JUDGMENT: INDEX A. OVERVIEW.............................................................................................................3 B. FACTS......................................................................................................................6 C. ISSUES, SUBMISSIONS & FINDINGS.................................................................9 C1. Infringement...........................................................................................................10 C2. Passing Off.............................................................................................................33 D. THE DEFENDANT’S WRITTEN ARGUMENTS................................................43 E. DELAY AND BALANCE OF CONVENIENCE...................................................46 F. FINAL ORDER AND CONCLUSION...................................................................49 A. OVERVIEW 1. In a narrow lane, one of three that branches off to the east from the roundabout at Maheshwari Udyan in Mumbai’s central area of Matunga, there stands an unassuming eatery. A few steps lead into it. The space is not large: a few tables at the entry level with the proprietor at a high seat at the counter to the right of the entrance. Opposite the entrance is the kitchen with its serving hatches. A steep staircase to the left leads to a low-ceilinged mezzanine floor. Here, the space is even more cramped. On both levels, patrons share tables: large groups or families may spread across several tables and a solitary diner may find himself rubbing elbows with a complete stranger. This is Café Madras, the South Indian — or, more accurately, Udipi cuisine — specialty sit-down restaurant owned and managed by the Plaintiffs (“the Kamaths”), and it is both popular and renowned. Over time, it has acquired, say the Kamaths, a reputation non-pareil: the Kamaths pride themselves on the quality of their fare, traditional and authentic they say in every aspect, and the cleanliness of their kitchen. It is by no means a five-star establishment, and has no such pretensions. There is no fancy dinnerware (everyone has clean stainless steel) or table linen (paper napkins must do), but the service is quick and the food arrives fresh and there are long lines at its door every morning. The restaurant caters to all, from the well-heeled and wealthy to the decidedly middle class, with undifferentiated courtesy and efficiency. To be sure there are many other similar eating houses in the vicinity and elsewhere in Mumbai, but theirs, the Kamaths claim, stands apart. It is, they say, iconic. 2. The Kamaths claim to be the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42. These registrations are valid and subsisting, without any application for rectification. The Kamaths have used these marks openly, continuously and extensively since 1951, generating considerable goodwill and a high reputation. 3. The Defendant, the Kamaths say, has copied the registered marks body and soul. These registrations are valid and subsisting, without any application for rectification. The Kamaths have used these marks openly, continuously and extensively since 1951, generating considerable goodwill and a high reputation. 3. The Defendant, the Kamaths say, has copied the registered marks body and soul. The Defendant’s adoption is fraudulent and dishonest and it is used in relation to eateries serving South Indian cuisine though at locations in Jalgaon and Nashik. Importantly, there was a horrific incident at one of those locations, one that caused demonstrable damage to the reputation and the goodwill of the Kamaths’ marks. 4. The Defendant claims, in its various affidavits, that ‘Café Madras’ is incapable of registration; that the Defendant’s use is not in Classes 16 or 42; that there are several other establishments across India with the same name; that the Plaintiffs’ claim of goodwill is not borne out by its sales; that this goodwill is, in any case, geographically limited and the Defendant’s use in places several hundred kilometres away can have no possible diluting effect on and can cause no possible confusion with the Plaintiffs’ use of the expression; and that the Plaintiffs cannot enforce their rights in view of Sections 18 and 28 of the Trade Marks Act, 1999. There is, the Defendant says, no question of any relief being granted to the Plaintiff. 5. Specifically, the Defendant’s case is that what the Kamaths have registered is a device, one markedly different from the one on which the action is brought. In any case, neither ‘Cafe’ nor ‘Madras’ are registrable; and the combination is not registrable either. Far from having acquired any ‘secondary’ meaning, even the combination connotes, in the context of an eating house, a certain type of cuisine. There are a very large number of such eating houses with this name, the Defendant claims, and the Kamaths have not thought it fit to move against any of those. Taken together, the two words are therefore a purely descriptive and not a distinctive expression; and given the spread of use, it is a generic term for a restaurant or eating house that serves South Indian cuisine. There is no case made out of infringement, because there is nothing to infringe. Taken together, the two words are therefore a purely descriptive and not a distinctive expression; and given the spread of use, it is a generic term for a restaurant or eating house that serves South Indian cuisine. There is no case made out of infringement, because there is nothing to infringe. There is also, the Defendant says, no case of passing off because the three-fold or ‘Trinity’ test is not satisfied: there is no representation, let alone a misrepresentation, by the Defendant that its establishments are in any way connected with the Kamaths’. In the areas where the Defendant has its establishment, it enjoys a reputation and a goodwill of its own. The Kamaths have none there. The Kamaths’ reputation, if indeed they have one, is territorially and geographically restricted and extends no further than their vicinity or perhaps, at best, Mumbai. 6. I have heard Mr. Dhond, learned Senior Counsel for the Plaintiffs and Mr. Ajatshatru, learned Counsel for the Defendant extensively. With their assistance, I have considered the material on record. I have also studied their comprehensive written notes of arguments. I am not persuaded that the defence is either tenable or just. I have held that, prima facie, the material on record is sufficient to warrant reliefs on both causes of action, i.e., of infringement and passing off. The Defendant’s adoption of the mark is not bona fide. I have also found that the Plaintiffs’ reputation and goodwill are not geographically and territorially limited in the manner the Defendant suggests. I have also found the Defendant’s mark to be deceptively and confusingly similar to that of the Plaintiffs. Finally, I have also found that the Plaintiffs have established not just the possibility or likelihood of confusion or deception on their cause of action in passing off, but actual confusion and deception. I have, therefore, held in favour of the Plaintiffs. My reasons follow. B. FACTS 7. In 1951, Gopal Purshottam Kamath (the 1st and 2nd Plaintiffs’ father) began using the mark ‘Café Madras’ for his restaurant in Matunga. On 29th December 1968, Gopal and his elder son, the 1st Plaintiff, Jagdish Kamath, entered into a partnership called M/s Café Madras. The mark was brought into that partnership. Ten years later, on 20th July 1978, the 6th Plaintiff partnership firm was formed. On 29th December 1968, Gopal and his elder son, the 1st Plaintiff, Jagdish Kamath, entered into a partnership called M/s Café Madras. The mark was brought into that partnership. Ten years later, on 20th July 1978, the 6th Plaintiff partnership firm was formed. It took over the business of Café Madras and, too, that of another partnership firm, Gopal krishna Hindu Hotel. From 1978 onwards, the 6th Plaintiff was periodically reconstituted. The last of these changes was in 2011, when it became a partnership of Plaintiffs Nos. 1 to 5. 8. On 27th February 2009, the Kamaths obtained registration effective from 13th October 2005 of the mark ‘Café Madras’ in Class 42. A separate registration was also obtained, effective the same date, in Class 16, Class 43, relating to ‘services’, was unavailable at that time. These registrations (Nos. 1390976 and 1390977 at pages 30 and 31 of the Plaint) were subject to a solitary condition and limitation: no exclusivity was conferred for the use of the word ‘Madras’. Legal certificates in respect of these registrations are on file at pages 93 to 96 of the Plaint. Registration was sought and obtained on the basis that the mark ‘Café Madras’ had acquired distinctiveness on account of user from 1951 to 2005. A user affidavit was filed with the Trade Mark Registry to establish this. The Plaintiffs also sought and obtained registrations of this mark in as many as 27 countries and the European Union. 9. Exhibit “E” to the plaint at page 37 is a certificate by the Plaintiffs’ Chartered Accountants attesting to their sales for the period 2003 to 2012. These are indeed substantial. The turnover for the year 2012 is nearly Rs. 1 crore. Advertising figures are insignificant but I believe this works to the Plaintiffs’ advantage rather than against them, for the exhibits that follow, from Exhibit F at page 38 to Exhibit F-8 at page 47, show that the Plaintiffs’ reputation and goodwill were both considerable and firmly established. There are, in those annexures, repeated narratives of the excellence of the Plaintiffs’ ‘South Indian Tiffin’ and attentive service. The eatery has won a large number of awards. There are, in the Affidavit in Rejoinder additional clippings and materials, including from Gordon Ramsay, the internationally renowned chef, extolling the quality of the Plaintiffs’ food and service. There are, in those annexures, repeated narratives of the excellence of the Plaintiffs’ ‘South Indian Tiffin’ and attentive service. The eatery has won a large number of awards. There are, in the Affidavit in Rejoinder additional clippings and materials, including from Gordon Ramsay, the internationally renowned chef, extolling the quality of the Plaintiffs’ food and service. There are also endorsements and encomiums from well-known personalities in entertainment, cinema and industry. The material is not limited to print either, but also extends to other media. 10. The Defendant claims to have started a restaurant in Jalgaon with the name Café Madras in 2004. There is little to support the assertion of this date. Sales and promotional expenses are shown, but from 2006-2007. These are also disputed. 11. The Plaintiffs claim that they learned of the Defendant’s use of the mark Café Madras in 2012. On 11th June 2012, the Plaintiffs filed an application to amend the class of services for which their mark was registered. 12. On 21st June 2012, the Plaintiffs’ Advocates sent a cease-and-desist notice to the Defendant. The Defendant replied on 29th June 2012, essentially seeking information and details. It seems that it was only thereafter, on 10th July 2012, that the Defendant applied for registration of the mark Café Madras. This application has a direct legal consequence on the issue of whether the mark is distinctive or descriptive; I will turn to this subsequently. 13. On 16th July 2012, the Plaintiffs sent a further cease-and-desist notice to the Defendant, which replied on 23rd July 2012. This was followed, till 25th September 2012, by further correspondence between the advocates for both sides. The Plaintiffs claim that they learned in September 2012 that the Defendant had opened a second restaurant named Café Madras in Nashik. 