S. Ravindra Bhat, J:

1. The plaintiff, in this suit, is claiming a permanent injunction restraining the defendant from using the mark "AMAN" in respect of the services offered by it, and other reliefs, including damages. The present order will dispose of the plaintiffs application for ad-interim temporary injunction.

2. The suit states that the plaintiff was founded by a Dutch born Indonesian national, Adrian Zecha, in 1980, and that the mark AMAN was adopted then. It is submitted that over the years, AMAN has become associated with exclusive resorts and properties, in various parts of the world. The plaint lists out these resorts, villas, and hotels, and also mentions when they were established, in para 8; the first of these luxury and exclusive hotels, was established with the formative AMAN mark, in Phuket, Thailand in 1988. It is submitted that the expression AMAN, which connotes peace, has no association with luxury hotels, resorts, or allied businesses, such as spas, etc. and is used as a prefix in relation to all the plaintiffs hotels, resorts, etc. According to the suit, the AMAN mark is invariably used in respect of each service offered by the plaintiff, such as spas, weddings, excursions, etc. The plaintiff and the AMAN marks popularity, it is submitted, is testified by the great demand by real estate developers to associate or use the mark, for which it (the plaintiff) charges branding fee, and associates itself intimately with execution of these projects. The plaintiff has given instances where such AMAN mark related projects were promoted, and later marketed.

3. It is submitted that the distinctive nature and popularity of the AMAN brand and mark has grown manifold, over the years; the plaintiff relies on its sales figures for the period 1995 to 2008 in support of this argument. In 1995, the sales figure was US $ 39,48,03,77/-; by 2008 it had increased to US$ 82,37,05,96/-. The plaintiff has mentioned about its expenses towards promotion of its AMAN brands; in 1995 it was US $ 19,85,600/-, these expenses had increased to US $ 3399679 in 2007. It is also stated that the plaintiffs hotels and resorts are acknowledged as the best resort experience properties, in various international periodicals, journals and magazines. Instances of write ups in these magazines are set out in para 18 (a) to (m) of the suit. They include write ups in Outlook Traveller, India in 2005, Time magazine, 2004, Discovery, Hongkong, etc. It is therefore, alleged that the plaintiff has a very distinctive trademark and wide international popularity, across the world, in the luxury hotel/ resorts segment of the hospitality industry. The plaintiff claims to have established its actual presence in India, in 2003, with the setting up of the AMAN-I-KHAS in the outskirts of the Ranthambore National Park, in Rajasthan. Subsequently, in 2005, the plaintiff established its second resort, at Alwar, i.e. AMANBAGH; the land for its development had been procured in 1995-96. It is submitted that the sales figures of the AMANRESORTS in India are as follows:

"It is stated that the above two hotels are managed by companies, which are controlled by the plaintiff, which is scheduled to open its first city hotel in New Delhi, i.e. THE AMAN, NEW DELHI, in 2008; it is to be a nine storeyed structure with facilities including luxury suites, rooms, private plunge pools, restaurants, health bar, spa, etc. The plaintiff also plans to develop a luxury condominium under the same name, next to THE AMAN."

4. The suit mentions about unsolicited press reports in the Indian press and media, from time to time. It is also submitted that for a long time, Indian travellers and tourists have been continuously patronizing the AMAN resorts and hotels in various parts of the world, and the plaintiff has booking details of such guests from India; these documents have been produced from the year 1989. The plaintiff has also been dealing - at least from 1994 - with various travel agents in India who were provided with brochures, containing the AMAN trade mark, and list of resorts. A list of such travel agents, has been filed along with the documents produced with the suit. The plaintiff therefore, asserts about presence of its mark in India, at least since 1989; it has also relied upon sworn testimonies of Indian nationals who were its guests in its hotels and properties, on various occasions. Those affidavits have also been produced in support of the suit. The services availed of by such Indian nationals, and provided to them, it is argued, amounts to use of the AMAN mark and brand in India, since 1989. Therefore, says the plaintiff, it has been continuously and extensively using the AMAN mark since that period. It is urged, in addition that these services led to dissemination of information about the AMAN brand by such patrons to their relatives, friends and acquaintances, who in turn availed of such facilities and services. The plaintiff relies on printouts from its website to evidence searches for the domain name www.amanresorts.com. It is stated that the plaintiff has registered various domain names; their list is produced:

Check^^^^

Copies of domain name registrations certifications have been filed in support of the suit.

