M.K. Chawla, J.
(1) Holiday Inn Inc., 3742, Lamar Avenue. Memphis, Tennessee, U.S.A. is the plaintiff in Suit No. 16261 1983 and Suit No. 1627/1983. Though the defendants in both the suits represent two different establishments, running hotel lodgings but as the cause of action for filing of the suit and the relief claimed is almost similar, learned counsel for the parties agreed that both the suits can conveniently be disposed of on the evidence to be recorded in Suit No. 1626/1983. Vide order dated 29-8-1985 passed in Suit No. 1627/1983 both the suits were consolidated and the evidence was ordered to be recorded in the earlier suit which shall be read as evidence in the second suit as well. For the purpose of deciding the controversy in the two suits, the facts of Suit No. 1626/1983 are being taken up.
(2) The plaintiff is a U.S. Corporation incorporated under the laws of the Slate of Tennessee, U.S.A. Shri V. Sagar and Shri J. Sagar are the plaintiff''s constituted attorneys authorised jointly and severally to sign, verify an institute the present suit. The defendant is carrying on the business of providing lodgings under the name and style of ''Kapoor Holiday Inn'' at F-39. East of Kailash, New Delhi.
(3) As per the averments the plaintiff operates throughout the world, including India, the latest chain of hotels and motels under the name and style of "Holiday Inn''. At prevent the total number of such hotels and motels is 1756 with a total of 3,10,000 guest rooms. Of the 1756 hotels 231 are managed by the plaintiff and the balance of 1525 are franchised hotels. The franchised hotels are licensed to use the plaintiff''s trading style ''Holiday Inn''. The plaintiff opened its first hotel in Asia in 1973 but today it has 22 hotels, of which 7 are managed by the plaintiff and the remaining are franchised. On account of the excellent standards of service provided by the plaintiffs claim of hoots over the last 30 years they have acquired a very high reputation and the words ''Holiday Inn'' have come to be associated here- with and the plaintiff''''s business exclusively. The plaintiff is the registered proprietor in India of the trade marks, the details of which are mentioned in the plaint. The said trade marks are valid and subsisting.
(4) The approximate total number of room nights sold by the plaintiff''s ''Holiday Inn'' chain of hotels throughout the world in the year 1977-1981 were near about 2 crores whereas the total revenue for the said period has come to a figure of 853 million U.S. Dollars, Out of the above mentioned revenue a sum of 17.5 million U.S. Dollars constitute revenue from India for the aforesaid period. The plaintiff has been unending large sums of money on advertisements of its ''Holiday Inn'' chain of hotels all over the world. In the year 1982 its expenditure was Rs. 7 million U.S. Dollars approximately. For the same year M/s. Bharat Hotels Ltd., plaintiff''s franchise commitment holder for a ''Holiday Inn'' Hotel in New Delhi spent a sum of Rs. 70,000 on advertisements. Apart from the advertisements a large number of articles /reports appear regularly in numerous journals, magazines, newspapers etc. all over the world including India on the plaintiff''s activities.
(5) The plaintiff had licensed the Northern India Hotels Ltd. Taj Ganj, Agra, to operate a hotel there as a franchise. Since May, 1976 Eastern International Hotels Pvf. Ltd., Aurangzeb Road, New Delhi has been operating a hotel in Bombay as the plaintiff''s franchise. The plaintiff company is also committed to certain Indian companies to grant them franchise at New Delhi, Bangalore, and Madras, the details of which are mentioned in the plaint. By virtue of the extensive use, all over the world, of its trading style ''Holiday Inn'' and of its trade marks referred to above the public has come to associate the said words exclusively with the plaintiff.