14. The present suit was filed on 6th December 2012. The Plaintiffs sought leave under Clause XII of the Letters Patent. This was contested. Leave was ultimately granted by a detailed judgment dated 22nd April 2013, Jagdish Gopal Kamath v Lime & Chilli Hospitality Services P. Ltd., 2014 (3) Bom. CR 446 : 2013 (4) Mh LJ 627. This Notice of Motion was also filed on 6th December 2012. The Defendant filed an Affidavit in Reply in that month, claiming user from 2004-2005. However, only sales figures were given and that, too, only from 2006-2007. CR 446 : 2013 (4) Mh LJ 627. This Notice of Motion was also filed on 6th December 2012. The Defendant filed an Affidavit in Reply in that month, claiming user from 2004-2005. However, only sales figures were given and that, too, only from 2006-2007. There is no evidence in that affidavit by way of invoices, promotional or advertising materials or third-party write-ups. C. ISSUES, SUBMISSIONS & FINDINGS 15. Although Mr. Ajatshatru’s arguments were restricted to the three or four key issues, his written notes of defence are very nearly encylcopedic and range much further afield, citing a very large number of decisions. Not all of these are germane, and some of the points canvassed in those written arguments are superfluous. While I have considered all the material presented, I have elected to focus only on such of those issues as appear to me to be necessary. 16. As I see it, the broad questions for determination are (i) whether the Plaintiffs have made out a sufficiently strong prima facie case on (a) their cause of action in infringement; (b) their cause of action in passing off; (ii) the nature and extent of the Plaintiffs’ reputation and goodwill; and (iii) whether the Defendant’s adoption of the mark is (a) bona fide or not, and (b) if not, whether that adoption is likely to prejudice or has actually prejudiced the Plaintiffs by dilution of the Plaintiffs’ mark or damage to the Plaintiffs’ reputation and goodwill, or both. These issues are closely interlinked, and each has its subsidiary issues. C1. Infringement 17. Mr. Dhond submits that the mark used by the Defendant, ‘Café Madras’ on a device of a banana leaf is identical or, at any rate, deceptively similar to, and therefore infringes, the Plaintiffs’ registered trade mark in classes 16 and 42. The essential feature of the two competing marks is the expression ‘Café Madras’. These are structurally, visually and phonetically identical; the differences, if any, are trivial and irrelevant. The essential and prominent feature, the one that lingers in memory, is the expression or term ‘Café Madras’. 18. It is, I believe, too well settled to require further discussion that in comparing rival marks one must look at the mark as a whole. Persons recall marks in generalities and by an overall recollection of an impression of it. The essential and prominent feature, the one that lingers in memory, is the expression or term ‘Café Madras’. 18. It is, I believe, too well settled to require further discussion that in comparing rival marks one must look at the mark as a whole. Persons recall marks in generalities and by an overall recollection of an impression of it. We do not distinguish marks on the basis of niggling detail: whether a device or a mark uses, for instance, one feather or leaf or two, or whether a mark uses an accented letter or an apostrophe is hardly the matter that embeds in common memory. In an infringement action, the rival mark need not be an exact replica or clone. Trivial and non-distinctive matters — what one might describe as mere sideshows — do not sufficiently distinguish a competing mark, Rustom & Hornsby Ltd v Zamdara Engineering Co., AIR 1970 SC 1649 . General and overall impressions are everything, M/s Hiralal Prabhudas v Ganesh Trading Co. & Ors., 1984 PTC 155 (Bom); Amritdhara Pharmacy v Satyadeo Gupta, AIR 1963 SC 449 . The test is that of a persion of average intelligence and an imperfect memory, Corn Products Refining Co v Shangrila Food Products Ltd, AIR 1960 SC 142 . It is true that the Plaintiffs’ registration is subject to a condition or limitation vis-à-vis the word ‘Madras’. Yet that would make as good as no difference, for one must look at the mark in its entirety, Serum Institute of India v Green Signal Bio Pharma Pvt Ltd & Anr., 2011 (47) PTC (Bom); Pidilite Industries v S.M. Associates & Ors., 2004 (28) PTC 193 (Bom). 19. On this test, the Defendant’s mark would have to be held to be deceptively similar or identical to that of the Plaintiffs. There can be no doubt about the structural, visual and phonetic similarity between the two marks. 20. The Defendant has not challenged the Plaintiffs’ registration by way of a Rectification Petition at any time. I must note that during arugments, Mr. Ajatshatru accepted that the Defendant did not seek to re-open the Plaintiffs’ registration. He confined himself to the effects of that registration and the statutory defences available to him against it. 20. The Defendant has not challenged the Plaintiffs’ registration by way of a Rectification Petition at any time. I must note that during arugments, Mr. Ajatshatru accepted that the Defendant did not seek to re-open the Plaintiffs’ registration. He confined himself to the effects of that registration and the statutory defences available to him against it. It was not until the written arguments that this canvas was attempted to be widened by questioning the very registration itself, saying it was ‘weak’, ‘unenforceable’ and granted in respect of a descriptive and non-distinctive word. I will turn to these arguments presently. 21. Mr. Dhond’s argument that the Defendant cannot examine the validity of the Plaintiffs’ registration at the interlocutory stage is one that has now been decided by a Full Bench of this Court in Lupin Ltd v Johnson & Johnson, Judgment dated 23rd December 2014, Full Bench of Mohit S. Shah, CJ, S. J. Kathawalla and N. M. Jamdar, JJ; per Mohit S. Shah, CJ. The Full Bench rejected the view taken in Maxheal Pharmaceuticals v Shalina Laboratories Pvt. Ltd., Appeal No. 88 of 2005. itself based on the view in Hindustan Embroidery Mills v K. Ravindra & Co., 1967 (76) Bom.L.R. 146 that it is not the ‘practice’ of this Court to consider the validity of a registration at an interlocutory stage and that while the mark remains on the register, though wrongly, it is desirable that others not imitate it. The Full Bench held that where the registration of the trade mark is ex-facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse an injunction; but to establish these grounds, a very high degree of prima facie proof is required. It is open to a court to examine the validity of a registration for this limited purpose, and while there is no ‘embargo’ or any authority for any such ‘practice’, this examination is permissible in the exceptional situations mentioned earlier. Specifically, it is not sufficient for a defendant to show that he has a merely arguable case against the registration. He must show the registration to be illegal, fraudulent or one that sufficiently disturbs the judicial conscience to have it question the registration itself. Even if it does, the Court’s view is only prima facie; the registration can only be finally challenged in appropriate rectification proceedings before the Trade Marks Registry. 22. He must show the registration to be illegal, fraudulent or one that sufficiently disturbs the judicial conscience to have it question the registration itself. Even if it does, the Court’s view is only prima facie; the registration can only be finally challenged in appropriate rectification proceedings before the Trade Marks Registry. 22. As it happens, the Full Bench decision in Lupin does not detract from the strength of Mr. Dhond’s argument. If anything, it places that argument on a much surer footing. To brush aside Mr. Ajatshatru’s submission that the Plaintiffs’ registration is itself ‘improper’ or ‘weak’ on the ground of some ‘practice’ that the Full Bench now says is without foundation seems to me a most tenuous approach. Mr. Ajatshatru’s submission must more properly be tested against the parameters set by the Lupin Court: can the Plaintiffs’ registration be said to be illegal? Fraudulent? Such that leaves the judicial conscience both shaken and stirred ? I think not, and this is not even Mr. Ajatshatru’s case. Importantly, the Defendant has taken no steps whatever before the Registry or the Board to challenge the Plaintiffs’ registration. To question it at this stage is an argument of desperation. 23. What underlies Mr. Ajatshatru’s submission is this: first, that the Plaintiffs can have no monopoly in the expression ‘Café Madras’ because ‘Madras’ has been expressly disclaimed, and ‘Café’ is clearly and without need of further explanation so commonplace a word that no exclusivity attaches to it; and, second, that what the Plaintiffs have registered is only a device mark or a label mark and not a word mark at all. 24. To take the latter submission first: Mr. Ajatshatru submits that there is a distinction between a device mark, a word mark and a composite label mark. A word mark gets absolute protection. A device mark is restricted to its artistic depiction. A label or a composite mark gets both (the literary words and the artwork). The Plaintiffs’ registrations in Classes 16 and 42 are, Mr. Ajatshatru says, only of a device mark (the words Café Madras in italics in a device of a rectangular box), and that since this is something the Defendant does not use, there is no infringement. Factually, this is incorrect. To the Further Affidavit dated 28th February 2013 filed by the 3rd Plaintiff, there are annexed the legal proceedings certificates. Ajatshatru says, only of a device mark (the words Café Madras in italics in a device of a rectangular box), and that since this is something the Defendant does not use, there is no infringement. Factually, this is incorrect. To the Further Affidavit dated 28th February 2013 filed by the 3rd Plaintiff, there are annexed the legal proceedings certificates. These put the matter beyond the pale: the Plaintiffs’ registrations, on their applications in 2007 and 2009, are in respect of (i) the trade mark type: device; and (ii) the word mark: ‘Café Madras’. I do not think it is remotely possible for the Defendant to so wholly elide the plain contents of the legal proceedings certificates. Indeed, I must note that I found the Defendant’s constant ducking and weaving on this issue less than inspiring. First, they ignored the clear and unambiguous contents of the legal proceedings certificates. Then they contended that in 2004 the Plaintiffs applied for registration of the mark Café Madras (the word, per se) but withdrew that application. The Defendant next alleged that the Plaintiffs had applied only for a device mark; that this would be established from the Plaintiffs’ application for registration; and this application had not been disclosed. In a late affidavit dated 25th August 2014, the Plaintiffs did disclose their application, and it did not bear out the Defendant’s contention at all. Neither the application nor the Plaintiffs’ attorney’s covering letter in any way show that application to have been restricted to a ‘device’. Confronted with this, in its written arguments the Defendant now contends that since the application does not say it is for a ‘word