Banyan Tree Holdings Ltd. (“Plaintiff”) filed a suit [CS (COMM) 912/2022] (“said suit”) before the Hon’ble Delhi High Court (“Hon’ble Court”) being aggrieved by the (1) use of the mark and name ‘Angsana Thai Spa’/ by the Defendant No.1, Mr. Venkatesh being the sole proprietor of the spa, (2) registration and/or use of the domain name ‘’ (“impugned domain name”) by the Defendant No.2, Mr. Umesh Kumar and (3) seeking direction / ordering the Defendant No.3, FastDomain Inc. being the domain name registrar, for transferring the impugned domain name to the Plaintiff. The Hon’ble Court granted ex-parte ad interim injunction vide order dated 23 rd December, 2022 (“said ex-parte order”) restraining the Defendant Nos.1 and 2 from using the trade mark ANGSANA THAI SPA or any other mark which is identical or deceptively similar to the same in any manner whatsoever and directed the Defendant No.3 to lock, block, suspend the impugned domain name during the pendency of the said suit and inform the Plaintiff when the impugned domain name is set to expire.

After the said ex-parte order, the Defendants were repeatedly issued notice and on 2 nd May, 2023, the Hon’ble Court confirmed the said ex-parte order till the final adjudication of the said suit, whilst also recording that the Defendant Nos.1 and 2 were deemed to be served. Thereafter, on 18 th August, 2023, due to none appearance of the Defendants, the Hon’ble Court proceeded against the Defendants ex-parte in terms of Order IX Rule 6(a) of the Code of Civil Procedure, 1908 (“CPC”). Accordingly, on 1 st December, 2023, the Plaintiff filed an application [I.A. 15523/2023] under Order XIII-A and Order VIII Rule 10 of CPC (“said application”) seeking summary judgment, given that the Defendants did not appear nor filed written statements despite being served.

The Hon’ble Court was of the view that the perusal of the rival trade marks / labels leaves no manner of doubt that the Defendants are using an identical mark / name for identical goods/services and if such unauthorized use is permitted, the same would result in severe erosion of the Plaintiff’s goodwill, apart from violation of the Plaintiff’s statutory and common law rights in the mark ‘ANGSANA’. Further, given that the mark/name, services and class of customers being identical, the Hon’ble Court was of the view that this is a case of triple identity as per test of ‘triple identity’ laid down in Ahmed Oomerbhoy v. Gautam Tank (2007 SCC OnLine Del 1685).

Considering the following decisions, i.e., Aktiebolaget Volvo v. Volvo White Paints Industries [MANU/DE/0593/2023] [2023 (94) PTC 267(Del)], Deere and Company v. Jitender Kumar Gaur [MANU/DE/4774/2022] (296 (2023) DLT 73, Ebay Inc. v. Mohd. Waseem T/AS Shopibay [MANU/DE/5498/2022] 2022/DHC /004918 and Su-Kam Power Systems Ltd v. Kunwer Sachdev (2019 SCC OnLine Del 10764) and M/s Inter Ikea Systems BV v. Imtiaz Ahamed & Anr [Judgment dated 9th September, 2016, CS (OS) 3295/2014], the Hon’ble Court was of the of the view that this is a fit case for grant of a decree of permanent injunction in favour of the Plaintiff against the Defendants in terms of Order XIII-A of CPC as amended by Commercial Courts Act, 2015 read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 and given that there were no written statements, despite service, the Court is empowered to pass a judgement in terms of Order VIII Rule 10 of CPC.

Accordingly, the Hon’ble Court passed a decree in favour of the Plaintiff and directed that the Defendants / Just Dial shall remove ‘Angsana Thai Spa’ listing of the Defendants and if not removed, the Plaintiff is free to inform Just Dial about the present order and seek removal of the same. Further, being a commercial suit, the Hon’ble Court was of the view that actual costs in terms of the Commercial Courts Act, 2015 read with Delhi High Court Intellectual Property Rights Division Rules, 2022 would be liable to be awarded in favour of the Plaintiff, as the adoption of the mark ‘ANGSANA’ for spa and hotel services is not just illegal, but also dishonest, as an identical mark to that of the Plaintiff’s mark has been adopted for identical services and that the clear intention of the Defendants is to ride on the Plaintiff’s reputation. Accordingly, in terms of the judgment of the Hon’ble Supreme Court in Uflex Ltd. v. Government of Tamil Nadu [Civil Appeal Nos.4862-4863 of 2021, the Hon’ble Court awarded actual costs of Rs.12,82,580/- in favour of the Plaintiff as per the cost statement placed on record. Further, the Defendant No.3 was directed / order to transfer the impugned domain name to the Plaintiff.