Incorporated in the Commonwealth of the Bahamas in 2002, Kerzner International Limited (Kerzner) is one of the world’s renowned service provider engaged in management, development and operation of destination resorts, properties, luxury resort hotels, etc. Kerzner manages more than 15 hotels in approximately 10 countries under the mark ‘ATLANTIS’ which was adopted in 1994. In India, Kerzner owns several registrations for the mark ‘ATLANTIS’ under Classes 35, 36, 39, 41, 42 and 43.
Kerzner came across an application bearing no. 4694972 wherein a device mark,
(impugned mark) was applied in respect of services for providing food and drink, and temporary accommodation, allied in respect to that Kerzner. The impugned mark was applied on 9th October, 2020 with a user claim since December, 2017 by a certain Mr. Vikas Aggarwal in partnership with Mr. Rajeev Garg and Mr. Vishal Bhutani (Defendants) under the corporate name, ATLANTIS PARK BALLROOM LLP in Class 43.
Kerzner served a cease-and-desist notice to the Defendants calling upon to cease using the impugned mark. However, the Defendants replied that their mark was distinctive and that not only the services provided by them were completely different from the services of Kerzner but their trade channels were also unrelated. Defendants further stated that Kerzner did not enjoy any reputation in India as the mark is used in the Bahamas.
Thereafter Kerzner addressed a further notice, however, the same did not evince any positive reply from Defendants. Consequently Kerzner approached the Delhi High Court to enforce its right and seeking protection for its mark.
The Court observed that Kerzner’s mark enjoyed tremendous reputation and goodwill, despite the fact it had no resort in India, its revenue figures, promotion on social and print media, awards and accolades and pletohra of bookings done by people from India every year. The Court further observed that since the banquet hall at Delhi’s GT Karnal Road Area run by the partnership under the impugned mark also offered services related to entertainment, conventions and bookings for social events, the services offered by either parties were overlapping and thereby, cognate in nature.
The Court took cognizance of the fact that Kerzner’s mark ‘ATLANTIS’ happened to be a prominent feature of the impugned mark as well as the Defendant’s corporate name. Referring to the precedent in M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. (2015) 61 PTC 231, the Court opined that while a trademark is indeed supposed to be looked at in its entirety, the prominent feature was to be given more attention as customers are more likely to remember and rely on them for the purpose of identification.
Hence, Defendants were restrained from using the trademark ‘ATLANTIS PARK BALLROOM’ and make any fresh bookings in its banquet till the next date of hearing. However, the Hon’ble Court on considerate grounds held that it will not impede the Defendants in respect of bookings having been already made. Lastly the Defendants were also ordered to file a list of bookings made within a period of two weeks after the service of the order.
Surprisingly, there is no mention in the judgement, whether the defendant or the Court was informed that ‘ATLANTIS’ was not a word coined by the Plaintiff.
