Lemon Tree Hotels Ltd. vs Lemon Construction Pvt. Ltd.

Sanjeev Kumar Chaswal, Technical Member

The present petition is filed for removal of trademark No. 1399418 registered in the name of the M/s, Lemon Constructions Pvt. Ltd. in Class 37 from the register or rectification of the Register of Trademark under section 47 and 57 of the Trademarks Act, 1999. The petition was filed in the year 2014.

Facts Claims of the applicant

It is claim in the position that the Applicant herein. Lemon Tree Hotels Ltd., is a company registered under the provisions of the Indian Companies Act, 1956. Who is one amongst the finest and pioneer players of the forever cherished hospitality.

The applicant conceived and adopted its Trademark 'Lemon Tree' in 2001, using its using since October 2002 and opened its first Hotel with the same name at 866, Udyog Vihar, Phase V, Gurgaon (Haryana) in June 2004. The said has been used continuously in relation to its said business.

1.1 The applicants' 18 operation Hotels under the trading style 'Lemon Tree Hotels Ltd., in various parts of India, viz Goa, Gurgaon, Kaushambi (East Delhi), Jaipur, Pune Ahmedabad, Aurangabad, Indore, Chennai, Kerala, Bengaluru, Chandigarh and Hyderabad, are in operation and their five more hotels at Pune, Gurugram, Delhi International Airport, Shimla and Mumbai (Andheri) and some of are under various stages of development and construction across the country.

1.2 The applicants are renowned and well-known hoteliers in India and attract customers nor only from India but from also from abroad, who have spoken well of its hospitality and services. In short, the applicant is referred to merely as 'Lemon Tree Hotels' the mark 'Lemon Tree' in a way has become the house mark of the applicants.

The applicants are the registered owner and proprietor of their reputed trademark "Lemon Tree" under Registration No. 1476496 dated 04.08.2006 under the provisions of the Trademarks Act, 1999 as the said trademark stands registered in favour of the applicant besides this the applicant has obtained registration in many of classes TM No. 1143320 in Class 08, TM No. 1476492 dated in Class 08.TM No, 1143318 in Class 12, TM No. 1404382 in Class 16, TM No. 1476490 in Class 16, TM No. 1143316 in Class 16, TM No. 1143314 in Class 17. TM No. 1476491 in Class 29. TM No. 1476493 in Class 30. TM No. 1476494 in Class 31, TM No. 1476495 in Class 32, TM No. 1476496 in Class 35, TM No. 1404381 dated 06.12.2005 in Class 42. TM No. 1263602 dated in Class 42. TM No. 1505364 in Class 42, TM No. 1476487 in Class 42.

It is stated in the position that the applicant has entered into the affordable housing project segment under their another group company, i.e. M/s. Oceanus Development Co. Pvt., Ltd., and has also applied for Registration of trademark 'Lemon Tree Apartments & Lemon Tree Residencies' in Class 37 under the aforesaid company and its applicant Company has been actively using the mark 'Lemon Tree' in relation to its hotels and allied hospitality services since 2002 i.e. for more than 15 years, during the course of years, the mark 'Lemon Tree' has become a signature brand of the applicant Company and is largely viewed, remembered and known by public to be associated with applicant Company only.

It is allowed that the applicant has been extremely cautious and vigilant in protecting its marks and has been taking legal actions against those found infringing their intellectual property right in their well-known and reputed marks. To give an instance, sometime in September 2009, when it came to knowledge of the applicant herein that one M/s. Vaishnavi Estate Pvt. Ltd., Hyderabad (Andhra Pradesh), who were engaged in the business of real estate and apartments under the name and style of 'Lemon Tree' and had advertised launching of their construction of apartments under the name and style of immediately filed a suit, being CS(OS) No. 2338 of 2009, against the said party in the Hon'ble High Court of Delhi, where in the Hon'ble Court, by its order dated 01.08.2011 had been pleased to restrain the said Vaishnavi Estate Pvt. Ltd. from using above said mark 'Lemon Tree' for their apartments and thereby infringing the Plaintiffs Intellectual Property Rights in the said mark.

