RAMADA INTERNATIONAL, INC. vs CLUBRAMADA HOTELS AND RESORTS PRIVATE LIMITED & ANR.
$~20
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 649/2021 & I.A. 16631/2021, I.A. 16634/2021, I.A. 12542/2022, I.A. 13197/2022, I.A. 13198/2022, I.A. 13690/2022, I.A. 13691/2022, I.A. 14684/2022, I.A. 17946/2022, I.A. 13779/2023, I.A. 45379/2024
RAMADA INTERNATIONAL, INC. …..Plaintiff
Through: Mr. Ashwani Balayan, Ms. Richa Pushpam, Advocates (M:999929241)
Email: dhc@algindia.com
versus
CLUBRAMADA HOTELS AND RESORTS PRIVATE LIMITED & ANR. …..Defendants
Through: None.
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
O R D E R
% 17.02.2025
MINI PUSHKARNA, J (ORAL)
I.A. 45379/2024 (Application seeking summary judgment)
1. The present application has been filed under Order XIII-A Rules 3 and 6(1)(a) of the Code Procedure Code, 1973 (CPC), read with Section 151 CPC, as amended by the Commercial Courts Act, 2015, seeking summary judgment.
2. The present suit has been filed seeking permanent injunction restraining the defendants from infringing and using the impugned marks, i.e., CLUB RAMADA, CLUB RAMADA HOTELS AND RESORTS, CLUB RAMADA VACATION and HOLIDAYS BY CLUB RAMADA VACATION and any other deceptively similar mark to that of plaintiffs mark, i.e., RAMADA.
3. The plaintiff seeks a summary judgment against the defendants, on the ground that the defendants have no prospect of defending the plaintiffs claims.
4. The case as canvassed by the plaintiff, is as follows:
4.1 The plaintiff first adopted the trademark RAMADA in 1954 for its hotel in Arizona, United States of America (USA). Presently, the plaintiff franchises and manages over 900 hotels across more than 60 countries, including India.
4.2 In India, the plaintiff filed its first trademark application for the RAMADA device mark on 23rd December, 1970, which was registered on 29th January, 1972. The said registration lapsed in the year 2015 as the mark was no longer in use. Further, one of the first RAMADA hotels in India, Ramada Inn Palm Grove Hotel at Juhu Beach, Mumbai, was launched in the late 1980s.
4.3 The earliest valid trademark registration for the device and word mark RAMADA in India in favour of the plaintiff, bearing registration no. 559953, dates back to 08th October, 1991 in Class 16. Further, the plaintiff holds registration for the word mark RAMADA under registration no. 1240919 in Class 42, dated 01st October, 2003, with prior use recorded since 31st December, 1991, for hotel and hotel related services.
4.4 Defendant no. 1 has unlawfully adopted the plaintiffs RAMADA mark as part of its corporate name, ClubRamada Hotels and Resorts Private Limited. It is using infringing marks such as CLUB RAMADA, CLUB RAMADA HOTELS AND RESORTS, and CLUB RAMADA VACATION. The said defendant has also registered domain names
4.5 Defendant no. 2 is the registrant of
4.6 In November 2020, the plaintiff discovered defendant no. 1s infringing activities through its website
4.7 The plaintiff issued a legal notice dated 17th November, 2020 to the domain registrar and proxy host, asserting its exclusive rights over RAMADA and seeking a domain transfer, but received no response. A legal notice was sent to defendant no. 1 on 12th January, 2021. In response, on 03rd February, 2021, defendant no. 1s advocate admitted to using the trademark RAMADA, but refused to comply. The plaintiff issued a rejoinder letter dated 31st March, 2021, and a final legal notice dated 24th November, 2021, allowing seven days for compliance, which remained unanswered.
4.8 While one of the infringing websites, i.e.,
5. This Court notes that vide order dated 14th December, 2021, an ex parte ad interim injunction was passed against the defendants, restraining them from using the RAMADA marks for being deceptively and confusingly similar to the plaintiffs registered RAMADA trademarks.