(6) In or about August 1982 the plaintiff learnt that the defendant had commenced the business of providing lodgings in New Delhi and was using in connection therewith as trading style, the words ''Holiday Inn''. It also transpired that the defendant was using the trade mark ''Holiday Inn'' on visiting cards, menu cards, tariff cards, stationery and other printed materials relating to its lodgings and restaurant, towels, crockery, cutlery key chains/rings and diverse goods relating to its lodgings and restaurants. The said use being without the authority or permission from the plaintiff and in flagrant violation of its rights in relation to the words ''Holiday Inn and the trade mark referred to herein before, the plaintiff instructed its Advocates, M/s. Sagar & Co., New Delhi to issue a cease and desist notices to the defendant, calling upon it to cease and desist from using ''Holiday Inn'' as a part of its trading style or otherwise, inspire of the service of the said legal notice the defendant has neither replied to the said notice nor complied with its requirements. By the use of the words ''Holiday Inn'' as part of its trading stele the defendant seeks to represent to the public some connection with the plaintiff. The defendant is also passing off its business as that of the plaintiff or as one associated with it. In this way the defendant is trading upon the goodwill and reputation erioyed by the plaintiffs throughout the world including India. The use of the words ''Holiday Inn'' the defendant, particularly in'' relation to the same business of hostellers inn-keepers causes deception and confusion in the trade and is an attempt by the defendant to deceive and/or induce customers to believe that the business of the defendant is the business of the plaintiff or is associated withthe plaintiff Similarly the use of the trade mark ''Holiday Inn'' by the defendants amounts to flagrant infringement of the plaintiff''s registered trade mark. which is causing; irreparable damage to the reputation of the plaintiff. The defendants have not cared to stop the use of the words ''Holiday Inn'' or the trading style and left with no other option the plaintiff filed the present suit praying for a decree of permanent injunction restraining the defendant, its proprietors, servants, and agents from using the words ''Holiday Inn'' or any other name or expression deceptively or otherwise similar thereto as its trading style or as a part thereof. Decree for permanent injunction was also prayed for in respect of the use of the said trade mark on any of the articles, goods in relation to its lodgings and restaurant etc. with costs.
(7) The defendant in its written statement took. up the stand that the plaintiff has never carried on any business in the name of ''Holiday Inn'' in India and as such cannot be said to have acquired any goodwill in respect of such business. As such there would be no legal right or propriety in any goodwill acquired by the plaintiff in India in respect of which the plaintiff could grant any franchise to any other person. Even otherwise the goodwill is not transferable as such, but can only be transferred Along with the transfer of business in respect of which the goodwill has been acquired.
(8) It is also alleged that the defendant has been running the said business since November 4, 1977 under a license granted to them by the District Magistrate, Delhi under the Sarai Act of 1867 which had been renewed from time to time by the concerned authorities. The defendant is not using the words ''Holiday Inn'' as a trading mark at all nor the said words are printed on any menu card, towels, crockery, cutlery. key chains/rings or any other goods as alleged. The plaintiff is not running its business in vilation of any rights of the plaintiff in relation to the words ''Holiday Inn'' or the trade mark referred to by the plaintiff. The trade mark allegedly got registered by the plaintiff are in respect of certain goods which are not being sold by the defendants. It is also averred that no customer could be deceived into believing that the business carried on by the defendant is that of the plaintiff. The addition of the word ''Kapoor'' pre-fixed to the word ''Holidav Inn'' which the defendant is using in the manner as prominently as the word ''Holiday Inn'' in connection with its business would decidedly prevent any such belief being entertained or confusion bums caused, as alleged. There are number of other losing houses running in India and even in De1hi in the name of ''Holiday Inn''. The word ''Holiday Inn'' means a lodging house and are very commonly used by a large number of concerns in India carrying on the business of running lodging houses as a part of the trading name to indicate the nature of their business. These words are not distinctive in character and have not by use become distinctive of the business of the plaintiff anywhere in India. The use of the word ''Holiday Inn'' has become a part of public domain which connotes and denotes a lodging house.
(9) The defendant also alleged that the plaintiff is guilty of laches and delay and as such is not entitled to the permanent injunction prayed for. The defendant has not committed any infringement of the said trade mark as alleged by the plaintiff. At no point of time the defendant ever intended to trade upon the goodwill of the plaintiff or to induce any customer to believe that the business of the defendant is that of the plaintiff or is associated with it. The defendant''s clients are mainly public and private sector companies, who use the defendant''s lodging house as their guest house. The business of the defendant has been developed by personal contracts. The defendant has not caused any irreparable damage to the goodwill or reputation of the plaintiff as alleged. In fact the defendant is in this trade since 1977 and has acquired a goodwill of its own. Its turn-over had gone up to Rs. 3,10.000 in the year 1981-82. The plaintiff has not been able to make out a case for the grant of the reliefs as claimed. The suit being without merit deserves dismissal.