5. It is alleged that since 1994, the plaintiff has been publishing and distributing newsletters about its AMAN resorts to actual and potential consumers who have signed up to their mailing lists. These newsletters are known as AMANEWS; AMAN ADVISORY and AMANEXPRESS. Copies of such newsletters have been produced in support of the suit, to establish usage. It is submitted that these newsletters have been distributed worldwide, including in India. Those who receive them are known as "AMAN junkies". The plaintiff claims to have collaborated with the American Express and the Centurion bank, to promote and popularize its brand image. The plaintiff mentions about various awards and commendations received by it, in respect of the AMAN brand and resorts, prominent among which are the Gallivanters Guide (UK) Awards for excellence in respect of its services, successively in 2003, 2004 and 2005, besides other awards. Copies of certificates evidencing these awards have been produced along with the list of documents filed in the suit. The plaintiff relies on the findings and comments in the Singapore courts, and the Administrative Panel, in Singapore, in respect of its distinctive brand image. Copies of such orders have been produced along with the suit. The plaintiff has mentioned about registration of its various AMAN marks, throughout the world, in Para 35 of the suit, and produced the trademark registration certificates, in support of the contention. In Paragraph 36, it has mentioned about various trademark registrations in India, in different classes, most prominently in respect of hotels, spas, resorts, clothing, etc, the earliest of which was granted with effect from 2003.

Certificates of such registration have also been produced.

AMAN HOTEL

6. The plaintiff alleges that it became aware recently about the defendants existence. It is submitted that the defendants were initially using the Aman mark in respect of ticketing business; though the defendants company used that name as part of its corporate name in 1993 and had actually started the ticketing services in 1995. It is submitted that only in 2004, the defendants began using Aman as their trade name with an attempt to diversify their activities other than ticketing trade. Such activity included hotel packages, real estate and pet care etc. It is submitted that the defendants have now entered into hospitality business, as well as the real estate which is the plaintiffs primary businesses and have recently established a Hotel "Aman Motel" at Said-ul-ajaib, near Saket, New Delhi. It is further stated that the defendants are providing rental services to tourists under the name "Aman Apartments" at two premises, i.e. Greater Kailash and Vasant Kunj.

7. The plaintiff submits that the defendants line of business is allied and intimately connected with its business. The suit further alleges that being the prior adopter of the "Aman" mark, the plaintiffs have rights over it. The plaintiff also asserts that its mark has achieved notoriety and fame which the defendants are now seeking to appropriate on free ride upon. The plaintiff further apprehends that the defendants are intentionally attempting to expand their business and trench upon those commercial activities which are its (the plaintiffs) primary business line. The plaintiff further avers in paragraph-42 as follows:-

"It is submitted that the practice of procuring online bookings of hotels and travel arrangements is increasing by the day. Majority of the consumers including tourists prefer to book their accommodation and other necessities through the internet due to convenience, independence and the seemingly boundless information that this medium provides. In this scenario, the presence of the Defendants on the internet under the domain names mentioned hereinabove, which are deceptively similar to the Plaintiffs trademarks and domain names, is likely to confuse and deceive the unwary tourists not only in India, but across the world. The plaintiff believes that the registration of the above domain names by the Defendants is deliberate and is calculated to deceive consumers including tourists who seek information and booking facilities through the internet.

To make matters worse, the Defendants also describe themselves as Aman Group, just like the Plaintiff."

8. In addition to the above averments and documents, it is urged that the defendants use of the Aman mark not only amounts to infringement under Section 29 (2) of the Trademarks Act but also trademark dilution under Section 29 (4) and corporate name infringement under Section 29 (5).

9. It is submitted that the practice of procuring online bookings of hotels and travel arrangements is increasing by the day. Majority of the consumers including tourists prefer to book their accommodation and other necessities through the internet due to convenience, independence and the seemingly boundless information that this medium provides. In this scenario, the presence of the Defendants on the internet under the domain names mentioned, which are deceptively similar to the Plaintiffs trade-marks and domain names, is likely to confuse and deceive the unwary tourists not only in India, but across the world. The Plaintiff believes that the registration of the above domain names by the defendants is deliberate and is calculated to deceive consumers including tourists who seek information and booking facilities through the internet. To make matters worse, says the plaintiff, the defendants also describe themselves as "Aman Group", just like the Plaintiff.

