FACTS:

1. The plaintiff is engaged in the business of spa services under the name and style “TATTVA SPA” operating under the domain name tattvaspa.com registered in 2009. The plaintiff’s services have been operating in many locations across India.
2. The defendant who was also engaged in the business of providing spa services under the name and style “TATVA SPA” operating under the domain name tatvaspa.com were operating in Goa, where the plaintiff’s services and business operations are available.
3. The Defendant’s trademark is identically similar to that of the Plaintiff’s trademark. As the Defendant is providing services identical to the services provided by Plaintiff, there is a very likely possibility of the public being misled regarding the services being provided by the defendant and those of the plaintiff and draw an association between them.

 

ISSUE: Whether there is a prima facie case of infringement and passing off by the defendants, of the registered mark of the Plaintiff and the services provided by the defendant as associated with those provided by the Plaintiff.

 

ARGUMENTS RAISED BY THE PLAINTIFF:

 

1. The plaintiff claims that it has built a formidable reputation in the spa sector over time as a result of continuous and uninterrupted use, and that the aforementioned marks, which have been registered in the plaintiff's favour, are inextricably linked to the plaintiff's spa services in the public's perception. As a result, the plaintiff claims that her mark is a "well known mark" under Section 2(1)(zg) of the Trademarks Act.

 

2. The marks being phonetically identical, rendered in respect of identical services and the customer base of the plaintiff and the defendant being the same, the triple test of identity as laid down by this Court in various judgments would justify the prayer of the plaintiff for grant of an injunction.

 

3. It is further averred in the plaint that the defendant had applied for registration of its mark on 1^st January, 2013, for providing medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture, horticulture and forestry services, but that the application was refused by the Registry of Trademarks on 30^th January, 2018. According to the plaint, this refusal has not been challenged by the defendant before any forum in any manner known to law.

 

4. On 27^th December, 2019 the Plaintiff issued a cease and deceit notice to the Defendant, calling to cease and deceit from using the mark ‘TATVA SPA’, in response, the Defendant added the letter ‘S’ after ‘Tatva’ which amounted to the acknowledgement by the Defendant’s mark being deceptively similar to that of the Plaintiff.

 

DEFENDANT’S CASE: The case was not being contested by the Defendants. The written statement was also not filed in response to the complaint petition. The only date on which appearance was forthcoming, for any of the defendants, was on 17 July 2020, when Defendant 2 was present. Prior thereto and thereafter, there has been no appearance on behalf of the defendant.

 

JUDGMENT:

1. This Court had, in the circumstances, vide order dated 6^th August, 2020 noted that there was a prima facie case of infringement and passing off by the defendants, of the registered mark of the plaintiff and of the services provided by the defendants as associated with those provided by the plaintiff. As such, an interim injunction was granted which continues to remain in force.

 

2. A clear case of infringement as well as passing off exists. The fact that the defendant has not chosen to even respond to this plaint indicates that they have nothing substantial to urge, by way of a response to the allegations in the plaint.

 

3. In view thereof, following the precedents laid down by the decisions of this Court in Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd.[1] and Monsanto Holdings Pvt. Ltd. v. M/s U.K. Agri Seeds[2], the Court is of the opinion that no justification exists to allow this suit to remain pending on the record of this Court. The plaintiff, clearly is entitled to a decree in terms of the prayers contained in the suit.

 

[1] (2013) 54 PTC 419  

[2] 2017 SCC OnLline Del 11337