MANMOHAN SINGH, J.
1. By this order, I propose to decide the pending application filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 CPC, being I.A No. 5222/2012 seeking interim injunction against the defendant from using the name “Go Delhi” in any manner.
2. The plaintiff has filed the instant suit for permanent injunction and damages against the action of passing off of trademark and infringement of copyright.
3. It is averred in the plaint that the plaintiff is a proprietorship concern which provides personalized luxury tours for business and leisure travelers across the country under the name of GO DELHI LUXURY TOURS. The trademark Go Delhi Luxury Tours of the plaintiff was adopted by the plaintiff, in the year 2005 and since then, it has been used consistently by the plaintiff. The plaintiff's website being www.godelhi.net was created on 14th June, 2004.
4. It is further stated in the plaint that in India, the plaintiff applied for registration of its trademark GO DELHI LUXURY TOURS in the year 2009, which is pending before the Trade Marks Registry. The plaintiff effectively advertises its trademark GO DELHI LUXURY TOURS due to which its turnover rising with each passing year. The details of the promotional expenses incurred by the plaintiff in advertising its trademark GO DELHI LUXURY TOURS is given in para-5 of the plaint and the details of the plaintiff's turnover for its trademark for the years 2005 to 2001 is mentioned in para-6 of the plaint.
5. It is averred in the plaint that on account of such extensive use, the trademark GO DELHI LUXURY TOURS has become synonymous with the plaintiff and the plaintiff has acquired such goodwill and reputation that the use of any identical or deceptively similar mark or name by another trader is bound to cause confusion and deception in the minds of the public and members of trade.
6. Further, it is mentioned that in the year 2011, it came to the knowledge of the plaintiff that the defendant is also operating a travel agency under the trade name ‘GO DELHI TOURS’. After preliminary investigation it was revealed that the defendant had adopted the said impugned trademark in the year 2009. The defendant had also launched its website www.go-delhitours.com on 1st July, 2010 and copied the entire content of the plaintiff's website on its own website including its format. The detail of the content that has been copied by the defendant from the plaintiff's website is given in para-10 of the plaint. It is also stated that the defendant has proceeded to register the domain names being www.godelhiholidays.com on 17 December, 2011, www.go-delhi.net on 1 October, 2010, www.godelhitours.com on 30 January, 2011 and www.godelhi-tours.com on 1 July, 2010.
7. According to the plaintiff, the use of the aforesaid domain names by the defendant without the consent of the plaintiff amounts to violation of the plaintiff's rights and is likely to cause confusion in the on unwary consumers, and the defendant is able to pass of its services as and for the services of the plaintiff. As the area of operations of the plaintiff and the defendant are identical, therefore, the likelihood of confusion among the general public is also very high.
8. Therefore, the plaintiff sent a notice dated 8 January, 2011 to the defendant asking the defendant to cease and desist from using the trade mark Go DELHI as a part of its trade name and to immediately remove the offending content from its website but, due to an inadvertent error in the notice the plaintiff sent a corrigendum to the same dated 10 January, 2011.
9. It is specifically stated in the plaint that since the aforesaid activities of the defendant are causing irreparable loss to the plaintiff and are likely to dilute the distinctive character of the its trademark, therefore, the plaintiff has filed the instant suit along with the present application seeking ad-interim injunction is not granted in its favour and against the defendant.
10. The defendant denied all the allegations in the plaintiff's notice vide its letter dated 3rd February, 2011. In February, 2011 the plaintiff also sent a written complaint to Google regarding this copyright infringement by the defendant and vide its reply dated 18 February, 2011, the plaintiff was informed that after due verification the website pages of the defendant about which the plaintiff had complained have been removed from google search engine. Thereafter, the defendant made some changes to its website, but, in February 2012, the plaintiff notices that the defendant has again copied the content from its website.
