ICRAVE LLC Vs. ICRAVE DESIGNS PVT LTD

JUDGEMENT

(1.) This order shall dispose of the application filed by the plaintiff under order 39 Rules 1& 2 read with Section 151 of the Code of Civil Procedure. Before I deal with the said application it will be necessary to give narration of brief facts of the case as set out by the plaintiff in the plaint and the defence raised by the defendant in the written statement. The plaintiff has filed the present suit for permanent injunction restraining the defendants, its directors/ proprietor/ partners etc from using the trade-mark / tradename ICRAVE or any other mark/name as may be confusingly or deceptively similar to the said trade-mark/trade- name of the plaintiff in respect of goods of their manufacture and sale and services provided by them amounting to passing off their goods and services and business of the plaintiff and from taking any benefit of the reputation or goodwill of the plaintiff in respect of the said trade-mark or name ICRAVE in any manner whatsoever. The plaintiff has also prayed for an order of delivery up and has also claimed damages to the tune of Rs.20,05,000/- from the defendants for passing off the goods and services of the plaintiff. The plaintiff is a Limited Liability Company and is said to be a world renowned Design Studio having its headquarters in New York, USA and is engaged in providing consultancy and turn key project services in the area of interior and architectural designing and is amongst the market leaders in the said field world wide. The plaintiff has claimed that in the year 2002 the plaintiff coined and adopted the inherently distinctive mark ICRAVE as its trademark and also as a prominent part of its trade name and since then the plaintiff has established a high profile client base in the hospitality and retail sectors and the reputation of the plaintiff is well known for delivering many of the Manhattan's top nightclubs and restaurants including six restaurants within the new terminal at USA's John F.Kennedy International Airport. The plaintiff has further claimed that its reputation grew over the years around the globe from the Mc Cormick Center in Glasgow, Scotland to the recently opened Holland Casino in Rotterdam, Netherlands. The details of various such projects have been given by the plaintiff in para 3 of the plaint. The plaintiff has also claimed that it has been recognized from time to time for its quality services in the area of interior and architectural design and in pursuance of this recognition in the said field the plaintiff has been recipient of innumerable international awards and some of them have been detailed by the plaintiff in para 4 of the plaint. The plaintiff has also claimed that the name of the plaintiff and its projects have been in news world-wide through various newspapers and magazines having global circulation and prominent among those have been Razor, Mondo, Club Systems, Zink etc. and that many of such publications have a regular circulation in India. The plaintiff has also claimed that the said trade-mark/trade-name of the plaintiff is used alongwith stylized version ICRAVE. The plaintiff has also claimed that ICRAVE is a coined term and has no dictionary meaning and due to long and extensive use of the said trade mark consuming public across the world today associates the said mark with the plaintiff alone and none else. The plaintiff has also claimed that it has considerable presence in India since the last many years and substantial segment of the public which uses and require such services associate the trade name ICRAVE exclusively with the name of the plaintiff. The plaintiff has also claimed that it has been receiving business queries from various Indian entities since the last 3-4 years and the plaintiff has been forwarding its proposals to many Indian companies. The plaintiff has placed on record few such proposals as were forwarded by it to the renowned Indian entities such as Fame Multiplex at Bangalore, Adlabs Multiplex in Mumbai and Jubilee Hills and Restaurant and Lounge in Hyderabad way back in the year 2008-09. The plaintiff has further claimed that in addition to the above proposals the plaintiff was also engaged in advanced discussions for various projects in various parts of India,the details of which are in para 10 of the plaint. The plaintiff has thus claimed that it has presence all over India and has a substantial trans-border and spill over reputation in India especially after the popularity gained by the plaintiff after completing various projects at USA's John F.Kennedy Airport which as per the plaintiff is visited by thousands of Indians when such Indians have opportunity to appreciate the plaintiff's work and bring such reputation to India in both tangible and intangible form. The plaintiff has further claimed that it has presence on the World Wide Web being owner of the domain name ww.icrave.com after the website was created by the plaintiff on 23.8.2010. The plaintiff has further claimed that it has earned USD 39,37,878 in the year 2010 through world wide sale of its products and services. The plaintiff has also claimed that in order to acquire statutory rights of its said trade mark the plaintiff had filed application for registration of the said trade-mark in India as well in respect of goods and services falling in classes 19,20,42 & 43.

(2.) Further The case of the plaintiff is that in the month of November 2011 representatives of plaintiff discovered the use of its trademark/trade name by the defendant when the plaintiff was carrying diligence search on the internet and was alarmed to learn that the defendant is using identical trade mark/trade name in respect of its services and have also registered a domain name identical to that of the plaintiff being ww.icravedesigns.com. The plaintiff has further claimed that the defendant is also engaged in the architectural and interior designing services which are identical to the field of the plaintiff. The plaintiff has claimed that the defendant company was incorporated only in the year 2010 much after the plaintiffs adoption and use of its trade-mark ICRAVE. The plaintiff has submitted that use, sale and advertisement of products and services by the defendant under the trade mark/trade name ICRAVE amounts to passing off of the plaintiffs services and use of such similar trade mark by the defendant is nothing but an attempt to wrongfully trade upon the plaintiff's goodwill and is done with the sole intent to mislead the public and to cause confusion and deception in their minds to make them falsely believe that the goods and services of the defendant originates from the plaintiff or at least have some affiliation. Based on the above facts the plaintiff has claimed grant of ad-interim injunction in its favour.

(3.) In the written statement filed by the defendant, the defence raised is that the plaintiff has very localized business and has no trans-border reputation whatsoever. The defendant also states that the plaintiff has miserably failed to place on record any document or letter to show that it has any business in India or it has spent any amount on advertisement in India or that it has acquired any goodwill or reputation in India or the defendant at any occasion has misrepresented its name to the clients of the plaintiff in India. The defendant further states that the defendant company was incorporated on 11.2.2010 under the name and style of ICRAVE Interiors Pvt. Ltd. and the name of defendant company was changed from ICRAVE Interiors Pvt. Ltd. to ICRAVE designs Private Limited. It is also the case of the defendant that earlier the defendant had proposed to set up the name of company as CONCEPTS but since the said name was not available in the records of ROC therefore they were compelled to select the present name. It is also the case of the defendant that the defendant had engaged the services of a firm named M/s Rave Designs for the selection of a new name of their company with logo and design and out of the few names suggested by the said company, ICRAVE was selected by one of their Directors as the composite meaning of the said word is innovative design or zeal to do something. It is also the case of the defendant that the consumer public in India associate the name of ICRAVE with the defendant alone and at present the defendant company has 17 running projects as per the details given in para 7 of the written statement. It is also the case of the defendant that they have been spending huge amounts on account of advertising and they have their own web portal. It is also the case of the defendant that various clients and customers approach the defendant company because of their own reputation and goodwill and no clients or customers of the field recognizes the plaintiff in the said field so far the business in India is concerned. The defendant has further stated that the plaintiff has filed their application to seek registration of trade mark only in August 2011 without explaining the fact as to why they had moved said application at such a late stage although they had claimed that they are in the business since 2002. The defendant has seriously refuted the use of trade-mark ICRAVE by them means passing off the plaintiffs services or the defendant company in any manner is encashing upon the alleged goodwill of the plaintiff. The defendant has further stated that they did not know or come across the aforesaid trademark ICRAVE at any point of time and therefore adoption of the said trade mark by the defendant is absolutely bonafide and that too after the said name was suggested by a third company engaged in this field.