6. It is further noted that, the defendant no.2 did not appear since the inception of the suit and also failed to file its written statement within the statutory period. Thus, vide order dated 06th August, 2022, right of defendant no.2 to file written statement, was closed. Further, on the same date, written statement of defendant no.1 was taken on record.
7. This Court notes that, the plaintiff filed I.A. 17946/2022 under Order XXXIX Rule 2A CPC, for wilful disobedience of the aforesaid injunction order, by defendant no.1, wherein, vide order dated 04th November, 2022, this Court again directed the defendant no.1 to remove the infringing online listings, including, listings on Google Business.
8. It is noted that due to the continued infringement on part of defendant no.1, the plaintiff moved another application, I.A. 13179/2023, under Order XXXIX Rule 2A CPC, wherein, this Court vide order dated 27th July, 2023 reiterated the injunction order passed against the defendant and directed the Managing Director of defendant no.1, to appear in person to explain the said infringing actions.
9. Pursuant thereto, vide order dated 17th August, 2023, when the Managing Director of the defendant no.1 appeared in person, this Court did not find any substance in the explanation given by him. It was further recorded that, prima facie, the defendant has no regard for the orders passed by this Court and directed the defendant no.1 to deposit an amount of Rs. 5 lakhs as pro tem deposit. The relevant extracts of the said order is reproduced, as under:
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4. To a specific query from the Court, as to how, in the face of the injunction order passed by this Court more than a year and a half ago, and even while the defendant was already facing one application by the plaintiff under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC) (IA 17946/2022), the defendant is continuing to use the CLUBRAMADA Hotels and Resorts mark, neither Mr. Malhotra nor Mr. Saud Parvez is able to provide any satisfactory answer, except to say that these vouchers have been issued in the process of five years and ten years schemes floated by the defendant with various customers. It is quite obvious that this explanation is worth nothing, as, once the Court injuncts the use of the mark CLUB RAMADA, it is the duty of the defendant to comply with the injunction.
5. This Court is, prima facie, of the opinion that the defendant has no regard for the orders passed by this Court. It appears that breach of the order continues even till this date.
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7. The Court repeatedly queried of the defendant as to the amount that he has earned by use of the impugned injuncted mark. No answer is forthcoming.
8. In the circumstances, the defendant is directed to deposit, with the Registry of this Court, an amount of ? 5 Lakhs within a period of four weeks from today, as a pro tem payment. The said amount as and when deposited shall be placed in an interest bearing fixed deposit, awaiting further orders to be passed by this Court.
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12. It is made absolutely clear that if there is no immediate cessation, by the defendant, of the use of the injuncted mark, the terms today fixed by this Court may have to be made more stringent.
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(Emphasis Supplied)
10. In view of the aforesaid, it is evident that despite numerous directions and queries put to the defendant no.1, the said defendant could not satisfy the Court with regards to the blatant disobedience towards the orders passed by this Court, despite an injunction order being in operation, and with regard to the revenue earned by the defendant using the injuncted mark.
11. It is noted that, even after passing of three months since the aforesaid direction to the defendant no.1 to immediately stop the user of the infringing mark, the defendant did not comply with the said order. Thus, vide order dated 23rd November, 2023, this Court recorded as under:
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3. Non compliance with interlocutory orders passed by the court can invite detention in civil prison under Order XXXIX Rule 2A of keeping in mind the fact that there is a qualitative difference between Order XXXIX Rule 2A of the CPC and Contempt of Courts Act 1971, the court normally prefers to subject the recalcitrant and disobedient litigant to costs, rather than incarceration.
4. Mr. Surjeet Singh Malhotra, learned Counsel for the defendant, prays for eight weeks further time to comply with the direction for making payment.
5. I see no reason to accommodate such a request. However, the defendant is given four weeks further and final opportunity to make payment in compliance with para 8 of the order dated 17 August 2022, failing which the defendant shall forthwith be taken into custody and incarcerated in civil prison for a period of two weeks.