11. In its reply to the instant application, the defendant has denied the allegations of the plaintiff and stated that the trademark in which the plaintiff is claiming its proprietary, is of highly descriptive nature and of common usage words in the travel industry. Hence, no proprietary rights can be monopolized by the plaintiff by way of the present suit. Further, due to its descriptive nature, the alleged trademark of the has failed to acquire any distinctiveness in the trade and the market and the plaintiff has also not been able to establish the material documentary evidence to prove that the said trade mark in question has gained secondary significance in the market. It is also stated that prior to the adoption of this descriptive trademark by the plaintiff, various persons have already used the same descriptive trademark in the travel industry. The plaintiff has also not been able to substantiate the reputation, goodwill and fame to the extent where the trademark/name has become synonymous with the plaintiff. Therefore, the present application of the plaintiff is liable to be dismissed.
12. The learned counsel for the defendant has referred to the copy of the following websites:
S. No. PARTICULARS
1 Copy of website of www.godelhi.ind.in
2 Copy of website of www.godelhi.net.in
3 Copy of website of www.godelhi.in
4 Copy of website of www.delhigo.blogspot.in
5 Copy of website of www.godelhi.com
6 Copy of website of www.travelgodelhi.com
7 Copy of website of www.gorajasthan.info
8 Copy of website of www.gokerala.org
9 Copy of website of www.gokerala.info
10 Copy of website of www.gomanali.com
11 Copy of website of www.gotamilnadu.com
12 Copy of website of www.gokerala.in
13 Copy of website of www.letsgorajasthan.com
14 Copy of website of www.travelgoindia.com
15 Copy of website of www.gogokashmir.com
16 Copy of website of www.goindia.co.in
17 Copy of website of www.letsgoindiatours.com
18 Copy of website of www.goindiaholidays.in
19 Copy of website of www.goindiajourneys.com
20 Copy of website of www.goindiaabout.com
13. The contention of the defendant that the word ‘Go Delhi’ is common to the trade, is without any merit, as the defendant has failed to produce even a single document to show that the defendant or any third party has used the said name prior to user of the plaintiff at any point of time in relation to the same business.
14. However, the defendant has admitted the fact that the plaintiff's website, being www.go-delhi.net, was created on 14 June, 2004. The defendant's website www.godelhitours.com, on the other hand, was created on 1 July, 2010. The defendant has not denied the fact that before adoption of the name Go Delhi Tour in the year 2009, the owner had applied for his job with the plaintiff. The defendant has not produced any details of its sale and promotional figure. Not a single document in support of his user has been produced. The plaintiff, on the other hand, has produced sufficient evidence about the prior user of the mark GO DELHI for its business of luxury tour at least from the year 2005.
15. I have heard the learned counsel appearing on behalf of both the parties. It appears from the documents produced by the plaintiff that the defendant had also copied the entire content including the details of packages of tours of the plaintiff's website verbatim on its website and the same was deleted by the defendant as per order passed by this Court on 27 March, 2012.
16. From the above, it is clear that the defendant was fully aware about the existence of the plaintiff and its name on the date of adoption of the said name as the proprietor of the defendant himself had applied to the plaintiff for job vide his e-mail dated 15 July, 2008.
17. As regards the use of the names mentioned in Serial Nos. 6 to 20 of the copy of the website are concerned, the plaintiff has no objection if the defendant may use any of such names, as the plaintiff submits that there would be no confusion and deception. The plaintiff also has no objection if the defendant may use the name Go New Delhi Tours. The plaintiff submits that the defendant be restrained from using the identical name ‘Go Delhi Tours’, as the same is deceptive and creating confusion. As regards the details mentioned in Serial Nos. 1 to 5 of the website as referred to by the defendant, the contention of the plaintiff is that none of the party is dealing with similar business as that of the plaintiff. Even otherwise, the defendant has not produced any cogent evidence in order to prove that the said parties are carrying out the same business of luxury tours prior to the plaintiff, thus, the defendant is entitled to take any benefit by referring the said websites.
18. In the case of Midas Hygiene v. Sudhir Bhatia, reported in 2004 (28) PTC 121 (SC), para-5, it was held as under:-
“The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.”
19. Common to the Trade:
i) The law on the point has been cleared by the Division Bench of this Court in Pankaj Goel v. Dabur India, reported in 2008 (38) PTC 49 (Del.) (DB) in paras-22 and 23 as follows:-
“22. In fact, we are of the view that the Respondent/plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/plaintiff business. The Supreme Court in National Bell v. Metal Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., reported in 1989 (7) PTC 14 it has been held as under:
“…To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks…. The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence…. Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point…. The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers….”
