Bright V MJ Bizcraft, Paras 18, 19, 22

SCC Online Web Edition, Copyright © 2020
Page 1 Wednesday, September 23, 2020

Printed For: Surabhi Binani, Shardul Amarchand Mangaldas & Co.
SCC Online Web Edition: http://www.scconline.com
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CS(COMM) No. 850/2016
Bright Enterprises Private Limited v. MJ Bizcraft LLP
2016 SCC OnLine Del 4421
In the High Court of Delhi at New Delhi

(BEFORE RAJIV SAHAI ENDLAW, J.)
M/s. Bright Enterprises Private Limited & Anr. .…. Plaintiffs

Mr. Akhil Sibal, Mr. Mohit Goel, Mr. Sidhant Goel, Ms. Sangeeta Goel, Ms. Ritika
Pachnanda, Mr. Dhruv Gautam and Ms. Janhavi Mitra, Advs.
v.
MJ Bizcraft LLP & Anr. .…. Defendants
None.
CS(COMM) No. 850/2016; IA No. 8343/2016 (u/O 39 R-1 & 2 CPC); and IA No.
8345/2016 (u/S 149 CPC for exemption for filing court fees)
Decided on August 8, 2016
A. Intellectual Property Rights — Trademarks — Suit to restrain defendants from using
their trademark — Passing off — Explained — Held, plaintiff has not made out case of being
sole user of word ‘PRIVE’ in relation to hotels and there is abundant material available to
show otherwise — Without plaintiffs establishing a case of such generic word having
acquired a secondary or special meaning so as to denote only plaintiffs, they cannot
maintain an action for passing off
(Para 19)
B. Civil Law — Civil Procedure Code, 1908 — Or. 13-A — Commercial Courts — Jurisdiction
— Misuse — Held plaintiffs, filed commercial suit before Commercial Division of Court and not
in District Court — Held said provision as applicable to commercial disputes allows for
summary dismissal of suit — Courts to weed out such suits which on reading of plaint and
documents filed therewith do not show any right in favour of plaintiffs, trial of such suits
would be at cost of expeditious disposal of deserving suits
(Para 22)
RAJIV SAHAI ENDLAW, J.:— The two plaintiffs viz. M/s Bright Enterprises Pvt. Ltd.
and M/s AKM Enterprises Pvt. Ltd. have instituted this suit for permanent injunction to
restrain the two defendants viz. MJ Bizcraft LLP and Shangri-La's Eros Hotel from using
for any of their business activities the trademark “PRIVEE” or any other trademark or
logo/device which is identical to or deceptively similar to the plaintiffs' trademark
“MBD PRIVE” and “PRIVE” or which incorporates the word “PRIVE” or any other
trademark or logo or device which is identical to or deceptively similar to the plaintiffs'
trademark and for ancillary reliefs.
2. Being of a prima facie view that the plaintiffs have not made out any case, the
counsel for the plaintiffs was on 22nd July, 2016 heard at length on admission and
orders reserved.
3. It is the case of the plaintiffs:
(i) that the plaintiff companies form part of the MBD Group;
(ii) that the plaintiff no. 1 and the plaintiff no. 2 have made foray into premium and
luxury mixed used developments primarily entailing hotel, retail and
entertainment under the brand names like “MBD NEOPOLIS” and “MBD PRIVE”
which are currently under operation in areas including but not limited to Noida,
Ludhiana and Jalandhar;
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(iii) that the plaintiffs have been in the service of managing and operating a five
star luxury hotel by the name of ‘The Radisson Blue MBD Hotel’ in Noida,
Ludhiana and Jalandhar;
(iv) that the plaintiff no. 1 coined the trademarks “MBD PRIVE” and “PRIVE” and
has exclusively and continuously along with the plaintiff no. 2 used the same for
a luxury wing of rooms in the Radisson Blue MBD Hotels; these luxury rooms
inside the Radisson Blue MBD Hotels are also well known as the “PRIVE
COLLECTION” rooms and are also promoted by the name of “MBD PRIVE”;
(v) that the trademark “MBD PRIVE” and “PRIVE” are inherently distinctive and are
exclusively associated by consumers as indicative of trade source of the
plaintiffs; as such the trademarks “MBD PRIVE” and “PRIVE” distinguishes
services and business of the plaintiffs from those of others in the course of trade;
