Huluvadi G. Ramesh, J:
1. These appeals have been filed against the order of the 18th Addl. City Civil Judge, Bangalore in OS 5080/2008 on the applications filed by the Plaintiff seeking an interim order of injunction.
2. The Appellant is a company registered under the Companies Act of 1956 on 6.9.2005 in the name and style of Anantara Hospitality Pvt Ltd. According to the Appellant, the word 'Anantara' is a Sanskrit word meaning health, wellness and eternal youth and, the company is in hospitality business and no person in India is registered or had applied for registration under the name Anantara in any part of India. Only after it was satisfied the Registrar of Companies has incorporated the company in the name and style of Anantara Hospitality Pvt Ltd. As per Section 147 of the Companies Act, in all business correspondence, company is required to compulsorily mention the said name Anantara. Further, according to the Appellant, he got registered the domain name on 12.7.2005 as www.anantara.in People all over the world are booking the resorts of the Appellant through the web site as such, it is widely known all over the world since 2005. For the present, the Appellant company is running five resorts and service apartments, and one at Ramanagaram is nearing completion. In all about 198 employees are appointed directly apart from contractors and others. The Appellant company has extensively advertised its various resorts owned and managed by them and also the domain name of the Appellant www.anantara.in Large number of people from abroad have stayed in company resorts at Shalimar Spice Garden at Kerala and Our Native Village at Hesaraghatta, Bangalore. It is stated, without the domain name, it is difficult for the Appellant to carry on its business effectively.
3. Only during February 2008, Respondent has threatened to initiate legal action and to stop the using of the domain name Anantara and also issued a legal notice and, filed the suit to restrain the Appellants from continue using the domain name as a trade mark / corporate name or in any other manner in India. The Appellant filed OS 3221/2008 over which emergent notice was issued by the court. After receipt of the notice, Respondents have filed another suit in OS 5080/2008 seeking for an order of injunction from using the name Anantara. The City Civil Court granted an exparte order of injunction as per annexure R as against the Appellant in the suit filed by the Respondent. The order of the City Civil Court is without compliance to Order 39 Rule 3, Code of Civil Procedure. Although application was filed under Order 39 Rule 4, Code of Code of Civil Procedure for vacating the exparte order, the City Civil Court has not taken up the matter for early disposal to vacate the injunction. Hence, Appellant filed WP 11762/2008 before this Court and this Court granted a stay as per annexure T.
4. According to the Appellant herein, pleadings in OS 5080/2008 filed by the Respondent indicates Appellant is the prior user of the mark Anantara in India; Respondents have no business in India and are not using the name Anantara in India; no advertisements have been made in India for the mark Anantara by the Respondent prior to the incorporation and use of the mark by the Appellant; the Respondents do not have a company or corporation in the name and style Anantara and, grant of injunction against the Appellant would be disastrous and results in Appellant being forced to close its business which nearly affects 1000 persons who depend on the Appellant for their livelihood. According to the Appellant, the trial court without considering any of the aspects has granted an order of injunction restraining the Appellant from using the word Anantara and also from using the domain name www.anantara.in Hence, these appeals on various grounds.
5. An application is also filed along with additional documents.
6. In the statement of objection filed against the appeals, on the impugned order dated 25.10.2008 on I As, the Respondents have contended that the impugned order has been passed by the trial court after hearing both the parties and it is a reasoned order. All the findings arrived at reflect judicious exercise of discretion based on the material on record. Accordingly, they have sought for dismissal of the appeals denying all the averments made in the appeal. According to the objections, the Appellants have concealed and suppressed material facts and also deliberately omitted to file documents. Appellants have not obeyed the trial court order. On the other hand, offending activities of the Appellant caused injury to the Respondents. Further, according to the Respondents - 1st Respondent is a company incorporated under the laws of Mauritius and 2nd Respondent is a company incorporated under the laws of Thailand, Ist Respondent, is a subsidiary of the 2nd Respondent. The 2nd Respondent is the parent company, it operates and manages hotels including those under the Anantara trade mark. The Respondents are the largest hospitality and leisure companies in the asia pacific region having more than twenty hotels and resorts and over 1100 restaurants have been built and developed over a period of thirty two years. According to the Respondents, in the course of their business extensively promoted and marketed on a worldwide basis including India, there are various Anantara resorts and spas and they have been promoted to travel agents and media personnel and participated extensively in the most important travel industry trade shows. Approximately about 5.7 million US dollars is spent for advertisement, promotion of marketing and branding of their Anantara trade mark and have earned substantial reputation and goodwill. They have been publishing international periodicals and journals. Such publications are freely available throughout the world including India and it has also been web sited providing online access to users interested in perusing their contents. An elephant polo tournament which is recognized by the tourism authority of Thailand is being organized every year during September at Anantara Resort and Spa, Hua Hin. The tournament has also been featured on Discovery Channel and other Channels and magazines. As such, it is clear the goodwill and reputation of the Respondent's Anantara Trademark has truly reached India as such, it enjoys trans-border reputation in India.
