Prima Facie Case Of Infringement Made Out: Delhi HC Restrains Company From Unauthorizedly Using ‘VIVANTA’ Trademark Of ‘TAJ’

The Delhi High Court restrained a company named Shivgyan Developers Private Limited from unauthorizedly using ‘VIVANTA’ trademark of ‘TAJ’ belonging to TATA group of companies.

The Indian Hotels Company Limited had filed an application seeking action against the aforesaid real estate company for alleged trademark infringement.

A Single Bench of Justice Sanjeev Narula observed, “In view of the foregoing, the Plaintiff has made out a prima facie case of infringement and passing off in their favour; and in case an ex-parte ad-interim injunction is not granted by this Court, the Plaintiff will suffer irreparable loss of reputation and goodwill. Further, the balance of convenience also lies in favour of the Plaintiff and against Defendant.”

Advocate Pravin Anand represented the plaintiff while none represented the defendant.

Factual Background -

The plaintiff company, a part of the TATA group of Companies was engaged in the hospitality industry and owned a chain of reputed hotels across many countries. The plaintiff had registered the trademarks/logos “VIVANTA”, “VIVANTA BY TAJ”. These trademarks covered a range of services related to hotels, motels, restaurants, resorts, and related services such as providing food, drink, and temporary accommodation. On account of long and continuous use and promotion of the plaintiff’s trademarks/brand, it had earned substantial goodwill and reputation in the industry.

Additionally, the plaintiff also incurred substantial amounts of money in advertising and promoting its brands and business. Its grievance in the suit arose from the defendant’s use of an identical mark “VIVANTA” in relation to their goods and services. Sometime in February 2024, the plaintiff came across an advertisement in the newspaper, ‘Times of India (Sunday Times), Jaipur Edition’, depicting unauthorised use of the plaintiff’s trademarks by the defendant.

The High Court in the above regard said, “The Plaintiff provides hotel and restaurant services under the “VIVANTA” brand, while the Defendant offers real estate projects involving luxury accommodation under the same mark. Both cater to a similar clientele seeking premium living experiences. Given the overlapping nature of the services, along with the shared marketing channels, which target consumers who are interested in luxury lifestyles, there is substantial potential for the marks to be associated with each other.”

The Court added that such association could lead consumers to mistakenly believe that the defendant’s services or project was related to or endorsed by the plaintiff, thereby causing irreparable harm to the plaintiff’s business interests and diluting the distinctive character of their trademark.

“The similarities of the services and the identical nature of the marks clearly indicate the likelihood of passing off and trademark infringement, warranting protective measures at this interlocutory stage. … Further, it is observed that the Defendant has extensively advertised its project bearing the Impugned mark. This is evident from the Defendant’s website, social media pages, and project brochure, which prima facie suggests that the Defendant has consciously used the Plaintiff’s trademark to mislead consumers and create a false association between the two”, it noted.

Accordingly, the High Court restrained the defendant and listed the case on October 3, 2024.

Cause Title- The Indian Hotels Company Limited v. Shivgyan Developers Private Limited

Appearance:

Plaintiff: Advocates Pravin Anand, Achuthan Sreekumar, Rohil Bansal, and Swastik Bisarya.

Defendant: None

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