(vi) that the plaintiff no. 1 has obtained six registrations for the trademark “MBD
PRIVE” in Classes 8, 16, 21, 29 & 30 and applications for registration of the
trademark “PRIVE” in Classes 36, 41 and 43 and of “MBD PRIVE” in Classes 36
and 41 are pending;
(vii) that the plaintiffs by continuous and extensive use of the trademarks “MBD
PRIVE” and “PRIVE” have also acquired common law rights to the exclusive use
of the said trademarks, either independently or conjunctively with other words,
marks or logos;
(viii) that the trademark “MBD PRIVE” and “PRIVE” feature prominently in print and
electronic media including trade journals, directories, magazines and periodicals
having wide coverage and circulation;
(ix) that the trademarks “MBD PRIVE” and “PRIVE” have thus attained the
designation of a well known trademark within the meaning of Trademarks Act,
1999;
(x) that the defendant no. 1 MJ Bizcraft LLP is carrying on business relating to
nightclubs and discotheques;
(xi) that the plaintiffs in the month of January, 2016 acquired knowledge and
information that there is a nightclub/discotheque running in defendant no. 2
Shangri-La's Eros Hotel at Ashoka Road, Connaught Place, New Delhi under the
infringing trademark “PRIVEE”;
(xii) that on contacting the defendant no. 2 Shangi-La's Eros Hotel, it was learnt
that the discotheque in the name of “PRIVEE” is being run by the defendant no.
1 MJ Bizcraft LLP;
(xiii) that the defendant no. 1 MJ Bizcraft LLP adopted the infringing trademark only
in December, 2015;
(xiv) that adoption by the defendants of the trademark “PRIVEE” constitutes
infringement under Section 29 of the Trademarks Act;
(xv) that the defendants are fraudulently enticing customers of the plaintiffs to
purchase their services by selling the same under the infringing trademark
“PRIVEE”;
(xvi) that continued usage of the infringing trademark “PRIVEE” by the defendants
for conducting their business activities relating to nightclub and discotheque is
contrary to statutory provisions and is bound to lead to confusion in the mind of
the public and is likely to result in dilution of goodwill of the plaintiffs' well
known mark “MBD PRIVE” and “PRIVE”;
(xvii) that the defendants are seeking to use the goodwill and reputation of the
plaintiffs' mark as a springboard for their activities and to misrepresent to the
general public that the services provided by them owe their origin to or are
licensed by the plaintiffs;
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(xviii) that use of infringing trademark “PRIVEE” is likely to erode the uniqueness
and exclusivity associated with the plaintiffs' business activity;
(xix) that the members of the public and the trade are likely to be induced to
believe that the services of the defendants have a connection with those of the
plaintiffs either in the form of a licensed use of tie up or some kind of business
arrangement;
(xx) that though a cease and desist notice dated 28th January, 2016 was sent to the
defendant no2 but the defendant no. 2 in response thereto refused to abide
thereby.
4. The Certificates of Registration of Trademark, copies of which have been filed by
the plaintiffs, show:
(i) the registration dated 3rd November, 2009 of “MBD PRIVE” in respect of Goods
Cutlery, Forks, Spoons, Knifes, Spatula, Can-Openers, Wine-Openers, Ice-Tongs,
Non-Electric Cheese and Egg Slicers, Pizza Cutters (Non-Electric), Choppers and
Shredders;
(ii) the registration dated 22nd June, 2013 of “MBD PRIVE” in relation to Goods
Glassware, Porcelain and Earthenware (not included in other Classes), Bottle
Opener, Bottles, Crockery, Beer Mugs, Wine Glasses, Cocktail Stirrers, Coasters,
Confectioners Decorating Bags (Pastry Bags), Ice-Pails (Coolers), Menu Card
Holders, Cocktail Shakers, Napkin Holders, Napkin Rings, Flower Pots, Bread
Boards, Brushes for Footwear, Buckets, Butter Dish Covers, Carpet Sweepers,
Chopsticks, Dustbins, Flasks, Jugs, Kettles, Toothpicks, Vegetable Dishes;
(iii) the registration dated 20th April, 2010 of “MBD PRIVE” in relation to Cutlery,
