Bright Enterprises Pvt Ltd and AKM Enterprises Pvt Ltd filed suit before the Delhi High Court to safeguard their rights in the trademarks MBD PRIVE and PRIVE, which they claimed to be using for a luxury wing of the Radisson Blu hotel. The plaintiffs became aware that the mark PRIVEE was being used by a nightclub operating inside the Shangri-La's Eros Hotel by MJ Bizcraft LLP and filed a trademark infringement and passing-off action. The court at the admission stage dismissed the suit, holding that 'prive' is a generic word in relation to hotels.

The plaintiffs contended that:

1. they were part of the MBD group and engaged in premium and luxury mixed-used developments primarily entailing hotel, retail and entertainment under the brand names MBD NEOPOLIS and MBD PRIVE;


2. they managed and operated a five-star luxury hotel by the name 'The Radisson Blu MBD Hotel';


3. they coined the trademarks MBD PRIVE and PRIVE and had exclusively and continuously used the same for a luxury wing in the Radisson Blu MBD Hotels. Further, these luxury rooms were known as PRIVE COLLECTION rooms and were promoted under the name of MBD PRIVE;


4. they had obtained registrations for the trademark MBD PRIVE in Classes 8, 16, 21, 29 and 30, and also had applications for registration of the trademark PRIVE and MBD PRIVE pending in Classes 36 and 41;


5. due to extensive use, advertising and promotion, the trademarks MBD PRIVE and PRIVE had attained well-known status and were exclusively associated with the plaintiffs;


6. in January, 2016 they became aware that the defendants were using the mark PRIVEE in relation ta nightclub. Further enquiries revealed that MJ Bizcraft LLP (the first defendant) adopted the mark PRIVEE in December 2015 and was running the discotheque in Shangri-La's Eros Hotel (second defendant);


7. the use of the mark PRIVEE by the defendants in relation to a nightclub amounted to infringement of the plaintiffs' rights in the MBD PRIVE and PRIVE trademarks, and would cause confusion among the public, who may believe that these services were licensed by the plaintiffs; and


8. even though a cease and desist notice was addressed to Shangri-La's Eros Hotel, the defendants failed to comply.

Decision

When the case came up for admission, the court was not convinced that the plaintiffs had made out a prima facie case and therefore afforded them an opportunity to substantiate their contentions. The court noted as follows:

1. The documents filed by the plaintiffs and pleadings did not show use of the registered trademarks in relation to the goods for which the registrations were obtained. The plaintiffs then submitted that they were relying on passing off in the suit.


2. 'Prive' is a word from old French and is derived from the Latin word privatus, which translates into English as 'private' or 'a private place' and is common in the hospitality industry, particularly hotels with areas which are not meant to be accessible to all guests of the hotel.


3. A search on Google revealed several other entities using the word 'prive' in relation to hotel services.


4. Radisson and Shangri-La were two distinct brands and the patrons of the two hotels were unlikely to associate a service or a restaurant in Shangri-La's Eros Hotel with a service in the MBD Radisson Hotel.


5. The use claimed by the plaintiffs of the mark PRIVE related to an exclusive wing of its Radisson Blu MBD hotel. This concept is in vogue in the hotel industry, with many hotels having exclusive wings for high-end business travellers or for a select category of patrons.


6. 'Prive' is a generic word meaning a private place and the plaintiffs had made out no case for being the sole user of the word in relation to hotels.

Finally, dismissing the suit at the admission stage, the court remarked that lawsuits which are doomed to fail and which have no chance of success should be dismissed at whatever stage the court finds this to be the case.