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Caesar Park Hotels and Resorts Inc. Versus Westinn Hospitality Services Ltd.

1998 (6) TMI 579 - MADRAS HIGH COURT

Original Side Appeal Nos. 357 and 358 of 1997 and C.M.P. Nos. 17259 and 17260 of 1997 - Dated:- 19-6-1998 - Shivaraj V. Patil and M. Karpaga Vinayagam, JJ. For Appellant: N.A.K. Sarma, Adv. for C. Daniel, Adv. For Respondents: A.A. Mohan, Adv. for Mohan Associates JUDGMENT M. Karpaga Vinayagam,. 1. These appeals have been filed by the plaintiff in C.S. No. 141 of 1996, aggrieved by the order dated 29-4-1997 passed by the learned single Judge in O. A. Nos. 163 and 164 of 1996 in the said suit. In .....

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name, 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 .....

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s 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 and its predecessors have been in the hotel and hospitality service business for over 60 years. In 1988, the plaintiff acquired the Westin Hotel Company, which owned reputed and high class hotels in different parts of the world including the Asia-Pacific Region. The service mark "Westin" and & .....

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e defendant was first incorporated under the name "Westinn Consultants Private Limited" in August 1989. It is basically a consultancy company, providing consultancy services in civil construction, technical, financial matters etc. with respect to projects including hotel projects. In 1991, the defendant launched a division 'Hotlink' for providing hotel marketing and reservation system with centre spread all over India. In December, 1992, the defendant's name was changed to .....

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d "Westinn", the plaintiff sent a cease and desist notice to the defendant calling upon them not to use the word "Westin" or "Westinn" or any other similar words. Instead of acting upon the said notice, the defendant reacted by filing a suit in C.S. No. 5 of 1996 against the plaintiff under Section 120 of the Trade and Merchandise Marks Act, 1958 alleging groundless threat and sought injunction. Only thereafter, the plaintiff CPHR filed the present suit in C.S. No. .....

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s 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 s .....

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y, owing 70 first class Westin Hotels and Resorts spread over 16 countries. The plaintiff by itself and through its subsidiaries provides hotel management services in the hospitality, services sector and instant reservation to business and leisure travellers all over the world for Westin Hotels. Most business and leisure travellers from other countries, who visit India, and those from India, who visit other countries, are thoroughly familiar and knowledgeable about the service mark "Westin& .....

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he hospitality services in India. 13. The defendant who started a Company under the name "Westinn Consultants Private Limited" in August 1989, which was changed into "Westinn Hospitality Services Private Limited", in 1995 began to indulge in hotel marketing and reservation systems by using the word "Westinn". In 1995 the defendant entered into a licence agreement with Days Inn of America to promote and market the hotel management services in India. On coming to know .....

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endant was incorporated as a Private Limited Company in August 1989 under the name and style "Westinn Consultants Private Limited with the object of providing consultancy services 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  .....

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;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 plaintiff are completely different. The plaintiff does not have a single hotel under the name Westinn in India. The defen .....

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as not been used in India and which is not known in India does not enjoy any reputation or goodwill in India. The agreement with Days Inn to establish under the name 'Days Inn' does not prevent the plaintiff from carrying out its consultancy services under the name 'Westinn'. 18. The defendant's name 'Westinn' is an invented word derived from West, as the founder Directors of the defendant company were educated in U.S.A., and gained work experience in U.S.A. in the fi .....

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9; continuously from 1989 all over India. There has not been single instance of confusion or deception in the last 7 years of use of Westinn as a trade name by the defendant. The plaintiff has filed the suit only in the year 1996 without any reason for the delay." 19. The learned single Judge, on a perusal of the affidavits and the records filed by the respective parties and on hearing the counsel for both, dismissed the petitions holding that the plaintiff has failed to make out a prima fa .....

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ranch 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 1 .....

