage Days Inn properties in India, Malaysia, etc. Since the plaintiff fell mat the appearance of the 'Westinn' name in conjunction with the hotel services is certain to cause confusion with the name "Westin", the plaintiff's well established mark for Premier Hotel services, and it would have an adverse impact on the Westin valuable reputation, the plaintiff sent a notice on 15-11-1995 to the Days Inn of America, Inc. to advi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat the mark of the plaintiff "Westin" is not a mark known in India and the defendant's mark "Westinn" is well known all over India. Strangely, in this detailed reply, there is no reference about the suit having been filed on 12-12-1995. Only on receipt of the notice in the said suit, the plaintiff filed and the present suit seeking the relief, 77. The defendant has claimed that it has acquired the mark "Westinn" in August 1989 with an objective of providing comprehensive consultancy services for hotels and resorts and for providing an automatic hotel reservation system. 78. According to the plaintiff, the defendant came to be incorporated as a Private Limited Company under the name "Westinn" Consultants Private Limited in August 1989. The main objects of the Company as contained in the Memorandum of Association related to the consultancy activities, namely, acting as advisers and consultants on all matters and problems relating to the technical, industry, civil administration, finance and organisation, management, commencement, extension of industry, etc. As such, the Company had nothing to do with the carrying on the business of touri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Corporation acknowledging the receipt of the letter of the Firm. Document No. 4 is the letter dated 25-1-1989 sent by the defendant's predecessor to one of the Advertising Agency intimating the formation of the Firm giving consultancy service for hotel project, etc. 83. Document Nos. 5 and 7 to 27 would deal with the correspondence between the Westinn Consulting Group and the important various Management Hotels and other Companies in India and foreign countries with reference to the consultancy services being given by the Westinn Consulting Group in various fields including the hotel project. Most of them are the letters sent by the various firms in India and other foreign countries acknowledging the letters sent by the Westinn Consulting Group intimating about the formation of the firm giving consultancy in various fields. 84. Among these documents, document Nos. 15, 26 and 27 are the letters sent to the Westinn Consulting Group by the firms from foreign countries. The document No. 15, a letter dated 3-11-1989 was sent by Westinn International, Inc. to the predecessor of the defendant acknowledging the letter from Westinn Consulting Group expressing willingness to give servi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... em franchised, which send information from their respective regions to the headquarters at Madras. Soon Hotline plans to have inter-connected offices and with this cross-communication, hopes to considerably speed up the process. ............Hotline is planning an issue after the expansion, either a public or a over-the-counter issue." 88. The Headlines and the Caption given in the various news items are as follows :-- (i) Hotlink plans expansion; (ii) Hotlink -- reservation of hotel room thru' computer; (iii) Hotlink reservation system for hotels; (iv) Hotlink to launch new hotel reservation system; (v) Hotlink's unique reservation system; (vi) Hotlink develops new hotel marketing system; (vii) Hotlink Reservation System for travelers ; (viii) Hotlink launches unique system; (ix) Hotlink develops a unique reservation system; (x) Computer hotline; (xi) Hotlink facility; (xii) Unique reservation system by Hotlink (xiii) Hotlink launches new hotel reservation system. These things would show that the entire advertisements in all the papers published in India as well as in other countries only projected through the name 'Hotlink'. Of cour ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ternational of U.S.A. and Westinn, the defendant dated 22-9-1992. The said contract was only between the Hotlink, a Division of Weslinn Consultants (P) Limited and the Clas International. It is also noticed in the said contract, the word 'Westinn' was used not as a 'Westinn' but as a 'Westin'. 94. In the light of the above materials, it cannot be accepted that the defendant did not intend to establish any hotel or resort anywhere in India under the name 'Westinn'. As stated earlier, it is published in the Newspapers filed by the defendant that the Managing Director of the Westinn stated that the Westinn owns, operates and manages several hotels in Madras, Delhi, Bangalore, Hyderabad and Cochin. Moreover, in document No. 6 in Form No. 1A filed by the defendant on 9-5-1989 for availability of name of the defendant Westinn name with the Registrar of Companies, it is mentioned as the main object of the proposed Company -- to promote a hotel. 95. As a matter of fact, the defendant in para 29 of the counter-affidavit filed before the learned single Judge would state that the tie up with Days Inn does not prevent the defendant from using its trading style ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... te evidence. But prima facie, there is nothing to doubt the genuineness of the documents filed by both the parties. At the interlocutory stage, we are constrained to accept the documents filed along with the affidavit. The defendant has also filed number of documents to substantiate its plea. If the argument of the defendant that the same thing to be proved by evidence in the trial, is accepted, then the documents filed by both the parties should be completely ignored. If such a practice is adopted, it is not possible for the Court to grant the reliefs to the parties in any interlocutory application. Therefore, the above discussion and conclusion are based upon the documents without giving any finding with reference to the genuineness of the documents. 99. Under the above circumstances, we arrive at the following conclusions :-- (i) Normally in the miscellaneous appeals, the discretionary orders passed in the matter of granting or refusing interim injunction are not interfered with. But in this case, we are of the view that the learned single Judge exercised the discretion without adhering to the well settled principles of law governing the exercise of such discretion and regard ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ercial connection between the plaintiff Westin and Days Inn, cannot be ruled out. (vii) The documents filed by the defendant would make it clear that initially advertisement for hotel service was given by the defendant only in the name of 'Hotlink'. Only after the franchisee agreement entered into between the defendant and Days Inn of America in 1995, the advertisements were given in the periodicals and magazines in various countries in the name of 'Westinn'. Only on seeing the said advertisements, the plaintiff who is having the office in U.S.A. has filed the present suit. Therefore, it cannot be said that there is undue delay and that there are laches on the part of the plaintiff in approaching the Court. 100. In view of the above conclusions, we feel that the plaintiff had made out a prima facie case having regard to the trans-border reputation established by it and that the balance of convenience is in favour of the plaintiff, inasmuch as, if the injunction order is not granted, the plaintiff would be put to great hardship and he may be put to irreparable loss. 101. In the result, for the reasons stated, we allow these appeals and set aside the order under ..... X X X X Extracts X X X X X X X X Extracts X X X X
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