We have already been following the Hilltone story here, here and here. This post will look into the Order of the District Court of Sirohi and the facts which led to this litigation
As per the last updates,the Rajasthan High Court refused to stay this order, stating instead that “When registration of the Hilton Hotel has not been quashed and it is still in existence in their name and they are running their business in the said registered name, as such their apprehension is totally unfounded that due to judgment impugned they will suffer irreparable loss”.
Hotel Hilltone in
has been operational since 1973 and has been providing food and lodging services to the tourists. The trademark Hilltone with a caricature of frog was adopted by the plaintiffs to make their business stand out from the competitors. The plaintiff also manufactured namkeens and sweets under this trademark, along with carrying on a separate hotel business. The Hotel was started by an erstwhile partnership firm who used the logogram of “Hotel Hilltone with rock” which was registered in 1978 vide a copyright. They also got it registered as a trademark “hilltone with above device of rock” There was a subsequent change in the partnership firm and conversion of Hotel Hilltone to a private limited company. Thereafter, there was a minor graphical change and the mark was registered as “Hotel Hilltone with above device of rock”. Mount Abu
The reason for using ‘rock’ in the trademark, as can be understood from the judgment, is that the plaintiff’s hotel is surrounded by the hills. To quote Narendra Singh Dadda: “rooms being situated in the hilly area makes one feel like being among hills during the vibrations in the hills.”
In 1993, Hilton International raised an objection before the Office of the Registrar of Marks, Ahemdabad, threatening the plaintiffs to stop the use of the name Hilltone. The notice for the same was served on the plaintiff in1995. The defendants contended that the plaintiffs had wrongly and dishonestly adopted the mark of the defendant company with a malafide intention to create confusion about the reputation of the defendant. The objections of the defendant were set aside by the Trade Mark Registry, Ahemdabad and the plaintiffs were permitted to get the above trademark registered with the Registry, the application for which was made in 1988.The same was done without giving the defendants an opportunity of being heard. The defendant filed an appeal against this order which is presently pending adjudication before the Gujarat High Court.
The cause of action for the present suit thus arose in 1993 when the defendant filed an objection on the trademark and received a notice in 1995 wherein the defendant threatened the plaintiff to stop use of the name Hilltone and to give an undertaking to the effect that the plaintiff will never do business under the name of Hilltone. This also explains that why does the judgment refer to the old trademark legislation instead of the amended one.
The plaintiffs contended that there hotel is very famous and popular all over the world while the defendant did not have a single hotel in
. The objection raised by the defendants has come after 20 years since the commencement of business of Hotel Hilltone. If the defendants are allowed to commence business in India and start hotels under the name Hilton, it will lead to taking of an undue advantage of the plaintiff’s reputation which will result into irreparable financial loss and mental agony to the plaintiff. India
The plaintiff suggested several points of distinction between the plaintiff hotel and defendant hotel. The plaintiff contended that it was a three-star hotel whose décor was done in accordance with the Indian culture. Also, the style of serving food to the guests was traditional which distinguished it from the defendant’s hotel or any other hotel in the world! The food items prepared by the plaintiff are not prepared in any of the hotels of the defendant situated in other countries. Sea food is not served to their guests as is done in other hotels abroad (this hardly comes as a surprise since the hotel is situated in
). Mount Abu
It was contended by the defendants that Hotel Hilton has entered into agreements with several hotel chains in
India as they intend to start hotel business in . They further contended that the plaintiffs had no plans of establishing any other hotels in India under the name of Hotel Hilton. Therefore, restraining the defendants from commencing hotel business on such ambiguous grounds would be wholly unjustified. India
The Court through evidence and cross-examinations noted that the plaintiff has not copied the trademark of the defendants and has also not tried to confuse the tourists. The Court ruled so primarily on the grounds of lack of evidence to the contrary by the defendants. The Court suggested that the plaintiff was indeed the original inventor, adopter, real and true openly user of the trademark and that there was sufficient evidence on record to suggest this. The fact that the hotel was surrounded by hills and there were toad-rocks mentioned in the tourist guides of
was the reason behind the plaintiffs registering the trademark. Mount Abu
The Court also ruled that the defendants could not produce sufficient evidence on record to suggest that the trademark so adopted by the plaintiffs was done with the intention of gaining undue advantage of the defendant’s reputation. During the course of proceedings, it was noted by the Court that Hotel Hilltone had never come across anyone who mistakenly thought Hotel Hilltone to be a part of the Hotel Hilton International.
Deciding on what could be termed as the soul of this litigation, as to whether plaintiff would suffer financial loss if the defendant ran its hotel business under name and style anywhere in
, the Court ruled in favour of the plaintiffs. The reasoning was similar to the earlier ones and the Court reiterated that since it is the plaintiff who is the original inventor and user of the trademark, it would certainly cause financial losses to them if the defendants were allowed to start their chain of hotels in India . India
What is surprising is that the judgment no where made an attempt to compare the two marks, which was essentially the soul of the litigation! The entire case seems to have been decided in favour of the plaintiffs since the hotel is indeed surrounded by hills and toad rocks and they were the first ones to come up with the trademark and use it thereafter. I think the simple fact that both the marks use “Hilton/Hilltone” which can have implications was substantially ignored. The Court also overlooked the fact the Hotel Hilton has been in fact using the trademark since 1948.The Court merely tried to look into the reasons why the trademark Hilltone was registered and not exactly what can happen if Hilton did have a hotel in India operating along with Hilltone.
Secondly, it seems that the injunction granted is very broad in nature. The defendants have been injuncted against threatening the plaintiffs and preventing them from using the mark “Hotel Hilltone”, from putting any hurdles in the manufacturing and selling of edible items prepared by the plaintiff hotel under its registered trademark, from using the registered trademark of Hotel Hilltone by bringing in any change to it in order to create confusion with regard to the logo and trademark of the plaintiff hotel anywhere in India or carrying out hotel activities or any other business with other Indian companies under such duplicate trademark which are similar to that of plaintiffs!
It now remains to be seen if the Rajasthan High Court agrees to hear the entire appeal and decide on merits.
PS- The cause title of the case mentions the caste of the plaintiffs.Wonder why.