A.S. Bopanna, J:
1. The appellant herein is the defendant in O.S. No. 25852/2011 while the respondent herein is the plaintiff. The parties would be referred to in their rank as in the suit for the purpose of convenience and clarity.
2. In the suit filed by the plaintiff alleging that the defendant is infringing the plaintiff's Trade Mark No. 1485593 comprising the word "Southindies" with the device of "Jharni" by using a deceptively similar word "South Thindis" with the device `Jharni', the plaintiff has sought for injunction against infringement and passing off the plaintiff's mark by the defendant. The plaintiff has also sought for the consequential relief of mandatory injunction and damages. In aid of the main relief, the plaintiff filed I.A. No. 1 under Order 39, Rules 1 and 2 of C.P.C. seeking for temporary injunction pending disposal of the suit. The Court below, after considering the application has by its order dated 31.10.2011 granted the order and restrained the defendant from using the trade mark "South Thindis". The defendant, therefore, claiming to be aggrieved by the said order has preferred this appeal.
3. Sri Harikrishna Holla, learned counsel for the defendant while assailing the order of the Court below would contend that the learned Trial Judge has not appreciated the matter in its correct perspective and has confused the issue. The name adopted by the defendant has reference to the dishes of the region, namely South India and as such, the same is saved under Section 35 of the Trade Marks Act, 1999 (hereinafter referred as `TM Act'). The name of the defendant's hotel indicates that it caters eatables of Southern region and, therefore, it is called as `South Thindis'. In view of the provision in Section 35 of the TM Act, the plaintiff cannot prevent the defendant from using the name even if the plaintiff is the owner of a similar registered Trade Mark. It is his contention that the mark of the plaintiff and defendant are not pictorially similar and as such, there is no infringement. The plaintiff, at best can allege passing off, but the same is not prima facie established by the plaintiff. In that regard, the plaintiff has not gained reputation by long user since the business commenced by the plaintiff is only as recent as in the year 2007 though it has been wrongly stated as 2006 in the application for registration. Hence, the question of the defendant riding on the reputation and passing off does not arise. The write up in the print media is subsequent to the date of filing the suit and as such, it cannot be a material in support of the reputation of the plaintiff. The name adopted by the plaintiff is a generic name and as such cannot claim exclusive right to use the same. There is no material to indicate that there is deception in the use of the name by the defendant. In any event, the class of customers of the plaintiff and defendant are different and as such, there would be no confusion. In this regard, reference is made to the menu card to indicate the vast difference in price of each dish in the plaintiff's restaurant as against that of the defendant. Hence, the customers would not be misled. Even if the plaintiff's case is accepted, the right to seek for injunction is defeated due to the conduct of acquiescence. Though notice was issued in the year 2009, the suit was not filed for two years. A person who sits by and watches the right being invaded cannot thereafter complain. It is, therefore, contended that order of the Court below is liable to be set aside and the injunction should be vacated.