6. At this stage, Mr. Malhotra prays that the time for deposit may be extended to six weeks. Accordingly, the deposit may be made within six weeks from today.
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(Emphasis Supplied)
12. Despite the aforesaid final opportunity to the defendant to make the pro tem deposit with the Registry, the defendant failed to deposit the said amount.
13. This Court notes that, subsequently, vide order dated 22nd February, 2024, on request of the parties, the parties were referred to Mediation. However, the Mediation talks failed between the parties as recorded in order dated 25th July, 2024.
14. Upon perusal of the order sheets, it is clear that after the mediation talks failed, learned counsel appearing for the defendant no.1 stopped appearing before the Court. Thus, the plaintiff moved application, I.A. 45379/2024, seeking summary judgement.
15. Notice was issued in the aforesaid application, which was duly served upon the defendants. Despite service, since none appeared for the defendants, they were proceeded ex parte, vide order dated 11th February, 2025.
16. At the outset, this Court notes that apart from international registrations since the year 1960, the plaintiff owns at least eight trademark registrations for RAMADA and its formative marks in India, which are reproduced as under:
17. Apart from aforesaid trademark registrations, the plaintiff and its affiliates own or manage multiple domain names featuring the trademark RAMADA, which is reproduced, as under:
18. As regards the origin of the use of the mark RAMADA by the plaintiff, this Court takes note of an article dated 24th November, 2021 published in the New York Times, that has been placed on record, which shows that the said mark was conceived by the plaintiff in the year 1960.
19. This Court notes the registration for the mark RAMADA in favour of the plaintiff, qua which, application was filed on 23rd December, 1970. The said document, is reproduced as under:
20. The documents on record clearly show registration for the device and word mark RAMADA in favour of the plaintiff under registration no. 559953 in Class 16 under registration dated 08th October, 1991. Further, the plaintiff also has a registration in its favour under registration no. 1240919 in Class 42 with registration dated 01st October, 2003, with user date being 31st December, 1991. This Court further notes the registration certificate issued by the Trademark Registry for the mark RAMADA in favour of the plaintiff, with date of application being 08th October, 1991. The documents with regard thereto, have been placed on record.
21. Certificate of registration for the mark RAMADA issued on 22nd December, 2005 in favour of the plaintiff under Class 42 for hotel, restaurant and other related services, is reproduced as under:
22. This Court also notes an article dated 05th February, 1989, which has been placed on record to show the user of the mark RAMADA by the plaintiff. The said article refers to existence of RAMADA hotel in Bombay, which clearly shows the existence of Hotel RAMADA in India, since long.
23. This Court also notes the certificate of registration for the mark RAMADA issued by the Trademarks Registry in Class 42 in favour of the plaintiff, with the user date since 31st December, 1991. The same is reproduced as under:
24. As per the documents on record, currently, there are 39 hotels with the mark RAMADA, operating in India, in 30 cities. The details of the said hotels under the mark, RAMADA, are also reflected in the various websites, details of which have been placed before this Court. Further, as per the documents on record, there are 918 hotels worldwide under the brand RAMADA. The plaintiff has also placed on record the revenue generated by it from its hotels under the brand RAMADA, as well as the global expenses for advertisement of its hotels under the brand RAMADA.
25. It may also be noted that the domain name, ramada.com, stands duly registered in favour of the plaintiff. The Whois detail clearly shows the said domain name being registered on 7th July, 1995. The document with regard thereto is reproduced as under:
26. It may also be noted that the plaintiff has placed on record document showing the trademark registrations for the mark RAMADA worldwide for various countries across jurisdictions. Thus, it is firmly established that the mark RAMADA has been used extensively and continuously by the plaintiff for a long time in various countries across the world, including, in India.
27. The plaintiff has also successfully opposed various applications for registration of marks, which were identical/deceptively similar to the plaintiffs mark RAMADA. Documents pertaining to the same have been placed on record.
