Starwood Hotels & Resorts Worldwide Inc. vs Assistant Registrar Of Trade Marks

JUDGMENTTAG-JUDGMENT

Manmohan Singh, J

The present appeal under Section 91 of the Trade Marks Act, 1999 has been filed against the refusal order No/TLA/1519 dated 03 July 2013 and the grounds of decision vide official communication No. TLA 1768 dated 24 August 2013 received on 30 August 2013 issued by the Assistant Registrar of Trade Marks rejecting the Appellant's trade mark PREFERRED GUEST registration No. 1254305 in Class 43 under Section 9 and 11 of the Act.

It is true that the conflicting marks referred in the examiner report is only GUEST which is admittedly not registrable for providing the sendee to the guest of the hotels.

The appellant is a company based out of United States of America and is one of the largest companies operating in the field of manufacturing and marketing of, "Accommodation bureau (hotels), rental of temporary accommodations, temporary accommodation reservations, bar sendees, cafes, cafeterias, food and drink catering, sought. Therefore the word performed is inherently distinctive and not specifically descriptive in nature or having any direct reference to the character or quality of goods for which it is used.

The mark PREFERRED GUEST (word mark) has been used for several years across the world and owing to such wide scale use the trade mark has acquired distinctiveness which is exclusively associated with the appellant. It has been used in India since 1999 and has been used in chain hotels in India such as SHERATON, Le Meridien, ALOFT, WESTIN etc.

The trade mark "PREFERRED GUEST" (word mark) has been applied by the appellant or its group company and is registered or is pending registration in various countries. The details relating to the same are filed as Annexure F. The registration obtained in over 90 countries established that the appellant's mark is inherently distinctive and capable of distinguishing the services of the appellant.

The trade mark "PREFERRED GUEST" (word mark) is clearly visible in the website belonging to the applicant www.starwood.com and www.spg.com. Pages from the website are filed as Annexure G.

The respondent also failed to consider that the appellant herein holds a prior registration in relation to the subject trademark "PREFERRED GUEST" (word mark) in class 16 where the same mark has been found distinctive and competent for registration.

The appellant submits that by reason of use and by reason of the quality of the said sendees provided by the appellant, the subject trademark has come to be well known and is identified with the appellant and the appellant alone. Hence, the subject trade mark has thus acquired distinctiveness due to its continuous and extensive use.

There is a force in the submissions of the counsel for the appellant that the respondent has not taken all the above fact into consideration.

The learned counsel for the appellant on the last date of hearing made his submission and today when the matter is taken up he has filed the Miscellaneous Petition to disclaimer the word GUEST from the subject matter of trade mark PREFERRED GUEST along with the petition has also been filed. In view of the facts and circumstances of the case, we allow the appeal by set-aside the impugned order subject to the condition that the mark applied for PREFERRED GUEST will be advertised in the Trade Mark Journal with the disclaimer of the word GUEST. The respondent will proceed further with application as per rules.