Hon'ble Judges/Coram:
Yogesh Khanna

JUDGMENT

Yogesh Khanna, J.

IA No. 7778/2016 (u/O XXXIX Rules 1 & 2 r/w Sec. 151 CPC)

1. This is an application for restraining the Defendants from inter alia misappropriating Plaintiffs registered and well known trade mark MILLENNIUM and logo (the "Five Bar M logo") and using identical or deceptively similar trade mark(s).

2. The mark/logo of the defendant is given herein:

3. The case of the plaintiff is as follows:

a. Plaintiff is a wholly-owned subsidiary of Millennium and Copthorne Hotels plc ("M&C"). M&C is a London-based publicly listed hotel and resort company incorporated under the laws of England and Wales. It is featured on the London Stock Exchange since 1996. The M&C Group is one of the top 15 hotel groups in the world. The M&C Group owns and operates a leading chain of over 126 international five-star and four-star hotels in diverse locations, in more than 23 countries, under world-famous and reputed brands such as but not limited to MILLENNIUM and GRAND MILLENNIUM etc. The M&C group since 1994 owned, controlled and propagated the MILLENNIUM brand and trade mark and logo for hotel properties in numerous countries around the world and is registered proprietor, inter alia, of the trade marks MILLENNIUM and logo of the M&C Group. The defendant no. 1 is the company which owns and operates MILLENNIUM Hotel vis. Defendant no. 3. Defendant no. 2 is the Chairman and Managing Director of Defendant no. 1;

b. the M&C Group adopted the trademark/name MILLENNIUM in 1994 and has been extensively using this name and is recognized as a symbol of high-quality hotels and services globally and in India. In 1995, the Plaintiff also conceived and adopted the unique, distinctive, contrived and highly stylized "Five Bar M logo" . This Logo has been a constant feature of the identity of the M&C Group and is displayed in all its hotels, websites, stationery and other hospitality-related products;

c. it is the most valued asset of the M&C group. In India the plaintiff is proprietor of various trademarks consisting of and/or containing MILLENIUM/MILLENNIUM and/or logo including MILLENIUM/hotels and resorts in Classes 35, 36, 42 and 43 for hotels and related services, with the earliest such registrations belonging to Class 16 and having dated back to 1995. Such registration are given in para 17 of the plaint; the earliest of the registration goes to November 03, 2003. Registration of the trademark of the plaintiff in Class 16 dated back to February 8, 1995 and its locations have been used in various movies. The world wide turnover of M&C group is given in para 25 of the plaint;

d. it is argued that M&C group extensively promotes its hotels and services on the Internet especially through its official website www.millenniumhotels.com, owned and operated since 1999 inter alia for online bookings to customers internationally and in India and such documents have been filed along with the plaint. The M&C group is also the owner of numerous other domain featuring the similar name as stated in para 28 and the websites as stated in para 29 & 30 of the plaint;

e. Indian travelling to any part of the world can avail the services of M&C group through various other travel and hotel booking websites/portals such as www.makemvtrip.com, www.booking.com. www.tripadvisor.in, www.hoteltravel.com and www.expedia.com;

f. A frequent traveler from any jurisdiction including India is aware of the M&C group and its business and can utilize its services and can gain access and make reservations from anywhere in the world including India, and hence the services of the M&C group under the trademark Millennium are availed by customers in India. Various global guest loyalty programmes, rewards for corporate bookings and travel agents are being given by the plaintiff;

g. India has always been a significant target and source market for the M&C Group and the plaintiff has 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. The M&C group has extensively advertised and promoted its hotels and business through various media and its sales and marketing expenses are given in para 36 of the plaint. It regularly participates in trade fairs and exhibitions all over the world as stated in para 37;

h. in or around December, 13 the Plaintiff became aware of the website www.milleniumhotelindia.com having millennium is its foremost feature and it displayed hotel name millennium hotel in Faridabad.

