Full Text
HIGH COURT OF DELHI
Date of Decision: 29th May, 2025
THE RITZ HOTEL LIMITED & ORS. .....Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali R.
Mittal and Ms. Gitanjali Sharma, Advocates
Through: Mr. Rishub Kapoor, Advocate
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringement of trademarks and passing off of their services as those of the plaintiffs along with other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. The plaintiff no. 1, The Ritz Hotel Limited, owns the famous ‘The Ritz Paris’ hotel, which was established in Paris in the year 1898 and is now ranked amongst the most luxurious hotels in the world. The plaintiff no. 3 is the current owner globally of a family of the Ritz marks and ‘RITZ’ formative trademarks such as ‘THE RITZ HOTEL’, ‘RITZ PARIS’, ‘HOTEL RITZ’, ‘RITZ ESCOFFIER’ etc. (hereinafter referred to as “RITZ marks”). The plaintiff no. 1 assigned the RITZ marks to the plaintiff no. 3 in 2021, while the plaintiff no. 1 retained a license to use the RITZ marks.
3. The plaintiff no. 2, The Ritz-Carlton Hotel Company, L.L.C., owns the world-famous trademarks ‘RITZ-CARLTON’, ‘THE RITZ- CARLTON’,, and variations thereof (individually and collectively referred to as the “RITZ-CARLTON marks”).
4. The plaintiff no. 2 has registered the RITZ-CARLTON marks in India, where they are used in connection with 5-star luxury hotels operating in Bengaluru and in Pune. The plaintiff no. l’s earliest registration for the mark ‘RITZ’ in India bears registration no. 258396 which was filed in the year 1969. The various trademark registrations granted in favour of the plaintiffs in India for the RITZ and RITZ-CARLTON marks are outlined in paragraph 40 of the plaint.
5. The RITZ and RITZ-CARLTON marks are widely recognized and known among Indian consumers, especially in the hospitality and travel industry. The plaintiffs have promoted their respective trademarks heavily, and the plaintiffs have been recognized and given multiple awards and accolades. In the year 2023, the plaintiff no. 2’s RITZ-CARLTON hotels earned over USD 5.[7] Billion in worldwide revenues. In the year 2024, the plaintiff no. 2’s RITZ-CARLTON hotels earned over USD 6 Billion in worldwide revenues.
6. In and around November 2023, the plaintiffs came across the website www.ritz-hotels.com, which, upon access, redirected users to another website, www.thehotelritz.com, both of which prominently displayed the infringing ‘RITZ’ marks in relation to the defendants’ hotel services. Thereafter, the plaintiffs conducted an investigation into the defendants’ business activities, which revealed that the defendants were operating under the infringing ‘RITZ’ marks.
7. The inquiries revealed that apart from the defendants’ social media presence on www.facebook.com, they were also advertising and offering for reservations their facility on third party travel platforms such as www.tripadvisor.com, www.makemytrip.com, www.agoda.com, www.goibibo.com, www.trivago.com, www.expedia.com, www.booking.com, amongst others. It was further confirmed by the investigation that the defendants’ hotel using the infringing ‘RITZ’ marks was receiving negative reviews on the internet.
8. Aggrieved by the aforesaid, the present suit has been filed seeking relief of permanent injunction along with other ancillary reliefs against the defendants.
PROCEEDINGS IN THE SUIT
9. Summons in the suit and notice in the interim injunction application was issued to the defendants on 8th January, 2025.
10. On 3rd February, 2025, the defendants entered appearance through their counsel, who submitted that the defendants shall cease the use of impugned marks, ‘HOTEL RITZ’, ‘RITZ HOTEL’/ ‘THE RITZ HOTEL’,, and. It was further submitted that the defendants would not operate the website using the domains ‘www.thehotelritz.com’ and ‘www.ritz-hotels.com’ and also refrain from using the email address ‘info@thehotelritz.com’. The defendants were given time to comply with the aforesaid statement and file an affidavit of compliance within four (4) weeks. On the same date, counsel for the plaintiffs gave a statement before the Court that the plaintiffs shall consider confining reliefs claimed in the plaint with regard to permanent injunction and giving up the reliefs in respect of damages and costs.
11. The defendants filed an application seeking clarification of the order dated 3rd February, 2025 and proposed to use the following revised marks – ‘RITIZ’ or ‘RITS’ in various forms. The defendants also shared email with the plaintiffs’ counsel seeking permission to use these marks. The plaintiffs responded to the aforesaid email on 27th February, 2025 and rejected the use of any deceptively similar marks by the defendants.
12. During the hearing on 28th February, 2025, the defendants’ counsel withdrew the aforesaid application and the defendants were granted an additional one (1) week’s time to file their affidavit of compliance. Pursuant to which, the defendants filed an affidavit of compliance dated 10th March,
2025.
