Delhi High Court Permanently Restrains Hospitality Company From Using ‘Vivanta’ Trademark, Imposes ₹6 Lakh Costs

The Delhi High Court has permanently restrained a hospitality company from using “Vivanta” mark in a trademark infringement suit filed by Indian Hotels Company Limited, a part of TATA Group of Companies and registered proprietor of “Vivanta” trademark.

Justice Amit Bansal imposed costs of Rs. 6 lakhs on Vivanta Hospitality Private Limited and held that the company used the trademark “Vivanta” in its trade name “Vivanta Vacation Club” which was identical to the mark of the hotels run by the Tata Group.

The court observed that the hospitality company used the impugned mark with an intent to springboard its business by drawing an association with Indian Hotels and to ride on its goodwill and reputation.

Justice Bansal further took note that a number of consumers were duped by Vivanta Hospitality Private Limited under the pretext of its association with the Tata Sons-owned Indian Hotels.

The court remarked that the hospitality company had not only taken unfair advantage of the reputation and goodwill of Indian Hotels’ Vivanta mark, but had also deceived unwary consumers of their association with the latter- which would also lead to the dilution and tarnishment of Indian Hotels’ mark.

The court remarked that the adoption of the infringing mark by the defendant company in relation to a business identical to that of Indian Hotels’, clearly depicted its intentional malafides.

Indian Hotels claimed that it first coined and adopted the mark “Vivanta” for its hotels and other services in the year 2008, and that it is the registered proprietor of the trademark. It claimed that it has 35 Vivanta hotels across 33 destinations along with a website dedicated to its hotels under the brand name Vivanta.

It was the case of Indian Hotels that the defendant, Vivanta Hospitality Private Limited, who offers services in the hospitality sector, was initially incorporated in 2010 as “R M Y Builders & Developers Private Limited” and later in 2021, it changed its name to “Vivanta Hospitality Private Limited”.

In an investigation carried out by Indian Hotels’ investigator, it was revealed that there are more than 100 consumer complaints made by customers, who were under the impression that the defendant-company is associated with Indian Hotels and were cheated by the defendant-company.

Indian Hotels contended that the services or packages provided by the defendant company were bound to cause confusion in the minds of unwary consumers, who may associate the same with the Indian Hotels.

Justice Bansal observed that Indian Hotels had established its statutory as well as common law rights on account of the long usage of the trademark “Vivanta”. Further, the court said that the plaintiff was been able to show its immense goodwill and reputation in respect of the mark in question.

Perusing the report of the Local Commissioner appointed in the matter, the court observed:

“The Report of the Local Commissioner shows that that the defendant is engaged in the business similar to the plaintiff, under the trade name identical/deceptively similar to that of the plaintiff. The inventory prepared by the Local Commissioner shows that a large stock of infringing material was found at the premises of the defendant. Photographs have been filed along with the Report showing that the defendant is using the name “VIVANTA VACATION CLUB” in its ordinary course of business prominently.”

The court further concluded that the domain name of the defendant company was also deceptively similar to that of Indian Hotels’ and was likely to deceive the public of its association with the latter.

“The user traffic may be diverted due to the use of the same or similar domain name, which could result in a user mistakenly accessing one domain name instead of the one intended. A domain name may therefore, have all the characteristics of a trademark and could result in an act of passing off. Similarly, the use of “VIVANTA VACATION CLUB” as a part of their trade name is also likely to deceive unwary consumers of their association with the plaintiffs,” the court said.

While passing the order of permanent injunction, the court further directed destruction of the seized goods bearing the mark “Vivanta” lying in the premises of the defendant company.

“Considering the fact that the plaintiff has deposited the Court fee and has also incurred expenses in executing the commission costs of Rs.6,00,000/- is imposed on the defendant, which shall be paid by 31st May, 2023. In view thereof, counsel for the plaintiff does not press for relief of rendition of accounts, damages and other remaining reliefs sought in the plaint,” the court added.

Case Title: The Indian Hotels Company Limited vs Vivanta Hospitality Private Limited

Citation: 2023 LiveLaw (Del) 393

Dated: 28.04.2023

Counsel for the Plaintiff: Mr. Pravin Anand, Mr. Achuthan Sreekumar, Mr. Rohil Bansal and Ms. Apoorva Prasad R., Advocates.

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