mark’, this necessarily means that it is for a device mark; i.e., to suggest, by necessary implication, that a device mark is somehow the default application. This is an argument so entirely without substance that it only needs to be stated to be rejected. The application cannot be assumed to be of a device. If it was in respect of a device, it would have said so. The registration of a device mark is neither a presumption nor axiomatic. In all of this, the Defendant continues to overlook the fact that the Legal Proceedings Certificates quite unequivocally state the registration to be also of a word mark. 25. If it was in respect of a device, it would have said so. The registration of a device mark is neither a presumption nor axiomatic. In all of this, the Defendant continues to overlook the fact that the Legal Proceedings Certificates quite unequivocally state the registration to be also of a word mark. 25. But I will take the Defendant’s case at its best, and will assume that the Defendant is correct that the Plaintiffs’ registration is of a device mark. What of it? It is not enough merely to say, “here is a device; I do not use the device; therefore there is no infringement.” We must, of necessity, consider what is the essential, prominent and leading feature of that mark, by whatever name called (label, device, composite, word). Even if the Defendant’s case is to be accepted, there is nothing essential or prominent in that so-called device other than the words ‘Café Madras’. This is what is protected. It is no answer at all for the Defendant to say that it has used those very words but in some other stylization and, consequently, that there is no infringement. There is simply no basis for this in trade mark law; indeed, it defeats the statutory purpose and intent, for it would then be open hunting season on every single such registration: every infringer could then claim a different ‘style’ or ‘font’ or placement and thus dilute a mark duly registered, and which registration remains unchallenged. 26. Mr. Ajatshatru says that the Plaintiffs’ mark is a ‘compound’ or a ‘transferred epithet’, comprising a word that is subject to a limitation and another that is common to the trade, and that the Defendant therefore has available to it the benefit of Section 17(2) of the Trade Marks Act, 1999 (“the TM Act”). That section reads: 17. Effect of registration of parts of a mark.— (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark as a whole. That section reads: 17. Effect of registration of parts of a mark.— (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— (a) contains any part— (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. (Emphasis supplied) 27. I do not believe this to be a submission well-founded. Subsection (1) clearly demands that where a trade mark contains ‘several matters’, the exclusivity attaches to the mark ‘taken as a whole’. This expression must be given some meaning. If Mr. Ajatshatru’s interpretation is to be accepted, it would mean that Section 17(1) is wholly defeated by Section 17(2), and is rendered entirely otiose. Sub-section (2) operates in a distinctively defined arena. Where a person has registered a mark of multiple parts, he enjoys a monopoly of the entirety of that mark with all its parts ‘taken as a whole’. The registration of a mark with components does not give him rights over the individual integers in that mark unless those individual integers are separately registered (or applied for). Where the individual integers are non-distinctive and common to the trade, no rights accrue in the individual integers either (“the part of the whole”), but, by necessary implication, only in the aggregation of these. The fallacy in Mr. Ajatshatru’s submission is in filtering the ‘Café’ out of the decoction leaving only the disclaimed word ‘Madras’; or, to put it differently, in suggesting that the Plaintiffs claim some sort of monopoly or exclusivity in the word Café, the word Madras having been subjected to a condition of non-exclusivity. The Plaintiffs claim nothing of the kind. They lay no claim to the word Café nor the word Madras taken separately or disjunctively. The claim is to the expression taken as a whole, and it falls squarely within Section 17(1) of the TM Act. 28. The Plaintiffs claim nothing of the kind. They lay no claim to the word Café nor the word Madras taken separately or disjunctively. The claim is to the expression taken as a whole, and it falls squarely within Section 17(1) of the TM Act. 28. Indeed, it seems to me that Mr. Ajatshatru runs himself onto its own sword. His submission is that the two words, taken separately, can enjoy no exclusive monopoly. If this is to be accepted, it must follow that, since the mark is registered, there must exist a monopoly in the combination of the two words. Else, the registration is meaningless; and the Defendant’s failure to impeach that registration strikes at the root of their own case. Additionally, given a subsisting registration and the Defendant’s own case on the two words taken separately, it is only Section 17(1) that can give full voice to that registration. Section 17(2) has no application at all in this case. This being so, Mr. Ajatshatru’s reliance on the Delhi High Court’s decision in Cadilla Healthcare Ltd v Gujarat Cooperative Milk Marketing Federation & Ors., 2008 (36) PTC 168 (Del) is of no assistance, because in that case the mark in question (“Sugar Free”) was only ever used descriptively to extol the product. It was not used ‘as a trade mark’. In any case, that decision was in an action for passing off and not in one for infringement, or one where the two causes of action were combined, as they are here. 29. Mr. Ajatshatru’s submission in relation to Section 17 segues into his next proposition, viz., that the entire expression is one that is “common to the trade”. I do not see how the Defendant can possibly take any such position. Of necessity, it means that none can lay any claim to exclusivity in this mark. But the Defendant has itself (a mere 13 days after it received a cease and desist notice from the Plaintiffs) applied for the registration of a device mark with the expession ‘Café Madras’ as its leading, prominent and essential feature. Is it at all possible for the Defendant to say that the Plaintiffs’ mark is ‘common to the trade’ and simultaneously apply for registration, implicit in which is the contention that it is not common to the trade and capable of exclusivity? Is it at all possible for the Defendant to say that the Plaintiffs’ mark is ‘common to the trade’ and simultaneously apply for registration, implicit in which is the contention that it is not common to the trade and capable of exclusivity? I do not believe so, and there exists in law a species of estoppel, as a rule of evidence, that militates against the acceptance of any such case. A man may not blow hot and cold. He may not disclaim something as incapable of protection while it lies in the hands of another and lay claim to protection of that very thing when in his own hands. He may not say that the mark is descriptive and does not lend itself to registration or exclusivity and then claim that very exclusivity by applying for a registration in his own name. Applications for registration are not idle formalities. Every application for registration has consequences. It carries with it the expectation of being granted exclusivity and a monopoly. It implies that the applicant believes the mark to be exclusive and capable of registration, that it is not generic, descriptive or common to the trade. An applicant cannot simultaneously make this claim and also contend that in the hands of another the very mark he chooses to monopolize by virtue of his application has no redeeming distinctiveness or that it is so utterly generic, descriptive and so common to the trade that no registration at all is possible. No person may say that such and such a mark is distinctive in my hands but not in yours. It is either distinctive and non-generic or it is not. The identity of the applicant does not make it so. It is the mark itself that is to be seen, not who applies for it. Every application for registration therefore posits an acceptance of distinctiveness. Colloquially, what is sauce for the goose is sauce for the gander. It is either distinctive and non-generic or it is not. The identity of the applicant does not make it so. It is the mark itself that is to be seen, not who applies for it. Every application for registration therefore posits an acceptance of distinctiveness. Colloquially, what is sauce for the goose is sauce for the gander. In law, this is the principle of approbation and reprobation, and it applies to the Defendant in this case, Automatic Electric Ltd v R. K. Dhawan & Anr., 1999 (19) PTC 81 (Del.); Ultra Tech Cement Ltd v Alaknanda Cement Pvt Ltd & Anr., 2011(5) Bom CR 588 (upheld in Appeal in Alaknanda Cement Pvt Ltd v Ultratech Cement Ltd., 2012 (1) Bom CR 519); Brihan Karan Sugar Syndicate Pvt Ltd v Lokranjan Breweries Pvt Ltd., 2014 (5) Bom CR 767. The principle plainly has universal application: it was reiterated even in the context of a design infringement dispute in Asian Rubber Industries v Jasco Rubbers, 2013 (1) Bom CR 393 : 2013 (53) PTC 495 (Bom) To say at once that the Plaintiffs’ mark is descriptive and to apply for registration, no matter in what context, of a mark that contains substantially the same matter is, if I might be permitted to paraphrase a cliché, somewhat like carrying idlis to Udipi. 30. The distinction that Mr. Ajatshatru draws is that the Defendant’s application is for a device mark, and, for that reason, no estoppel attaches. But here again the Defendant’s argument is selfdefeating: I understood Mr. Ajatshatru to contend, at the very head of his arguments, that the Plaintiffs’ registration is only of a device mark. That, as we have seen, is factually incorrect, but assuming that Mr. Ajatshatru is correct, then one must see what it is that constitutes the singular distinguishing feature of such a device. The answer to that is, and can only be, the expression ‘Café Madras’. That, as we have seen, is factually incorrect, but assuming that Mr. Ajatshatru is correct, then one must see what it is that constitutes the singular distinguishing feature of such a device. The answer to that is, and can only be, the expression ‘Café Madras’. Now if the Defendant’s application too features precisely this as its leading feature, then it is no argument at all to say that there is some additional feature (in the Defendant’s case a banana leaf ) to distinguish the two marks, Serum Institute of India Ltd v Green Signal Bio Pharma Ltd. & Anr., 2011 (47) PTC 452 (Bom) In Pidilite Industries Ltd. vs. Jubilant Agri & Consumer Products Ltd., 2014 (57) PTC 617 (Bom) this Court said: “14.4 In my view, as submitted by the Plaintiff, this attempt to distinguish itself, now belatedly made by the Defendant in the written submissions does not withstand scrutiny for the reasons mentioned here-in-below: (i) The mark applied for by the Defendant is reproduced hereinabove. It is true that it is a label mark. However, if the mark is seen, the most prominent and noticeable part/feature of the mark is the word ‘MARINE PLUS’. The mark has been described in the column “TM Applied for” as ‘MARINE PLUS’ – Label”. The word ‘MARINE’ therefore forms a prominent and/or essential feature of the mark applied for. More importantly, the Defendants understood the trademark applied for as “MARINE PLUS”. (ii) The Defendant was therefore attempting to obtain a monopoly over the words ‘MARINE’ PLUS’ and ‘MARINE’ and in view thereof, the rule of estoppel stated above will apply. The question to be asked is, “Had the Defendant’s mark been registered, would it have objected and/or been entitled to object to ‘MARINE PLUS’ or ‘MARINE’ being used by someone else?” The answer is obvious. (iii) ... ... (iv) The applicability of the principle and/or rule of estoppel is not restricted to cases where the mark objected to and mark applied for are identical, but covers cases where there is identity of the prominent and/or essential features, as is evident from the decision of this Court in Ultratech Cement Limited v. Alaknanda Cement Pvt. Ltd. 2011 (5) BCR 588, decided on 28th June, 2011, where the doctrine/principle was applied. In that case, the Plaintiffs’ mark was “Ultratech Cement. In that case, the Plaintiffs’ mark was “Ultratech Cement. The Engineers Choice” and the Defendant had sought registration of a label containing the word “Ultra Tuff”. (Emphasis supplied) 31. Indeed, a judgment cited by Mr. Ajatshatru works against him: the situation I have described was precisely of the sort that was before Mr. Justice Kathawalla in M/s Bade Miya, Mumbai & Ors. v Mubin Ahmed Zahurislam, Judgment dated 25th March 2011 in Notice of Motion No.386 of 2011 in Suit No. 292 of 2011. where the defendant claimed to be entitled to vend food in the trading name ‘BADEMIYAN’, as opposed to the plaintiffs’ well-established name ‘BADEMIYA’. This is a decision that is on all fours with the present case. Kathawalla, J held that adding some pictorials of camels and a token N at the end of the mark would make no difference. 