Delhi High Court: Plaintiff, Banyan Tree Holdings Limited filed an application seeking permanent injunction against Defendants 1 and 2 and to restrain them from using marks and logo identical to its mark ‘ANGSANA’. Prathiba M. Singh, J.*, granted permanent injunction to the Plaintiff and directed Defendant 3, FastDomain Inc. to transfer the domain name to the plaintiff and remove listing of Angsana Thai Spa on JustDial.
Background
The Plaintiff founded in 1994 as part of the Banyan Tree Group, was engaged in the hospitality industry under multiple brands in several countries including India. The Plaintiff also operated hotel management services, spa, etc. The Plaintiff stated that the ‘ANGSANA’ mark was adopted in Indonesia and Australia in 2000, and in 2001 in India by launching its resort and spas. The Plaintiff used websites, www.angsana.com and www.angsanaresidences.com to promote and popularize the ‘ANGSANA’ resorts. In India, the mark ‘ANGSANA’ was registered since 2000 under classes 24, 16, 25 and 21 and under class 41 since 2003.
Defendant 1 was using the mark and name ‘Angsana Thai Spa’ for a spa located in Bangalore. Defendant 2 had registered a domain name www.angsanathaispabangalore.com in 2020 and Defendant 3 was the domain name registrar. The Plaintiff filed a suit and sought injunction against the Defendants from using the identical mark and logo, in a different colour combination. Thiss Court had granted an ex parte ad interim injunction on 23-12-2022 and directed Defendant 3 to lock, block, suspend the domain name angsanathaispabangalore.com. However, after injunction the Defendants stopped the use of the mark ‘ANGSANA’ except for the listing on JustDial.
Comparison of Plaintiff’s and Defendant’s marks
|
Plaintiff’s Trade Mark |
Defendant’s Trade Mark |
|
|
|
Analysis and Decision
The Court considered both marks and opined that the Defendants were using an identical mark/name ‘ANGSANA’ for identical goods and services. The Court opined that spa services had a requirement for high quality, best hygiene and safety/security of the customers and if unauthorized use of the Plaintiff’s mark ‘ANGSANA’ and the name of the Plaintiff was permitted to be used in this manner, the same would result in severe erosion of the Plaintiff’s goodwill, apart from being violative of the Plaintiff’s statutory and common law rights in the mark ‘ANGSANA’.
The Court opined that the present case was of triple identity where the mark or name, services and class of customers were identical relying on the test of triple identity laid down in Ahmed Oomerbhoy v. Gautam Tank, 2007 SCC OnLine Del 1685. The Court relied on Inter Ikea Systems BV v. Imtiaz Ahamed, 2016 SCC OnLine Del 6717 and held that the present case was fit for grant of a decree of permanent injunction. The Court further directed for removal of ‘Angsana Thai Spa’ from the listing of JustDial.
The Court further opined that in a commercial suit, actual costs in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022, would be liable to be awarded in favour of the Plaintiff as the adoption of the mark ‘ANGSANA’ for spa and hotel services was not just illegal, but also dishonest, as an identical mark to that of the Plaintiff’s mark has been adopted for identical services. The Court relied on Uflex Ltd. v. Govt. of T.N., 2021 SCC OnLine SC 861 and awarded Rs. 12,82,580 as actual costs to the Plaintiff. The Court further directed Defendant 3 to transfer the domain name www.angsanathaispabangalore.com to the Plaintiff.
[Banyan Tree Holdings Ltd. v. Angsana Thai Spa, 2023 SCC OnLine Del 7642, decided on 01-12-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiff- Pravin Anand, Shantanu Sahay and Imon Roy, Advocates