10. It is urged that the defendants have not shown any document evidencing use of the "AMAN" mark prior to the plaintiffs use. The plaintiff urges that what has been produced are only contracts alleged to have been entered into with the defendants. It is further argued that the defendants brochures relied upon, to claim prior user, were printed after 2006, the year when the domain name was registered by them. The plaintiff also points-out that the defendants first advertisement, in respect of "AMAN" mark was published in 2003. It is submitted with reference to page 262 of the defendants documents that the use of the "AMAN" mark with the explicit claim of the defendants to be part of the "AMAN" Group, more than clearly establishes identity between the two marks and is clear proof of strong probability of confusion. The plaintiff relies upon the decision of this Court reported as N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., AIR 1995 (Del) 300 [LQ/DelHC/1995/385] : 1996 (16) PTC 476 (Del) [LQ/DelHC/1995/385] (DB) and the judgment of the Supreme Court, reported as Milmet Oftho Industries and Ors. v. Allergan Inc., 2004 (12) SCC 624 [LQ/SC/2004/712] , in support of the submission that the plaintiff is entitled to claim extra-territorial reputation on the basis of materials on record in support of the submission that the defendants are infringing its trademark and also diluting it. For these reasons, submits the plaintiff, the Court should grant the temporary injunction claimed. The defendants contend, in the written statement, that they have been in the business and using the "AMAN" mark since 1995. They argue that the "AMAN" mark was used in India prior to the application made in 2004 for registration of "to be used" claim. It is, therefore, submitted that the plaintiff cannot now contend that it is the prior user of the mark. It is also submitted that the defendants existence was within the notice and knowledge of the plaintiff, who did nothing and chose to file the present suit only in 2007. The defendants claim that they have been members of certain accredited Travel Agent Associations, as far back as from 1999- 2000 and relies upon certificates in that regard. It further relies upon the Passenger Sales Agency agreement with concerns such as Jet Airways, which recognizes that the defendants are a IATA Agent; a copy of that agreement of 2000 is produced. Similarly, the defendants submit that they have been members of the Travel Agents Federation of India and relies upon a letter of 05.05.2001 in this regard. Likewise, the document evidencing membership of the defendants company with the American Society of Travel Agents, has also been produced. It is stated that so far as the travel agency, ticketing and related services are concerned, the defendants have been continuously using the "AMAN" mark ever since 1995, long before the plaintiff even ventured with any commercial or business activity in India.

11. The defendants argue that the materials and the pleadings relied upon by the plaintiff do not establish that its "AMAN" mark was known to the members of the public. It is stated that concededly, the first instance of use of the "AMAN" mark and branch in India was in respect of the "Amanekhas" established in Ranthambore National Park in 2003; thereafter the defendants have sought to extend their business in that mark. The defendants argue that they, on the other hand, have demonstrated their prior use of the mark in relation to ticketing and allied services in 1995. The defendants contest the plaintiffs submission about knowledge on part of the consumer public in India claimed by the plaintiff - by relying on publications in certain international magazines and travel agent bookings. It is stated that such bookings only mean that the concerned patron or client had approached a particular travel agent and proceeded to make his or their bookings. Likewise, the defendants argued that the reliance placed upon by the plaintiff on the affidavits of its consumers cannot determine whether there was use in India prior to the defendants and whether that such usage could be claimed in respect of an unrelated activity, i.e. ticketing.

12. The defendant submits that "AMAN" is a common name which has been used by several concerns in respect of diverse activities. It is argued that the recent adoption of the "AMAN" mark in relation to a hotel cannot be said to infringe the plaintiffs mark, if one has regard to the totality of the pleadings and materials. The defendants here argued that while their hotels undoubtedly contain "AMAN" mark, having regard to the clientele segment of the two concerns, there can be no scope of confusion. It is emphasized here that the plaintiff provides exclusive services, which are beyond the reach of the most persons. It caters to a very small and limited segment of society. The defendant companies, on the other hand, have established "AMAN" Hotel, which charges Rs. 3,000/- per night for its rooms. On the other hand, the plaintiffs room tariff is in the range of Rs. 40,000/- per night. Having regard to these, there is no danger of any confusion between the members of the public so as to enable the Court to grant the temporary injunction claimed.

13. The above discussion would show that the plaintiff is claiming to have used the "AMAN" mark in respect of its luxury hotels, resorts, spas and villas, from 1988. Concededly, it had no presence in India prior to 2003. The defendants, on the other hand, claim to be using the "AMAN" mark in respect of ticketing and travel agency services since 1995. Both the plaintiff and the defendants have produced a mass of documents in support of their rival claims. The plaintiff strongly relies upon, besides others, its growing worldwide sales and series of advertisements issued in different magazines and periodicals. Significantly, the only Indian publication containing mention about the plaintiffs hotels is in the Outlook Traveller of 2005. The plaintiff in the suit concedes that the defendants have been using the "AMAN" mark in respect of the travel agency and booking since 1995. The claim for prior use by the plaintiff is founded essentially on advertisements and the fact that several of its hotel bookings originated from India. Reliance is also placed on some affidavits of its customers, who visit it from time to time.