(10) In the replication the plaintiff controverter the pleas raised by the defendant in the written statement and reiterated the averments contained in the plaint.
(11) On the pleadings of the parties the following issues were framed:
1. Whether the plaintiff is a Corporation incorporated under the laws of the State of Tennessee, U.S.A. and whether the plaint has been signed and verified by a duly authorised person? 2. Whether the plaintiff is a registered proprietor of the trade mark ''Holiday Inn'' in respect of goods mentioned in para 5 of the plaint? If so, to what effect? 3. Whether the defendants'' use of the word ''Holiday Inn'' is infringing the plaintiff''s registered trade mark? If so, to what effect? 4.Whether the defendant is using the word Holiday Inn'' as a part of its trading style and as such is passing off its business as that of the plaintiff 5. Whether the word ''Kapur'' prefixed to the word ''Holiday Inn'' would prevent any confusion or the belief that it is the business of the plaintiff? 6 Whether the plaintiff approached the court with due diligence and without any delay? If so, to what effect? 7. Whether the plaintiff is entitled to the relief claimed in the suit? 8. Relief.
(12) In support of its case the plaintiff examined Shri Jyoti Sagar, the constituted attorney of the plaintiff Corporation. and Shri Mark E. Thomas of the Law department of the plaintiff in U.S.A. Shri V. Khanna, an Assistant Accounts Officer of M/s. Bharat Hotels Ltd. and Shri Shashi Pancholi of the ''Holiday Inn'' Hotel, New Delhi were produced to prove the plaintiff''s franchise and the agreement under which this hotel is to be run in Delhi. On the other hand the partners of the defendants in the two suite appeared as their own witnesses.
(13) I have heard the learned counsel for the parties and with their help gone through the record carefully. My findings on the above issues are as under:
(14) Issue No. 1.-In support of this issue the plaintiff produced and relied upon the statement of Public Witness 2, Mr. Mark E. Thomas. He is working in the Law Department of the plaintiff in United States of America. He brought Along with him the original certificate of incorporation of the plaintiff company in the State of Tennessee, U.S.A. The photostat copy of which is Ex. Public Witness 211. He also produced the original power of attorney alleged to have been executed by Shri R. N. Reidrich, Vice President of the plaintiff company in favor of Shri J. Sagar, and proved on record as Ex. P-1. While appearing as Public Witness I Shri Jyoti Sagar identified his signatures on the plaint, verification and the power of attorney executed by him in favor of their counsel. None of these witnesses were cross-examined by the defendant, thereby in a way admitting the fact of the plaintiff pany''s incorporation in the State of Tennessee, U.S.A. and the plaint having been signed, verified and instituted by a duly authorised person. The defendants have also not produced any evidence in rebuttal. This issue is, Therefore, decided in favor of the plaintiff and against the defendants.
(15) Issue No. 2 & 3.-The paragraph 5 of the plaint the plaintiff claimed to be the registered proprietor, in India, of as many as 6 trade marks of ''HOLIDAY INN'' in respect of the goods mentioned against each registration. According to Public Witness 2 these registrations relate to the typical items connected with the running of hotel. The certified copies of the registration certificates are Ex. Public Witness 213 to ''P.W. 218. The said trade marks are valid and subsisting.
