Date of Decision: 21st February, 2024
Applicant: Amritsar Haveli Cuisines Private Limited
Opponent: Haveli Restaurants and Resorts Ltd.
Mark: AMRITSAR HAVELI
Issue:
The primary issue in this case is whether the mark “AMRITSAR HAVELI” applied for registration by Amritsar Haveli Cuisines Private Limited for services related to providing food and drinks in Class 43, is eligible to be registered on account of the Opposition filed by the Haveli Restaurants and Resorts Ltd where the Opponent claimed to be the owner, user and proprietor of the mark “HAVELI”. The Opponent claims that the Applicant’s mark infringes upon the Opponent’s rights and seeks to prevent its registration on various grounds including alleged intent to trade upon the Opponent’s reputation and goodwill. The key question is whether the Applicant’s mark can be registered despite the opposition’s claims of similarity and infringement.
Facts of the Case:
Amritsar Haveli Cuisines Private Limited applied a Trademark Application No. 4263978 for the mark “AMRITSAR HAVELI” in class 43 for food and drink services. The said application was published and later opposed by Haveli Restaurants and Resorts Ltd. The Opponent argued that the mark-“AMRITSAR HAVELI” was deceptively similar to its trademark- “HAVELI” which claimed to be adopted in 2001 for various services, including food and drinks, and asserted sole ownership of the mark across multiple classes, including Class 43.
Submission by Opponent:
The opponent asserted its sole and exclusive proprietorship over the word – “HAVELI” across various classes, including Class 43. The Opponent further contended that the Applicant’s addition of “AMRITSAR” as a prefix does not diminish the likelihood of confusion or deception among consumers. Furthermore, the Opponent tried to highlight the Applicant’s alleged attempt to trade upon the reputation and goodwill Opponent asserted to be associated with its mark.
In support of the opposition, the opponent presented various documents, including records from the Regional Provident Fund Commissioner, sales promotion expenses, newspaper clippings, invoices, and sales details spanning several years. These documents aim to establish the Opponent’s prior use and ownership of the “HAVELI” mark.
Additionally, the opponent relied upon an order passed by the Hon’ble Regional Director of the Ministry of Corporate Affairs, which ordered the Applicant to change its company name due to similarity with the Opponent’s name. The Opponent argued that this order demonstrates the Applicant’s history of attempting to capitalize on the Opponent’s reputation.
Submission by Applicant:
The Applicant- Amritsar Haveli Cuisines Private Limited denied the grounds of opposition put forth by Haveli Restaurants and Resorts Ltd. It asserted that the “AMRITSAR HAVELI” mark was adopted in good faith and legitimately, with no intention to infringe upon any existing trademarks. The Applicant argued that the term “HAVELI” is commonly used in the hospitality industry and is not unique to the opponent only.
The Applicant highlighted the instances where the Registrar of Trademarks issued adverse orders against the Opponent’s trademark applications containing the term “HAVELI.” These orders cited prior registered marks with similar words, indicating a lack of exclusivity over the term “HAVELI.” Not only that the Opponent has itself relied upon the phonetic, visual and structural difference between its marks and other “HAVELI” formative cited marks during the objections stage of its applications.
Additionally, the Applicant contended that the Opponent’s opposition is part of a pattern of baseless and malicious actions against honest adopters of “HAVELI” formative trademarks. The Applicant asserted that the Opponent’s actions are aimed at harassing the Applicant and misleading the registry.
Moreover, the Applicant argued that the Opponent’s reliance on certain documents, such as those from the Regional Provident Fund Commissioner, failed to establish specific use of the “HAVELI” mark for food services under Class 43. The lack of formal registration for the “HAVELI” mark further weakened the Opponent’s claims of exclusivity.
Observations
The primary issue of the opposition proceeding was whether the mark “AMRITSAR HAVELI” applied for registration by Amritsar Haveli Cuisines Private Limited can be registered or not on account of the Opposition filed by the Haveli Restaurants and Resorts Ltd where they claim to have right over the word “HAVELI”.
The Applicant’s arguments regarding the widespread use of the term “HAVELI” in the hospitality industry and instances where adverse orders were issued against the Opponent’s earlier trademark applications containing the term “HAVELI” were considered. It was noted that the Opponent has themselves opted for phonetic, visual and structural difference in its “HAVELI” marks to address the objections and therefore the Opponent cannot now rely upon similarity between marks.
Upon examination of the evidence, it was found that the Opponent’s claim of prior adoption and use of the “HAVELI” mark since 2001 was not adequately supported. The documents presented by the opponent failed to demonstrate specific use of the mark for food services falling under Class 43. Furthermore, the opponent lacked formal registration for the “HAVELI” mark. The sale details provided were not signed and certified by chartered accountant, the newspaper cuttings could not be relied upon as the same had hand written dates and only showed the use of Opponent’s composite marks. It was also observed that though the Opponent claims to have been using the mark “Haveli” since 2001, the Opponent has failed to secured registration over the word “Haveli”.
It was also observed that the order of the Regional Director of the Ministry of Corporate Affairs on which the Opponent have relied upon was misleading as a stay was operational against the impugned order by the Hon’ble High Court of Punjab and Haryana after the Applicant had moved an appeal against the impugned order.
The objection with regards to use and rights over the word “AMRITSAR” by the Opponent was also unsustainable as the same did not in any way indicated to the geographical origin of the goods/services. The Learned Registrar of Trademark further observed that the Opponent had failed to prove the averments of dishonestly as alleged by them in the Opposition.
It was therefore determined that there was no likelihood of confusion or deception in the public regarding the Applicant’s mark, and deemed it distinctive as a whole. In light of these findings, the Learned Registrar of Trademark ruled in favor of the Applicant-Amritsar Haveli Cuisines Private Limited. The registration of its mark “AMRITSAR HAVELI” in Class 43 was allowed, and the opposition by Haveli Restaurants and Resorts Ltd. was dismissed.
The Applicant was Represented by Mark Shield before Registrar of Trademarks.