13. Thereafter, on 17th March, 2025, counsel for the plaintiffs apprised the Court that the defendants were still using the impugned marks on their stationery, menu card and invoices. The defendants were granted two (2) weeks’ time to file an affidavit of compliance in this regard. The defendants filed an affidavit of compliance dated 29th March, 2025.
14. Counsel for the plaintiffs pressed for the prayer contained in paragraph 88(d) of the plaint for declaring its registered ‘RITZ’, ‘RITZ- CARLTON’,, marks as well-known trademarks under the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter ‘the Act’) read with Section 11(6) of the Act, to which the defendants did not object. Accordingly, on 17th March, 2025, the plaintiffs were directed to file an affidavit in support of its aforesaid prayer.
15. In terms of the aforesaid order, an affidavit dated 15th March, 2025 of the plaintiffs’ witness Mr. Subroto Panda was filed and on 9th May, 2025, plaintiffs’ evidence was recorded in the suit.
ANALYSIS AND FINDINGS
16. I have heard the counsel for the parties and examined the material on record.
17. At the outset, counsel for the plaintiffs are willing to settle the present dispute with the defendants subject to the defendants giving an undertaking which corresponds to the relief sought in prayer clauses 88(a), 88(b), 88(c) and 88(e) of the plaint.
17.1. The aforesaid proposal is acceptable to counsel for the defendants.
17.2. Accordingly, a decree of permanent injunction is passed in terms of prayer clauses 88(a), 88(b) and 88(c) in favour of the plaintiffs and against the defendants. Further, in terms of prayer clause 88(e) of the plaint, directions are issued to the defendants to immediately discontinue the use of websites ‘www.thehotelritz.com’ and ‘www.ritz-hotels.com’.
DECLARATION OF THE RITZ MARKS AND RITZ-CARLTON MARKS AS WELL-KNOWN TRADE MARKS
18. Prayer clause 88(d) in the suit seeks declaration that the plaintiffs’ marks ‘RITZ’, ‘RITZ-CARLTON’,, are a ‘well-known trademark’ within the meaning of Section 2(1)(zg)1 of the Trade Marks Act, 1999.
19. Section 11(6) of the Act sets out the factors to be considered while determining whether a mark is a well-known trademark. For ease of reference, the same is set out below: “Section 11 – … (6) The Registrar shall, while determining whether a trade mark is a well known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.”
20. Section 11(7) of the Act lists the factors that the Registrar of Trade Marks need to consider while deciding whether a mark is known or recognized in the relevant section of the public for the purposes of Section 11(6) of the Act. The same is also set out below: “Section 11 – Section 2 - Definitions and interpretation. (1) In this Act, unless the context otherwise requires,— … (zg) well known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. … (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.”
21. Counsel for the plaintiffs has drawn the attention of this Court to the following data, from the documents filed in the present suit, to satisfy each of the factors enumerated in the aforesaid sub-sections as being relevant in deciding whether the RITZ marks and RITZ-CARLTON marks are eligible to be declared as well-known trademarks:
I. Knowledge and recognition in relevant section of the public in India obtained because of promotion [Section 11(6)(i)] a. News articles about Indian dignitaries' (Mahatma Gandhi, Jawaharlal Nehru, Sir Sultan Muhammad Shah, Aga Khan III, Maharaj a of Patiala) visit to The Ritz Paris in 1920s, 1931 and 1948 at pages 1272-1273 of documents filed with the plaint exhibited as Ex. PW 1/13 and at pages 1-25 of additional documents filed vide index dated 15th March, 2025 exhibited as Ex. PW 1/14. b. References to the plaintiffs' hotels in movies or books including the Bollywood movie Jhoom Barabar Jhoom starring Abhishek Bachchan over the years at pages 44- 124 of additional documents filed vide index dated 15th March, 2025 exhibited as Ex. PW 1/15. c. INTA list of well-known marks at page 290 of documents filed with the plaint exhibited as Ex. PW 1/4. d. Awards/recognition in India at pages 1096, 1196 and 1198 (Conde Nast Readers Travel Award 2024) exhibited as Ex. PW 1/12, 921 (Conde Nast Traveller India's Top 50 Restaurants and Bars), 923 (Times Food Awards), 836-837 (Ritz-Carlton Bangalore awards announced on Facebook) of documents filed with the plaint exhibited as Ex. PW 1/11; Leading hotels of the world recognition at page 40-43 of additional documents filed vide index dated 15th e. Articles about Ritz Hotel and Ritz-Carlton in India at page 1096, 1270-1271 of documents filed with the plaint exhibited as Ex. PW 1/12; pages 14-61 of additional documents filed vide index dated 22nd January, 2025 exhibited as Ex. PW 1/17. f. Articles about growth/expansion in India and recognition - page 1270-1271 of documents filed with the plaint exhibited as Ex. PW 1/13 and pages 14-61 of additional documents filed vide index dated 22nd
II. The duration, extent and geographical area of any use of that trade mark [Section 11(6)(ii)] a. Article about global growth of the RITZ-CARLTON brand at pages 536-537 of documents filed with the plaint from the plaintiff no. 2’s website exhibited as Ex. PW 1/10 and pages 14- 61 of additional documents filed vide index dated 22nd January, 2025 exhibited as Ex. PW 1/17. b. List of international registrations for RITZ and RITZ-CARLTON marks at pages 167-286 of documents filed with the plaint exhibited as Ex. PW 1/3. c. Ritz-Carlton hotels in India since 2013 - page 14 of additional documents filed vide index dated 22nd d. Articles about growth in India and recognition at pages 1096, 1196 and 1198 (Conde Nast Readers Travel Award 2024) exhibited as Ex. PW 1/12, 921 (Conde Nast Traveller India's Top
50 Restaurants and Bars), 923 (Times Food Awards), 836-837 (Ritz-Carlton Bangalore awards announced on Facebook) exhibited as Ex. PW 1/11 and pages 14-61 of additional Ex. PW 1/17.