(16) Learned counsel for the defendant has not challenged the above said certificates of registration. His submission is that these trade marks relate to the specific goods, and the Hotel business run by the plaintiff cannot be protected. Furthermore the defendants are not using the offending trade marks in the course of their trade. This defense prima facie has no legs to stand. The definition of ''goods'' is contained in Section 2(i)(g) of the Trade and Merchandise Marks Act; it means anything, which is the subject of trade or manufacture. The words of Sections 28 and 29 of the said Act do not only relate to physical source but can also be anything beside? the goods. The plaintiff''s suit is, for infringement of the trade mark and for passing off, their trade name ''HOLIDAY INN'' by the defendants, who are engaged in the same business. The scope of an action for passing off goods is now too well settled, to require elaborate discussion. It is a remedy against a false representation tending to deceive the customers into believing that the goods which the defendant is selling are really of the plaintiffs. The same principles which are applied in the case of an action of ''Passing off'', the goods, are applied where the name of persons'' business is imitated and passed off by another person as his own. It has now been uniformly laid down as a settled rule that either in the case of goods or business the plaintiff has to show that his mark has become so distinctive that the public regards the same as belonging to a particular source. The plaintiff has to further prove that the offending mark or name is likely or calculated to deceive and cause confusion amongst the public thereby injuring the plaintiff''s business. In such cases it is incumbent upon the plaintiff to show that the name has acquired a secondary meaning in connection with the goods or business so that the use of this name by another is likely to deceive the public.
(17) The effect of the registration u/s 28 of this Act is that no other person can use the registered trade mark without the consent of its proprietor nor does it permit the proprietor to use his mark in a manner which will enable him to pass off his goods[business as that of some one else. As long as the registrations are in force and subsisting the only remedy left to the defendant is to apply to the Registrars of Trade Marks for cancellation of any of the plaintiff''s registered trade marks.
(18) I do not propose to discuss or refer to the elaborate statement of Public Witness 2, Mr. Mark E. Thomas, who with the help of documentary evidence, proved on record that the plaintiff''s chain of hotels under the trade name ''Holiday Inn is well established and has acquired a reputation throughout the world including India. At present the plaintiffs are owning and/or running and/or managing under franchise 1700 hotels under the name and style of ''Holiday Inn'' throughout the world. The plaintiff company opened one of its first hotels under ''Holiday Inn'' name in Japan some time in the year 1973 and now there are 22 ''Holiday Inn'' hotels in Asia. This witness further deposed that the ''Holiday I'' chain of Hotels is the largest hotel chain in the world with a revenue of about 1,000 million Dollars. In the last year the plaintiff spent over 10 million Dollars on advertising the ''Holiday Inn'' trade mark all over India and in support of the same he placed on record the photostat copies (Ex. Public Witness 219 to P.W. 2111) of the original statements showing the revenue, room nights sold and advertising expenses. This witness was not cross-examined to demolish the case of the plaintiff having acquired a reputation of its own in respect of the chain of hotels throughout the world. The defendants have also not led any evidence to debut this part of the case set up by the plaintiff.
(19) The plaintiff by leading cogent evidence has also established on record that the defendant''s use of the trade name ''Holiday Inn'' for their hotels is a clear infringement of the trade mark In this behalf the un-rebutted statement of Public Witness 2 may be looked into. According to him in August 1982 when he came to Delhi for negotiating an agreement for ''Holiday Tnn'' with. Bharat Hotels Ltd. in New Delhi, Shri Sagar Suri drew his atteiit.ion to a number of establishments in Delhi who were misusing the trade name ''Holiday Inn''. Shri Suri complained that the existence of these establishments and their use of Holiday Inn'' name was going to damage the reputation of the plaintiff''s well known and established trade name ''Holiday Inn''. On receipt of this complaint Public Witness 2 visited the establishments of the defendants. He took pictures and also collected visiting cards which are Ex. Public Witness 2/7 and 2/28. After satisfying himself that the defendants are misusing the plaintiffs trade mark, he instructed Sagar & Company to issue a cease and desist notice to the defendants. The notices, copies of which are Ex. Public Witness 2129 and 30, were duly served on the defendants but inspire of the same they have not cared to send any reply or act upon the same. In this way, according to this witness the defendants by the use of the name ''Holiday Inn'' have damaged the reputation of the plaintiff''s chain of hotels because the customers go to such establishments thinking that they are part of the ''Holiday In'' chain of the plaintiff''s Corporation but find no standard to which they are accustomed in the plaintiff''s Hotels. This part of the evidence is neither challenged nor rebutted by the defendants in their statements, which prima facie lead to the conclusion that by the use of the word ''Holiday Inn'', the defendants are infringing the plaintiff''s registered trade mark.