i. The impugned website www.millenniumhotelindia.com advertised Millennium Hotel as a perfect destination for international traveler. It is argued defendant had not only blatantly copied Plaintiffs registered and reputed trademark MILLENNIUM but also unscrupulously adopted a deceptively similar colourable imitation of and tried to sail as close as possible to its unique, well recognized and registered logo by even adopting a palpably similar colour scheme used by Plaintiff;

j. Both the logos are compared side by side by the plaintiff in para 43 of its plaint and these are as under:

k. The plaintiff sent a notice dated December 13, 2013 to defendant to give up use of trademark name and logo, but defendant has refused to give up and sent reply dated January 17, 2014 contending they are using the same honestly since 2007 and since the Plaintiff had not made any bona fide commercial use of its marks in India and had no business goodwill or reputation in India, so they cannot stop the defendant from using the same;

l. The defendant no. 1 has filed an application under no. 2108795 on March 3, 2011 for registration of the trade mark millennium in respect of Hotel Services, Restaurants, Bar, Banquets, Resorts Services included in Class 43 but now the said application has been withdrawn. The mark is shown as under:

m. It is alleged the defendants are trying to cash the plaintiffs goodwill and reputation worldwide and in India The travelers can go to the website of the defendant for booking and the plaintiff was not aware the said website belongs to it or not and hence is misused by the defendants;

n. The plaintiff had filed a complaint against the domain name of the defendant with WIPO Arbitration and Mediation Center for adjudication under the Uniform Domain Dispute Resolution Policy ("UDRP") and it has also given its finding stating inter-alia the domain name used by the defendant is confusingly similar to the plaintiff registered trademark Millennium. A copy of the said order is also annexed;

o. the defendant is still continuing to operate the impugned "MILLENNIUM Hotel" in Faridabad and are using domain name millenniumhotelsandresort.com and website www.millenniumhotelsandresort.com etc. and also it has similar logo and since the plaintiff has registered trademark in its feature. The Defendant be restrained from using the word MILLENNIUM or the logo of the plaintiff.

4. It is argued the plaintiff is an international brand having acclaimed goodwill throughout the world and the defendant is using the goodwill of the plaintiff, hence need to be restrained.

5. The arguments of the defendant is threefold. It alleges (a) though the entire plaint speaks about the M&C Group but nothing is said about the plaintiff as to who is it and how is attached to M&C group; (b) the M&C group has no business in India and hence cannot claim prior user and (c) there are so many people using name Millennium for the hotels and/or related services from even prior to the user being claimed by the plaintiff and they have also got their trademark registered with word Millennium prior to the registration of the trademark by the plaintiff viz. two of such names have been in use since the year 1950 and 1970 and the defendant is also doing hotel business since 11 years, hence the plaintiff has no case.

6. Qua contention (a) I have examined the plaint. In its plaint the Plaintiff has averred:

i) MILLENNIUM & COPTHORNE INTERNATIONAL LIMITED, is a company incorporated on 01.01.1996 under the laws of Republic of Singapore and the plaintiff owns, controls and manages a substantial portfolio of award winning and famous hotels under the brand/mark MILLENNIUM;

ii) the plaintiff is a wholly owned subsidiary of Millennium & Copthorne Hotels plc, a London based resort and hotel company. The plaintiff, its parent company and affiliates having rights, title and interest in the trade mark/name MILLENNIUM have been collectively referred to as the "M&C Group" in the Plaint. These entities are interrelated and form one economic entity;

iii) the relationship between the plaintiff and Millennium & Copthorne Hotels plc. is also mentioned in the following documents; namely:-

a) Copy of list of the hotels of the M&C Group and in particular MILLENNIUM HOTELS worldwide, which also form a part of its Annual Report of 2015; (Index IV, Vol. I, page 26)

b) Copy of the assignment deed dated December 31.12.1999 evincing assignment to Plaintiff of various registrations for MILLENNIUM and/or logo marks dating back to 1995; (Index IV, Vol. III, page 562)