Forks, Spoons, Knifes Spatula, Can-Openers, Wine-Openers, Ice-Tongs, Non-
Electric Cheese and Eggs Slicers, Pizza Cutters (Non-Electric), Choppers and
Shredders;
(iv) the registration dated 20th April, 2010 of “MBD PRIVE” in relation to Books,
Printing Material, Brochure, Hoarding, Signage, Brochures, Pamphlets, Stickers,
Brief, Write Ups, Advertisement, Pen, Pencil, Stationery Items, Calendar, Napkin,
Paper Bags, any other article made of paper advertising material;
(v) the registration dated 20th April, 2010 of “MBD PRIVE” in relation to Glassware,
Porcelain and Earthenware (not included in other Classes), Bottle Opener,
Bottles, Crockery, Beer Mugs, Wine Glasses, Cocktail Stirrers, Coasters,
Confectioners Decorating Bags (Pastry Bags), Ice-Pails (Coolers), Menu Card
Holders, Cocktail Shakers, Napkin Holders, Napkin Rings, Flower Pots, Bread
Boards, Brushes for Footwear, Buckets, Butter Dish Covers, Carpet Sweepers,
Chopsticks, Dustbins, Flasks, Jugs, Kettles, Toothpicks, Vegetable Dishes;
(vi) the registration dated 20th April, 2010 of “MBD PRIVE” in relation to Meat, Fish,
Poultry and Game, Meat Extracts, Preserved, Dried and Cooked Fruits and
Vegetables, Jellies, Jams, Eggs, Milk and Milk Products, Edible Oils and Fats,
Salad Dressings, Preserves, Cheese, Pickles, Fruit based Snack Food,
Preparations for making Soups, Tomato Puree and Yoghurt;
(vii) the registration dated 20th April, 2010 of “MBD PRIVE” in relation to Coffee,
Tea, Cocoa, Sugar, Tapioca, Sago, Artificial Coffee, Flour and preparation made
from Cereal, Bread, Pastry, Cakes and Confectionary, Chocolates, Cake Paste,
Cake Powder, Ice-cream, Yoghurt (Frozen), Biscuits, Cookies, Sauces (Except
salad dressings), Popcorn, Chocolate or Coffee or Cocoa based Beverages, Pizzas,
Sausages, Semolina.
5. The plaintiffs however in the plaint have not pleaded use of the registered
trademark in relation to the goods for which the aforesaid registrations have been
obtained. The only plea in the plaint of use of “MBD PRIVE” and “PRIVE” is in relation
to the luxury wing of rooms in the Radisson Blue MBD Hotels at Noida, Ludhiana and
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Jalandhar.
6. It is perhaps for this reason only that though the plaintiffs in the plaint have
claimed the reliefs, also on the basis of infringement of trademark but the counsel for
the plaintiffs on specific enquiry during the hearing, pegged the case of the plaintiffs
on the anvil of passing off only and classified that the plaintiffs are not claiming the
relief on the anvil of infringement.
7. I had during the course of hearing enquired from the counsel for the plaintiffs
whether not the use, even if prior, by the plaintiffs of the word “PRIVE” in relation to a
luxury/exclusive wing of the hotels bearing the trade name “MBD” of the plaintiff is
unlikely to confuse anyone that a nightclub in another branded hotel has any
connection/association with the plaintiffs. Radisson and Shangri-La's are two well
known international brands in the hotel/hospitality industry which are separately
identified by the patrons and it was/is felt by me that none is likely to associate a
nightclub in Shangri-La's Eros Hotel, even if by the same name as an exclusive wing of
the Radisson Blue MBD Hotels, as having any connection with the plaintiffs.
8. I further enquired from the counsel for the plaintiffs, whether not the essential
ingredient of passing off, on the anvil whereof as distinct from infringement, the
counsel for the plaintiffs argued, is confusion or association and whether not owing to
the distinctive brands of the plaintiffs' and the defendant no. 2's hotel and the
distinctive services therein with respect to which the word “PRIVE”/“PRIVEE” are used,
there is no possibility of confusion/association.
9. The counsel for the plaintiffs, after the order was reserved, has handed over
copies of judgments in:-
(i) Kirloskar Diesel Recon. (P) Ltd. v. Kirloskar Proprietory Ltd. 1997 PTC (17) 469.
(ii) Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd. (2004) 6 SCC 145.