(20) It may be that the plaintiff or any of his associate franchise holders have not received any complaint from any of the customers about the confusion in the adoption of the word ''Holiday Inn'' by the defendants for their business, but that fact by itself, to my mind, is not to deprive the plaintiffs of their right to seek the injunction asked for. The action for infringement is a statutory remedy conferred on the registered proprietor of registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods/ business. In an action for infringement where the defendant''s trade mark is identical with the plaintiffs mark. the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark which is registered, but something similar to it, the test of infringement is the same as in an action for passing off. The sum total of the discussion leaves no doubt in my mind that the plaintiffs have succeeded in proving the fact that they are the registered proprietors of the trade mark ''Holiday Inn'' and that the defendants'' use of the word ''Holiday Inn'' is an infringement of the registered trade mark of the plaintiff. Both these issues are decided accordingly.
(21) Issues No. 4 & 5.-The defendants in their written statement did not dispute the fact of their using the word ''Holiday Inn'' as part of their trading style for their hotel lodging house. Shri Rajesh Gulati is one of the partners in Madhuban Holiday Inn, B-71, Greater Kailash, New Delhi, while Shri Pradeep Kapoor is the partner of Kapoor Holiday Inn'' situated at F-39, East of Kailash. Both these defendants admitted that they are running the guest house under the said names but with the permission of the District authorities under the Sarai Act. According to them they just adopted the word ''Holiday I'' without knowing the existing right of the plaintiff to the said name. It is also alleged that as number of other hotels are using the word ''Holiday Inn'' were being run in different parts-of Delhi/New Delhi, they also adopted the same without seeking any permission from any quarter. Till today the defendants are running their business and using the word ''Holiday Inn'' for their establishments. The only question that now requires going into is as to whether the use of the word ''Holiday Inn'' as part of their trading style) business falls within the definition of passing off their business as that of the plaintiff or not.
(22) The contention of the learned counsel for the defendants is that the plaintiff corporation is not running any hotel under their chain of hotels in Delhi and does not enjoy any goodwill for the said business. In this behalf the learned counsel placed reliance on a Judgment reported as Alain Bornardain Company v. Pavilion Properties Ltd.; (1969) R.P.C. 581(1), Commonly known as ''Crazy Horse case''. Further more the use of the added matter like ''Kapoor and Madhuban'' to the word ''Holiday Inn'' is not likely to cause confusion as alleged by the plaintiff. The court has also to keep in mind the type of the total which the the defendants are running and the class /type of people who are likely to avail of the services. The plaintiff''s franchised hotel, if it comes into existence in Delhi, will have more than 450 rooms with a ''5 Star'' classification whereas the defendants'' lodging houses do not have more than 20/25 rooms. There is no likelihood of the public being misled or deceived by the use of the word ''Kapoor Holiday Inn'' or Madhuban Holiday Inn'' by the defendants viz-a-viz plaintiff''s chain of hotels under the trade name ''Holiday Inn''-
(23) Before dealing with these contentions one has to keep in mind the essentials of a ''Passing off action'', as detailed in the judgment reported as
THE purpose of tort of passing off is to protect commercial goodwill to ensure that peoples'' business reputations (are not exploited. Since businesses'' goodwill is an asset and Therefore species of property, the law protects it against encroachments as such. The tort is based on economic policy, the need to encourage enterprise and to ensure commercial stability. It secures a reasonable area of monopoly to traders. It is thus complimentary to trade mark law which is founded upon Statute rather than common law. The onus in a passing of action lies upon the plaintiff to establish the existence of the business reputation which the seeks to protect. The asset protected is the reputation, the plaintiff''s business has in the relevant market. This is a complex thing. it is manifested in the various indicia which lead the client or customer to associate the business with the plaintiff; such as the name of the business, whether real or adopted, the mark, design, makeup or colour of the plaintiff''s goods, the distinctive characteristics of services he supplies or the nature of his special process. And it is around encroachments by the said indicia that passing off action arise. An action for passing off is a common law remedy being in substance an action for deceit i.e. passing off by a person of his own goods as those of another.