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d they received training along with the word 'Inn' cannot be regarded as dishonest and defendant intended to deceive the public. (4) There is no scope for confusion, as there is no Westin Hotel in India. The plaintiff does not render any service to any hotel in India. The service performed by the General Sales Agent for the Westin Hotel at Singapore by booking rooms for those who desire to stay in Singapore is wholly insignificant. The volume of the business generated by it from India is .....

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Mohan for M/s. Mohan Associates, appearing for the defendant, made submissions in justification of the order under appeals reiterating the submissions made before the learned single Judge. 23. We have carefully considered those submissions. At the outset, it shall be our duty to point out that the learned single Judge has passed the impugned order rejecting the claims of the plaintiff mainly on the ground that the plaintiff does not own Westin Hotel in India and does not render any service to an .....

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ion was as a result of non-application of the well-settled principles of law governing exercise of such discretion and the law regarding the action against passing-off. 25. Of course, it is true that the plaintiff does not own any hotel with the name 'Westin' in India. However, the learned single Judge has not taken into account that trans-border reputation as well would afford sufficient basis for grant of injunction. If plaintiff acquired reputation in a place, where the plaintiff may .....

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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; t .....

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gencies. They also advertised these hotels in U.K. Their principal chain of hotels were called 'Sheraton Hotels'. The defendant alleged that he had derived the name "Sheraton Motels Limited" from their office at No. 1 Sheraton Street London. In this case it is held as follows :- "Notwithstanding the fact that the plaintiffs' business was primarily carried on abroad they had nonetheless a reputation in this country which could be injured by confusion. Accordingly, the p .....

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. One of the questions before the Court was whether the plaintiff who was not selling in India could claim the benefit of trans-border reputation in trade mark "WHIRLPOOL" so as to maintain a passing off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trade mark in the market. The documents filed in the proceedings proved that some limited sales had been made to US Embassy and USAID in India and that the "WH .....

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gazines 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. There .....

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lleged and that the reputation of the plaintiff elsewhere is the irrelevant. The Division Bench of this Court headed by Hon'ble Justice Srinivasan (as he then was) while setting aside the order of the learned single Judge categorically held that the appellants/plaintiffs are entitled to get the relief of interim injunction even without actually doing any business in India. The said judgment has followed the view taken by the Bombay and Delhi High Courts. Those decisions are as follows. 32. A .....

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ause the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The "result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation, take for example, the televisions, and Video Cassettes Recorders manufactured by National, Sony or other well-known Japanese Concerns. These televisions or video cassettes are not imported in India and sold in open market because of .....

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ima facie case and balance of convenience to obtain an order of interim injunction and it was enough that the plaintiff had a reputation in India." 34. The same High Court in William Grant and Sons Ltd. v. McDowell and Co. Ltd., AIR 9721/93 in Suit No. 2532 of 1993 judgment dated 27-5-1994 on the question of trans-border reputation, would observe as follows :- "Trans-border reputation of the plaintiff, has been in my view, established sufficiently in this country by means of the fact t .....

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he 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 i .....

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mark law is not intended to protect a person who deliberately sets out to take benefit of somebody else's reputation with reference to goods especially so when the reputation extends world wide. .............. India is moving towards free economy. The drastic changes in the economic policy of the country which are in offing is sure to entail entry-fresh and afresh-of-multi-nationals in the Indian market. The common law of passing off is sure to undergo a change. With the synchronization of .....

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which he has proved the existence of his reputation and goodwill. (2) Since both the plaintiffs and defendants had intention to expand the geographical scope of their menswear business prima facie the plaintiffs were entitled to nationwide injunction." 37. It would be appropriate, at this stage, to refer to the views of Dr. Justice A. S. Anand, the Honourable Judge of the Supreme Court made in an article published in MANU/SC/0742/1997MANU/SC/0742/1997 : AIR1997SC2763 under the caption &quo .....

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national trade makes it imperative that intellectual property rights are properly recognised and managed in different countries 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 kno .....

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ve 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 as a result of large scale advertisement made in foreign periodicals circulated in India and the periodicals issued in India, he would certainly be entitled to take passing off .....