7. It is only during January 2008 through one of their Indian business associates, they acquired the knowledge of the Appellants, their website under the offending domain name www.anantara.in and the misuse of the trade mark by the Appellants. Investigation also disclosed that during 2005, the Appellant has incorporated and commenced its business in the year 2007. As such challenging the action of the Appellants, the suit filed by the Appellants was resisted and also independent suit was filed to restrain the use of the trade name Anantara.
8. Heard the counsel representing the parties.
9. It is the argument of the Appellants' counsel that people are booking rooms based on the website and more than 1000 people are depending on the concern of the Appellants. The Appellants are running Spice Garden at Kerala and three other inns near Bangalore and other place and also having raised more than crores of rupees from the State Government financial institution, developed the hospitality service. Original suit was filed by the Respondents to restrain the Appellants from carrying on the business based on groundless threats. Even the difference in wording is distinctive and the word 'Anantara' is a Sanskrit word which means eternal youth. They were not aware of the Respondents using the word Anantara. More over, Respondents do not have any hospitality inns in India. As per the Press and Circulation Act, without permission of the Registrar, Respondents cannot circulate its advertisements in India. Passing of goods cannot be ascertained without full fledged trial. The trial court committed a grave error in injuncting the Appellants from running the business in the name and style of 'Anantara'. Stating that the Appellant is a prior user and it could not have been injuncted, and also stating that there is a distinction in the logo used by the Appellants and the Respondents, learned Counsel relied upon the case of Uniply Industries v. Unicorn Plywood, (2001) 5 SC 95 : 2001 PTC (21) 417(SC) and also in the case of McDonald's Corporation and Anr. v. Sterling's Mac Fast Food, ILR 2007 KAR 3346 : 2008 (37) PTC 247 [Karn] to contend that even though the word Anantara would be the same, but there is a distinction in lettering the word and also the symbol is different. Learned Counsel has relied upon the case of Power Control Appliances and Ors. v. Sumeet Machines Pvt Ltd., 1994 (2) SCC 448 : 1995 (15) PTC 165 (SC). Accordingly, relying upon various decisions of the Apex Court and this Court, Appellants have sought for setting aside the interim order passed by the trial court and to allow the appeals.
10. According to the counsel for the Respondents, they have got a trans-border reputation. Since it was demonstrated, injunction has been granted. When there is a similarity, it has to be noted that there is a passing of action and the logo used is similar and identical. Accordingly, counsel has relied upon the decision in the case of Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145 : 2004 (28) PTC 566 (SC). Further, according to the counsel for the Respondents, there is wide publication in magazines like Holiday Asia and other magazines. It is also widely circulated in India and Respondents are actively involved, much prior to 2005, in the market and there are materials to indicate the same as is depicted in V:5 of the documents submitted to the court, regarding their prior use. Further, even without business in India, the Respondents can very well seek for an injunction as the word Anantara is being commonly used by the Appellants. Customers and new subscribers of the Respondents entertain a doubt and are misled by use of this name by the Appellants. The very act of the Appellants amounts to passing off action and violation of trade mark. Accordingly, on various grounds, learned Senior counsel relying upon several decisions, justified the order of the trial court in granting an injunction.