In fact, in Dr. Dr. Reddy'S Laboratories Ltd.…Plaintiff v. Reddy Pharmaceuticals Limited… reported in 2004 (29) PTC 435, a Single Judge of this Court has held as under:
“……the owners of trademarks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of “Taj Hotel”, the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.”
23. ………Even otherwise we are of the view that use of similar marks by a third party cannot be a defence to an illegal act of passing off. In Century Traders… v. Roshan Lal Duggar & Co… and Co., reported in AIR 1978 Delhi 250, a Division Bench of this Court has held as under:
“Thus the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents.”
In fact, in Castrol Ltd. & Anr.… v. A.K Mehta & Anr.…, reported in 1997 PTC (17) 408 DB it has been held that a concession given in one case does not mean that other parties are entitled to use the same. Also in Prakash Roadline Ltd…Plaintiffs; v. Prakash Parcel Service (P) Ltd…Defendant. Service, reported 1992 (2) Arbitration Law Reporter 174 it has been held that use of a similar mark by a third party in violation of plaintiff's right is no defence.”
Passing Off
20. The following are the essential characteristics of an action of passing off:-
(A) In Erven Warnink B.V v. J. Townend & Sons (Hull) Ltd., 1980 RPC 31, Lord Diplock stated the essential characteristics of a passing off action as under:
“(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably forseable consequence and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”
(B) The essentials of passing off action in Halsbury's Laws of England Vol. 38 (3 Edition) para 998 as given below are worth noting:
“998. Essentials of the cause of action
The plaintiff must prove that the disputed name, mark, sign or get up has become distinctive of his goods in the sense that by the use of his name or mark, etc in relation to goods they are regarded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff's firm should be known…..The plaintiff must further prove that the defendant's use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill and the plaintiff's business, as for example, by depriving him of the profit that he might have had by selling the goods which ex hypothesi, the purchaser intended to buy. Thus, the cause of action involves a combination of distinctiveness of the plaintiff's name or mark and an injurious use by the defendant of the name or mark or a similar name or mark, sign, picture or get-up does or does not amount to passing off is in substance a question of evidence; the question whether the matter complained of is likely to deceive is a question for the Court.”
21. The judgment passed in the case of Laxmikant Patel v. Chetanbhai Shah, reported in (2002) 3 SCC 65, the relevant para-10 of which reads as under:-
“The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”
In this case, the Apex Court further observed that:
“Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.”
22. The learned counsel for the plaintiff has referred the following decisions in support of her submissions in order to rebut the argument of the defendant that the said name ‘Go Delhhi’ cannot be protected under the law of passing off with regard to mark and/or as domain name being very common name and cannot become distinctive on any amount of user:-
a) Info Edge (India) Pvt. Ltd. v. Shailesh Gupta; 2002 (24) PTC 355 (Del).
“30. Both the domain names “Naukri.Com” of the plaintiff and “Naukari.Com” of the defendant, depicting the nature and type of business activity they carry on are identical or confusingly similar trade mark or service marks. It is also a possibility for an internet user while searching for the website of the plaintiff to enter into the websites of the defendant through only a small mis-spelling of the domain name and, in fact, such incident has occurred in the case of the plaintiff itself vis-à-vis the defendant in proof of which a documents is also placed on record. Such diversion of traffic with the sole intention of ulterior gain in the similar business activity by a competitor, requires protection. A court discharging equitable justice should come in aid and for protection of the honest user as opposed to a dishonest user acting on bad faith.”
b) Yahoo!, Inc.…Plaintiff; v. Akash Arora & Anr.…Defendants.; 1999 (19) PTC 201 (Del).