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laintiff does not render any service to any hotel in India, is incorrect. As stated earlier, the plaintiff need not establish that he has carried on any business in India and it would suffice that if he has established that he has got reputation and goodwill in India. 41. As a matter of fact, the learned single Judge has referred to in the impugned order the decisions, namely, Sheraton Corporation of America case, 1964 RFC 20? Ch D and Tiger Balm case, 1995 ILR Mad 209, cited by the plaintiff, r .....

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ompagnic v. Pavilion Properties Limited, 1967 RFC 581; 3) A.G.S.L. Assurance Co. v. N. A. Insurance Co., MANU/TN/0096/1938MANU/TN/0096/1938 : AIR 1939 Mad 555; 4) Lee (Mantles) Ld. and Harlee Ld. v. Harold Harley (Fashions) Ld. and Harold Harley (Sales) Ld. LXXI RFC (No. 3) 57; 5) Society of Motor Manufacturers & Traders Ltd. v. Motor Manufactures' and Traders' Mutual Insurance Company Limited, (1925) 42 RPC 307, Ch D CA. All these decisions would deal with the cases relating to the .....

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ocuments 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 .....

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stant reservations. 45. On the other hand, it is the case of the defendant that the plaintiff is not known anywhere in the world as "Westin" it is not listed in the list of prominent hotels of the world and it has no global reputation in the service mark 'Westin'. 46. In the light of the stand taken by the defendant, we shall now go into the documents to find out whether the plaintiff has acquired a world-wide reputation over the service mark "Westin". 47. The documen .....

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Korea, Dallas, Detroit, Hawa, Honolulu, Houston, Kansas City, Los Angeles, New York, seven cities in Canada, Frankfurt, Humburg, Munchen and Zurich. These newspapers and periodicals were published on various dates from 1982 to 1983. The photos of the hotels published in the periodicals would show that they are high, tall and several storeyed buildings. These periodicals were published in various countries. 49. In page 17, various phone numbers were given in Japan Yellow Pages in 1984 spring edit .....

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itality, super accommodations, excellent meeting facilities. Come meet with us soon." 50. Pages 18 to 28(E) would again give the details of the advertisements given on behalf of the Westin Hotels in various periodicals circulated in various countries from 1984 to 1995. In all the advertisements it is 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 .....

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ardization (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 c .....

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" was made in Cambodia in the year 1982. In 1987 the same was registered in China on 47 applications. In 1984 it was registered in Hong Kong. From 1987 to 1992 on 27 applications the registration was made in Japan. In most of the applications service mark with logo was registered. In 1982 it was registered in Korea. In 1991 it was registered in Macao. In 1981 and 1992 the service mark was registered in Malaysia. It was registered in Philippines in 1988, in Singapore in 1981 and 1993, in Sri .....

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countries, that too, in very big hotels in important cities of the big nations, there is no meaning in merely saying in the counter that the plaintiff has no global reputation in the service mark "Westin". 55. Above all, in the special report regarding Top U. S. Hotel Chains Survey, the copies of which have been given in pages 158 to 173 would clearly reveal that the "Westin Hotels" in one of the top ranking international hotels. In one of the reports in page 159 it is stated .....

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or 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 : Wes .....

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se in arranging group travel, Corporate Rate programmes, quality of food, and overall value. For 1995, the American Automobile Association (AAA) awarded two of its prestigious Five-Diamond awards to Weslin hotels and resorts. Five-Diamonds are bestowed only to those exceptional properties which are widely recognized for superior guest facilities, service and atmosphere. Westin's 1995 Five-Diamond award recipients are the Westin Hotels in united Slates and Maxico. 57. It has also been reporte .....

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owners. 59. In the fact situation, it may not be correct on the part of the learned single Judge to have observed that the documents produced by the plaintiff did not show that it was among the top hotels in the world. 60. The learned single Judge has further held that though the word "Westin" may be well-known in U.S.A. or at Singapore cannot be said to be well-known and it had acquired goodwill and reputation in India. 61. It is the case of the defendant, as stated earlier, that the .....

