Challenge to injunction – Trademark Registration in Cochin

Challenge to injunction 

Section 29 and 35 of the Trademarks Act, 1999 mentions the challenge to injunction of Trademark. As against the facts in the above referred decisions, in the instant case though the word ‘South’ is used, I have already discussed in detail about the manner in which it has been employed. Keeping in view the nature of business where it would acquire a reputation either good or bad, by word of mouth from persons who have visited or heard about the restaurant, the similarity in the name would make all the difference. It is not as if the defendant’s hotel has a different name and below such name, it is stated that South Indian dishes would be served so as to contend that a generic name is used in a descriptive manner of what is being served. Hence, the said decisions are not of assistance to the defendant.

injunction

The learned counsel for the plaintiff has on the other hand relied on the decisions in the case of Amaravathi Enterprises Chettinadu, 2008 in the case of Wagamama Ltd versus City Center Restaurants and in the case of international Coffee and Tea, LLC versus Sanjay L.Mansukhani. All the decisions relate to the hotel business. In the case of Amaravathi Enterprises, the defendant had adopted the name ‘Karaikudi Chettinadu Restaurant’ as against plaintiff’s registered mark ‘Karaikudi Chettinad Restaurant’. Though the defendant therein had urged the similar contention as raised in the instant case with regard to ‘Karaikudi’ and ‘Chettinad’ having become public juries, representing its surroundings and style of cuisine and was being used by all persons in the trade in geographical sense and in addition, though prior use was also contended, the Division Bench has not accepted the same. Hence, injunction was granted. In the case of Wagamama Ltd., the English Court granted trademark injunction in a circumstance where the defendant was using the mark Rajamama’, on considering the nature of reputation that would be gained in the hotel industry. International Coffee and Tea, LLC of course is a case where the defendant had adopted the very identical mark The Coffee Bean and the Tea Leaf which was registered in favor of the plaintiff and the defendant did not attempt to defend. Considering the nature of business being carried on by the plaintiff and defendant herein and the discussion made above, I am of the opinion that the said decisions are apt to be relied upon in the instant case. In addition, I have also taken a similar view in N.K. Adiga’s Abhiruchi case referred supra.

The decision relied upon by the learned counsel for the defendant as decided in the case of Hindustan Sanitary ware and Industries Ltd., versus Champion Ceramic, to contend that the difference in price of product of the plaintiff and defendant of the trademark has to be kept in view, is also of no assistance in the instant ease. In that case, the product is sanitary ware and the class of customers cannot be treated akin to customers who would visit restaurant and eating places and carry an impression of the food served and the place. While buying sanitary ware a customer would certainly make a market survey and also would take guidance of other persons. In fact a similar contention with regard to the difference in clientele and cost was rejected in the case of Wagamama (supra) when it was considered in the background of hotel industry where reputation matters. In my opinion, in a case where the price is lower in the defendant’s restaurant, it is even worse. In such situation, a customer who can afford the cost in plaintiff’s restaurant being higher would certainly be able to afford the cost in the defendant’s restaurant. In such circumstances, if a customer either by chance or by choice via it’s the defendant’s restaurant or carries a bad impression, he is not likely to visit the plaintiff’s restaurant, since being a person of imperfect recollection he is likely to a that the plaintiff’s restaurant is a branch of the one he had visited earlier which did not impress him and is likely to spread the word among his peers. Therefore, even in such circumstance, the business would be affected though there is difference in price. Hence, the sane cannot be criteria in all cases. In the instant case, the material produced by the plaintiff would indicate that conscious efforts have been made to popularize their mark from the year 2006 and huge amount has been spent on professionals to design the trademark and advertise the same. There are several articles written about the plaintiff’s restaurant in the newspaper during the period before the defendant commenced the business. The plaintiff has also issued advertisements in newspapers, magazines and radio for which substantial amounts have been spent. Hence, the reputation built by the plaintiff cannot be allowed to be damaged by the defendant nor can the defendant be allowed to ride on the reputation of the plaintiff.

