Date of decision: 09.05.2012.
Appellant: Ihhr Hospitality Pvt. Ltd. (represented by Mr. Rajeev Virmani, Senior Advocate instructed by Mr. Shantanu Sood, Advocate)
Respondent: Bestech India Pvt. Ltd. (Represented by: Mr. Arun Bharadwaj, Senior Advocate instructed by Mr. Manish Sharma and Ms. Shivanshi Gupta, Advocates)
Judges: Hon’ble Mr. Justice Pradeep Nandrajog, Hon’ble Mr. Justice Siddharth Mridul.
Facts: The Appellant is in the business of running Spas since 1998 and has two luxurious Spas in Mauritius and India respectively. The Appellant is also the registered proprietor of the service mark ‘ANANDA’ and also of the same word as a trademark pertaining to ayurvedic and herbal preparations, toiletries, bread, biscuits and cakes. Between 1998 and 2009 when the original suit was filed, the Appellant claims to have made sales of approximately INR 200 crores. The Respondent started marketing apartments in a Group Housing Gated Complex under the name: ‘Bestech Park View Ananda’.
The Appellant contended that the activity of constructing and selling apartments relates to establishing leisure hotels and spas and thus the goodwill of the Appellant was being traded upon by the Respondent. The Appellant also argued that its mark ‘Ananda’ had achieved sufficient distinctiveness so as to make a consumer believe that if the mark was used in relation to services or goods and especially housing, then such services/goods had a connection with the Appellant.
When the matter was brought before the Court, the Single Judge did not award the interim injunction sought by Ihhr. He said that the term ‘Anand’ was not a coined one and signified bliss. Considering the origin of the term and the fact of it being in the public domain, the Single Judge believed that there was not sufficient evidence of the term having acquired distinctiveness to the degree of causing deception in the consumer’s mind. There were also least three other persons, in the trade of running hotels and in the trade of selling ayurvedic products, who were using the word ‘Ananda’ as a part of their trademark. The Appellant chose to contest this decision before a 2-judge bench.
Judgment: The Court referred to a Division Bench decision in Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd. [186 (2012) DLT 234 (DB)], wherein it was held that law would ordinarily lean against common words having cultural roots in the society being monopolized to the exclusion of others. In the present matter, the Appellant had chosen to register a word, which is not only public juris but also a word closely associated by public as indicative of, in relation to an abode: a place of peace where the mind, the body and the soul can relax and rejuvenate. Therefore, the onus lies on the Appellant to show strong prima facie evidence of the public associating the mark with its products/services.
The Court held that sales of INR 200 crores spread over 10 years would prima facie be insufficient evidence to establish that the word ‘Ananda’, in relation to an abode, has acquired such secondary meaning that an ordinary consumer, without thinking any more, would automatically conclude every abode with the appellant.
Decision: The appeal was thus dismissed and interim injunction was not awarded to the Appellant.
The decision was, for once, a crisp one, with the Court obviously unwilling to support a party who’d knowingly registered as trademark a word that is public juris.