4.1 That the applicant's business has also been given media coverage in almost every famous and reputed daily newspaper, magazines and TV channels - Economic Times, Hindu, Business Standard, Business Today, Indian Express, Maharashtra Herald, The Times of India, Asian age, NDTV, Financial Express etc. The applicant has been spending substantial amounts on advertisements of their hotels under the trade name/trading style 'Lemon Tree Hotel', which have earned them quite substantial revenues. The applicant's Lemon Tree Group of Hotel is also honored with several prestigious awards, as per details given hereunder, which clearly proves beyond the group's commitment to quality in hospitality Industry and all together establish its ever escalating recognition among its customers and public at large from CNBC AWAZ TRAVEL AWARDS 2012 - Best Budget Hotels, Ministry of Social Justice and Empowerment National Awards: Best Employer in 2011. Times Travel Academy Award for "Best Mid-Range Hotel" in 2011:

The respondent No. 1 herein filed an application under No. 1971523 seeking registration of the mark 'Lemon' in Class 35 in respect of Business Management. Business Administration, Retail service of various kinds, advertisement services, marketing, Distribution, Advertising and Commercializing Services related to various goods falling in Class 35.

The applicant's mark was duly registered. The respondent No. 1 has also moved an application which contains significant part of the applicant's Mark 'Lemon Tree' and their trading style 'Lemon Tree Hotel', has already filed an opposition to the respondent No. 1 said application, mainly on the ground that such use of the mark 'Lemon' by the respondent No. 1 would cause confusion and deception in the course of trade and in the minds of the public who avail of such services.

In Order to protect this area of service, the applicant herein filed an application for registration of the mark 'Lemon Tree' on 04.08.2006 in Class 35. The said application had been accepted and the applicant is now the registered proprietor of the mark in question which stands registered in its favour.

The above impugned trademark application Lemon' (label) in class 35 was filed by the applicant herein on 04.08.2006, i.e. much before the respondent filed its application for registration in Class 35 on 26.05.2010.

His alleged by the applicant the respondent conducted a search for the mark 'Lemon' more vigilantly even in Class 35 while moving his present application for registration, the details of the applicants' marks would have certainly been traced. It is submitted that respondent had intentionally overlooked and the applicant's mark to coin goodwill of its already established business.

The Business activities or the applicant and the respondent are somewhat similar and overlapping since the applicants are in the Hotel Business, providing temporary accommodation to its customers whereas the respondents are in the business of construction of apartments, providing permanent accommodation.

The use of the mark Lemon, therefore, is likely to cause confusion and deception all around. In fact, various business houses, like DLF and Leela Hotels, these days are engaged in both fields i.e. providing hotel accommodations and construction and sale of residential apartments.

It is alleged by the applicant due to over right, Advertisement of the said mark in the Trademark Journal did not come to the notice of the applicant herein, otherwise the applicant herein would have definitely filed an opposition to the respondent's application and would have ensured that its application was rejected by the Registrar of Trademarks since in the presence of the same/identical registered mark in favour of the applicant herein, the respondent herein was not entitled to get the registration.

It is argued by the council for the applicant that the use of the mark Lemon' (label) for services falling in Class 37, got registered by the respondent herein will naturally lead to pass off of the respondent's services as that of the applicant's standard and high-quality services. The adoption of the impugned mark 'Lemon' by the respondent thus cannot be a matter of coincidence but is clearly dishonest and mischievously adopted and thus the registration granted to the respondent deserves to be quashed and the entry removed/expunged from the Register.

The respondent had claimed user of the impugned mark No. 1399418 Lemon' (label) in Class 37 since September 2005, which user is denied. The applicant has been using their marks since 2002, It is obvious the applicants are far prior users of trademark 'lemon tree' Hotels. Even otherwise user as claimed by the respondent No. 1 is denied by the applicant as the applicant had noticed the same as alleged.

The applicant counsel has referred the citations to buttress his pleadings and arguments in the matter, the applicant relies upon 2011 (48) PTC 363 (Del.) in which the defendants were carrying out the activities of constructing residential apartments under the name Lemon Tree Apartments. The Hon'ble High Court of Delhi has been pleased to restrain the Defendants..

The applicant counsel has referred the another citation to buttress his pleadings and arguments in the matter of M/s. Shell Transource Limited v. Shell International Petroleum Company Ltd.,  2012 SCC EPAB 29 : [2012] Hon'ble Intellectual Property Appellate Board 25 Para 14. We have considered the rival submissions and the materials before us There is no disagreement with the position that he who pleads nonuser must prove it. But when the applicant has pleaded non-user, the respondent must specifically deny it stating the facts on which he denies non-user. In the absence of specific denial we can only hold that the allegations stands admitted.