The learned counsel for the defendant, however, relied on a decision of this Court in the case of M/s. Apna Car Co. Pvt. Ltd. versus M/s. Automart India Ltd., (M.F.A. No.1322/2008 decided on 30.9.2011) to contend that even though ‘First Choice’, the mark of plaintiff was used by the defendant, an order of injunction was refused and as such, in the instant case also similar yardstick should be applied. Having perused the judgment, it is seen that it was not a case of infringement and the trademark ‘First Choice’ was not registered. Secondly, the defendant was using the same mark for a long period across the country and several advertisements had been issued and the business was that of selling used cars where the customer would not be misled inasmuch as he would have the right to step in and out without buying and what they would be offered is the used cars manufactured by leading automobile companies. The decision, therefore, is not of assistance. In fact, the decision of the Hon’ble Supreme Court, in the case of Parle Products (P) Ltd, v. J.P. and Co., Mysore, though cited by the learned counsel for the defendant would be more relevant to apply the test laid down therein. On applying the test, in the instant facts, the overall representation as discussed above would indicate deceptive similarity so as to cause infringement and passing off.

trademark

It is next contended by the learned counsel for the defendant that even if the plaintiff satisfies all other requirements, they are guilty of acquiescence and in this regard has relied upon the decision of the Hon’ble Supreme Court in the case of Ramdev Food Products (P) Ltd. versus Arvindbhai Rambhai Patel and others. In the said decision, the Hon’ble Supreme Court has reiterated the principle that acquiescence is a conduct of sitting by when another is invading the rights and spending money on it. However, such conduct would have to be examined on the facts of each case. In that case, though there was time gap between the notice and legal action, it was held by the Hon’ble Supreme Court that there is no acquiescence. The decision in the case of Kamat Hotels (India) Limited versus Royal Orchid Hotels and another, Bom is also of no assistance to the defendant. Though in the said case there was no injunction against the hotels which had already been started by the defendant and were only restrained from opening new branches in the same name and trademark, the same was in a circumstance that there was material on record to show the huge investment made by the defendant over the years and there was reference to the predecessors in business having adopted the mark etc. Hence, the fact as to whether the conduct amounts to acquiescence would depend on the facts of each case.

In the instant case, it is not in dispute that the defendant had started their restaurant in the year 2009. The plaintiff had issued the legal notice on 18.6.2009 and a reply was issued by the defendant on 20.6.2009. Though there was no immediate action, the plaintiff has once again issued the notice dated 17.2.2011 which indicates that the intention of the defendant in proceeding further had now become evident as they have applied for registration of the trademark. In that view, on once again receiving the reply, the plaintiff has instituted the suit. Though the plaintiff has not moved at a great speed, the conduct does not qualify to be termed as one of acquiescence.

While considering the irreparable injury and balance of convenience for grant of injunction in the case of N.K. Adigas Abiruchi (supra), I had observed as here under: ” In any event, in a matter of this nature, it would ultimately be difficult to assess the damage that may be suffered by the plaintiff since if at all the defendant adapting the similar trade name as that of the plaintiff does not provide tasty and proper service of food articles, the same would also affect the business of the plaintiff wherever they are carrying on since the same would spread by word of mouth and such a loss cannot be quantified. Further on the other hand if the defendant makes a profit by taking advantage of the name of the plaintiff, that portion of the gain made by the defendant cannot be assessed in a case of this nature. While considering this aspect and if the convenience of the defendant is also looked into, in a business of this nature where food articles are prepared and supplied, since the defendants have started the outlet only in the year 2006 preventing the defendant from using the name does not mean stopping of their business, but only forcing them to change the name of the outlet which would mean that they would be entitled to continue with the very same business. But with a different name which would not infringe the plaintiff’s name. Their success or otherwise in the business would depend on the quality of the food stuff they would provide and the same need not depend on the name they have adapted for their business. Even from this angle, there would be no inconvenience or loss that would be caused to the defendants and as such the said aspects do not require a detailed consideration in the nature which is made while grant of temporary injunction of the trademark in a normal circumstances.” The said position would be relevant in the instant case as well.

In view of the discussions made above, a perusal of the order dated 31.10.2011 passed by the learned Trial Judge which is impugned herein has taken into consideration, the relevant aspects in a case of the present nature and granted the trademark injunction. The same, therefore, does not call for interference in the limited scope available in an appeal of the present nature. However, any of the conclusions reached herein shall not bind the Trial Court while deciding the main matter on its merits.

For Trademark Registration in Cochin -> Click here

Leave a Reply