28. This Court also takes note of the decision by the World Intellectual Property Organisation (WIPO), wherein, the right of the plaintiff herein in the mark RAMADA was recognised, and the domain name containing the mark RAMADA, was directed to be transferred in favour of the plaintiff. The relevant portion of the said order passed by WIPO, is reproduced as under:
WIPO
WORLD INTELLECTUAL PROPERTY ORGANIZATION
WIPO Arbitration and Mediation Center
EXPERT DECISION
Ramada International, Inc. v. Degui Wang
Case No. DES2011-0029
1. The Parties
The Claimant is Ramada International, Inc., domiciled in Parsippany, New Jersey, United States of America, represented by Elzaburu, Spain.
The Respondent is Degui Wang, domiciled in Nanjing, Jiangsu, China.
2. The Domain Name and the Registrar
The Lawsuit is aimed at the domain name
The registrar of the aforementioned domain name is ESNIC.
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A. Identity or similarity to the point of causing confusion with another term over which the Claimant claims to have Prior Rights
The Respondent has demonstrated, by the documentary evidence provided, that he is the owner of the RAMADA trademark and consequently of the corresponding prior right. It is also necessary to recognize the absolute identity between the RAMADA brand and the disputed domain name
Therefore, the Claimant duly justifies the first requirement demanded in Article 2 of the Regulations.
B. Legitimate rights or interests
The Claimant has alleged that the Respondent is not commonly known under the name Ramada, as well as that the Respondent lacks trademark rights registered with the name Ramada, providing sufficient evidence to do so.
For the rest, the Respondent has not responded to the allegations maintained by the Claimant in its Statement of Claim; consequently, the allegations could be considered good based on the evidence duly provided by reason of constituting prima facie evidence that supports the lack of rights or legitimate interests of the Respondent. In addition, the defendants extemporaneous response, limiting itself to consenting to the transfer of the domain name in favor of the Claimant, without providing any evidence in the terms of article 16 of the Regulations that could distort the claims of the latter, would justify the lack of rights or interests of the Respondent.
Because of what is exposed, this Expert considers the second of the requirements of article 2 of the Regulation to consider the registration of a domain name abusive or speculative.
C. Bad faith registration or use of the domain name
Regarding the third of the requirements established by the Regulation, that is, that the registration or use of the domain name in conflict
From all this and in view of the file, this Expert understands that the registration of the domain name
Therefore, we understand that the request for the domain name
7. Decision
For the reasons stated, in accordance with article 21 of the Regulations, the Expert orders that the domain name
Manuel Moreno-Torres
Expert
Date: August 22, 2011
(Emphasis Supplied)
29. List of various awards and accolades conferred on the plaintiff for its hotels under the mark RAMADA, has also been detailed in the plaint. Further, various articles and social media sites, clearly evidence the long standing use of the mark in question by the plaintiff and strengthens the position of the plaintiff that the mark in question is associated with the plaintiff solely and exclusively.
30. It is also evident that the defendant has been aware and in the knowledge of the plaintiffs marks. Reference may be made to the reply dated 23rd January, 2021 of defendant no.1, to the legal notice dated 12th January, 2021 issued by the plaintiff, wherein, the defendant no.1 has admitted having knowledge of the plaintiffs RAMADA brand and using the mark RAMADA as part of its impugned company name, impugned domain name, impugned website, impugned marks, etc. The relevant extracts from the said reply, are reproduced as under:
10. The Word ramada in name of our client i.e. Clubramada has been included primarily for the reason that one of the directors of our client is Muhammadan and professes Muslim religion and he is firm follower of Ramadan.
.
So, to follow his religious belief, the said director considers the word Ramadan as sacred and accordingly he wanted to include word ramada in name of his company i.e. Clubramada as ramada is part of auspicious word Ramadan.
11. Also, the other director of our client is Hindu and he has firm faith in God Rama.
So, to follow her religious instinct towards Lord Rama she wanted to include the auspicious name of the Deity in name Clubramada. Hence, both the directors in order to include their religious beliefs in the name of their company have coined the name Clubramada.
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13.