The another case referred by the applicant in the matter of M/s. Satnam Overseas v. Sant Ram & Co., (2014) 14 SCC 782 : (2015) 1 SCC (Civ) 412 : 2014 (57) PTC 220 (SC) wherein the 8. Section 46(1)(b) provides that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to the goods for which it was registered by the proprietor for the registered trade mark. The onus to prove non-use rests upon the applicant who has filed the application for rectification. Of course, it is sufficient that the applicant who has filed the application for rectification to give prima facie evidence for non-use of the mark during the relevant period of five years from the date of one month before the date of the application for rectification. Once it is prima facie shown, then the onus shifts to the registered proprietor to prove the use of the trade mark during the relevant period.)"

No one appears on the respondent No. 1 who has not contested the present proceedings. It appears to up that the intention of the respondent in getting registration of the impugned trademark No. 1399418 Lemon' (label) in Class 37 in relation to building construction, repair and installation services, and it was rightly stated by the applicant that it would cause, confusion in the trade and in the minds of the general public.

The respondent's use of the impugned mark would continue to damage the reputation and goodwill of the applicants and will also affect the goodwill of the applicant's Business, built over a long period of time with substantial costs and hard labour, it is in the interest of justice and fair play that the entry of the impugned mark from the Register is removed forthwith. As the public would associate the services of the respondent with the mark 'Lemon' with the applicant only and none else.

The respondent No. 1 has adopted and got the impugned registration of the said mark Lemon' (label) for their services only to cash in on the popularity of the applicant's Mark and trading style of which the applicant is the true and rightful owners. The trademark Lemon' (label), which has been registered in favour of the respondents does not in any manner distinguish or is capable of distinguishing the respondent's services from that of the applicant.

The respondent No. 1 has not controverted the averments made by applicant in its Rectification application. The averments made in the Rectification Petition goes un-rebutted. The registration of the trademark Lemon' (label) granted to the respondent is contrary to the provisions of Section 11(1)(a), 11(1)(b), 11(2)(a) and (b) 11(3), 11(10) and various other relevant provisions of the Trademarks Act, 1999. Because as per registry record the respondent did not file any counter statement, written submissions or pleadings nor did documents to justify the adoption and usage of the mark after obtaining registration of the same. Factually, the respondent had failed to plead his case or file its counter with regard to their usage of impugned registered trademark after obtaining its registration.

The applicant is a person aggrieved as the applicant is being using of similar name may cause loss and injury to the applicant. After going through the documents submitted by the applicant, in our considered opinion the applicant is certainly, is a prior user of the Trademark 'Lemon Tree' since 2001 and holding registration in various and all registrations are still valid and subsisting. As the applicant is in the field of Hotel Industry and there Hotels are located in almost each and every major jurisdiction of the country and have generated annual revenue approx. 180 Crores.

It is clear to us that the respondent has obtained the impugned registration with a view to en-cash the goodwill and reputation of the trademark/trade name Lemon' (label) accrued in favour of applicant. As such the respondent is not the honest proprietor of the trademark Lemon' (label) within the meaning of Section 18(1) of the Trade Mark Act. Thus the trade mark Lemon' (label) of the respondent is liable to be removed from the Register as the respondent is not the prior adopter Lemon'. Even the claim of the applicant of the prior user has not been contested by the-respondent, who has failed to file counter statement or any evidence.

In view of the extensive submissions made and the pleadings and documents filed on record herein above by the applicant counsel, we are of the considered opinion that the registration of the impugned registered No. 1399418 'Lemon' (label) in Class 37 is granted contrary to the provisions of Sections 9, 11, 12, 18 & 57 under the Trade Marks Act, 1999 and Rules thereto, as such the present rectification application is liable to be allowed. We direct the Registrar of Trademarks to rectify and remove the registered No. 1399418 Lemon' (label) in Class 37 from the Trademark Register in order to maintain the purity of the Trademark Register. No Costs

The Copy of the order be sent to the respondent No. 2 for taking the necessary steps in accordance with law.

Order as no cost.