14. With the enactment of Section 29 (5) of the Trademarks Act, Parliament has sought to codify the law in respect of infringement through trademark dilution. The following distinctive elements are to be established by a trademark owner, to say that his or its mark has been infringed by dilution:

(a) Similarity or identity of the mark;

(b) Dissimilarity of the services;

(c) Existence of a significant and distinctive reputation of the mark, in India ("such a reputation in India");

(d) Use of the mark by the rival without good faith and known likelihood of injury to the plaintiff.

15. The plaintiffs primary argument in support of the dilution claim is the extra-territorial reputation it seeks to have acquired. While N.R. Dongre and Ors. (supra) undoubtedly mentions about extra-territoriality on account of knowledge, the world-over, legal systems recognize that trademarks are ordinarily limited by national boundaries since the law applicable to them seldom has extra-territorial effect. That was underlined by the Calcutta High Court in the judgment reported as Aktie Bolaget Johkoping Vulcan v. S.V. Palachamy Nadar, AIR 1969 Cal 43 [LQ/CalHC/1968/155] . The Court categorically held that extra-territorial information can be imported to construe the Indian Trademark Act to cover foreign use. The law in England was clarified in the judgment Anheuser Busch v. Budegovicky Budbar, 1984 FSR 413. It would be useful in this context to extract the relevant factual background which led the Supreme Court to uphold the plea of extra-territorial use of the mark Ocuflox:

"XXXXXX XXXXXX XXXXXX

9. In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima facie shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. If that be so then no fault can be found with the conclusion drawn by the Division Bench.

XXXXXX XXXXXX XXXXXX"

16. In N.R. Dongre and Ors. (supra), the Division Bench of this Court summarized the correct legal position and stated that:

(a) The knowledge and awareness of trademark in respect of goods is not necessarily restricted to the a country where they are available but such knowledge can reach even those sides of countries where the goods have not been sold or marketed;

(b) The advertisement of a trademark of a foreign concern in respect of the product need not be associated with actual use of the product to establish reputation;

(c) A product and its trade name can transcend physical boundaries of geographical region and acquire trans-border reputation not only through import of goods but also by advertisement in the Indian Travel awareness and circulation of advertisement in India;

(d) The goods of the trader must be available or accessible in India.

17. In the present case, the mass of documents produced by the plaintiff nowhere disclose that its mark was advertised in time prior to 2005 anywhere in India. It established its first hotel in India in 2003. All the materials to suggest extra-territorial use or awareness by the Indian consumer public depend on bookings made by the travel agents of clientele emanating from India. This, in the Courts opinion, is tenuous and a weak kind of evidence to establish use. There may be a variety of reasons why a customer or client may settle for the booking of a resort. It cannot necessarily depend on its awareness of the mark or the resort. In the present age, of course, brand awareness, particularly of this segment, is possible through internet. What the plaintiff is relying upon is the period 1988-2003. Typically, a consumer or client wishing to make a booking might possibly approach a travel agent and seek options having regard to the location, the kind of services and constraints of his budget. These factors ordinarily play a significant part in consumer choice in such cases. In the present case, almost all the bookings which the plaintiff relies upon during that period were made through travel agents, barring stray instances. As far as the affidavits sworn by the plaintiffs clients are concerned, undoubtedly they have evidenciary value but they are - like other pieces of evidence, no more or no less than other pieces of evidence which prima facie are to be considered. In any event, they cannot be of such value as to compel the Court to hold that the plaintiff had established its reputation in the "AMAN mark in India in respect of the hotels and that use of that mark by the defendants amounts to infringement by dilution. Concededly, the plaintiff acquired its registration only in 2003. The defendants documents, on the other hand, clearly demonstrate that they were incorporated in 1993 and were in business since 1995 - in fact the plaintiff itself says so. Furthermore, the defendants have placed on record, their memberships of various Travel Agent Associations, dating back to the late 1990s and early 2000.