(iii) Laxmikant V. Patel v. Chetanbai Shah (2002) 3 SCC 65.
(iv) Bloomberg Finance LP v. Prafull Saklecha MANU/DE/3673/2013.
(v) Reckitt Benckiser (India) Ltd. v. Dabur India Ltd. 2014 (60) PTC 634 (Del).
(vi) Century Traders v. Roshan Lal Duggar AIR 1978 Delhi 250.
10. “PRIVE” is a word from old French and was derived from the Latin word
‘privatus’ and translated in English language meant ‘private’ or ‘a private place’ and
has been found by me to be common to the hospitality industry particularly the hotels,
with areas/zones in hotels which are not meant to be accessible to all the guests of the
hotel being marked therewith. As far as I recollect, the business centre of erstwhile
hotel Holiday Inn at Barakhamba Road, New Delhi, now Hotel The Lalit, was also called
“PRIVE” and the business centre facility at hotel Dusit Devarana now is called “PRIVE”.
It is for this reason only that I entertained doubts as to the maintainability of the case
made out by the plaintiffs, of use by the defendants of the word “PRIVEE” in relation
to a nightclub, not a stand-alone nightclub but in hotel Shangri-La's Eros, would
amount to passing off by the defendants of their business of a nightclub as that of the
plaintiffs-the simple law of passing off being that one man is not entitled to sell his
goods under such circumstances as to induce the public to believe that they are of
someone else.
11. Not only so, a ‘Google’ search of the word “PRIVE” throws up use of the said
word in “CLUB PRIVE” at hotel Dusit Devarana, New Delhi and “PRIVEE” at Shangri-
La's Eros Hotel, New Delhi and “MBD PRIVE” appears much much later, even after
hotel “PICASSO PRIVE” at A-14, Naraina Vihar, New Delhi and a host of other hotels
providing services or having restaurant or spa with the name “PRIVE”.
12. The plaintiffs, along with their documents at page 34 have filed the download
from Google website of the search result “MBD PRIVE” and the counsel for the
plaintiffs argued that the plaintiffs are prior user of the word “PRIVE” with the
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defendants having commenced used thereof only in January, 2016. In support thereof,
the counsel for the plaintiff drew attention to the news reports of May, June and July,
2009 of introduction of the new room category “PRIVE” in the Radisson Blue MBD
Hotel. However not only does a Google search again so discloses but the plaintiffs also
along with their documents at page 76 have filed news reports of 18th May, 2016 of
launch of “all new MBD PRIVE COLLECTION” at the plaintiffs' hotels. There is nothing
to show that the “PRIVE” category of rooms which were launched in the plaintiffs'
hotel in May and June, 2009 continued till now.
13. Though the plaintiffs in the plaint have given the figures of turnover of Radisson
Blue MBD Hotels but have shied away from giving the turnover of the luxury wing of
rooms in the said hotels under the names “MBD PRIVE”, “PRIVE” and “PRIVE
COLLECTION”.
14. An action for passing off, Supreme Court in Satyam Infoway Ltd. supra held, as
the phrase “passing off” itself suggests, is to restrain the defendant from passing off
its goods or services to the public as that of the plaintiff's. It is an action not only to
preserve the reputation of the plaintiff but also to safeguard the public. The defendant
must have sold its goods or offered its service in a manner which has deceived or
would be likely to deceive the public into thinking that the defendant's goods or
services are the plaintiff's. The action is normally available to the owner of a distinctive
trademark and the person who, if the word or name is an invented one, invents and
uses it. If two trade rivals claim to have individually invented the same mark, then the
trader who is able to establish prior user will succeed. The question is, as has been
aptly put, who gets there first? It is not essential for the plaintiff to prove long user to
establish reputation in a passing off action. It would depend upon the volume of sales
