Marriott Worldwide Corporation v. Hotel Marriot Prime & Anr.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section Order XIII-A

Trade Marks Act, 1999

Section 11(6)Section 11(7)Section 2(1)(zg)Section 29

Provisions considered: Sections 2(1)(zg), 11(6), 11(7) and 29 of the Trade Marks Act, 1999, read with Order XIII-A of the Code of Civil Procedure, 1908.

Brief facts

Marriott Worldwide Corporation, operating a large number of hotels in India under its family of marks since 1999, sued a Mumbai hotel trading under a nearly identical name and its associated marketing agency for infringement and passing off, after discovering identical signage, a deceptively similar domain name, and third-party travel-portal listings using the mark. The first defendant failed to appear despite an ex parte interim injunction and was proceeded against ex parte. The plaintiff sought summary judgment along with a declaration that its mark is a well-known trade mark.

Issues before the Court

1. Is the defendants' use of a nearly identical hotel name an infringement of and passing off the plaintiff's marks?
2. Is summary judgment under Order XIII-A appropriate against a defendant who filed no written statement?
3. Does the plaintiff's evidence satisfy the Section 11(6) and 11(7) criteria for declaring the mark well known?

Court's findings

The Court held that the defendant's mark was a slavish imitation of the plaintiff's registered marks, used for identical hospitality services and promoted through the same third-party booking platforms, making out a clear case of both infringement and passing off; the defendant's dishonest adoption and failure to contest the suit left no real prospect of a defence, justifying summary judgment under Order XIII-A of the Code of Civil Procedure.

On the declaration of well-known status, the Court examined the statutory factors under Sections 11(6) and 11(7) and found that the plaintiff's continuous use since 1999, its extensive network of hotels and substantial Indian revenue, extensive advertising and prior recognitions, and a long record of successfully enforced registrations, together established that the mark had acquired well-known status among the relevant public for hotel and hospitality services.

The Court also awarded aggravated damages, holding that a defendant's deliberate non-appearance despite a subsisting interim injunction was itself evidence of mala fide intent warranting such an award.

Decision

Suit decreed; permanent injunction granted, the plaintiff's mark declared a well-known trade mark, and damages awarded against the first defendant.

Keywords

Damages Deceptive Similarity Passing Off Trademark Infringement Well-known Trade Mark