The Delhi High Court Monday permanently restrained a Delhi-based luxury resort company from using Tata Group’s registered trademark ‘VIVANTA’. The court further restrained the company from using the word ‘VIVAN’ or any other mark/name which is deceptively similar to that of ‘VIVANTA’.
A single judge bench of Justice Prathiba Singh was hearing the matter, wherein the plaintiff – The Indian Hotels Company Limited, which is part of the Tata Group, had alleged that the defendant, Delhi-based Grand Vivanta Vacations Private Limited, is using an identical mark ‘VIVANTA’ for its business activities which are similar to that of the plaintiff’s. Both parties are involved in hospitality services, including hotels and resorts.
The court acknowledged that the plaintiff had been using its registered trademark ‘VIVANTA’ since 2008 for more than 35 properties across the country and enjoys all statutory rights. “…the defendant on the other hand has adopted the identical mark by adding the laudatory expression ‘GRAND’ as a prefix to the word ‘VIVANTA’. The name ‘GRAND VIVANTA’ is, thus, identical to that of the plaintiff’s – ‘VIVANTA’. Further, the domain name being used by the defendant http://www.grandvivanta.com and the social media accounts and handles i.e. vivanta.grand, grandvivanta, YouTube channel etc., all use the mark ‘VIVANTA’,” the court stated.
The court directed the resort company to pay Rs 6 lakh to the plaintiff by October 15, as cost for incurring “court fee and the expenses in executing the commission.” It held that the ‘VIVANTA’ mark has clearly achieved the status of a “well-known mark”.
The court held that the adoption of the ‘VIVANTA’ mark by the defendant is completely unjustified, as the Tata Group is the “prior user and owner of the VIVANTA properties across the country”.
It said that the defendant’s use of the Tata Group’s mark would be a violation of the plaintiff’s statutory rights. The court permanently injuncted the luxury resort company from using the “mark/name VIVANTA/VIVAN or any other mark/name which is deceptively similar to that of the plaintiff’s mark – ‘VIVANTA’ with or without prefix or suffix in respect of any of its resorts, hotels, restaurants or any other combination for its hospitality services, resorts, hotels, restaurants or any other related services”.
The Delhi resort firm was also restrained from using its domain name http://www.grandvivanta.com and directed to transfer the same to the Tata Group within a week from the order.
The Indian Hotels Company Limited of the Tata Group had moved the High Court seeking a permanent injunction against the company along with take down of the domain name, website and social media accounts associated with the defendant bearing the name ‘VIVANTA’. It sought damages and a declaration of the mark ‘VIVANTA’ as a well-known trademark.
In August the High Court had granted an ad interim injunction order in favour of the Tata Group.
A local commissioner, who was appointed to visit the hotel management company’s official premises, submitted the report that the defendant was prominently using the name GRAND VIVANTA on its main banner; 6,497 articles including packages, vouchers show a clear use of the mark GRAND VIVANTA and they were also seized from the company premises.
The Delhi firm subsequently moved the court seeking alteration of the word VIVANTA with VIVAN and sought time to change the name on its social media, website and as well as on its registration. Meanwhile, the Tata Group had sought time to inform the court if the changed name was acceptable to them.
The court was subsequently informed that the defendant continued to use the mark ‘VIVANTA’ despite the ad interim injunction order. The Tata Group told the court that changing the name to VIVAN was not acceptable to them.
In the course of the hearing, the counsel for the Delhi-based firm was asked if the defendant would be willing to change the name to GRAND VIHAN Vacations Private Limited, instead.
“Counsel for the plaintiff submits that the defendant can now change the name to GRAND VIHAN Vacations Private Limited, so long as all the other connected domain names, mobile app, social media handles, etc of GRAND VIVAN or GRAND VIVANTA are given up by the defendant entirely. However, the defendant would be willing to change the website immediately within a week to http://www.grandvihan.com,” the court observed.
The court permitted the firm to use the name ‘GRAND VIHAN’ for its luxury resort, online platform as well as on its mobile application. The permanent injunction passed on September 26 shall come into effect from November 1, the court held.