Full Text
HIGH COURT OF DELHI
Date of Decision: 21st November, 2024
MILLENNIUM & COPTHORNE INTERNATIONAL LIMITED .....Plaintiff
Through: Mr. J. V. Abhay, Mr. Dhruv Grover and Mr. Abhineet Kalia, Advocates
PRIVATE LIMITED & ORS. .....Defendants
Through:
CPC seeking summary
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks of the plaintiff, passing off their goods and services as that of the plaintiff, and other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. The plaintiff, Millennium & Copthorne International Limited, is a global hospitality management and real estate group which owns and operates international five-star and four-star hotels in various countries.
3. The Plaintiff is a wholly-owned subsidiary of Millennium & Copthorne Hotels Limited ("M&C group") which is a United Kingdombased hotel and resort company operating a chain of over 130 international five-star and four-star hotels in more than 22 countries under world-famous and reputed brands such as but not limited to MILLENNIUM and GRAND MILLENNIUM. The plaintiff claims rights in the mark/name “MILLENNIUM” adopted in 1994 in the UK and various other countries such as Australia, Cambodia, China, France, USA, Germany and the like.
4. In India, the plaintiff has several registrations of its different trademarks/names. The plaintiff’s earliest registration is in class 16 since the year 1995. In particular, the plaintiff places reliance on the following registrations for its “MILLENNIUM” marks in India:
1. 1248334 November 3, 2003 35, Registered and valid upto November 03,
2. 1248338 MILLENNIUM COPTHORNE November 3, 2003 35,
3. 1248339 MILLENNIUM HOTELS AND RESORTS November 3, 2003 35,
4. 1248340 MILLENNIUM CLUB November 3, 2003 35,
5. 1248341 November 3, 2003 35,
6. 1248342 MILLENNIUM November 3, 2003 35,
7. 1403828 December 5, 2005 35, December 5,
8. 1449134 May 1, 35, valid upto May 1, 2026
9. 1461163 June 8, 35, valid upto June 8, 2026
10. 1497013 October 13, 35, October 13, 2026
11. 1544963 March 29, 35, valid upto March 29, 2027
12. 1606761 GRAND MILLENNIUM September 29, 2007 35, September 28,
13. 1608240 October 4, 35, October 4, 2027
14. 1749409 October 31, 35, October 31, 2028
15. 1749926 November 3, 2008 35, November 3,
16. 1761874 December 10, 2008 35, December 10, The Certificates for use in Legal Proceedings are filed as documents no.29 to 31 of the documents filed along with the plaint. All the aforesaid registrations remain valid and subsisting.
5. The plaintiff's trade mark “MILLENNIUM” is widely known in India, which is evident from the frequency with which the plaintiff's websites have been visited and its services have been availed. From January 2021 to December 2021, the plaintiff's website had 91,568 page visits from India. Further, the revenues generated on account of bookings from India for the same period were USD 3,410,969.
6. Further, the plaintiff had entered into a Sales Agency Agreement with Makemytrip (India) Private Limited ("Makemytrip"), appointing it as the sales agent representative and service support provider for the sale and marketing in the Indian subcontinent of the worldwide portfolio of properties and hospitality products of the M&C Group.
7. The defendant no.3, Aryans Plaza Services Pvt. Ltd. is a company incorporated on February 11, 2005.
8. The defendant no.4, Mr. Sanjay Makkar, is the Chairman and Managing Director of the defendant no.3 Company.
9. The defendants no.3 and 4 herein were also the defendants in an earlier suit filed by the plaintiff before this Court titled Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors. (CS COMM No. 774/2016), wherein the plaintiff sought a permanent injunction against the defendants no.3 and 4’s (defendants no.1 and 2 in the aforesaid suit) adoption and use of the trade mark “MILLENNIUM” and/or the impugned logo in connection with their hotel.
10. Vide order dated 8th October, 2018, this Court allowed the plaintiff’s application seeking an interim injunction and restrained the defendants no.3 and 4 herein from using the aforementioned marks.
11. The aforesaid suit was subsequently decreed vide order dated 15th January, 2019, in favour of the plaintiff and against the defendants no. 3 and 4 herein in terms of the settlement arrived at between the parties. As per the said settlement, the defendants no. 3 and 4 herein had agreed to not adopt and/or use the trade mark MILLENNIUM, and or any other mark identical and/or deceptively similar to the plaintiff’s MILLENNIUM branding in any form whatsoever.