c) Copy of Sales Agency Agreement between Plaintiff and 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; (Index IV, Vol. VI, page 1507)

d) Copy of the Memorandum of Understanding and other related agreements signed between Plaintiff and another entity named Narsi Value Creations Limited in 2006 with a view to develop and establish hotels in India under Plaintiff's MILLENNIUM brand; (Index IV, Vol. VII, page 1853)

e) Copies of a few illustrative decisions dating back to 2002 issued by Courts in jurisdictions such as USA, Spain, Poland and Italy wherein Plaintiff's exclusive statutory and proprietary rights in and the worldwide reputation, distinctiveness and longstanding fame of MILLENNIUM branding have been recognized, reaffirmed and protected against misappropriation/misuse; along with translations) in English; and (Index IV, Vol. IX, page 2059-2087)

f) Copy of the legal notice dated 13.12.2013 sent by Plaintiff to Defendants calling upon him to give up the use of the trade mark/name MILLENNIUM and the impugned logo identical/deceptively similar to Plaintiff's prior registered trade mark MILLENNIUM and logo.

The above documents do give the details of the relationship between the plaintiff and Millennium and Copthorne Hotels plc.

7. Qua contention (b) and (c) the learned counsel for the defendant to support his arguments referred to various paragraphs of the written statement wherein the defendant has alleged of various entities operating hotels, resorts and restaurants under the business name Millennium and have listed about 30 of them. The defendant also has referred to 200 such companies in India having Millennium as a permanent part of their name and out of which 40 such companies are listed by the defendant. The defendant also referred to the fact even in other countries there are various hotels, resorts and restaurants under the name Millennium, with or without prefix or suffix and gave a list of 32 such hotels etc.

8. The defendant also referred to various schools, colleges, institutions and academics etc. under the said name in India and gave a list of such 14 schools etc. The defendant has also stated that various entities have its domain name starting with the word Millennium and gave a list of 60 such domain name and hence allege Millennium is a common mark to the trade. He has also given a list of various person having registered trademark Millennium in it and give 12 such examples.

9. Hence it is argued the name/mark Millennium is general for the hotel industry, common to the trading and is a public juris and is not liable to be accorded protection and its registration, if any, need to be rectified.

10. Thus the defendant raised an issue that defendant is prior user of the mark in Indian market and in support thereof has referred to Neon Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors. MANU/SC/1192/2015 : 2015(64) PTC 225 (SC) wherein the Court held:

"7. Section 34 of the Trade Marks Act, 1999 (the Act) deserves reproduction herein:

xxxxxx

This Section palpably holds that a proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This "first user" rule is a seminal part of the Act. While the case of the Plaintiff-Respondents is furthered by the fact that their user commenced prior to that of the Defendant-Appellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. xxx

8. Section 47 of the Act is in the same vein and statutory strain inasmuch as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trademark was registered, there was no bona fide use thereof. xxx"

and Canon Kabushiki Kaisha vs. B. Mahajan & Ors. MANU/DE/1747/2007 : 2007(35) PTC 265 (Delhi) wherein the Court held:

"31. The defendants have also cited various precedents in support of their case. In Intel Corporation v. Anil Handa and Ors. MANU/DE/9767/2006 : 2006 (33) PTC 553, injunction was refused to the plaintiff Intel Corporation on the ground that the defendants were found using the trademark Intel for over 15 years. The court observed when existence of a prima facie case is established, the court has to consider the relevant factors, namely, balance of convenience and irreparable injury. While considering the latter, conduct of the parties becomes relevant. If a party has been acting in a particular manner for a long time and has allowed the other to do likewise, the same would have to be weighed.

37. One thing is clear. Wide spread user of the mark Canon does show that the said mark is not associated only with the plaintiff. Therefore, it cannot be said that the use of the said mark by the defendants would necessarily lead to the confusion that the goods of the defendant originate from the plaintiff. In fact, wide spread user of the same mark would be a reminder to a customer that there are various users of the mark in question in relation to different products and services and would reduce the possibility of his associating the particular product/service with any other user of the same or similar mark."