11. In reply, Sri Udaya Holla, Sr. Counsel submitted the decision of this Court in Mc Donald's case has been upheld by the Supreme Court as to the distinguishable features in the use of logo and trade mark as such, it does not amount to infringement and passing off action. In so far as circulation of foreign magazines are concerned, under the Press and Registration of Books Act, there is a bar for circulation without prior permission. A comparison of the logo used by the Appellants and Respondents makes it clear that it is distinct and different. As such, there is no violation and there is no passing off action.
12. In the case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145 : 2004 (28) PTC 566 (SC), it is held - an action for passing off, as the phrase 'passing off itself suggests, is to restrain the Defendant from passing off its goods or services to the public as that of the Plaintiffs and, it must be established by the Plaintiff in a passing off action, is misrepresentation by the Defendant to the public. If the misrepresentation is intentional, it may lead to an inference that the reputation of the Plaintiff is such that it is worth the Defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the Plaintiff.
13. In the case of Milmet Oftho Industries and Ors. v. Allergan Inc, (2004) 12 SCC 624, in connection with introducing drugs into the market, the Apex Court has held, if a mark in respect of a drug is associated with the Respondents worldwide, it would lead to anomalous situation if an identical mark in respect of similar drug is allowed to be sold in India. However, one note of caution must be expressed. Multinational corporations, which have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be, who is first in the market. It is also held therein, if the Appellants have sold their products under a different name due to injunction for number of years, balance of convenience is in favor of the Respondents to continue the injunction. However, if the injunction is wrongly granted damages for non-user is to be assessed as per the Trade Marks Act of 1999.
14. In McDonald's Corporation and Anr. v. Sterling Mac Fast Food, 2008 (37) PTC 247 (Kar), this Court has held, trade mark used must be identical or deceptively similar to the registered trade mark of others. Even according to the Plaintiffs, their registered trade marks are BIG MAC, Me Donald's and Corporate logo M. The Defendant's trade mark is STERLING'S MAC FAST FOOD or MAC FAST FOOD. Except the word MAC is common in both, the other words are altogether different. The logo of Plaintiffs is ... but that of Defendants if ... Therefore, it cannot be said that Defendant has infringed the registered trade mark of Plaintiffs by using the same in its business.
15. In Caeser Park Hotels and Resorts Inc. v. Westinn Hospitality Services Ltd., AIR 1999 Mad 396 : 1999 PTC (19) 123(Mad), it has been observed, trans-border reputation can afford the basis for grant of injunction and it is not necessary, the Plaintiff has to establish that it has business in India.
16. Learned Counsel has also referred to the following decisions in support of his argument.
Sri Bauribandhu Mohanty and Anr. v. Suresh Chandra Mohaty and Ors., AIR 1992 Ori 136
Consim Info Pvt Ltd, by its Director v. Google India Pvt. Ltd and Ors., MANU/TN/1816/2010 : 2011 (45) PTC 575 [Mad] (OA 977 and 9788/2009);
Reed Elsevier Properties Inc and Anr. v. Best Media Associates (I) Pvt Ltd., 2010 (1) BomCR 839
Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal and Ors., MANU/DE/1764/2010 : 2011 (45) PTC 465 [Del]
Bharathiya Coffee Workers Catering Service (P) Ltd v. Indian Coffee Workers Co-operative Society Ltd., AIR 1999 Kerala 169 : 1999 PTC (19) 431 (Ker)
Worldwide Brands Inc v. Smt Dayavanti Jamndas Hinduja and Anr., 2006 (32) PTC 697 (IPAB)
Chanda Softy Ice Cream v. MARS Icorporated and Milkway GALAXY of Ice creams, 2006 (33) PTC 703 (Mad)
ITC Ltd v. Punchgini -
Aktiebolaget Jonkoping Vulcan v. VSV Palanichamy Nadar and Ors., AIR 1969 Cal 43
Roca Sanitario SA v. Naresh Kumar and Anr., MANU/DE/2040/2010
Gillette Company and Ors. v. A.K. Stationery and Ors., 2001 (2) PTC 513 (Del)
Sakalain Meghjee v. B M House (India) Ltd., 2002 (24) PTC 207 (Del)
Power Control Appliances and Ors. v. Sumeet Machines Pvt Ltd., 1994 (1) SCALE 446 : 1995 (15) PTC 165 (SC)
Smithkline BeechamPlc. and Ors. v. Hindustan Lever Ltd and Ors., 2000 (52) DRJ 55 : 2000 PTC (20) 83(Del)
Hotel Hilton International v. Hotel Hiltone Pvt Ltd., 2005 (31) PTC 625 (IPAB)
London Rubber Co. Ltd v. Durex Products, AIR 1963 SC 1882 : PTC (Suppl)(1) 246(SC)