32. I very seriously doubt if any person will attempt to differentiate between ‘Café Madras’ on its own and something like ‘Café Madras with a graphic of a banana leaf and the tag-line essence of real Udipi kitchen’. We do not test this from the perspective of a refined gourmet. A man of average appetite and imperfect palate will not see the kind of nuanced distinction Mr. Ajatshatru advocates. 33. What is the evidence on which the Defendant relies to show that the Plaintiffs’ mark is, as Mr. Ajatshatru claims, “common to the trade”? It is set out in paragraph 2.26 of the written arguments, where the Defendant claims that the word ‘Madras’ has been historically used to mean a South Indian cuisine eatery; and the word ‘Café’ is itself too commonplace to admit of any exclusivity. To evidence this, the Defendant has annexed to its affidavit dated 7th August 2014 a list of establishments that it claims uses these two words, though not always together (i.e., some use ‘Madras’ and some use ‘Café’). The Defendant claims that there are in this list 24 establishments named ‘Café Madras’, of which as many as seven are in Mumbai alone. On this basis, the Defendant claims that both words are generic. 34. The law in this regard is well established. The Defendant claims that there are in this list 24 establishments named ‘Café Madras’, of which as many as seven are in Mumbai alone. On this basis, the Defendant claims that both words are generic. 34. The law in this regard is well established. To succeed, the Defendant must establish that the marks on which it relies are many and that they are in extensive use and that they have, by reason of that wide usage, passed into the realm of the generic to the extent that they can no longer be said to describe any particular purveyor or user. It is not enough to merely show some use; the Defendant, on whom this burden lies, must show use by the trade that is extensive, Pidilite Industries Ltd v Sai Associates & Ors., 2004 (28) PTC 193 (Bom); Serum Institute, supra. This has been settled law for over five decades. In 1960, the Supreme Court in Corn Products Refining Co. v Shangrila Food Products Ltd., 1960 (62) Bom. LR. 162 held: “... It is clear, however, from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market ...” “... We may also refer to in the matter of an application by Harrods Ld. to Register a Trade Mark in Part B of the Register mentioned in the quotation from Beck, Koller & Co’s case set out in the preceding paragraph. It was there said (p. 70): “Now it is a well recognized principle that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of respective marks and to distinguish between them by those other features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.” The series of marks containing the common element or elements, therefore, only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now, in the present case, the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either ‘Gluco’ or ‘Vita’ as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. (Emphasis supplied) 35. In Charak Pharma Pvt Ltd v Glenmark Pharmaceuticals Ltd., 2014 (57) PTC 538 (Bom) Mr. Justice Kathawalla held: 24.1 The aforesaid contention is clearly fallacious. The Hon’ble Supreme Court in the case of Corn Products Refining Co., vs. Shangrila Food Products Ltd. (supra), considered an absolutely identical contention by extracting a passage from In Re. Harrods’ Application. Following the said passage which was extracted in paragraph 14 of the judgment, in paragraph 15 it was held by the Hon’ble Supreme Court that the series of marks containing the common elements can only assist the defendant when these marks are in extensive use in the market. The onus of proving such user is of course on the person, who wants to rely on the marks. The Hon’ble Supreme Court further held that it is possible that the mark may have been registered but not used and therefore it is not possible to draw any inference as to the user from the presence of the mark on the register. 24.2 The judgment of the Hon’ble Supreme Court in the case of Corn Products (supra) had been followed and applied by this Hon’ble Court in various matters relating to infringement and passing off. 24.2 The judgment of the Hon’ble Supreme Court in the case of Corn Products (supra) had been followed and applied by this Hon’ble Court in various matters relating to infringement and passing off. In the case of Pidilite Industries vs. S.M. Associates & Ors., (supra), this Court in paragraph 58 held that it is not enough to prove that the marks are in use but the burden is to establish that the same is in “extensive use”. 36. The list that the Defendant adduces is poor evidence indeed. It is a litany of names and website addresses derived from a casual saunter through an Internet-based search. There is no statement that this information has been in any way verified, or even attempted to be verified. This is a sort of ‘lazy sweep’, a trawling for data without assessment as to accuracy or validity. This is not what the law expects or demands. In its written arguments, the Defendant claims there are 24 outlets with the name ‘Café Madras’. There are not; there are 22 and these have both words in their name, the others have one or the other word (either Café or Madras) in their names. Since the Plaintiffs claim no monopoly in the two words taken separately that enumeration is entirely irrelevant Of these about a half dozen are said to be in Mumbai alone. It is at this point that the sheer casualness of this list becomes egregious. Of the six outlets with the name ‘Café Madras’ said to be in Mumbai, three belong to the Plaintiffs. One (“Old Madras Café”) is closed on an decree obtained by the present Plaintiffs, Judgment dated 14th October 2013 in Suit No. 616 of 2013 along with Notice of Motion (L) No. 1444 of 2013, G. P. Kamath & Co. v Green Oak Hospitality Pvt. Ltd. (and hence is shown in the accompanying photographs as closed and shuttered). Another is at Colaba; the Plaintiffs do not deny it. But it is said to be a small multi-cuisine restaurant with insignificant sales. The last is said to be at Bhandup but there is nothing produced to show that it even exists. The material relating to establishments outside Mumbai is even more paltry: several are little more than kiosks or roadside vendors, hardly comparable with the Plaintiffs’ and Defendant’s establishments. But it is said to be a small multi-cuisine restaurant with insignificant sales. The last is said to be at Bhandup but there is nothing produced to show that it even exists. The material relating to establishments outside Mumbai is even more paltry: several are little more than kiosks or roadside vendors, hardly comparable with the Plaintiffs’ and Defendant’s establishments. In fact, none of this is necessary at the interim stage, when a broad overview is enough, and it is sufficient to note that there is not sufficient material, at this prima facie stage, to find for the Defendant that the mark is common to the trade. It also matters not a whit if the Plaintiffs have not sued any other alleged infringer. “Why me and why not him?” is no defence to an infringer, Universal Twin Labs v Ranbaxy Laboratories Ltd., 2009 (39) PTC 9 (Bom) (DB); Schering Corporation & Ors. v Kilitch Co. (Pharma) Pvt. Ltd., 1994 IPLR 1. 37. Is it possible for the Defendant to invoke Sections 30(1) and 30(2) of the TM Act? While Section 29 of the TM Act deals with infringement of trade marks, Section 30 specifies the limits of the effect of a registered trade mark. Section 30, in its entirety, runs thus: Section 30.—Limits on effect of registered trade mark (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use— (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where— (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; (b) ... ... (c) ... ... (d) ... ... (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (3)…….. (4)……. (Emphasis supplied) 38. ... (c) ... ... (d) ... ... (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (3)…….. (4)……. (Emphasis supplied) 38. We are concerned here, if at all, with Sections 30(1) and 30(2)(a). What the first of these, Section 30(1), protects is the use by someone other than the proprietor of a registered mark, where such use is for the purposes of identifying the proprietor of the mark. For instance, a shopkeeper may display items or promotional material with a registered trade mark provided this use identifies the proprietor and the associated goods or services. The shopkeeper may not use that trade mark as identifying the goods or services of someone else. How this can assist the Defendant is unclear. The Defendant is not using ‘Café Madras’ to describe his business as a franchise or branch of the Plaintiffs. This is wholly outside the purview of Section 30(1). We must be careful to distinguish the legitimate use under Section 30(1) from the illicit use in passing off, where a defendant masquerades his goods or services as those of a plaintiff. Section 30(1) does not, of course, permit such passing off; it contemplates a narrowly tailored legitimate use by one person of another’s proprietory mark to uniquely identify the mark’s proprietor’s goods or services as those of the proprietor himself. A shopkeeper may display watches, for instance, of various brands, each uniquely showing the mark of its proprietor. He may not pass off his own goods as those of one of these other proprietors. JUDGMENT: INDEX A. OVERVIEW.............................................................................................................3 B. FACTS......................................................................................................................6 C. ISSUES, SUBMISSIONS & FINDINGS.................................................................9 C1. Infringement...........................................................................................................10 