11. Qua transborder reputation the learned counsel for the defendant has referred to Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd.& Ors. MANU/SC/1619/2017 : 2018 (73) PTC 1 SC the Court held:

"13. xxxxx The Division Bench further held that prior use of the trade mark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to the said mark in another dominion. It was, therefore, necessary for the plaintiff in the case to establish that its reputation had spilled over to Indian market prior to April, 2001."

12. In Munish Kumar Singla Trading As: Chakshu Food Products vs. Jollibee Foods Corporation MANU/DE/3803/2017 : 2017(72) PTC 608 (Delhi) the Court held:

"13. In sum and substance, it is seen that in the present case, there was really no jurisdiction in the trial court to grant ex-parte order in terms of the impugned order dated 22.8.2017 once the respondent/plaintiff had not commenced business in India in spite of registration of its trademark in India since the year 2005. Supreme Court in the case of Milmet Oftho Industries and Others vs. Allergan Inc MANU/SC/0512/2004 : (2004) 12 SCC 624 has held that multinational companies have no right to claim exclusivity of the trademark if they do not enter or intend in a reasonable time to enter into business in India and which observations squarely apply in the facts of this case where in spite of registration since the year 2005 till today in the year 2017 the respondent/plaintiff has not commenced his business in India. Prima facie therefore the ratio of the judgment of the Supreme Court in the case of Milmet Oftho Industries (supra) would apply. Also, the present is not a case where by non-grant of an ex-parte order the suit would have become infructuous or the products being sold by the appellant/defendant were such which were sold to children or other vulnerable sections of the society or were pharmaceutical products etc, that, a reasonable period notice should not have been issued and instead a drastic ex-parte injunction order should have been passed."

13. Further in N. Ranga Rao & Sons vs. Koya's Perfumery Works MANU/TN/3856/2010 : 2011 (45) PTC 140 Madras the Court held:

"37. The ratio laid down in the above cited decision would make it clear that it is for this Court to approach the question from the point of view of a man of average intelligence and imperfect recollection to find out whether in a given case the words are deceptively similar and whether an unwary purchaser of average intelligence and imperfect recollection deceived. It should be borne in mind that the object of the enquiry in deciding the question in the ultimate analysis is, whether the mark used by the Respondent as a whole is deceptively similar to that of the registered trade mark of the appellant and that whether the word "WOOD" is a publici juris and whether the appellant herein is entitled for an order of ad-interim injunction."

14. However qua the contention plaintiff does not have any business in India and hence cannot claim prior user, one may refer to paras 26, 27, 29, 30, 32, 35 of the plaint which read:

"26. The M&C Group has been providing high-class hotel and hospitality services all over the world under the trade mark MILLENNIUM and instant reservation to business and leisure travelers internationally for MILLENNIUM hotels. Way back in 2000, the M&C Group had various offices globally, and dedicated international reservation number for New Delhi and Mumbai for information and bookings in MILLENNIUM hotels all over the world; as is evident from the Annual Reports.

27. The M&C Group extensively promotes its hotels and services on the Internet especially through its official website www.millenniumhotels.com which it has owned and operated since 1999 inter alia for online bookings. A few illustrative extracts from the website www.millenniumhotels.com inter alia providing instant online reservation and booking services to customers internationally and in India have been filed as documents with the Plaint.

29. The websites including www.millenniumhotels.com, www.milleniumhotels.co.nz, www.millenniumhotels.co.uk and www.millenniumhotels.ae provide exhaustive information inter alia about the M&C Group, its MILLENNIUM hotels, room availability, membership benefit programmes, attractive offers, and so on. Online reservations, from any comer of the world including India, for MILLENNIUM hotels are also facilitated through all such websites of the M&C Group. These websites are thus an invaluable vehicle of the M&C Group's business and a powerful marketing tool which is effectively used to advertise and promote its business and services.

