Delhi High Court: A petition was filed under Section 9 of the Arbitration and Conciliation Act, 1996 seeking to restrain the Respondent from using the Trade Mark World Trade Centre, Faridabad; WTC, Faridabad and WTC Logo or any other trademark identical with or deceptively similar thereto, in any manner whatsoever. Sachin Datta, J., restrained the respondent from using the marks “World Trade Centre Faridabad”; “WTC Faridabad” and WTC Logo or any other trademark identical with or deceptively similar thereto, in any manner whatsoever.
The petition was seeking a direction to the respondent to display hoardings, for such period which the Court may deed fit and proper, at conspicuous places at the sites of its Project named ‘RPS Infinia’ and ‘12th Avenue’ informing public that none of those projects have any connection with World Trade Centre. It further seeks a direction restraining the respondent from conducting any sale/booking of any Unit in its Projects named ‘RPS Infinia’ and ‘12th Avenue’ for such period which the Court may deem fit and proper so that trade and public may disassociate the said trademarks from respondent and to deposit an amount of Rs.31,30,71,753 towards its outstanding dues owed to Petitioner 1 and a sum of Rs.1,75,99,773 towards its outstanding dues owed to the Petitioner 2.
The respondent is the developer of a project being developed under the name of “RPS Infinia”. The respondent and petitioner 1 entered a “Memorandum of Understanding” (‘MOU’) in respect of the said Project. Pursuant to the MOU, they entered a “Consultancy Agreement for Brand and Business Development Related Services” and the Respondent and petitioner 1 entered a “Consultancy Agreement for Marketing, Distribution and Sales Advisory Services” by virtue of which the Project “RPS Infinia” was to be rebranded as WTC Faridabad along with the concept name defined by the respondent. The petitioners represented to have rights to the said brand/mark; further, the respondent was not to have any right or claim or interest in any brand/mark associated with the petitioners.
The petitioners claim to have rights to the brand/mark ‘World Trade Center Faridabad’; ‘WTC Faridabad’; and WTC Logo on the strength of a ‘Licence Agreement’ executed between “World Trade Centers Association, Inc”, a Delaware Corporation and ‘WTC Noida Development Company Pvt. Ltd.’. The petitioner 2, a 100% subsidiary of WTC Noida Development Company Pvt. Ltd claimed to be entitled to exploit the said marks in the territory of Faridabad, India. The respondent, however, have ignored petitioner’s instructions regarding the usage and manner, font, colour scheme, and visual appearance of the said brand/mark and misused the same, thereby hampering the brand’s image and allegedly committed defaults in making payments. Disputes having arisen between the parties the petitioners sent a legal notice dated to terminate the MOU and Agreements, and thus, called upon the respondent to cease and desist from all use of the brand/mark WTC, World Trade Centre and WTC logo and raised certain monetary claims upon the respondent.
The Court noted that Clause 2.6 of the said MOU clearly stipulates that upon termination/determination of this agreement the developer/respondent shall have no right to use any brand/mark associated with the consultants/petitioners, and/or any brand/mark identical or deceptively similar thereto, in relation to Project, expansion or part thereof. Thus, the ex-licensee cannot be allowed to use the mark after termination of license. Further, the licensor has a right and duty to ensure the consistency of the goods or services being sold and advertised under its mark. If the licensor has severed its business relationship with a licensee, it cannot guarantee the continued quality of the ex-licensee’s operations. The remedy for the ex-licensee is money damages if the termination is found to be bad in law.
The Court concluded that upon the termination of the MOU and Agreements dated 28-06-2021, the respondent ceased to have any right in respect of the brand/marks which are the subject matter of the Agreements between the parties and as such, the petitioners are well within the rights to seek appropriate injunctive order/s against the respondent. In the circumstances, the petitioners have made out prima facie case for the grant of an injunction restraining the Respondent from using the marks “World Trade Centre Faridabad”; “WTC Faridabad” and WTC Logo or any other mark identical with or deceptively similar thereto, in any manner whatsoever.
The Court granted two weeks to the respondent to make necessary applications/intimation to RERA and/or bank/financial institutions to make appropriate changes in the documentation/s concerning the project and to take all requisite steps to migrate to the use of a non-infringing mark/brand. The respondent will also ensure that all references to the brand/marks “World Trade Centre Faridabad”; “WTC Faridabad” and WTC Logo shall be instantly removed from its social media platforms, websites, publicity material, brochures, advertisements, hoardings etc.
The Court further restrained the respondent from referring to the marks “World Trade Centre Faridabad”; “WTC Faridabad” and WTC Logo or any other mark identical with or deceptively similar thereto, in any manner whatsoever in respect of any fresh sales/booking of any unit/s in its projects, except insofar as a reference may be necessary to refer to subsisting RERA/regulatory approvals. Further, in respect of any fresh sales/ bookings, the respondent shall be obliged to disclose in writing to the flat buyers concerned that it has no right in respect of the aforesaid marks. Details/particulars of all such sales shall also be made available to the petitioners.
[Viridian Development Managers Private Limited v RPS Infrastructure Limited, 2023 SCC OnLine Del 7134, decided on 06-11-2023]
Advocates who appeared in this case :
Mr. Preetesh Kapur, Sr. Adv. alongwvith Mr. Shaunak Kashyap, Ms. Nistha Gupta and Mr. Kartikaya Gautam, Advocates for petitioner
Ms. Priya Kumar, Adv. alongwith Mr. Manu Manchanda and Mr. Kabir Harpalani, Advocates for respondent