C2. Passing Off.............................................................................................................33 D. THE DEFENDANT’S WRITTEN ARGUMENTS................................................43 E. DELAY AND BALANCE OF CONVENIENCE...................................................46 F. FINAL ORDER AND CONCLUSION...................................................................49 A. OVERVIEW 1. In a narrow lane, one of three that branches off to the east from the roundabout at Maheshwari Udyan in Mumbai’s central area of Matunga, there stands an unassuming eatery. A few steps lead into it. The space is not large: a few tables at the entry level with the proprietor at a high seat at the counter to the right of the entrance. Opposite the entrance is the kitchen with its serving hatches. A few steps lead into it. The space is not large: a few tables at the entry level with the proprietor at a high seat at the counter to the right of the entrance. Opposite the entrance is the kitchen with its serving hatches. A steep staircase to the left leads to a low-ceilinged mezzanine floor. Here, the space is even more cramped. On both levels, patrons share tables: large groups or families may spread across several tables and a solitary diner may find himself rubbing elbows with a complete stranger. This is Café Madras, the South Indian — or, more accurately, Udipi cuisine — specialty sit-down restaurant owned and managed by the Plaintiffs (“the Kamaths”), and it is both popular and renowned. Over time, it has acquired, say the Kamaths, a reputation non-pareil: the Kamaths pride themselves on the quality of their fare, traditional and authentic they say in every aspect, and the cleanliness of their kitchen. It is by no means a five-star establishment, and has no such pretensions. There is no fancy dinnerware (everyone has clean stainless steel) or table linen (paper napkins must do), but the service is quick and the food arrives fresh and there are long lines at its door every morning. The restaurant caters to all, from the well-heeled and wealthy to the decidedly middle class, with undifferentiated courtesy and efficiency. To be sure there are many other similar eating houses in the vicinity and elsewhere in Mumbai, but theirs, the Kamaths claim, stands apart. It is, they say, iconic. 2. The Kamaths claim to be the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42. These registrations are valid and subsisting, without any application for rectification. The Kamaths have used these marks openly, continuously and extensively since 1951, generating considerable goodwill and a high reputation. 3. The Defendant, the Kamaths say, has copied the registered marks body and soul. The Defendant’s adoption is fraudulent and dishonest and it is used in relation to eateries serving South Indian cuisine though at locations in Jalgaon and Nashik. Importantly, there was a horrific incident at one of those locations, one that caused demonstrable damage to the reputation and the goodwill of the Kamaths’ marks. 4. The Defendant’s adoption is fraudulent and dishonest and it is used in relation to eateries serving South Indian cuisine though at locations in Jalgaon and Nashik. Importantly, there was a horrific incident at one of those locations, one that caused demonstrable damage to the reputation and the goodwill of the Kamaths’ marks. 4. The Defendant claims, in its various affidavits, that ‘Café Madras’ is incapable of registration; that the Defendant’s use is not in Classes 16 or 42; that there are several other establishments across India with the same name; that the Plaintiffs’ claim of goodwill is not borne out by its sales; that this goodwill is, in any case, geographically limited and the Defendant’s use in places several hundred kilometres away can have no possible diluting effect on and can cause no possible confusion with the Plaintiffs’ use of the expression; and that the Plaintiffs cannot enforce their rights in view of Sections 18 and 28 of the Trade Marks Act, 1999. There is, the Defendant says, no question of any relief being granted to the Plaintiff. 5. Specifically, the Defendant’s case is that what the Kamaths have registered is a device, one markedly different from the one on which the action is brought. In any case, neither ‘Cafe’ nor ‘Madras’ are registrable; and the combination is not registrable either. Far from having acquired any ‘secondary’ meaning, even the combination connotes, in the context of an eating house, a certain type of cuisine. There are a very large number of such eating houses with this name, the Defendant claims, and the Kamaths have not thought it fit to move against any of those. Taken together, the two words are therefore a purely descriptive and not a distinctive expression; and given the spread of use, it is a generic term for a restaurant or eating house that serves South Indian cuisine. There is no case made out of infringement, because there is nothing to infringe. There is also, the Defendant says, no case of passing off because the three-fold or ‘Trinity’ test is not satisfied: there is no representation, let alone a misrepresentation, by the Defendant that its establishments are in any way connected with the Kamaths’. In the areas where the Defendant has its establishment, it enjoys a reputation and a goodwill of its own. The Kamaths have none there. In the areas where the Defendant has its establishment, it enjoys a reputation and a goodwill of its own. The Kamaths have none there. The Kamaths’ reputation, if indeed they have one, is territorially and geographically restricted and extends no further than their vicinity or perhaps, at best, Mumbai. 6. I have heard Mr. Dhond, learned Senior Counsel for the Plaintiffs and Mr. Ajatshatru, learned Counsel for the Defendant extensively. With their assistance, I have considered the material on record. I have also studied their comprehensive written notes of arguments. I am not persuaded that the defence is either tenable or just. I have held that, prima facie, the material on record is sufficient to warrant reliefs on both causes of action, i.e., of infringement and passing off. The Defendant’s adoption of the mark is not bona fide. I have also found that the Plaintiffs’ reputation and goodwill are not geographically and territorially limited in the manner the Defendant suggests. I have also found the Defendant’s mark to be deceptively and confusingly similar to that of the Plaintiffs. Finally, I have also found that the Plaintiffs have established not just the possibility or likelihood of confusion or deception on their cause of action in passing off, but actual confusion and deception. I have, therefore, held in favour of the Plaintiffs. My reasons follow. B. FACTS 7. In 1951, Gopal Purshottam Kamath (the 1st and 2nd Plaintiffs’ father) began using the mark ‘Café Madras’ for his restaurant in Matunga. On 29th December 1968, Gopal and his elder son, the 1st Plaintiff, Jagdish Kamath, entered into a partnership called M/s Café Madras. The mark was brought into that partnership. Ten years later, on 20th July 1978, the 6th Plaintiff partnership firm was formed. It took over the business of Café Madras and, too, that of another partnership firm, Gopal krishna Hindu Hotel. From 1978 onwards, the 6th Plaintiff was periodically reconstituted. The last of these changes was in 2011, when it became a partnership of Plaintiffs Nos. 1 to 5. 8. On 27th February 2009, the Kamaths obtained registration effective from 13th October 2005 of the mark ‘Café Madras’ in Class 42. A separate registration was also obtained, effective the same date, in Class 16, Class 43, relating to ‘services’, was unavailable at that time. These registrations (Nos. 1 to 5. 8. On 27th February 2009, the Kamaths obtained registration effective from 13th October 2005 of the mark ‘Café Madras’ in Class 42. A separate registration was also obtained, effective the same date, in Class 16, Class 43, relating to ‘services’, was unavailable at that time. These registrations (Nos. 1390976 and 1390977 at pages 30 and 31 of the Plaint) were subject to a solitary condition and limitation: no exclusivity was conferred for the use of the word ‘Madras’. Legal certificates in respect of these registrations are on file at pages 93 to 96 of the Plaint. Registration was sought and obtained on the basis that the mark ‘Café Madras’ had acquired distinctiveness on account of user from 1951 to 2005. A user affidavit was filed with the Trade Mark Registry to establish this. The Plaintiffs also sought and obtained registrations of this mark in as many as 27 countries and the European Union. 9. Exhibit “E” to the plaint at page 37 is a certificate by the Plaintiffs’ Chartered Accountants attesting to their sales for the period 2003 to 2012. These are indeed substantial. The turnover for the year 2012 is nearly Rs. 1 crore. Advertising figures are insignificant but I believe this works to the Plaintiffs’ advantage rather than against them, for the exhibits that follow, from Exhibit F at page 38 to Exhibit F-8 at page 47, show that the Plaintiffs’ reputation and goodwill were both considerable and firmly established. There are, in those annexures, repeated narratives of the excellence of the Plaintiffs’ ‘South Indian Tiffin’ and attentive service. The eatery has won a large number of awards. There are, in the Affidavit in Rejoinder additional clippings and materials, including from Gordon Ramsay, the internationally renowned chef, extolling the quality of the Plaintiffs’ food and service. There are also endorsements and encomiums from well-known personalities in entertainment, cinema and industry. The material is not limited to print either, but also extends to other media. 10. The Defendant claims to have started a restaurant in Jalgaon with the name Café Madras in 2004. There is little to support the assertion of this date. Sales and promotional expenses are shown, but from 2006-2007. These are also disputed. 11. The Plaintiffs claim that they learned of the Defendant’s use of the mark Café Madras in 2012. 10. The Defendant claims to have started a restaurant in Jalgaon with the name Café Madras in 2004. There is little to support the assertion of this date. Sales and promotional expenses are shown, but from 2006-2007. These are also disputed. 11. The Plaintiffs claim that they learned of the Defendant’s use of the mark Café Madras in 2012. On 11th June 2012, the Plaintiffs filed an application to amend the class of services for which their mark was registered. 12. On 21st June 2012, the Plaintiffs’ Advocates sent a cease-and-desist notice to the Defendant. The Defendant replied on 29th June 2012, essentially seeking information and details. It seems that it was only thereafter, on 10th July 2012, that the Defendant applied for registration of the mark Café Madras. This application has a direct legal consequence on the issue of whether the mark is distinctive or descriptive; I will turn to this subsequently. 13. On 16th July 2012, the Plaintiffs sent a further cease-and-desist notice to the Defendant, which replied on 23rd July 2012. This was followed, till 25th September 2012, by further correspondence between the advocates for both sides. The Plaintiffs claim that they learned in September 2012 that the Defendant had opened a second restaurant named Café Madras in Nashik. 