30. In 2013, the website www.millenniumhotels.com got over 37,000 hits per day and over 17,000 transactions were completed each month, generating revenue in excess of USD 100 million in 2013. Such figure reached 39,000 hits per day in 2014. The trade mark MILLENNIUM is known in India which is evident from the frequency with which Plaintiffs websites have been visited and its services have been availed of. By way of illustration; from September 2012 to September 2014, the page visits for Plaintiffs website from India were 1, 336, 299. Further, the revenues generated on account of bookings from India for the same period were USD 2, 215, 954.

32. The popularity of the M&C Group's MILLENNIUM hotels in India is evident from the fact that, in 2006, Kerala Tourism organized a show in Paris to attract tourists and market tourism products, which was led by the then Minister for Tourism and hosted at MILLENNIUM hotel in Paris. The article from "The Hindu" illustrating this event has been filed as document with the Plaint, along with another illustrative article from the India edition of "The Telegraph" evincing eminent politicians staying at MILLENNIUM hotel as early as 2001. Also filed are various other articles from publications/websites such as USA Today, Marketing Magazine, The Telegraph, The Hollywood Reporter, www.marketwired.com.www.businesswire.com and The Caterer dating back to 2002 and referring to a variety of conferences, political events, award ceremonies, etc. held at MILLENNIUM hotels.

35. The M&C Group has made persistent efforts to enter into the Indian market and, in pursuance thereof, had approached several Indian hotel chains with a view to buy percentage of stake in them. Plaintiff even proceeded to advanced stages of talks with one such entity and signed a memorandum of understanding, with an Indian party in 2006. A copy of the said memorandum of understanding and other related agreements have been filed as documents with the Plaint. Plaintiff had further floated a joint venture with another entity in India to invest in and develop hotel properties in the country. However, due to various factors beyond the control of the M&C Group, such endeavours could not fructify into the M&C Group establishing a hotel in India. Press releases and news articles dating back to 2007 from publications/websites such as The Economic Times, the Hindu, DNA, The Caterer, www.hotelonline.com and www.hospitalitvbizindia.com talking about Plaintiffs foray into India have been filed as documents with the Plaint. It is further submitted that the M&C Group's efforts are ongoing and it has an intention of tapping the Indian market and will set up its business in India, in the fullness of time."

15. The above paras do reveal whilst the Plaintiff does not have a physical presence in India, it operates though interactive websites and also avails of third-party websites to advertise, offer and accept bookings for its hotels form India. Its hotels are widely booked through various hotel and travel booking websites on the internet. The Plaintiff has detailed the revenues generated on account of bookings from India for September 2012 to September 2014 in the Plaint.

16. The Plaintiff has consistently promoted and marketed its services in India through tie-ups and collaborations with prominent companies in the field of travel and tourism such as Makemytrip and Hotel Travel Ltd. The Plaintiff has also made efforts to enter into India and even signed memorandum of understanding and floating joint venture to invest and develop hotel properties in India. However, these did not fructify for reasons beyond the control of the Plaintiff. Thus plaintiff has extensively promoted its business in India as well.

17. This Court vide order dated 05.03.2018 while dismissing the defendants IA for rejection of the Plaint filed in the present suit, dealt with the issue of the Plaintiff carrying on business in Delhi and noted:-

"32. Applying the said law, the plaintiff even though not having any office in Delhi would still be carrying on business in Delhi and would qualify to institute the suit in Delhi under Section 134 of the Trade Marks Act also."

18. It is also pertinent to mention while dealing with IA No. 15007/2018 filed by the defendants under Order XXV Rule 1 CPC seeking furnishing of costs, this Court noted:

"46. Moreover, today the mode of conducting business has undergone a huge change from yesteryears. While in yesteryears, all businesses were brick and mortar businesses with huge assets/properties including immovable properties, today most successful businesses are in electronic trade and commerce with no tangible assets."