(24) At the outset it may be stated that the plaintiff is using the word ''Holiday Inn'' in different forms/logos. The word ''Holiday Inn'' is being used by the plaintiff both in script as well as in block letters and sometimes in slanting logo. The standard manual Ex. Public Witness 4/1 and photograph of the key-chain Ex. Public Witness 4/2 are the instances in this behalf. The plaintiff corporation, as per the statement of Public Witness 2, is the only body who can and is entitled to use the word ''Holiday Inn'' throughout the world. Their right has since been recognised by the various countries including the Govt. of India when they granted the permission to Bharat Hotels, Delhi to enter into a franchise agreement. Ex. Public Witness 2/24 with the plaintiff. The approval of the Govt. was conveyed vide letter Ex. Public Witness 311. In terms of the said letter of approval Bharat Hotels paid a sum of I lakh U.S. Dollars for adopting the plaintiff''s trade name. By virtue of other agreements the plaintiff Corporation is also allowing the use of prefixes and suffixes to the trade name ''Holiday Inn''. I need not dwell on the reputation which the plaintiff Corporation is enjoying throughout the world including India for their chain of hotels under the trade name ''Holiday Inn'' as there is no challenge to the same from the side of the defendants. Admittedly the defendants have not been authorised by the plaintiff to the use of the word ''Holiday Inn'' nor a prior permission has been obtained in this behalf.
(25) Even though the chain of hotels of the plaintiff Corporation or their franchise are maintaining high standard of service for their customers, but these very hotels are also being used by ordinary customers and people including businessmen and tourists. While under cross-examination Public Witness 2 was frank enough to admit that their Corporation was in fact founded to provide accommodation for middle class people and for that reason none of the hotels in India are having any Golf or Tennis Courts, even though it provides facility for swimming pool. Almost similar type of people are visiting or enjoying the services of the defendant''s lodging houses According to the defendants most of their customers come from the Embassies and private companies. These customers are attracted to their hotels because of the availability of good services and good situation of the hotels. According to the defendants they normally approach personally the Embassies and other companies for securing business. In view of these admissions it cannot be said that the use of the word ''Holiday Inn'' is not likely to cause confusion amongst the general public, who are used to avail the facility/services of the hotel.
(26) The case of ''Crazy Horse'' on which much reliance. has been placed by the learned counsel for the defendants is prima facie of no help to the defendants as its ratio decidendi was not agreed to or relied upon in the subsequent judgment reported as Maxim''s Ltd. and another v. Dye; 1978(2) A.E.R. 55, (3) and C&A Modes & C&A Ireland v. C&A (Water Ford) Ltd., Michael Vincent 0 Toole and Samuel Me. Clure, 1878 F.S.R. 126(4).
(27) In the earlier case the plaintiff carried on the business of a place of entertainment in Paris under the name of Crazy Horse Saloon'' or ''Crazy Horse''. The defendant company started a place of entertainment in London under the name of ''Crazy Horse Saloon''. An advertisement issued by them stated-''Crazy Horse Saloon'' comes to London, giving the impression that they were offering the same sort of entertainment as did the plaintiff. The plaintiff had since 1951 extensively published their Paris business in the United Kingdom, but they carried on no activities of any kind here. On the plaintiff''s motion for an interlocutory injunction to restrain passing off it was held that a trader cannot acquire goodwill in this country for the purpose of a passing off action without user of some sort here. Although in certain cases slight activity might suffice, the mere dissemination of material advertising the plaintiff''s business activities abroad could not constitute user in this country sufficient to acquire a reputation in the sense material for passing off action, and an interlocutory injunction could not Therefore be granted."
