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14 September 2016

Trademarks – No case of passing off in use of word ‘Privee’

The High Court of Delhi on 8-8-2016 has dismissed the suit for permanent injunction to restrain the defendant from using trademark “PRIVEE” or any other trademark or logo / device which is identical or deceptively similar to the plaintiffs’ trademark “MBD PRIVE” and “PRIVE” or which incorporates the word “PRIVE”.

The Court in this of case of Bright Enterprises Private Limited v. MJ Bizcraft LLP was of the view that Radisson and Shangri-La are two well-known international brands in the hospitality industry which are identified by the patrons and that nobody is likely to associate a nightclub in Shangri-La Eros Hotel, even if by the same name, as an exclusive wing of the Radisson Blue MBD Hotels. Dismissing the suit in limine, without giving an opportunity to the plaintiff to prove that the mark has acquired distinctiveness, the Court noted that the word ‘PRIVE’ is a French word meaning ‘private’ or ‘a private place’ in English.

It was used in other hotels as well, being common to the hospitality industry particularly the hotels, with areas / zones in hotels which are not meant to be accessible to all the guests of the hotel being marked therewith. Arguments relating to prior use and turnover were also rejected by the Court while it placed its reliance on the Supreme Court Judgement in the case of Satyam Infoway Ltd., setting principles in case of passing off.

Finally, it was held that without establishing a case of such generic word having acquired a secondary or special meaning so as to denote only the plaintiffs, they cannot maintain an action for passing off.