Warner Bros. Entertainment Inc and Anr. v. Harinder Kohli and Ors., 155 (2008) DLT 56 : 2008 (38) PTC 185 [Del]
Bajaj Auto Ltd v. TVS Motor Company Ltd., JT 2009 (12) SC 103 : 2009 (41) PTC 398[SC]
Paragon Steels (Pvt) Ltd, Palakkad v. Paragon Rubber Industries, Bangalore, 2009 (6) KLJ 566
Century 21 Real Estate LLC v. Century 21 Main Reality Pvt L Td and Ors., MIPR 2010 (2) 43
Chorion Rights Ltd. v. Ishan Apparel and Ors., MANU/DE/1071/2010
17. In the case on hand, as per the finding of the trial court, there is similarity in the trade mark and there is also passing off action and accordingly, the trial judge tried to injunct the Appellants from using the logo 'Anantara' by issuing an ad-interim injunction. The trial court, referring to the various documents produced by the Respondents and also the decisions relied by them in support of their case, has formed an opinion that they have earned reputation and good-will in respect of the mark 'Anantara'. It has also opined that there is likelihood of deception or confusion and so stating, has observed that there is much similarity in the mark used by the Appellants and the Respondents.
18. In the instant case, except the word 'Anantara' which is common to both, the logo and other words/marks used appears to be distinguishable and also, element of deception appears to be not apparent.
19. The trade mark of the Appellant and the Respondent could be distinguished one from the other. The word 'anantara' also carries a distinct logo of a tree i.e., anantara which also can be easily distinguished from that of the logo used by the Respondents. Though trans-border reputation is earned by the Respondents as to the logo 'anantara' and may be they are having publications published in the magazines in India and elsewhere, however, it appears, so far Respondents have not commenced their business independently in India. What is being noticed is, the trade mark of the Appellants is based on the Sanskrit word which gives the meaning 'eternal'. Apart from that, in Mc Donald's case cited above, it is held that when there is a distinction between the two trade marks, although some word is common in both, there may not be infringement of the registered trade mark, which may apply to this case. Further, the distinguishable features in both the logos are different and it is also upheld by the Apex Court to the effect that there is no infringement of the trade mark. Even in Milmet's case cited supra, the Apex Court held th
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at if the Indian company has genuinely adopted the mark and developed the product, and is first in the market, the ultimate test should be, who is first in the market. It appears, all these things have to be considered by the trial court while rendering the final judgment. Since it is canvassed, the logo has been genuinely adopted and there was no intention of deception or violation of the trade mark, much less the word used is not the true replica of the Respondents, the opinion formed by the trial court that there is a prima facie case in favor of the Respondents and also on the aspect of balance of convenience, could be considered by the trial court after a full fledged inquiry. The finding of the trial court at the threshold, is without holding a detail inquiry and it has jumped to a conclusion that there is passing off action and has proceeded to pass an order as if it is a final order. Might be in order to injunct, it has to be demonstrated that there is a prima facie case and the balance of convenience is in favor of the Respondents that irreparable injury would be caused to them. However, how irreparable injury/damage is caused has not been demonstrated rather, the Respondents are still in the process of establishing business in India. As such, the injunction granted in favor of the Respondents in the suit filed before the trial court needs interference at this stage. 20. In the circumstances, impugned orders of ad-interim injunction granted to the Respondents against the Appellants are set aside. Matter is remitted to the trial court for disposal of the original suits pending thereon on merits in accordance with law, within six months from the date of receipt of this order. All contentions are left open to be urged. However, till the disposal of the case the Appellants are permitted to use their trade mark name 'anantara' with the logo of a tree as is published by them, the impugned orders on the I AS are set aside. 21. Appeals are allowed. Parties to bear their own costs.