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"Westin" by running hotels in other parts of the world. 63. It is the case of the plaintiff that after the Westin Hotel company was acquired by the plaintiff in 1988, it enlarged its activities in India and appointed General Sales Agents who were authorised to provide exclusive hotel representation services, such as soliciting, accepting and communicating reservation to Westin Hotels situated all over the world. 64. Pages 28(F) and (G) contain the list of 17 travel Agents appointed in .....

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l 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 call .....

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the copy of the new Directory of plaintiff hotels. On 10-4-1989 along with the reply, the Hotelworld Corporation enclosed the photo-copies of testimonial advertisements released in hindustan Times and Economic Times, the national dailies regarding the Westin Hotels situated in various countries. 68. Pages 77 and 78 are the advertisements. Pages 80 to 83 contain the letters sent by General Sales Agent dated 30-6-1989 and 12-9-1989 were accompanied with the publication of the article about the We .....

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Hotels is not large and that the fact that a few travellers from India had stayed in the hotel at Singapore as shown in computer print does not render the name "Westin" used by the plaintiff well-known to the general body of international travellers of India. This may not be correct, in view of the materials, especially when Westin Premier Report as contained in pages 64 to 74 consisting of large number of Indians from various parts of India would reveal that they have stayed in Westin .....

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red to above show that there is a regular flow of travellers from India to Westin 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 ex .....

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in 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 advise Westinn Hospitality Services to change its name to one that is not confusingly similar to "Westin". 73. On receipt of the above notice, Days Inn of America, Inc. requested the plaintiff for additional informa .....

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89 and that no other hotels to be operated using the name Westinn and the rights granted to Westinn Hospitality Services Limited would not extend beyond India. 74. Before receipt of the said reply, on 21 -11 -1995 the plaintiff sent a cease and desist notice to the defendant asking not to use the word "Westin" or "Westinn" or any other similar word or its logo. On 4-12-1995 the defendant sent a reply to the notice dated 21-11-1995 asking for the details of the registration of .....

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rticulars dated 4-12-1995 and 5-12-1995, even without waiting for the reply of the plaintiff, on 12-12-1995 the defendant herein filed a suit in C.S. No. 5 of 1996 against the plaintiff for permanent injunction against the groundless threat of legal proceeding within the meaning of Section 120 of the Trade and Merchandise Marks Act, 1958. However, in the plaint and defendant did not choose to mention about their reply dated 4-12-1995 and 5-12-1995. Without knowing about the institution of the su .....

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iled 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 .....

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pecial resolution resolving to commence business of travel assistance. Thereafter, on 18-12-1992 the defendant changed its name from Westinn Consultants Private Limited to Westinn Hospitality Services Private Limited. Only thereafter, the defendant entered into the hospitality sector. The defendant had two divisions. One is Westinn Consultants and another is Hotlink. Westinn Consultants was merely concerned with providing consultancy services in civil construction, technical, financial matters, .....

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Days Inn of America which has chain of hotels in different parts of the world. 80. In order to appreciate the above contention of the respective parties, at this stage, we shall now look into the documents filed by the defendant which are contained in Volume III. There are totally 82 items of documents running about 129 pages. 81. Document No. 2 is the Partnership Deed dated 18-1-1989 between the partners, the predecessors of the defendant by which the firm by name 'Westinn' Consulting .....

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, who have just returned from U.S.A. and expressing readiness responding to the advertisement of the Tourism Development Corporation to develop the project jointly with them. 82. Document No. 3 is the letter dated 21-1-1989 from the Karnataka State Tourism Development 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 cons .....

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he 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 service and cooperation for the best w .....

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, 6-2-1992 and 8-4-1992 respectively. Document No. 34 is the advertisement in DECCAN HERALD dated 2-4-1992, document No. 39 is the news item in Dainik Jagron Hindi Daily dated 29-8-1992; document No. 40 is the news item in The Poineer dated 29-8-1992; document Nos. 41, 42 and 43 are news items in Northern India Patrika, Financial Express and Free Press Journal, all dated 30-8-1992; document Nos. 44 and 45 are the news items in Rashtriya Sahara Hindi and Financial Express, both dated 31-8-1992; d .....