12. It is submitted that the defendants no. 3 and 4, despite furnishing the aforementioned undertaking, collaborated with the defendants no. 1 and 2, with an intent to continue violating the plaintiff’s rights in the MILLENNIUM branding.
13. The plaintiff’s grievance in the present suit is on account of the misappropriation of their registered MILLENNIUM mark and logo by the defendants and the defendants’ use of identical or deceptively similar marks as that of the plaintiff.
14. It is the case of the plaintiff that the adoption and use of the trademarks/name “MILENIUM BOUTIQUE HOTEL”, and by the defendants amount to infringement and dilution of the plaintiff’s exclusive statutory and proprietary rights in the plaintiff’s MILLENIUM branding.
PROCEEDINGS IN THE SUIT
15. On 6th October, 2023, this court granted an ex-parte ad interim injunction in favour of the plaintiff and against the defendants, by way of which they were restrained from misusing the plaintiff’s MILLENNIUM branding and by the same order the parties were referred to mediation.
16. None appeared for the defendants no.3 and 4 in the mediation proceedings despite specific notice by the Court vide order dated 24th November, 2023.
17. Pursuant to the Settlement Agreement dated 8th February, 2024, executed between the plaintiff and the defendants no. 1 and 2, the suit was decreed in favour of the plaintiff and against defendants no. 1 and 2 vide the order dated 20th March, 2024.
18. Vide order dated July 10, 2024, the defendants no. 3 and 4 were proceeded against ex-parte by this Court.
19. In view of the above, the counsel for the plaintiff has filed the present application under Order XIII-A of the Code of Civil Procedure, 1908 for passing of a summary judgment.
ANALYSIS AND FINDINGS
20. I have heard the submissions of the counsel for the plaintiff and also perused the material on record.
21. The plaint has been duly verified and is also supported by the affidavit of the plaintiff. In view of the fact that no written statement has been filed on behalf of the defendants no.3 and 4, all the averments made in the plaint have to be taken to be admitted. Further, since no affidavit of admission/denial has been filed on behalf of the defendants no.3 and 4 in respect of the documents filed with the plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules 2018, the same are deemed to have been admitted.
22. Therefore, I am of the opinion that no purpose would be served by directing the plaintiff to lead ex parte evidence by filing an affidavit of examination in chief and the plaintiff is entitled to a summary judgment.
23. From the averments made in the plaint and the evidence on record, the plaintiff has been able to prove that the plaintiff is the registered proprietor of the “MILLENIUM” marks.
24. A comparison between the plaintiff’s registered marks and the impugned marks used by the defendants no.3 and 4 is set out below:
25. A bare perusal of the competing marks makes it apparent that the defendants no.3 and 4 have copied the plaintiff’s registered and reputed trade mark “MILLENNIUM”.
26. It is evident that the defendants no.3 and 4 are habitual infringers who have conducted their affairs with the sole intent to defeat the order dated 15th January, 2019 passed by this Court in CS COMM No. 774/2016.
27. Based on the discussion above, a clear case of infringement of trademarks is made out. The defendants no.3 and 4 have taken unfair advantage of the reputation and goodwill of the plaintiff’s trademark and have also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered marks without any plausible explanation. Therefore, the plaintiff has established a case of passing off as well.
28. At this stage, it may be relevant to note that the defendants no.3 and 4 did not appear before the Court, despite service of summons on 10th July,
2024. Further, no communication on behalf of the defendants no.3 and 4 have been placed on record in respect of the allegations of the plaintiff in this suit.
29. Since the defendants no.3 and 4 have failed to take any requisite steps to contest the present suit, despite having suffered an ad interim injunction order, it is evident that the defendants no.3 and 4 have no defence to put forth on merits.
30. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, this Court has observed as under:
why the claim should not be disposed of before recording of oral evidence. The expression “real” directs the Court to examine whether there is a “realistic” as opposed to “fanciful” prospects of success. This Court is of the view that the expression “no genuine issue requiring a trial” in Ontario Rules of Civil Procedure and “no other compelling reason…..for trial” in Commercial Courts Act can be read mutatis mutandis. Consequently, Order XIIIA, CPC would be attracted if the Court, while hearing such an application, can make the necessary finding of fact, apply the law to the facts and the same is a proportionate, more expeditious and less expensive means of achieving a fair and just result.