and extent of advertisement. The second element that must be established by a
plaintiff in a passing off action is misrepresentation by the defendant to the public.
The word misrepresentation does not mean that the plaintiff has to prove any mala
fide intention on the part of the defendant. What has to be established is the likelihood
of confusion in the minds of the public with the word “public” being understood to
mean actual or potential customers or users to whom the goods or services are
offered. Owing to the aforesaid tests, the third element of a passing off action is loss
or the likelihood of it.
15. It is for the reason of not finding a) the plaintiffs to have even prima facie
established any distinctiveness of the mark “PRIVE” used by them in conjunction with
their mark ‘MBD’ or b) of the same having come to be exclusively identified with the
plaintiffs or c) of the plaintiffs having used it extensively, that the queries during the
hearing were made from the counsel for the plaintiffs. The only reply of the counsel for
the plaintiffs was that the patrons of the plaintiffs may enter the nightclub by
associating it with the plaintiff.
16. I am however not satisfied with the aforesaid answer for the reasons already
stated above. Radisson and Shangri-La and MBD and Eros are two separate distinct
brands and the patrons of the two hotels rack rate of rooms wherein runs into
thousands of rupees per day are unlikely to associate a service or a restaurant in a
Shangri-La's Eros Hotel with a service in MBD Radisson Hotel. It is not the case of the
plaintiff that “PRIVE” is a hotel within a hotel or is sold or marketed separately and
independently of the Radisson Blue MBD Hotels. It is not as if the person claiming
rights to the mark “PRIVE” is using the mark “PRIVE” for providing services whether it
be of hotel or of a nightclub or of a restaurant, across the board, to whichever hotel
may want such services, for it to be said that owing to the possibility of such services
being any hotel the patrons of such services are likely to confuse provision thereof in
another hotel to be of the person providing such services in other hotels. On the
contrary the use claimed by the plaintiff of the mark “PRIVE” is in relation to exclusive
wing of its Radisson Blue MBD hotel and which concept is in vogue in the hotel
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industry with most of the hotels having such exclusive wing meant for high end
business travelers or for a category of patrons niche above the patrons of the
remaining hotel. However such exclusive wings are managed by the same
owner/proprietor of the hotel and not by outsider. Instance thereof is available in the
facts of the present case itself; while the owners/proprietors of the hotels are the MBD
and Eros group respectively, use of the brand Radisson and Shangri-La's is by way of
franchise. That is not the case with ‘PRIVE’.
17. As far as the judgments relied upon by the counsel for the plaintiffs are
concerned, I am reminded of what was held in Amritdhara Pharmacy v. Satya Deo
Gupta AIR 1963 SC 449 and reiterated in Cadila Health Care Limited v. Cadila
Pharmaceuticals Limited (2001) 5 SCC 73. In Amritdhara Pharmacy it was held that
“the Act does not lay down any criteria for determining what is likely to deceive or
cause confusion. Therefore, every case must depend on its own particular facts, and
the value of authorities lies not so much in the actual decision as in the tests applied
for determining what is likely to deceive or cause confusion”. In Cadila Health Care
Limited it was added that the weightage to be given to each of the factors laid down
therein for deciding the question of deceptive similarity in an action for passing off
depends upon facts of each case and the same weightage cannot be given to each
factor in every case.
18. ‘PRIVE’, as I have already observed above, is a generic word meaning a private
place. With respect to such words, as far back as in The Cellular Clothing Company