14. The present suit was filed on 6th December 2012. The Plaintiffs sought leave under Clause XII of the Letters Patent. This was contested. Leave was ultimately granted by a detailed judgment dated 22nd April 2013, Jagdish Gopal Kamath v Lime & Chilli Hospitality Services P. Ltd., 2014 (3) Bom. CR 446 : 2013 (4) Mh LJ 627. This Notice of Motion was also filed on 6th December 2012. The Defendant filed an Affidavit in Reply in that month, claiming user from 2004-2005. However, only sales figures were given and that, too, only from 2006-2007. There is no evidence in that affidavit by way of invoices, promotional or advertising materials or third-party write-ups. C. ISSUES, SUBMISSIONS & FINDINGS 15. Although Mr. Ajatshatru’s arguments were restricted to the three or four key issues, his written notes of defence are very nearly encylcopedic and range much further afield, citing a very large number of decisions. Not all of these are germane, and some of the points canvassed in those written arguments are superfluous. C. ISSUES, SUBMISSIONS & FINDINGS 15. Although Mr. Ajatshatru’s arguments were restricted to the three or four key issues, his written notes of defence are very nearly encylcopedic and range much further afield, citing a very large number of decisions. Not all of these are germane, and some of the points canvassed in those written arguments are superfluous. While I have considered all the material presented, I have elected to focus only on such of those issues as appear to me to be necessary. 16. As I see it, the broad questions for determination are (i) whether the Plaintiffs have made out a sufficiently strong prima facie case on (a) their cause of action in infringement; (b) their cause of action in passing off; (ii) the nature and extent of the Plaintiffs’ reputation and goodwill; and (iii) whether the Defendant’s adoption of the mark is (a) bona fide or not, and (b) if not, whether that adoption is likely to prejudice or has actually prejudiced the Plaintiffs by dilution of the Plaintiffs’ mark or damage to the Plaintiffs’ reputation and goodwill, or both. These issues are closely interlinked, and each has its subsidiary issues. C1. Infringement 17. Mr. Dhond submits that the mark used by the Defendant, ‘Café Madras’ on a device of a banana leaf is identical or, at any rate, deceptively similar to, and therefore infringes, the Plaintiffs’ registered trade mark in classes 16 and 42. The essential feature of the two competing marks is the expression ‘Café Madras’. These are structurally, visually and phonetically identical; the differences, if any, are trivial and irrelevant. The essential and prominent feature, the one that lingers in memory, is the expression or term ‘Café Madras’. 18. It is, I believe, too well settled to require further discussion that in comparing rival marks one must look at the mark as a whole. Persons recall marks in generalities and by an overall recollection of an impression of it. We do not distinguish marks on the basis of niggling detail: whether a device or a mark uses, for instance, one feather or leaf or two, or whether a mark uses an accented letter or an apostrophe is hardly the matter that embeds in common memory. In an infringement action, the rival mark need not be an exact replica or clone. In an infringement action, the rival mark need not be an exact replica or clone. Trivial and non-distinctive matters — what one might describe as mere sideshows — do not sufficiently distinguish a competing mark, Rustom & Hornsby Ltd v Zamdara Engineering Co., AIR 1970 SC 1649 . General and overall impressions are everything, M/s Hiralal Prabhudas v Ganesh Trading Co. & Ors., 1984 PTC 155 (Bom); Amritdhara Pharmacy v Satyadeo Gupta, AIR 1963 SC 449 . The test is that of a persion of average intelligence and an imperfect memory, Corn Products Refining Co v Shangrila Food Products Ltd, AIR 1960 SC 142 . It is true that the Plaintiffs’ registration is subject to a condition or limitation vis-à-vis the word ‘Madras’. Yet that would make as good as no difference, for one must look at the mark in its entirety, Serum Institute of India v Green Signal Bio Pharma Pvt Ltd & Anr., 2011 (47) PTC (Bom); Pidilite Industries v S.M. Associates & Ors., 2004 (28) PTC 193 (Bom). 19. On this test, the Defendant’s mark would have to be held to be deceptively similar or identical to that of the Plaintiffs. There can be no doubt about the structural, visual and phonetic similarity between the two marks. 20. The Defendant has not challenged the Plaintiffs’ registration by way of a Rectification Petition at any time. I must note that during arugments, Mr. Ajatshatru accepted that the Defendant did not seek to re-open the Plaintiffs’ registration. He confined himself to the effects of that registration and the statutory defences available to him against it. It was not until the written arguments that this canvas was attempted to be widened by questioning the very registration itself, saying it was ‘weak’, ‘unenforceable’ and granted in respect of a descriptive and non-distinctive word. I will turn to these arguments presently. 21. Mr. Dhond’s argument that the Defendant cannot examine the validity of the Plaintiffs’ registration at the interlocutory stage is one that has now been decided by a Full Bench of this Court in Lupin Ltd v Johnson & Johnson, Judgment dated 23rd December 2014, Full Bench of Mohit S. Shah, CJ, S. J. Kathawalla and N. M. Jamdar, JJ; per Mohit S. Shah, CJ. The Full Bench rejected the view taken in Maxheal Pharmaceuticals v Shalina Laboratories Pvt. Ltd., Appeal No. 88 of 2005. The Full Bench rejected the view taken in Maxheal Pharmaceuticals v Shalina Laboratories Pvt. Ltd., Appeal No. 88 of 2005. itself based on the view in Hindustan Embroidery Mills v K. Ravindra & Co., 1967 (76) Bom.L.R. 146 that it is not the ‘practice’ of this Court to consider the validity of a registration at an interlocutory stage and that while the mark remains on the register, though wrongly, it is desirable that others not imitate it. The Full Bench held that where the registration of the trade mark is ex-facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse an injunction; but to establish these grounds, a very high degree of prima facie proof is required. It is open to a court to examine the validity of a registration for this limited purpose, and while there is no ‘embargo’ or any authority for any such ‘practice’, this examination is permissible in the exceptional situations mentioned earlier. Specifically, it is not sufficient for a defendant to show that he has a merely arguable case against the registration. He must show the registration to be illegal, fraudulent or one that sufficiently disturbs the judicial conscience to have it question the registration itself. Even if it does, the Court’s view is only prima facie; the registration can only be finally challenged in appropriate rectification proceedings before the Trade Marks Registry. 22. As it happens, the Full Bench decision in Lupin does not detract from the strength of Mr. Dhond’s argument. If anything, it places that argument on a much surer footing. To brush aside Mr. Ajatshatru’s submission that the Plaintiffs’ registration is itself ‘improper’ or ‘weak’ on the ground of some ‘practice’ that the Full Bench now says is without foundation seems to me a most tenuous approach. Mr. Ajatshatru’s submission must more properly be tested against the parameters set by the Lupin Court: can the Plaintiffs’ registration be said to be illegal? Fraudulent? Such that leaves the judicial conscience both shaken and stirred ? I think not, and this is not even Mr. Ajatshatru’s case. Importantly, the Defendant has taken no steps whatever before the Registry or the Board to challenge the Plaintiffs’ registration. To question it at this stage is an argument of desperation. 23. What underlies Mr. Fraudulent? Such that leaves the judicial conscience both shaken and stirred ? I think not, and this is not even Mr. Ajatshatru’s case. Importantly, the Defendant has taken no steps whatever before the Registry or the Board to challenge the Plaintiffs’ registration. To question it at this stage is an argument of desperation. 23. What underlies Mr. Ajatshatru’s submission is this: first, that the Plaintiffs can have no monopoly in the expression ‘Café Madras’ because ‘Madras’ has been expressly disclaimed, and ‘Café’ is clearly and without need of further explanation so commonplace a word that no exclusivity attaches to it; and, second, that what the Plaintiffs have registered is only a device mark or a label mark and not a word mark at all. 24. To take the latter submission first: Mr. Ajatshatru submits that there is a distinction between a device mark, a word mark and a composite label mark. A word mark gets absolute protection. A device mark is restricted to its artistic depiction. A label or a composite mark gets both (the literary words and the artwork). The Plaintiffs’ registrations in Classes 16 and 42 are, Mr. Ajatshatru says, only of a device mark (the words Café Madras in italics in a device of a rectangular box), and that since this is something the Defendant does not use, there is no infringement. Factually, this is incorrect. To the Further Affidavit dated 28th February 2013 filed by the 3rd Plaintiff, there are annexed the legal proceedings certificates. These put the matter beyond the pale: the Plaintiffs’ registrations, on their applications in 2007 and 2009, are in respect of (i) the trade mark type: device; and (ii) the word mark: ‘Café Madras’. I do not think it is remotely possible for the Defendant to so wholly elide the plain contents of the legal proceedings certificates. Indeed, I must note that I found the Defendant’s constant ducking and weaving on this issue less than inspiring. First, they ignored the clear and unambiguous contents of the legal proceedings certificates. Then they contended that in 2004 the Plaintiffs applied for registration of the mark Café Madras (the word, per se) but withdrew that application. The Defendant next alleged that the Plaintiffs had applied only for a device mark; that this would be established from the Plaintiffs’ application for registration; and this application had not been disclosed. Then they contended that in 2004 the Plaintiffs applied for registration of the mark Café Madras (the word, per se) but withdrew that application. The Defendant next alleged that the Plaintiffs had applied only for a device mark; that this would be established from the Plaintiffs’ application for registration; and this application had not been disclosed. In a late affidavit dated 25th August 2014, the Plaintiffs did disclose their application, and it did not bear out the Defendant’s contention at all. Neither the application nor the Plaintiffs’ attorney’s covering letter in any way show that application to have been restricted to a ‘device’. Confronted with this, in its written arguments the Defendant now contends that since the application does not say it is for a ‘word mark’, this necessarily means that it is for a device mark; i.e., to suggest, by necessary implication, that a device mark is somehow the default application. This is an argument so entirely without substance that it only needs to be stated to be rejected. The application cannot be assumed to be of a device. If it was in respect of a device, it would have said so. The registration of a device mark is neither a presumption nor axiomatic. In all of this, the Defendant continues to overlook the fact that the Legal Proceedings Certificates quite unequivocally state the registration to be also of a word mark. 25. But I will take the Defendant’s case at its best, and will assume that the Defendant is correct that the Plaintiffs’ registration is of a device mark. What of it? It is not enough merely to say, “here is a device; I do not use the device; therefore there is no infringement.” We must, of necessity, consider what is the essential, prominent and leading feature of that mark, by whatever name called (label, device, composite, word). Even if the Defendant’s case is to be accepted, there is nothing essential or prominent in that so-called device other than the words ‘Café Madras’. This is what is protected. It is no answer at all for the Defendant to say that it has used those very words but in some other stylization and, consequently, that there is no infringement. Even if the Defendant’s case is to be accepted, there is nothing essential or prominent in that so-called device other than the words ‘Café Madras’. This is what is protected. It is no answer at all for the Defendant to say that it has used those very words but in some other stylization and, consequently, that there is no infringement. There is simply no basis for this in trade mark law; indeed, it defeats the statutory purpose and intent, for it would then be open hunting season on every single such registration: every infringer could then claim a different ‘style’ or ‘font’ or placement and thus dilute a mark duly registered, and which registration remains unchallenged. 