92. Accordingly, unlike ordinary suits, Courts need not hold trial in commercial suits, even if there are disputed questions of fact as held by the Canadian Supreme Court in Robert Hryniak (supra), in the event, the Court comes to the conclusion that the defendant lacks a real prospect of successfully defending the claim.”
31. The aforesaid principles are fully applicable in the facts and circumstances of the present case. As elaborated above, the defendants no.3 and 4 have no real prospect of successfully defending the claims in the present suit. Further, taking into account that the defendants no.3 and 4 have not set up any defence, there is no compelling reason for the recording of oral evidence.
32. Therefore, this is a fit case where a summary judgment in terms of Order XIII-A of the CPC can be passed in favour of the plaintiff and against the defendants no.3 and 4.
33. In view of the foregoing analysis, the suit is decreed in terms of prayer clauses 75(a) to (d) of the plaint. The said clauses read as follows: a. Pass and pronounce a decree of permanent injunction against infringement of the Plaintiffs registered MILLENNIUM trade mark and/or logo by restraining the Defendants, their proprietor, partners, directors, promoters, shareholders, officers, managers, assigns, successors-in-interest, licensees, franchisees, subsidiary/associate/group companies, sister concerns, representatives, servants, distributors, agents, family members, employees, etc. and/or any person or entity acting for them from using the trade mark/name "MILENIUM BOUTIQUE HOTEL" and/or the impugned logo “ ” or any other mark similar to the Plaintiff's MILLENNIUM trade mark or logo, singularly or in conjunction with any other words or monogram/logo, as a trade mark, corporate name, trade name, trading style, domain name, website address, electronic mail identity or in any other manner whatsoever; on or in relation to their services/business including advertising, business papers, etc. b. Pass and pronounce a decree of permanent injunction against the Defendants, their proprietor, partners, directors, promoters, shareholders, officers, managers, assigns, successors-in-interest, licensees, franchisees, subsidiary/associate/group companies, sister concerns, representatives, servants, distributors, agents, family members, employees, etc. and/or any person or entity acting for them from passing off their services/business as or for the services/business of the Plaintiff by restraining them from using the trade mark/name "MILENIUM BOUTIQUE HOTEL" and/or the impugned logo “ ”, or any other mark similar to Plaintiffs MILLENNIUM trade mark or logo, singularly or in conjunction with any other words or monogram/logo, as a trade mark, corporate name, trade name, trading style, domain name, website address, electronic mail identity or in any other manner whatsoever; on or in relation to their services/business including papers, etc.; c. Pass and pronounce a decree of permanent injunction against infringement of the Plaintiffs copyright in the artistic work/ representation/logo, viz., logo of Plaintiff, by restraining the Defendants, their proprietor, partners, directors, promoters, shareholders, officers, managers, assigns, successors in-interest, for them from using or displaying the impugned logo(s) or any such artistic work/representation/logo or any other work similar to or being an identical or substantial reproduction of Plaintiffs above-mentioned artistic work/representation/logo, singularly or in conjunction with any other words or monogram/logo in any manner in relation to their services/business including advertising, business papers, etc. d. Pass and pronounce a decree of permanent injunction restraining the Defendants, their proprietor, partners, directors, promoters, shareholders, officers, managers, assigns, successors-in-interest, for them from applying for and/or obtaining registration from any competent body or Government authority for its trade mark/name "MILENIUM BOUTIQUE HOTEL" and/or the impugned logo “ ”, or any other word(s)/mark similar to and/or consisting of or containing the Plaintiffs MILLENNIUM trade mark or logo singularly or in conjunction with any other words or monogram/logo/device in respect of any trade mark, corporate name, trade name, domain name/website address or copyright or in any other manner whatsoever;”
34. Insofar as the reliefs of damages and costs sought in prayer clauses 75(g) and (h) are concerned, reference may be made to the judgment in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
plaintiff.”
35. In light of the foregoing analysis, this Court concludes that the defendants no.3 and 4’s conduct not only warrants but also necessitates the imposition of both costs and aggravated damages. Thus, in addition to the decree passed in the terms already mentioned above, taking into account the entire facts and circumstances presented in this case, this Court also awards damages and costs amounting to INR 5,00,000/- in favour of the plaintiff and against the defendants no.3 and 4.
36. Let the decree sheet be drawn up.
37. All pending applications stand disposed of. AMIT BANSAL, J NOVEMBER 21, 2024