(28) This very proposition came under attack in Maxims'' case, wherein the plaintiff, an English Company, who owned a famous restaurant in Paris known as Maxim succeeded in restraining the defendants from operating a restaurant under the name ''Maxims'' and from passing off or attempting to pass off in any other manner her business at Paris as that of the plaintiff''s business.
(29) In the subsequent case also Kenny. J. made the observation that the case of ''Crazy Horse'', in his opinion, was incorrect and should not be followed.
(30) Learned counsel for the plaintiff has also in this behalf placed reliance on a judgment reported as Sheraton Corporation of America v. Sheraton Motels Ltd., 1964 R C 202(5). It was a case where the plaintiffs'' Sheraton Chain of Hotels in the United States and other foreign countries succeeded in restraining the defendant company which was incorporated by a Canadian and had derived the name Sheraton Motels Ltd., notwithstanding the fact that the plaintiff''s business was primarily carried on abroad. This sets at rest the defense raised by the defendants to the plaintiff''s case for the grant of injunction.
(31) Further more all this exercise, to my mind, is of use to the defendants. The plaintiff must succeed on the admission of the defendants. While under cross-examination D.W. 2, Pradeep Kapoor was frank enough to admit the genuineness of the case of the plaintiff. The relevant portion reads as under :
IT will not make any difference to our business, if the name is changed to Kapoor Holiday Home or Kapoor Hotel or Kapoor Guest House.
Similarly D.W. I, Shri Rajesh Gulati stated that "it is correct to suggest that there will not be any difference to my business, if the name of our hotel is changed either to Madhuban Holiday Home or Madhuban Holiday Hotel. In view of the foregoing discussion as well as the admission I am inclined to hold that the defendants are using the word ''Holiday Inn'' as a part to their trading style and as such are passing off their business as that of the plaintiff and that the words ''Kapoor'' and ''Madhuban'' prefixed to the words ''Holiday Inn'' would cause confusion and the belief that it is the business of the plaintiff I hold accordingly. Both these issues are decided in favor of the plaintiff and against the defendants.
(32) Issue No. 6.-According to the partner of the Kapoor Holiday Inn their business is. in existence since 1977 whereas the Madhuban Holiday Inn came into existence in April 1981. According to the learned counsel for the plaintiffs were fully aware of their existence and the present suit filed sometime in the year 1983 must be rejected on account of acquiessence, delay and laches. Even this defense has no sound basis. The position stands clarified by Public Witness 2, Shri Mark E. Thomas. Part of his statement has already been incorporated. According to him when he came to Delhi in the month of August, J982 and had seen the misuse of the ''Holiday Inn'' name by the defendant he immediately reported the matter back to Headquarters. At the same time he issued instructions to M/s. Sagar & Company to issue ''Cease and Desist'' notice, which in this case are Ex. Public Witness 219 and Public Witness 2130. The notices were duly served and the A.D. cards are Ex. Public Witness 2/31 and 32. The plaintiff waited for some time to see if there was any response. According to Public Witness 2 in the absence of any response the matter was considered by their Law Department in U.S.A. and the decision was taken to file the present suit. The power of attorney was prepared there and sent to Mr. J. Sagar. This witness further deposed that this is a time cons liming process and particularly when it involves the collection of particular data as well as obtaining of the certified copies of the registered trade marks. The Explanation furnished by the plaintiff''s witnesses is convincing and duly explained the short delay in filing the present suit. The plaintiff under these circumstances cannot be said to have approached the Court without due diligence. This issue needs no farther elaboration and is decided against the defendants.
(33) Issue No. 7 & Relief.-As a result of the above discussion I hereby grant the plaintiff a decree of perpetual injunction with costs restraining the defendants, their partners, servants and agents from using the word ''Holiday Inn'' or any other name or expression deceptively or otherwise similar thereto as their trading style or as a part in relation to its goods particularly, visiting cards, menu cards, tariff cards, stationery and other printed materials relating to its lodgings and restaurants, towels, crockery, cutlery, key chains/rings, and diverse goods relating to its lodgings and restaurant. The defendants are also directed to render accounts to the plaintiff of the profits earned by them while trading under the trading style, which includes the word ''Holiday Inn''.
