Creative Travel India Pvt Ltd v. Creative Tours and Travels

RAJIV SAHAI ENDLAW, J. APRIL 21, 2020 OCTOBER 14, 2019 'ak/pp'

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 21st April, 2020 14th October, 2019 + CREATIVE TRAVEL PVT. LTD. ..... Plaintiff Through: Mr. Jayant Mehta, Adv. with Mr. Sudeep Chatterjee, Ms. Sonal Chabblani, Ms. Sanya Sood & Mr. Svikar, Advs. Versus CREATIVE TOURS AND TRAVELS (I) PVT. LTD. & ANR ..... Defendants Through: Mr. Arjun Dev, Adv. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff instituted this suit to restrain (i) Creative Tours and Travels (I) Pvt. Ltd.; and, (ii) V.S. Abdul Karim, by way of permanent injunction from using the mark 'CREATIVE' and 'TRAVEL' or any other mark identical or deceptively similar to the plaintiff's mark, as part of their corporate name or in relation to travel industry or for any business, trade, etc., amounting to violation of plaintiff's statutory and common law rights, and for ancillary reliefs. 2. It is the case of the plaintiff in the plaint: (i) that the plaintiff is engaged in the tours, travels destination management, corporate package, conferences, meetings, ticketing and other related and allied business and the plaintiff company was incorporated nearly three decades prior to the institution of the suit, in the year 1977; (ii) that the trade name of the plaintiff company "CREATIVE TRAVEL" is also registered with the Registrar of Trade Marks vide Trade Mark No.1073370 dated 11th January, 2002 in Class 12 and vide Trade Mark No.1239864 dated 26th September, 2003 in Class 39 and vide Trade Mark No.1334239 dated 25th January, 2005 in Class 16; (iii) that the plaintiff, in May, 2006 learnt of the defendants, from the list of members published by the Travel Agents Association of India (TAAI); (iv) that the plaintiff got issued a legal notice dated 22nd May, 2006 calling upon the defendants to desist from using identical name and style which was causing confusion and deception amongst the public at large, amounting to infringement of the registered trade mark of the plaintiff; (v) that the defendants, in their response dated 3rd July, 2006 stated that their business Creative Enterprises, a proprietary concern of defendant no. 2 V.S. Abdul Karim, was subsequently converted into the defendant no.1 company; and, (vi) the defendants had not only adopted the deceptively similar trade mark as that of the plaintiff but also entered into the same business as that of the plaintiff and were approaching the clients and customers of the plaintiff, not only in Delhi but other parts of the country and outside country. 3. The suit came up first before the Court on 14th July, 2006 when, while issuing summons thereof, vide ex parte ad interim order, the defendants were restrained from using the trade name 'CREATIVE', whether in full or as part of any other trade name which may be identical/deceptively similar to 'CREATIVE'. 4. The defendants appeared in response to the summons/notice issued and contested the suit. Vide judgment dated 29th August, 2006, the ex parte stay earlier granted was vacated and the application of the plaintiff for interim relief dismissed, reasoning (i) that the defendants were in business since 1979 and their turnover then was over Rs.100 crores, as against that of the plaintiff of Rs.48 crores; (ii) both parties had spent large amounts in promoting their business; (iii) though the plaintiff was the prior user of the mark 'CREATIVE' but since the defendants had been in business for long and seemed to have built up their reputation as indicated from their sale figures, it was not appropriate to bring their business to a grinding halt; (iv) delay and laches have important bearing while deciding intellectual property matters; persons whose rights are being intruded by competitors must keep vigil and must not sleep over their rights; (v) the defendants had filed Membership Directory 2002 of TAAI containing names of persons in the business and it is expected that the plaintiff must have come across this Directory and must be in the knowledge that the defe