In these circumstances, this Court is of the opinion that the plaintiff has been unable to establish that it had such extra-territorial reputation in respect of the "AMAN" mark as to prima facie secure an injunction against the defendants from using the mark in respect of the diverse or dissimilar activities, i.e. travel and ticketing services. "AMAN" is a common name - used as a first name by many Indians. Unless the plaintiff is able to establish that it has acquired a strong secondary meaning as to powerfully denote its services or goods, it cannot claim the kind of injunction, at least in respect of the diverse activities which are not part of its core concern- it seeks. While on this, it would be also necessary to end the plaintiffs argument that its hotels and resorts maintain travel desks who involve themselves in ticketing and allied advisory services. This argument is to support the claim that the defendants line of business and that of the plaintiff are common. This Court cannot accept the submission since the plaintiffs travel desk and allied services would not extend to making bookings of competitors or rivals. The plaintiff did not deny that travel desks and units in the "AMAN" Hotels and Resorts would advise and book exclusively for their resorts, and would not do so for a trade rival or competitor. In these circumstances, the Court is of the opinion that the plaintiff has been unable to establish prima facie cause or entitlement for an injunction in respect of the defendants travel and booking services.

18. The above discussion is however, not dispositive of the application. The plaintiffs claim for injunction also embraces a restraint order, to enjoin the defendant from using the AMAN mark in respect of the hotel and hospitality business. The defendant does not here deny that the plaintiffs marks are registered. However, the contention is that its hotel, has a lower tariff, and its location and appearance is such as to leave no one in doubt that it has no association with the plaintiff. The Court has to determine the likelihood of confusion and deceptive similarity in order to arrive at a prima facie finding of infringement keeping in mind the following considerations: the broad and essential features of the competing marks will have to be viewed, the marks will have to be considered as a whole in their respective contexts, the similarities rather than dissimilarities will have to be taken note of and that the marks must be judged from the point of view of unwary purchaser of average intelligence and imperfect recollection. (See Ruston and Hornsby v. Zamindara Engineering Co, (1969) 2 SCC 727 [LQ/SC/1969/330] : PTC (Suppl)(1) 175(SC), Parle Products v. JP & Co., AIR 1972 SC 1359 [LQ/SC/1972/67] : PTC (Suppl)(1) 346(SC), Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 [LQ/SC/1962/200] , Heinz Italia v. Dabur India, (2007) 6 SCC 1 [LQ/SC/2007/785] : 2007 (35) PTC 1 [SC] [LQ/SC/2007/785] and Cadila Health Care v. Cadila Pharmaceuticals, (2001) 5 SCC 73 [LQ/SC/2001/847] : 2001 PTC (21) 300(SC)). The essence of an infringement action, as opposed to a passing off action, was encapsulated by the Supreme Court in Ruston & Hornsby (supra) as follows:

"3. The distinction between an infringement action and a passing off action is important. Apart from the question as to nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:

"Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs goods "

But in an infringement action the issue is as follows:

"Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiffs registered trade mark."

4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendants goods may be so much like the plaintiffs that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiffs mark the get up of the defendants goods may be so different from the get up of the plaintiffs goods and the prices also may be so different that there would be no probability of deception of the public.

Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiffs mark.

5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of Bs goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on As part. In equity, however, Lord Cottenham, L.C., in Millington v. Fox (3 My & Cr 338) held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiffs trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule.

6. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. (58 RPC 147 at 161):

"The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passingoff, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods for those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive..."

19. Here, the defendant does not dispute that it uses the AMAN mark, in respect of a hotel, established by it; it also has similar services, with the said mark. While the defendants use may be bona fide, there is no gainsaying that once it decided to enter the hospitality business, after the plaintiff had used the mark in India, and secured registration, it amounted to infringement. In such cases, the only defence available is prior user of the mark. Now, while the defendant had been using the mark previously in respect of ticketing and travel related services, that use, prima facie did not entitle it to use a mark identical or similar to an existing registered mark, i.e the plaintiffs AMAN marks. Contrary to the argument of different markets for the two hotels, the decision in Dongre has noted that where a rival or junior mark prices his goods or services at significantly cheaper rates than the plaintiff, there is likelihood of reputation loss. There is perhaps a ring of truth in the defendants argument here, when it says that its room rates are a fraction of what the plaintiff charges. Yet, the Court cannot be unmindful of the fact that in an Internet driven era, the consumer may be led to the defendants site. There can be cases of confusion. While that may not happen, with some discerning customers, the possibility cannot be ruled out.

20. In view of the above discussion, it is held that the defendants use of the AMAN mark in respect of the hotel and hotel related services rendered by it, prima facie amounts to infringement of the plaintiffs mark. The defendant is a later entrant in this market. There is no significant factor showing that grant of an ad-interim injunction would irreparably harm or prejudice it. In these circumstances, the defendants are hereby restrained from using the AMAN or any mark resembling the plaintiffs AMAN marks, or logos associated with them, in respect of the hotel and hospitality services offered by them; they shall also not use the Aman mark in their domain names as regards the hotel hospitality services. The applications are accordingly disposed of.