26. Mr. Ajatshatru says that the Plaintiffs’ mark is a ‘compound’ or a ‘transferred epithet’, comprising a word that is subject to a limitation and another that is common to the trade, and that the Defendant therefore has available to it the benefit of Section 17(2) of the Trade Marks Act, 1999 (“the TM Act”). That section reads: 17. Effect of registration of parts of a mark.— (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— (a) contains any part— (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. (Emphasis supplied) 27. I do not believe this to be a submission well-founded. Subsection (1) clearly demands that where a trade mark contains ‘several matters’, the exclusivity attaches to the mark ‘taken as a whole’. This expression must be given some meaning. If Mr. Ajatshatru’s interpretation is to be accepted, it would mean that Section 17(1) is wholly defeated by Section 17(2), and is rendered entirely otiose. Sub-section (2) operates in a distinctively defined arena. This expression must be given some meaning. If Mr. Ajatshatru’s interpretation is to be accepted, it would mean that Section 17(1) is wholly defeated by Section 17(2), and is rendered entirely otiose. Sub-section (2) operates in a distinctively defined arena. Where a person has registered a mark of multiple parts, he enjoys a monopoly of the entirety of that mark with all its parts ‘taken as a whole’. The registration of a mark with components does not give him rights over the individual integers in that mark unless those individual integers are separately registered (or applied for). Where the individual integers are non-distinctive and common to the trade, no rights accrue in the individual integers either (“the part of the whole”), but, by necessary implication, only in the aggregation of these. The fallacy in Mr. Ajatshatru’s submission is in filtering the ‘Café’ out of the decoction leaving only the disclaimed word ‘Madras’; or, to put it differently, in suggesting that the Plaintiffs claim some sort of monopoly or exclusivity in the word Café, the word Madras having been subjected to a condition of non-exclusivity. The Plaintiffs claim nothing of the kind. They lay no claim to the word Café nor the word Madras taken separately or disjunctively. The claim is to the expression taken as a whole, and it falls squarely within Section 17(1) of the TM Act. 28. Indeed, it seems to me that Mr. Ajatshatru runs himself onto its own sword. His submission is that the two words, taken separately, can enjoy no exclusive monopoly. If this is to be accepted, it must follow that, since the mark is registered, there must exist a monopoly in the combination of the two words. Else, the registration is meaningless; and the Defendant’s failure to impeach that registration strikes at the root of their own case. Additionally, given a subsisting registration and the Defendant’s own case on the two words taken separately, it is only Section 17(1) that can give full voice to that registration. Section 17(2) has no application at all in this case. This being so, Mr. Ajatshatru’s reliance on the Delhi High Court’s decision in Cadilla Healthcare Ltd v Gujarat Cooperative Milk Marketing Federation & Ors., 2008 (36) PTC 168 (Del) is of no assistance, because in that case the mark in question (“Sugar Free”) was only ever used descriptively to extol the product. This being so, Mr. Ajatshatru’s reliance on the Delhi High Court’s decision in Cadilla Healthcare Ltd v Gujarat Cooperative Milk Marketing Federation & Ors., 2008 (36) PTC 168 (Del) is of no assistance, because in that case the mark in question (“Sugar Free”) was only ever used descriptively to extol the product. It was not used ‘as a trade mark’. In any case, that decision was in an action for passing off and not in one for infringement, or one where the two causes of action were combined, as they are here. 29. Mr. Ajatshatru’s submission in relation to Section 17 segues into his next proposition, viz., that the entire expression is one that is “common to the trade”. I do not see how the Defendant can possibly take any such position. Of necessity, it means that none can lay any claim to exclusivity in this mark. But the Defendant has itself (a mere 13 days after it received a cease and desist notice from the Plaintiffs) applied for the registration of a device mark with the expession ‘Café Madras’ as its leading, prominent and essential feature. Is it at all possible for the Defendant to say that the Plaintiffs’ mark is ‘common to the trade’ and simultaneously apply for registration, implicit in which is the contention that it is not common to the trade and capable of exclusivity? I do not believe so, and there exists in law a species of estoppel, as a rule of evidence, that militates against the acceptance of any such case. A man may not blow hot and cold. He may not disclaim something as incapable of protection while it lies in the hands of another and lay claim to protection of that very thing when in his own hands. He may not say that the mark is descriptive and does not lend itself to registration or exclusivity and then claim that very exclusivity by applying for a registration in his own name. Applications for registration are not idle formalities. Every application for registration has consequences. It carries with it the expectation of being granted exclusivity and a monopoly. It implies that the applicant believes the mark to be exclusive and capable of registration, that it is not generic, descriptive or common to the trade. Applications for registration are not idle formalities. Every application for registration has consequences. It carries with it the expectation of being granted exclusivity and a monopoly. It implies that the applicant believes the mark to be exclusive and capable of registration, that it is not generic, descriptive or common to the trade. An applicant cannot simultaneously make this claim and also contend that in the hands of another the very mark he chooses to monopolize by virtue of his application has no redeeming distinctiveness or that it is so utterly generic, descriptive and so common to the trade that no registration at all is possible. No person may say that such and such a mark is distinctive in my hands but not in yours. It is either distinctive and non-generic or it is not. The identity of the applicant does not make it so. It is the mark itself that is to be seen, not who applies for it. Every application for registration therefore posits an acceptance of distinctiveness. Colloquially, what is sauce for the goose is sauce for the gander. In law, this is the principle of approbation and reprobation, and it applies to the Defendant in this case, Automatic Electric Ltd v R. K. Dhawan & Anr., 1999 (19) PTC 81 (Del.); Ultra Tech Cement Ltd v Alaknanda Cement Pvt Ltd & Anr., 2011(5) Bom CR 588 (upheld in Appeal in Alaknanda Cement Pvt Ltd v Ultratech Cement Ltd., 2012 (1) Bom CR 519); Brihan Karan Sugar Syndicate Pvt Ltd v Lokranjan Breweries Pvt Ltd., 2014 (5) Bom CR 767. The principle plainly has universal application: it was reiterated even in the context of a design infringement dispute in Asian Rubber Industries v Jasco Rubbers, 2013 (1) Bom CR 393 : 2013 (53) PTC 495 (Bom) To say at once that the Plaintiffs’ mark is descriptive and to apply for registration, no matter in what context, of a mark that contains substantially the same matter is, if I might be permitted to paraphrase a cliché, somewhat like carrying idlis to Udipi. 30. The distinction that Mr. Ajatshatru draws is that the Defendant’s application is for a device mark, and, for that reason, no estoppel attaches. But here again the Defendant’s argument is selfdefeating: I understood Mr. Ajatshatru to contend, at the very head of his arguments, that the Plaintiffs’ registration is only of a device mark. 30. The distinction that Mr. Ajatshatru draws is that the Defendant’s application is for a device mark, and, for that reason, no estoppel attaches. But here again the Defendant’s argument is selfdefeating: I understood Mr. Ajatshatru to contend, at the very head of his arguments, that the Plaintiffs’ registration is only of a device mark. That, as we have seen, is factually incorrect, but assuming that Mr. Ajatshatru is correct, then one must see what it is that constitutes the singular distinguishing feature of such a device. The answer to that is, and can only be, the expression ‘Café Madras’. Now if the Defendant’s application too features precisely this as its leading feature, then it is no argument at all to say that there is some additional feature (in the Defendant’s case a banana leaf ) to distinguish the two marks, Serum Institute of India Ltd v Green Signal Bio Pharma Ltd. & Anr., 2011 (47) PTC 452 (Bom) In Pidilite Industries Ltd. vs. Jubilant Agri & Consumer Products Ltd., 2014 (57) PTC 617 (Bom) this Court said: “14.4 In my view, as submitted by the Plaintiff, this attempt to distinguish itself, now belatedly made by the Defendant in the written submissions does not withstand scrutiny for the reasons mentioned here-in-below: (i) The mark applied for by the Defendant is reproduced hereinabove. It is true that it is a label mark. However, if the mark is seen, the most prominent and noticeable part/feature of the mark is the word ‘MARINE PLUS’. The mark has been described in the column “TM Applied for” as ‘MARINE PLUS’ – Label”. The word ‘MARINE’ therefore forms a prominent and/or essential feature of the mark applied for. More importantly, the Defendants understood the trademark applied for as “MARINE PLUS”. (ii) The Defendant was therefore attempting to obtain a monopoly over the words ‘MARINE’ PLUS’ and ‘MARINE’ and in view thereof, the rule of estoppel stated above will apply. The question to be asked is, “Had the Defendant’s mark been registered, would it have objected and/or been entitled to object to ‘MARINE PLUS’ or ‘MARINE’ being used by someone else?” The answer is obvious. (iii) ... ... The question to be asked is, “Had the Defendant’s mark been registered, would it have objected and/or been entitled to object to ‘MARINE PLUS’ or ‘MARINE’ being used by someone else?” The answer is obvious. (iii) ... ... (iv) The applicability of the principle and/or rule of estoppel is not restricted to cases where the mark objected to and mark applied for are identical, but covers cases where there is identity of the prominent and/or essential features, as is evident from the decision of this Court in Ultratech Cement Limited v. Alaknanda Cement Pvt. Ltd. 2011 (5) BCR 588, decided on 28th June, 2011, where the doctrine/principle was applied. In that case, the Plaintiffs’ mark was “Ultratech Cement. The Engineers Choice” and the Defendant had sought registration of a label containing the word “Ultra Tuff”. (Emphasis supplied) 31. Indeed, a judgment cited by Mr. Ajatshatru works against him: the situation I have described was precisely of the sort that was before Mr. Justice Kathawalla in M/s Bade Miya, Mumbai & Ors. v Mubin Ahmed Zahurislam, Judgment dated 25th March 2011 in Notice of Motion No.386 of 2011 in Suit No. 292 of 2011. where the defendant claimed to be entitled to vend food in the trading name ‘BADEMIYAN’, as opposed to the plaintiffs’ well-established name ‘BADEMIYA’. This is a decision that is on all fours with the present case. Kathawalla, J held that adding some pictorials of camels and a token N at the end of the mark would make no difference. 