4. Ms. Jayna Kothari, learned counsel for the plaintiff would, however, seek to sustain the order passed by the Court below. It is contended that the Court below after referring to all the materials was convinced that defendant had deceptively used a similar mark as that of plaintiff's mark. It is contended that the plaintiff's mark has been adopted in a particular get up as a single word `Southindies' with the device `Jharni' being placed in the position of `O' after working on the same with expert guidance. The defendants have deliberately used the word `South' and Thindis' to make it appear similar. Merely because an extra Th' is used by indicating two separate words, it cannot be considered as different as the pronunciation would be phonetically similar. The use of the device `Jharni' in a prominent manner with the word "South Thindis" would indicate that it is a case of infringement and there is statutory bar. Under Section 29 of the TM Act, it would lead to infringement even if a deceptively similar mark is used. The plaintiff being in hospitality business and with an intention of providing fine dining restaurants for authentic South Indian dishes from the four southern States have worked from the year 2006 on building a reputation, though the mark was registered in the year 2007. The word "Southindies" was coined by engaging consultants and incurring huge expenses. The articles written about the plaintiff's restaurant are all prior to suit. In addition, the plaintiff has spent substantial amount on advertisement in the newspaper, magazines and even over the radio. Thus having built a reputation, the plaintiff has opened branches including the one known as `upsouth' being a venture of `Southindies' in Jayanagar, the vicinity wherein the defendant is located. The difference in price of the dish cannot be a criteria to contend that the customer would not be misled. On the other hand, if it is made cheaper and good food is not served, the reputation of the plaintiff would be effected, if a customer of imperfect recollection is unable to distinguish. The question of acquiescence does not arise as the period contemplated under Section 33 of the TM Act has not elapsed. In any event, the plaintiff did not sit by and watch. When the defendant started the business in 2009 itself, the notice has been issued. The defendant should have been prudent and discontinued at that stage, but when the plaintiff realised about the dishonest intention of the defendant to continue and have the mark registered, the plaintiff has filed the suit. The Court below has considered all aspects and has arrived at its conclusion and as such the same does not call for interference is her contention.
5. The decisions relied upon by the learned counsel for both the parties in support of their contention would be referred at the appropriate stage depending on its relevance.
6. In the light of the rival contentions, it is seen that `mark' is defined in Section 2(m) of the TM Act. In that context, the plaintiff has adopted the word "Southindies" with the device "Jharni" as its mark. Due to its circular form, the "Jharni' is representing the alphabet "O" in the word "Southindies". The plaintiff has accordingly secured registration of the said Trade Mark and the certificate issued by the Trade Mark Registry would indicate that it has been assigned the Trade Mark No. 1485593 in class 42 as of 8.9.2006. As against the registered Trade Mark of the plaintiff, the defendant has adopted its mark as "South Thindis". Though in the pictorial representation, the word is surrounded by different types of cooking vessels, the said word "South Thindis" is written both in Kannada and English and the device "Jharni" is prominently displayed in between the said Kannada and English writing. Thus keeping in view the phonetic similarity of the words and the overall representation, the suit in question would qualify as a suit against infringement, and consequent passing off and not a simple suit against passing off. Therefore, the matter would have to be considered in that background.
7. In that regard, the contention on behalf of defendant is that notwithstanding the registration of the trade mark, considering that the word "South" has been used by the defendant to depict that the delicacies of the southern region would be served, the same is saved under Section 35 of the TM Act. The said contention in my view would not assist the defendant. A perusal of Section 35 would indicate that such entitlement is somewhat specific and the saving is when such use is bona fide. In the instant case, as noticed, the defendant has employed the word "south" in English language and the word "Thindis" in vernacular and the combined reading of the words would give a phonetically similar expression as that of the Trade name adopted by the plaintiff. That apart, as noticed, even in the pictorial representation the device "Jharni" which is the essence of the Trade Mark of the plaintiff has been prominently used by the defendant. The case of the defendant in any event is not that of a prior user to that of the date of registration or the commencement of the business by the plaintiff.
8. In fact, alongwith the additional documents which is sought to be produced before this Court by the defendant themselves, a leaflet advertising that half glass Dakshin Chaai would be served at Rs. 4/- only is produced to emphasise that it is all about south. In my opinion, it raises more questions, than it answers. Firstly, if it was a bona fide adoption of the name and when the defendant had used the vernacular "Thindis", the depiction of the region could have been `Dakshin' which would not have had phonetic similarity to the mark of the plaintiff. Secondly, the said leaflet contains the name as "South Thindis" and the pictorial representation of the device `Jharni' is placed across the name. Similarly the menu card placed next to the said leaflet would prominently display the picture of `Jharni'. In such circumstance, the reference to the search report to contend that the same would indicate that several marks with reference to region have been adopted and registered is of no consequence when the deceptive similarity has been noticed in the instant case in appreciation of the rival contentions. If the defendant has any grievance with regard to the registration despite a regional name being used by the plaintiff, they should follow the appropriate procedure since it is beyond the scope of instant proceedings. However, in the backdrop of the above discussion, the provision in Section 35 of the TM Act would not save the defendant. It is necessary to recall that this view of mine has a precedent inasmuch as I had taken a similar view in the case of N.K. Adigas Abhiruchi v. Adiga's Fast Food, (M.F.A. No. 11075/2006 decided on 28.8.2007).
