Ravishankar, Director and CEO Anantara Hospitality Pvt. Ltd. and Anantara Hospitality Pvt Ltd (Appellant) v. M and H Management Ltd, Minor International Public Co. Ltd (Respondent) was an appeal by Ravishankar before the High Court of Karnataka against an ex parte ad injunction granted by the trial court restraining the use of the domain name "www.anantara.in" as a trade mark/corporate name on demonstration that there was passing off action as the logo used was similar and identical to the Respondent's logo due to their trans border reputation.
The Appellant in this case is a company registered under the Companies Act of 1956, and is involved in the hospitality business. They contended that they had got the impugned domain name registered on 12.7.2005, and soon after, people from all over the world started booking their resorts through their website. It was stated that without the domain name it would be difficult for the Appellant to carry on its business.
The First and the Second Respondents are companies incorporated under the laws of Mauritius and Thailand, respectively. The second respondent, is the parent company and it operates and manages hotels including those under the Anantara trade mark.
The Appellant's case, was mainly argued on two ground, namely:
- that the Trial Court had committed a grave error in injuncting the Appellants from running the business in the name and style of 'Anantara'. The Appellants further stated that on account of being prior user, they could not have been injuncted.
- that the logo used by the Appellants was distinct from that of the Respondents. Placing reliance on Uniply Industries v. Unicorn Plywood and McDonald's Corporation and Anr v. Sterling's Mac Fast Food, the Appellant argued that although the word "Anantara" was similar to the Respondent's mark, there was a distinction in the lettering of the word and also the symbol was different.
The Respondents laid down their contentions thus:
- That they had a trans-border reputation, and injunction was granted since the said trans-border reputation was demonstrated by the Respondents.
- When there is a similarity, it has to be noted that there is a passing of action and the logo used by the Appellant was similar and identical, reliance was placed on Satyam Infoway Ltd v Sifynet Solutions (p) Ltd.
- Wide publications in magazines like "Holiday Asia" and other magazines, which are widely circulated in India also reveal that the Respondents have been actively involved, much prior to 2005, in the market.
- Further , even without business in India, the Respondents could seek injunction as the word "Anantara" was being commonly used by the Appellants. Customers and new subscribers of the Respondents entertained a doubt and were misled by the use of the name by the Appellants.
The High Court of Karnataka, opined that in the instant case, except the word 'Anantara' which was common to both, the logo and other words/marks used were distinguishable and also the element of deception was not apparent. Further, although trans-border reputation was earned by the Respondents, it appeared that they had not commenced their business in India.
Also, in the Mc Donald's case cited above, it was held that when there is a distinction between the two trade marks, although some word is common in both, there may not be infringement of the registered trade mark. In the present case, the distinguishable features in both the logos were different.
The Court also stated that the trial Court had jumped to a conclusion that there was a passing off action and had wrongly proceeded to pass the impugned order. Thus, in light of the abovementioned reasons, the impugned order of the trial court was set aside.
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