Delhi High Court Upholds Protection For Ritz And Ritz-Carlton Well-Known Marks

Delhi High Court Upholds Protection For Ritz And Ritz-Carlton Well-Known Marks

Introduction

The Ritz Hotel Limited, a renowned luxury hotel brand, was involved in a trademark opposition case against Shen Manufacturing Co. The suit was brought in order to obtain a permanent injunction that would prevent the defendants from violating trademarks and passing off their services as the plaintiffs' along with ancillary reliefs.

Factual Background

The plaintiff, The Ritz Hotel Limited, is a company renowned for its luxury hotel services and owns the famous 'The Ritz Paris' hotel, established in Paris in 1898. The plaintiff no. 3 is the current owner globally of a family of the Ritz marks and 'RITZ' formative trademarks. The plaintiff no. 2, The Ritz-Carlton Hotel Company, L.L.C., owns the world-famous trademarks 'RITZ-CARLTON', 'THE RITZ-CARLTON', and variations thereof.

Procedural Background

The plaintiffs sought grant of permanent injunction restraining infringement of trademarks and passing off of their services as those of the plaintiffs along with other ancillary reliefs. The defendants, M S Hotel Ritz & Ors., were alleged to have unauthorizedly adopted marks similar to the plaintiffs' registered trademarks.

Issues Involved

1. Trademark Registration: Whether Shen Manufacturing Co.'s registration of similar marks would infringe on The Ritz Hotel Limited's trademark rights.

2. Likelihood of Confusion: Whether the use of similar marks by Shen Manufacturing Co. would cause confusion among consumers.

Contentions of the Parties

Plaintiff's Contentions: The plaintiffs argued that the defendants' adoption of the impugned marks is dishonest and intended to deceive consumers and divert the plaintiffs' customers to their establishments. The plaintiffs emphasized their prior adoption and use of the trademark "RITZ" and its registration.

Defendants' Contentions: The defendants submitted that they would cease the use of impugned marks, 'HOTEL RITZ', 'RITZ HOTEL'/'THE RITZ HOTEL', and would not operate the website using the domains '(www.thehotelritz.com)' and '(www.ritz-hotels.com)' and also refrain from using the email address 'info@thehotelritz.com'. They also proposed to use revised marks 'RITIZ' or 'RITS' in various forms, which was rejected by the plaintiffs.

Reasoning and Analysis

The court conducted a detailed analysis of the competing marks and observed that the defendants' marks are deceptively similar and phonetically identical to the plaintiffs' registered trademarks. The court noted that the defendants have either wholly copied the plaintiffs' mark or have made minor alterations to come close to the plaintiffs' trademark.

Final Decision

The Delhi High Court granted a decree of permanent injunction in favor of the plaintiffs, restraining the defendants from using the marks/names "HOTEL RITZ", "RITZ HOTEL" or any other deceptively similar mark. The court also directed the defendants to discontinue the use of websites (www.ritz-hotels.com) and (www.thehotelritz.com).

A bench presided by Justice Amit Bansal declared the plaintiffs' marks 'RITZ', 'RITZ-CARLTON' as well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999. The court took into account the knowledge and recognition of the marks in the relevant section of the public, the duration and extent of use, and the record of successful enforcement of the rights in the marks.

Law Settled

The judgment underscores the court's commitment to protecting intellectual property rights, particularly in cases where prior adoption and use of a trademark are crucial. The court's decision emphasizes the importance of maintaining distinct and non-confusing trademarks to safeguard the interests of the prior adopter and user.

In this case the plaintiff was represented by Mr. Pravin Anand, Ms. Vaishali R. Mittal and Ms. Gitanjali Sharma, Advocates. Meanwhile the defendant was represented by Mr. Rishub Kapoor, Advocate.