32. I very seriously doubt if any person will attempt to differentiate between ‘Café Madras’ on its own and something like ‘Café Madras with a graphic of a banana leaf and the tag-line essence of real Udipi kitchen’. We do not test this from the perspective of a refined gourmet. A man of average appetite and imperfect palate will not see the kind of nuanced distinction Mr. Ajatshatru advocates. 33. What is the evidence on which the Defendant relies to show that the Plaintiffs’ mark is, as Mr. Ajatshatru claims, “common to the trade”? It is set out in paragraph 2.26 of the written arguments, where the Defendant claims that the word ‘Madras’ has been historically used to mean a South Indian cuisine eatery; and the word ‘Café’ is itself too commonplace to admit of any exclusivity. Ajatshatru claims, “common to the trade”? It is set out in paragraph 2.26 of the written arguments, where the Defendant claims that the word ‘Madras’ has been historically used to mean a South Indian cuisine eatery; and the word ‘Café’ is itself too commonplace to admit of any exclusivity. To evidence this, the Defendant has annexed to its affidavit dated 7th August 2014 a list of establishments that it claims uses these two words, though not always together (i.e., some use ‘Madras’ and some use ‘Café’). The Defendant claims that there are in this list 24 establishments named ‘Café Madras’, of which as many as seven are in Mumbai alone. On this basis, the Defendant claims that both words are generic. 34. The law in this regard is well established. To succeed, the Defendant must establish that the marks on which it relies are many and that they are in extensive use and that they have, by reason of that wide usage, passed into the realm of the generic to the extent that they can no longer be said to describe any particular purveyor or user. It is not enough to merely show some use; the Defendant, on whom this burden lies, must show use by the trade that is extensive, Pidilite Industries Ltd v Sai Associates & Ors., 2004 (28) PTC 193 (Bom); Serum Institute, supra. This has been settled law for over five decades. In 1960, the Supreme Court in Corn Products Refining Co. v Shangrila Food Products Ltd., 1960 (62) Bom. LR. 162 held: “... It is clear, however, from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market ...” “... We may also refer to in the matter of an application by Harrods Ld. to Register a Trade Mark in Part B of the Register mentioned in the quotation from Beck, Koller & Co’s case set out in the preceding paragraph. We may also refer to in the matter of an application by Harrods Ld. to Register a Trade Mark in Part B of the Register mentioned in the quotation from Beck, Koller & Co’s case set out in the preceding paragraph. It was there said (p. 70): “Now it is a well recognized principle that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of respective marks and to distinguish between them by those other features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.” The series of marks containing the common element or elements, therefore, only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now, in the present case, the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either ‘Gluco’ or ‘Vita’ as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. (Emphasis supplied) 35. In Charak Pharma Pvt Ltd v Glenmark Pharmaceuticals Ltd., 2014 (57) PTC 538 (Bom) Mr. Justice Kathawalla held: 24.1 The aforesaid contention is clearly fallacious. The Hon’ble Supreme Court in the case of Corn Products Refining Co., vs. Shangrila Food Products Ltd. (supra), considered an absolutely identical contention by extracting a passage from In Re. Harrods’ Application. (Emphasis supplied) 35. In Charak Pharma Pvt Ltd v Glenmark Pharmaceuticals Ltd., 2014 (57) PTC 538 (Bom) Mr. Justice Kathawalla held: 24.1 The aforesaid contention is clearly fallacious. The Hon’ble Supreme Court in the case of Corn Products Refining Co., vs. Shangrila Food Products Ltd. (supra), considered an absolutely identical contention by extracting a passage from In Re. Harrods’ Application. Following the said passage which was extracted in paragraph 14 of the judgment, in paragraph 15 it was held by the Hon’ble Supreme Court that the series of marks containing the common elements can only assist the defendant when these marks are in extensive use in the market. The onus of proving such user is of course on the person, who wants to rely on the marks. The Hon’ble Supreme Court further held that it is possible that the mark may have been registered but not used and therefore it is not possible to draw any inference as to the user from the presence of the mark on the register. 24.2 The judgment of the Hon’ble Supreme Court in the case of Corn Products (supra) had been followed and applied by this Hon’ble Court in various matters relating to infringement and passing off. In the case of Pidilite Industries vs. S.M. Associates & Ors., (supra), this Court in paragraph 58 held that it is not enough to prove that the marks are in use but the burden is to establish that the same is in “extensive use”. 36. The list that the Defendant adduces is poor evidence indeed. It is a litany of names and website addresses derived from a casual saunter through an Internet-based search. There is no statement that this information has been in any way verified, or even attempted to be verified. This is a sort of ‘lazy sweep’, a trawling for data without assessment as to accuracy or validity. This is not what the law expects or demands. In its written arguments, the Defendant claims there are 24 outlets with the name ‘Café Madras’. There are not; there are 22 and these have both words in their name, the others have one or the other word (either Café or Madras) in their names. Since the Plaintiffs claim no monopoly in the two words taken separately that enumeration is entirely irrelevant Of these about a half dozen are said to be in Mumbai alone. There are not; there are 22 and these have both words in their name, the others have one or the other word (either Café or Madras) in their names. Since the Plaintiffs claim no monopoly in the two words taken separately that enumeration is entirely irrelevant Of these about a half dozen are said to be in Mumbai alone. It is at this point that the sheer casualness of this list becomes egregious. Of the six outlets with the name ‘Café Madras’ said to be in Mumbai, three belong to the Plaintiffs. One (“Old Madras Café”) is closed on an decree obtained by the present Plaintiffs, Judgment dated 14th October 2013 in Suit No. 616 of 2013 along with Notice of Motion (L) No. 1444 of 2013, G. P. Kamath & Co. v Green Oak Hospitality Pvt. Ltd. (and hence is shown in the accompanying photographs as closed and shuttered). Another is at Colaba; the Plaintiffs do not deny it. But it is said to be a small multi-cuisine restaurant with insignificant sales. The last is said to be at Bhandup but there is nothing produced to show that it even exists. The material relating to establishments outside Mumbai is even more paltry: several are little more than kiosks or roadside vendors, hardly comparable with the Plaintiffs’ and Defendant’s establishments. In fact, none of this is necessary at the interim stage, when a broad overview is enough, and it is sufficient to note that there is not sufficient material, at this prima facie stage, to find for the Defendant that the mark is common to the trade. It also matters not a whit if the Plaintiffs have not sued any other alleged infringer. “Why me and why not him?” is no defence to an infringer, Universal Twin Labs v Ranbaxy Laboratories Ltd., 2009 (39) PTC 9 (Bom) (DB); Schering Corporation & Ors. v Kilitch Co. (Pharma) Pvt. Ltd., 1994 IPLR 1. 37. Is it possible for the Defendant to invoke Sections 30(1) and 30(2) of the TM Act? While Section 29 of the TM Act deals with infringement of trade marks, Section 30 specifies the limits of the effect of a registered trade mark. v Kilitch Co. (Pharma) Pvt. Ltd., 1994 IPLR 1. 37. Is it possible for the Defendant to invoke Sections 30(1) and 30(2) of the TM Act? While Section 29 of the TM Act deals with infringement of trade marks, Section 30 specifies the limits of the effect of a registered trade mark. Section 30, in its entirety, runs thus: Section 30.—Limits on effect of registered trade mark (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use— (a) is in accordance with honest practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where— (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; (b) ... ... (c) ... ... (d) ... ... (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (3)…….. (4)……. (Emphasis supplied) 38. We are concerned here, if at all, with Sections 30(1) and 30(2)(a). What the first of these, Section 30(1), protects is the use by someone other than the proprietor of a registered mark, where such use is for the purposes of identifying the proprietor of the mark. For instance, a shopkeeper may display items or promotional material with a registered trade mark provided this use identifies the proprietor and the associated goods or services. The shopkeeper may not use that trade mark as identifying the goods or services of someone else. How this can assist the Defendant is unclear. The Defendant is not using ‘Café Madras’ to describe his business as a franchise or branch of the Plaintiffs. This is wholly outside the purview of Section 30(1). The shopkeeper may not use that trade mark as identifying the goods or services of someone else. How this can assist the Defendant is unclear. The Defendant is not using ‘Café Madras’ to describe his business as a franchise or branch of the Plaintiffs. This is wholly outside the purview of Section 30(1). We must be careful to distinguish the legitimate use under Section 30(1) from the illicit use in passing off, where a defendant masquerades his goods or services as those of a plaintiff. Section 30(1) does not, of course, permit such passing off; it contemplates a narrowly tailored legitimate use by one person of another’s proprietory mark to uniquely identify the mark’s proprietor’s goods or services as those of the proprietor himself. A shopkeeper may display watches, for instance, of various brands, each uniquely showing the mark of its proprietor. He may not pass off his own goods as those of one of these other proprietors.