.It is affirmed that there is no likelihood for an average man of ordinary intelligence to associate ramada with ‘Clubramada Vacation’ as there is no similarity of any kind. Our client never had any intention to cause your client any loss of any sort or to imitate to get any undue benefit for itself.
14. … In respect to which it is most apposite to mention that all these four trademarks of your client are completely different in shape, name and style from the device and name and style from the device and name of our client
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PARAWISE RESPONSE:
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9. In para 9 of notice, your client attempts to narrate its international goodwill which our client was completely unaware. Except the fact that your client has some properties in India amongst many other, our client was not aware of anything more about ramada; nor did the name Clubramada Vacation’ has been derived to resemble mark/name of your client. More so, your client is unnecessarily finding itself vulnerable with name of our client. The narration of goodwill of your client if so vast as narrated in para under reply; then it is invincible and a small tour and travel company as our client’s which even do not have any property in its name in no manner can impair business of your client.
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11. In response to contents of para 11, our client states that for the reason that properties of your client are on panel of RCI (the exchange body), hence, these properties are shown when the tab of exchange is used at website of our client and among other, a few properties of your client are also reflect. It is explicitly negated that it is blatant dishonesty on part of our client.
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(Emphasis Supplied)
31. On perusal of the aforesaid reply, it is manifest that the defendant no. 1 had direct knowledge of the plaintiffs RAMADA brand at the time of adoption of the impugned mark. The defendants justification for adopting the mark RAMADA is evidently an afterthought, and lacks bona fide intent, as it fails to provide any tenable rationale for its selection. Furthermore, the defendants admission of plaintiffs hotel properties being displayed on its website reinforces the inference of deliberate association and bad faith.
32. Further, the defendants conduct in the present matter has been contumacious since the inception of the suit, as they have willfully persisted in their infringing activities, despite ex-pare interim injunction passed against the defendants restraining them from using the infringing marks. Their failure to provide any cogent justification for the adoption of the impugned mark, coupled with their deliberate misrepresentation and bad faith use, demonstrates a blatant disregard towards the plaintiffs statutory and proprietary rights.
33. Defendant no. 2 is the owner of the infringing domain name, used by defendant no. 1. As per the document on record, the registration of the impugned domain name, as used by defendant no. 1, was registered only on 28th October, 2020. The document with regard thereto, is reproduced as under:
34. Consequently, the plaintiff has established unequivocally that it is entitled to a decree in its favour. Order XIII-A of the Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015, empowers this Court to pass a summary judgment, without recording evidence, if it appears that the defendant has no real prospect of defending the claim.
35. Accordingly, considering the aforesaid discussion and the admission on behalf of the defendant no.1, the plaintiff is entitled to decree of permanent injunction in its favour, and against the defendants.
36. With respect to costs and damages, this Court observes that the defendants adoption of the infringing marks cannot be deemed bona fide or honest. The defendant was fully aware of the plaintiffs registered trademarks and their established reputation, making any plea of ignorance untenable. Further, the defendant has failed to provide any credible justification for adopting the plaintiffs trademark, clearly intending to exploit the plaintiffs goodwill and reputation for its own benefit.
37. Accordingly, the suit is decreed in favour of the plaintiff and against the defendants in terms of Para 101 (I), (II), (VIII) and (IX) of the prayer clause in the plaint.
38. Considering the detailed discussion hereinabove, damages of ? 10 Lacs is awarded in favour of plaintiff.
39. Further, the plaintiff is also held entitled to actual costs of the suit. The plaintiff is accordingly directed to file its bill of costs within a period of three months. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of costs.
40. At request of learned counsel for the plaintiff, costs and damages payable to the plaintiff by the defendants, shall be paid through the plaintiffs counsel, i.e., Mr. Ashwani Balayan.
41. The suit is decreed in the above terms.
42. Decree sheet be drawn up.
43. Accordingly, the suit, along with pending applications, stands disposed of.
MINI PUSHKARNA, J
FEBRUARY 17, 2025
au
Corrected & Released on: 09th March, 2025
CS(COMM) 649/2021 Page 20 of 20