19. It is trite law that a Plaintiff will be deemed to carry on business by offering services and carrying out commercial activities through websites on the internet which can be accessed and operated from all over the country, per, Icon Health And Fitness, Inc. vs. Sheriff Usman And Anr., MANU/DE/2799/2017. In such cases, the plaintiff needs to show that it actually has business interest at the relevant place; a voice in what is done; a share in the gain or loss and some control thereover, per, WWE vs. Reshma Collections &Anr., MANU/DE/2597/2014).

20. Qua contention there being other users as well, I may refer to the pleadings wherein the plaintiff has stated it has taken actions against many third parties for misusing its mark - Millennium. The plaintiff, as and when made aware, has confronted and was successful in restraining several third parties indulging in misappropriation/misuse of the trade mark/name MILLENNIUM in respect of the hospitality business. The Plaintiff has also diligently instituted opposition/rectification proceedings against any/all conflicting MILLENNIUM formative marks at the Trade Marks Registry at all times. Some undertakings given by the third parties to the plaintiff; decisions of Trademark Registry and Courts and WIPO in favour of the plaintiff are also filed along with such documents, as referred to above. (see pages 2010-2019, and pages 2024-2132).

21. Nevertheless the plaintiff is not bound/obligated to initiate legal proceedings against each and every misuser and is at liberty to sue one or any of them based on its business considerations, per The Tata Iron & Steel CO. Ltd. vs. M/s. Mahavir Steels and Others, MANU/DE/0525/1992 : DRJ 1992 (22) 416.

22. It is settled law that "a wrong is not righted by the following it musters". In other words, the Defendants cannot gain from a wrong committed by a third party, per, M/s. Prakash Roadline Ltd. vs. M/s. Prakash Parcel Service (P) Ltd., MANU/DE/0526/1992 : DRJ 1992 (22) 489.

23. The Court is to decide the issue between the parties before it. Use and registrations of a mark by third parties not before the Court cannot aid the Defendants per P.M. Diesel Ltd. vs. M/s. S.M. Diesels, MANU/DE/0636/1994 : DRJ 1994 (28) 574; Indian Shaving Products Ltd. & Anr. Vs. Gift Pack &Anr., MANU/DE/0209/1999.

24. Thus, allegations of use by third parties cannot be a sound defence, in the absence of evidence of actual use by the said third parties. Express Bottlers Services Private Limited vs. Pepsico Inc. & Ors., MANU/WB/0158/1988. Moreso, in the present case, the Defendants have not filed cogent evidence to prove that the mark MILLENNIUM is being used by any such parties.

25. The Defendants themselves having filed an application seeking the registration of a trade mark containing the mark MILLENNIUM in India and therefore cannot rely on the argument of the mark being publici juris or being used by several third parties. Admittedly the defendant has abandoned its claim over the trademark 'Millennium' and having not challenged the trademark of plaintiff shows the defendant is not an honest user.

26. It is well settled principle of law in case where all the three sine-quo-non for grant of interim injunction namely prima facie case; balance of convenience; and irreparable loss are made out in favour of the plaintiff, interim injunction should be granted against the defendants till the final disposal of suit on merits. Thus, the application is to be allowed in favour of the plaintiff.

27. Accordingly, the application is allowed and till the disposal of the suit on merits 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 are restrained from using the trade mark MILLENNIUM and/or the impugned logo MILLENNIUM or HOTEL or any other mark similar to Plaintiffs registered 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.

28. Needless to observe that nothing observed herein above shall be construed as an opinion on the merits of respective case of either parties which they shall require to prove during trial.

29. No order as to costs.

CS(COMM.) 774/2016, 15007/2016

30. IA No. 15007/2016 has already been disposed of vide order dated 05.03.2018. Registry to delete this IA from the cause list.

31. Vide order dated 05.03.2018 issues already framed in this matter and matter is pending for evidence of plaintiff before the learned Joint Registrar.

32. List before the learned Joint Registrar for further directions on 20.11.2018.

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