17. The defence as raised in the present suit by the defendants is, therefore, prima facie found to be without any merit. The counsel for the defendants during the course of his submissions submitted that the defendants have not been using or copying the contents of the programmes of the plaintiff and have no objection even if such an injunction is granted restraining the defendants from using or copying the contents of the programmes of the plaintiff. In my considered opinion and as discussed above, the plaintiff has been able to make out a prima facie case for grant of ad interim injunction in its favour and, therefore, an ad interim injunction is passed in favour of the plaintiff and against the defendants restraining the defendants their partners, servants and their agents from operating any business or selling, offering for sale, advertising and/or in any manner dealing in service or goods on the Internet or otherwise under the trademark/domain name ‘Yahooindia.com’ or any other trademark/domain name which is identical with or deceptively similar to the plaintiff trademark ‘Yahoo!’ till the disposal of the suit. The defendants and all others acting on their behalf are further restrained from using and/or copying the contents of the programmes of the plaintiff under the domain name ‘Yahoo.com’.
c) Ishi Khosla v. Anil Aggarwal; 2007 (34) PTC 370 (Del).
“24. In the case of Munday v. Carey, 1905 RPC 273 the Court held:
“…..I believe that it is a rank case of dishonestly, and where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity.”
25. Further, in the case of Midland Counties Dairy Ltd. v. Midland Dairies Ltd., 1948 RPC 429 it was held that:
“……For if the Court comes to the conclusion that the defendant was actuated in adopting the style complained of by the dishonest motive of filching some part of the plaintiffs' reputation, then the Court will not be astute to find that this nefarious design has failed.”
26. In view of the aforesaid discussion, I do not accept the contention of the defendants that the ingredients of passing off action are not established in the instant case. The plaintiff has been able to show, prima facie, prior use, distinctiveness as well as reputation which the plaintiff's trademark ‘Whole Foods’ has acquired. Judgment of the Supreme Court in the case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. AIR 1986 SC 137: 1996 (16) PTC 44 (Bom) would, therefore, be of no assistance to the defendants wherein the Court held that before grant of injunction aforesaid requisites are to be established. Learned counsel for the defendants had also cited the judgment in the case of Jabbar Ahmed… v. Prince Industries & Anr.…, 2003 (26) PTC 578 (Del) and made the submission that as in the absence of any advertisement of the product it could not be said that the plaintiff was using the said product or had acquired distinctiveness. In that case the plaintiff had filed certain assessment orders on the basis of which it had claimed use of trademark ‘BELL’ during the said period. The Court observed that there was nothing in these assessment orders which can even remotely indicate that the plaintiff had been manufacturing scissors/nail clippers under the said trademark. However, in the instant case the plaintiff has produced sufficient material which would show user of trade name ‘Whole Foods’ in respect of her goods.”
These decisions are directly applicable to the facts of the present case. Courts have issued interim injunctions on the basis of prior user despite of fancy name adopted and used by plaintiff and the protection was granted.
23. In reply to submission, it is argued by Ms. Shikha Sachdev that by virtue of long and continuous use, the said name is associated with the business of the plaintiff, as the name “GO DELHI” for its luxury tours is being used since the year 2005. On the other hand, as per the defendant, it started using the similar name in the year 2009. Even the defendant has not produced any document to show the continuous use of the name. There is no explanation given by the defendant whatsoever to use the same name and copy of content in verbatim in its website except it is apparent that it is deliberately done by the defendant with an intention to ride upon the goodwill and name of the plaintiff. Prima- facie, it appears to the Court that the said name was adopted by the defendant deliberately and with malafide intention.
24. In view of the above said facts and circumstances, the plaintiff has made a prima-facie strong case for grant of injunction. Hence, the present application is allowed. Till the disposal of the suit, the defendant is restrained from advertising and using the name GO DELHI TOUR which is similar to the plaintiff's name GO DELHI LUXURY TOURS. The defendant is restrained from using the said name and to do anything, which amounts to passing off their services as that of the plaintiff. The content used by the defendant on its website which has been deleted by the defendant shall also not be used by the defendant during the pendency of the suit. However, it is made clear that the defendant would be entitled to use the name as suggested by the plaintiff's counsel GO NEW DELHI or GO INDIA or any other name which is not similar to the plaintiff's name.
25. The application is disposed of.
CS(OS) No. 696/2012
26. List before the Joint Registrar on 24.08.2012 for completion of pleadings and direction for admission/denial of documents.