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Janasatta Hindi Daily, Independent and Indian Express. On 3-9-1992, 4-9-1992, 6-9-3992, 7-9-1992, 14-9-1992 and 17-9-1992 and document No. 68 is the advertisement in various News papers and Hotel Industry Magazines over a period of time consisting of pages 103, 104 and 105. 87. The above advertisements were given in the name of Hotlink canvassing for the instant computerised hotel reservation system linking hotel chains, independent hotels, resorts and motels with the main reservation centre at .....

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cted 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 uniqu .....

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e name 'Hotlink'. Of course, it is true that in these advertisements, in small letters it is mentioned as "a division of Westinn Consultants". 89. However, pages 107 to 114 in document No. 68, advertisements published in Express Hotelier and Caterer on 5-6-1995, 24-7-1995, 21-8-1995, 9-10-1995, 16-10-1995, 23-10-1995, 6-11-1995 and 13-11-1995 would reveal that the advertisement was given in the name of "Westinn" by the Westinn Hospitality Services Limited. It is also .....

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corporated in 1989, offers hotel consultancy from project management to technical services and that the said Company owns, operates and manages hotels in Madras and other places and with its focus on the south, Westinn has plans to go national in the future. According to these items, Days Inn of America, Inc. has signed a master franchisee agreement with the Madras based Westinn Hospitality Services Limited to develop Days Inn chain in India and the Westinn plans to develop 6,000 rooms in India .....

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ent logo given in a square form. But, when the advertisement was given in the name of 'Westinn' after omitting 'Hotlink', a logo which is nearly similar to the logo of the plaintiff was put in the circle form. As such, the logo used by the Westinn Hospitality Services from the year 1985 closely resembles that of the Westin (plaintiff). 93. Document No. 63 in page No. 91 is a marketing contract between Clas International of U.S.A. and Westinn, the defendant dated 22-9-1992. The sa .....

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dant 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 t .....

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9;Hotlink' and now in the name of 'Weslinn'. 96. In these circumstances, the situation as submitted by the counsel for the plaintiff that the franchisee agreement between the defendant and Days Inn of America which permitted the continued use of the name 'Westinn' by the defendant in its activities in the hospitality services sector, would lead to the confusion and false belief among the business/leisure travellers that there exists an intimate commercial connection between t .....

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991 were given only in the name of 'Hotlink'. The entire lot of advertisement in the name of 'Westinn' was only from 1995, when the defendant entered into the franchisee agreement with the Days Inn for setting up hotels in India. Only on seeing news items and advertisements in the periodicals, magazines published in various countries, the plaintiff came to know of this passing off action and swiftly sent cease and desist notice to the defendant. As stated above, the defendant eve .....

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be proved by appropriate 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 s .....

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t 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 regarding the passing off action. (ii) Though the hotel business has not been carried on in India, the plaintiff could bank upon trans-border reputation, so as to maintain a passing off action in India. The documents filed in this case by the plaintiff prima facie establish that there ha .....

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sing from 1981, particularly from 1988 in which year the plaintiff acquired the Westin Hotel company from its owners. (iv) The other documents would also show that there is a regular flow of travellers from India to Westin Hotels not only in Singapore but also in various other countries. Thus, the reputation of Westin has been travelling trans-border to India through thousands of travellers who returned to India after business visits to major foreign countries. (v) The Westin Premier report cons .....

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These letters would show that the several of these General Sales Agents booked rooms in Westin Hotels on behalf of the Indian clients, situated in various countries. (vi) When this trans-border reputation has been established, the apprehension expressed by the plaintiff that the franchisee agreement between the defendant and Days Inn of America which permitted the continued use of the name 'Westinn' by the defendant in its activities in the hospitality services sector in India would lea .....

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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 i .....

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