Limited v. Maxton & Murray (1899) 16 RPC 397 (HL) it was held in relation to the word
‘Cellular’ that it was an ordinary English word which appropriately and conveniently
described the cloth of which the goods sold by the plaintiff in that case were
manufactured and that the term had not been ‘proved’ to have acquired a secondary
or special meaning so as to denote only the goods of the plaintiff. With the aspect of
‘proof’ I will deal hereunder.
19. The plaintiff has not made out any case of being the sole user of the word
‘PRIVE’ in relation to hotels and there is abundant material available to show
otherwise. Without the plaintiffs establishing a case of such generic word having
acquired a secondary or special meaning so as to denote only the plaintiffs, the
plaintiffs cannot maintain an action for passing off. The same test was applied by the
Supreme Court in T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011) 4 SCC 85 where
the word ‘Eenadu’ meaning ‘Today’ in Telugu language, though generic was held to
having acquired a secondary or subsidiary meaning by which the products and
services of the plaintiff in that case were identified. The plaintiffs here, as aforesaid,
have not been marketing ‘PRIVE’ collection of rooms in its MBD Radisson Hotels
independently or separately from MBD Radisson Hotel. No pleading and documents of
such marketing or of revenue as aforesaid are found in the case made by the plaintiffs.
It is also not as if the said generic word has no relationship to the hotel industry for it
to be said that the application thereof by the plaintiffs in the hotel industry is a ‘first’.
20. The next question which must be answered is whether a suit can be dismissed
in limine or an opportunity has to be necessarily given to the plaintiffs to prove that its
mark has acquired distinctiveness.
21. It is not as if a civil suit necessarily has to be entertained and carried through
the process of completion of pleadings, framing of issues and recording of evidence. It
has been held in Dr. Zubair Ul Abidin v. Sameena Abidin (2014) 214 DLT 340 (DB)
that suits which are doomed to fail and of which there is no chance of any success
should be dismissed at whatever stage the Court finds it to be so. In relation to the
passing off suits also, it has been held in Camlin Private Ltd. v. National Pencil
Industries (1986) VI PTC 1 that the suit can be dismissed in limine.
22. There has also been a change in law now. The plaintiffs, though had an option
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to institute this suit before the District Judge, have chosen to file it as a commercial
suit before the Commercial Division of this Court. Commercial Courts, Commercial
Division and Commercial Appellate Division of High Courts Act, 2015 has amended
CPC vis-à-vis commercial disputes and Order 13A of the CPC as applicable to
commercial disputes allows for summary dismissal of the suit. The plaintiffs having
chosen to file the suit as a commercial suit have taken a chance of the suit being
summarily dismissed. Even otherwise, today, when the Courts are facing the problem
of docket explosion, unless the Courts weed out such suits which on the reading of the
plaint and the documents filed therewith do not show any right in favour of the
plaintiffs, the trial of such suits would be at the cost of expeditious disposal of
deserving suits.
23. No case for admitting the suit is thus made out.
24. Dismissed.
25. I refrain from imposing any costs.
26. Decree sheet be prepared.
———
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Bright V MJ Bizcraft, Paras 18, 19, 22

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SCC Online Web Edition, Copyright © 2020

Page 1 Wednesday, September 23, 2020

CS(COMM) No. 850/2016

Bright Enterprises Private Limited v. MJ Bizcraft LLP

2016 SCC OnLine Del 4421

In the High Court of Delhi at New Delhi

M/s. Bright Enterprises Private Limited & Anr. .…. Plaintiffs

© EBC Publishing Pvt.Ltd., Lucknow.

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