9. In extension of the above noticed argument, the learned counsel for the defendant has relied on the decision in the case of SBL Ltd v. Himalaya Drug Co., 1997 PTC 17 (Delhi); in the case of Three-N-Products (P) Ltd. v. Pardesi General Store and others, 2000 PTC 489; in the case of Asian Paints Limited v. Home Solutions Retail (India) Limited, 2007 (35) PTC 697 (Bom) and in the case of Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd., 1946 (1) All ER 320 to contend that the use of generic names does not amount to infringement or passing off. In the case of SBL Ltd. the issue related to `Liv 52' and `Liv T' which were in dispute. It has been held that when generic word or publici juris expression is used, it has to be tested in the surrounding circumstances and what would remain in the memory of the customer. In that circumstance, keeping in view that the product is for treatment of a part of the body, it is opined that the doctor or the chemist being professional would not confuse one for the other. In the case of Three-N-Products (P) Ltd., the issue related to `Ayur Dia Slim Tumbler' and `Ayurslim Capsule' and in a passing off action, to find out as to whether one would be mistaken for the other, the trade dress and colour scheme was examined and in the facts therein, it was held that there was no passing off. In the case of Asian Paints Ltd., the trade names were `Asian Paints Home Solutions' and `Home Town' of `Home Solutions Retail (India) Ltd.', it was held that the word is descriptive of service. Similar is the view in Office Cleaning Services Ltd. case.
10. 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.
11. The learned counsel for the plaintiff has on the other hand relied on the decisions in the case of Amaravathi Enterprises v. Karaikudi Chettinadu, 2008 (36) PTC 688 Mad-DB; in the case of Wagamama Ltd. v. City Centre Restaurants PLC, 1995 FSR 713 (Ch. D) Eng. and in the case of International Coffee and Tea, LLC v. Sanjay L. Mansukhani (CS (OS) 1842/2006 D/- 7.7.2008-Del). 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 `Kaaraikudi 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 juris, 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 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 favour 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.
12. The decision relied upon by the learned counsel for the defendant as decided in the case of Hindustan Sanitary ware and Industries Ltd. v. Champion Ceramic, 2011 (45) PTC 260 Del. to contend that the difference in price of product of the plaintiff and defendant has to be kept in view, is also of no assistance in the instant case. 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 circumstance, if a customer either by chance or by choice visits the defendant's restaurant and 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 assume 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 effected though there is difference in price. Hence, the same cannot be a criteria in all cases.
13. In the instant case, the material produced by the plaintiff would indicate that conscious efforts have been made to popularise their mark from the year 2006 and huge amount has been spent on professionals to design the mark 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 have 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.
14. 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. v. 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 mark `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, (1972) 1 SCC 618 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.
15. 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. v. Arvindbhai Rambhai Patel and others, (2006) 8 SCC 726 : 2006 (33) PTC 281 (SC). 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 v. Royal Orchid Hotels and another, (2011) 47 PTC 111 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 mark, 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.
16. 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 mark. 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.
17. While considering the irreparable injury and balance of convenience for grant of injunction in the case of N.K. Adigas Abiruchi (supra), I had ob
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served as hereunder: "14. 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 in a normal circumstances." The said position would be relevant in the instant case as well. 18. 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 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 conclusion reached herein shall not bind the Trial Court while deciding the main matter on its merits. The appeal is accordingly dismissed. Parties to bear their own costs.