III. The duration, extent and geographical area of any promotion of the trade mark including advertising or publicity and presentation, at fairs, or exhibition of the goods or services to which the trade mark applies [Section 11(6)(iii)] a. List of awards at paragraph 39 of the plaint and supporting documents at pages 927-1259 of documents filed with the plaint exhibited as Ex. PW 1/12. b. Leading hotels of the world recognition at page 40-43 of additional documents filed vide index dated 15th c. Articles showing goodwill and reputation of Ritz Hotel and Ritz- Carlton at pages 927-1259 of documents filed with the plaint (awards and recognitions) exhibited as Ex. PW 1/12 and pages 1264-1301 of documents filed with the plaint (articles about legacy and history of the Ritz Hotel and Ritz-Carlton hotels) exhibited as Ex. PW 1/13. d. References to the plaintiffs’ hotels in movies or books including the Bollywood movie Jhoom Barabar Jhoom starring Abhishek Bachchan over the years at pages 44-124 of additional documents filed vide index dated 15th March, 2025 exhibited as Ex. PW 1/15. e. Articles about growth in India at page 1270-1271 of documents filed with the plaint exhibited as Ex. PW 1/13 and pages 14-61 of additional documents filed vide index dated 22nd
IV. The duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark [Section 11(6)(iv)] a. Legal proceedings certificates of trade mark registrations in India at page 134-166 of documents filed with the plaint exhibited as Ex. PW 1/1 and Ex. PW 1/2 and page 8-13 of additional Ex. PW 1/16. b. Registration no. 258396 since 1969 for the mark RITZ at page 136-138 of documents filed with the plaint exhibited as Ex. PW 1/1. c. Foreign registrations at pages 167-286 of documents filed with the plaint exhibited as Ex. PW 1/3. d. Domain name registrations at pages 427-439 of documents filed with the plaint exhibited as Ex. PW 1/9.
V. The record of successful enforcement of the rights in that trade mark in particular, the extent to which the trade mark has been recognized as a well-known trade mark [Section 11(6)(v)] a. Copies of orders by Delhi High Court at pages 294-300 exhibited as Ex. PW 1/5. b. Abandoned trademark applications of identical/deceptively similar marks at pages 301-312 of documents filed with the plaint exhibited as Ex. PW 1/6. c. WIPO Domain name complaints at pages 313-353 of documents filed with the plaint; recognized well-known at page 323 of documents filed with the plaint exhibited as Ex. PW 1/7. d. Copies and reports of orders by foreign courts protecting the intellectual property rights of the plaintiffs’ RITZ or RITZ- CARLTON marks at pages 354-426 of documents filed with the plaint exhibited as Ex. PW 1/8.
22. I have heard the submissions made by counsel for the plaintiffs and gone through the material placed on record.
23. On the strength of the averments made in the plaint as well as the nature and volume of the documents placed on record, I am of the view that the plaintiffs have established well beyond doubt that the marks ‘RITZ’, ‘RITZ-CARLTON’, and have acquired the status of well-known trademarks within the meaning and scope of Section 2(1)(zg) of the Act.
24. The long duration for which the RITZ and RITZ-CARLTON marks have been in use by the plaintiffs, wide geographical area of their use, their knowledge among the general public and their goodwill and reputation due to the extensive promotion, publicity and extensive revenue generated by the plaintiffs, in India as well as other countries, the RITZ and RITZ- CARLTON marks have achieved the status of well-known trademarks. Accordingly, the plaintiffs fulfil all the criteria set out in Section 11(6) read with Section 11(7) of the Act for declaring the RITZ and RITZ-CARLTON marks as well-known trademarks in respect of hotels and other related services in the hospitality industry.
25. Accordingly, in terms of prayer clause contained in paragraph 88(d) of the plaint, a decree of declaration is passed declaring the ‘RITZ’ and ‘RITZ-CARLTON’, and marks as wellknown trademarks within the meaning of Section 2(1)(zg) of the Act.
26. Let the decree sheet be drawn up. AMIT BANSAL, J MAY 29, 2025 Vivek/-