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2021 DIGILAW 699 (RAJ)

Indra Singh Chouhan v. Bawarchi Fast Food

2021-03-25

ARUN BHANSALI, SANGEET LODHA

body2021
JUDGMENT Bhansali, J. - This appeal under Order XLIII, Rule 1(r) CPC r/w Section 13 of the Commercial Courts Act, 2015 ('the Act of 2015') has been filed against the order dated 08.01.2020 passed by the Commercial Court, Udaipur, whereby the application filed by the respondent under Order XXXIX, Rule 1 & 2 CPC has been accepted and the appellant-non-applicant has been restrained from using the word ^ckophZ* in Hindi and 'Bawarchi' or 'Bavarchi' in English directly or indirectly for the purpose of providing food & drink / restaurant & hotel services either himself or through his representative, franchises or servants / employees. 2. A suit for injunction under the Trade Marks Act, 1999 ('the Act') was filed by the respondent-plaintiff, inter-alia, with the submissions that the plaintiff is a partnership firm; since 1993 under the trade mark of ckophZ* (Bawarchi) it was operating a restaurant in the name of ^ckophZ QkLV QwM^ and since 2013 was operating a website 'bawarchirestaurant.in', through which it was advertising its restaurant and providing online facility. It was claimed that the restaurant has its goodwill and fame and is popular among tourist and general public. It was claimed that for the purpose of protecting his trade mark, the plaintiff made application before the Registrar of Trade Marks, Ahmedabad and from time to time registration certificates were issued. A list of registration certificates six in number under various class i.e. 43, 30, 33 & 32 were indicated. It was claimed that since 1993, the plaintiff is lawful proprietor and owner of the registered trade mark ckophZ* (Bawarchi), word mark in Hindi and English and the logo and therefore, only the plaintiff has the right to use the same. It was alleged that the use of trade mark 'Bawarchi' by any one else would create confusion in the mind of consumers and the same would lead to passing of the services as that of the plaintiff or in someway connected with the plaintiff. It was also claimed that in relation to the trade mark, the plaintiff has a right under the Act to restrain others from infringing the same and from passing off under the common law. 3. It was also claimed that in relation to the trade mark, the plaintiff has a right under the Act to restrain others from infringing the same and from passing off under the common law. 3. It was then alleged that the defendant with a view to make illegal profits by using the registered trade mark has started operating restaurant in the name of , ckophZ QkLV QwM^ which is a clear violation of the plaintiff's legal right and against the Act. It was alleged that the services of the plaintiff and defendant are of similar nature, they have similar consumers and marketing channel, the names are phonetically similar and the trade marks are also similar, which would result in confusion and deception and the services would be passed off and therefore, it was necessary to restrain the defendant. 4. It was claimed that the plaintiff become aware of the acts of the defendant in the year 2015, after which legal notice for not violating the trade mark was given, the defendant assured that he would change the name and the application for registration of the trade mark has been withdrawn on 21.05.2015, however, despite withdrawal of the application, the restaurant is being operated in the name of image 2, which is illegal and falls within the category of infringement / passing off and amounts to fraud on public. Based on the said submissions, relief of permanent injunction in the suit was claimed restraining the defendant from using the trade mark 'Bawarchi' directly or indirectly. 5. Alongwith the suit, an application under Order XXXIX, Rule 1 & 2 CPC was filed seeking temporary injunction based on prima facie case, balance of convenience and irreparable injury. 6. The appellant-defendant filed reply to the temporary injunction application denying the averments made in the application. 7. It was, inter-alia, indicated that though the plaintiff claims to be running the restaurant in the name of ckophZ QkLV QwM since 1993, however, the application for obtaining trade mark has been filed in the year 2013 and prior to that, the same was being used without registration. It was denied that the trade mark has been infringed and / or the same was similar. It was also claimed that both the marks were substantially different and there was no likelihood of any confusion and deception as alleged. It was denied that the trade mark has been infringed and / or the same was similar. It was also claimed that both the marks were substantially different and there was no likelihood of any confusion and deception as alleged. It was denied that the application for registration of trade mark was withdrawn on 21.05.2015 and it was also claimed that the same was still pending. 8. Submissions were also made that the defendant has got registration under the Rajasthan VAT Act from 01.12.2012 and is having a food licence from the Department of Medical & Health Services, Rajasthan since 16.03.2012 in the name of ckophZ QkLV QwM and that he was operating the restaurant since 1990, which is prior in time than the plaintiff. It was denied that the plaintiff is entitled to any permanent injunction. 9. In additional plea, it was submitted that the defendant was operating restaurant in the name of ckophZ QkLV QwM since 01.04.1990, whereas, the plaintiff was operating since 1993. The defendant had user/registration under various laws since 16.03.2012, 21.08.2012 & 28.12.2012 gas connection, from Department of Medical & Health Services, VAT Registration, respectively. It was also submitted that the different trade marks registration claimed by the plaintiff are in different classes whereas the defendant was operating the restaurant under class 43 regarding which application has already been filed for registration, which is pending. It was prayed that the application be rejected. 10. The trial court, after hearing the parties, came to the conclusion that prima facie the use of word ^ckophZ^ by the plaintiff for his business since 1993 was proved, which is supported by the order dated 23.04.2018 by the Assistant Registrar of trade mark, Ahmedabad, wherein it was found that the applicant has registration under class 30 & 32 in the name of 'ckophZ' and was using the trade mark since 1993. It was also held that though the defendant claimed to be using the trade mark ckophZ since 1990, however, nothing has been placed on record to support the said contention and the registration with the Tax Department and Medical Department are of the year 2012 and application for registration has also been filed in the year 2012 and therefore, the prior use under different classes by the plaintiff was reflected. 11. 11. The Court also came to the conclusion that the application, which was filed in the year 2012, for which the application has already been filed on 21.05.2015 for withdrawal of the said application and is only pending for grant of permission by the competent authority, who has discretion either to allow the application without cost or impose cost. It was further held that the word 'Bawarchi' and the word 'Bavarchi' are similar and their Hindi versions were identical and as the plaintiff was using trade mark since the year 1993, there was a prima facie case in its favour. Whereafter, after referring to the judgment of Hon'ble Supreme Court in Heinz Italia v. Dabar India Limited, (2007) 6 SCC 1 again it was held that the plaintiff has prima facie case. The Court also found that on account of phonetic similarity, there was likelihood of a consumer getting confused. Based on its finding on prima facie case, balance of convenience and irreparable injury were also found in favour of the plaintiff-applicant and consequently, injunction as noticed herein-before was granted. 12. Learned counsel for the appellant made submissions that the Commercial Court was not justified in granting the injunction. It was submitted that the plaintiff only had trade mark registration under class 30 & 33, whereas the appellant had applied for trade mark registration under class 43, which pertained to services for providing food & drink; restaurant & hotel and therefore, the grant of injunction in the present matter is not justified. 13. Further submissions were made that the registration obtained by the respondent, pertains to the device mark and not word mark and it is not even the case of the plaintiff that the device mark of the plaintiff is being used by the appellant and therefore, in view of provisions of Section 17(2) of the Act, the plaintiff cannot seek infringement of only a part of the said trade mark and on that count also order impugned deserves to be setaside. Further submissions were made that the trial court has given undue weightage to the fact that an application seeking withdrawal of the registration application was filed by the appellant before the Registrar of trade marks, it was indicated that though one of the counsel representing the appellant filed the application, while no order has been passed on the said application, another counsel representing the appellant is pursuing the application for registration and therefore, also the order impugned deserves to be set-aside. 14. Submissions were also made that the word is generic in nature and as such, the same does not confer any right on the plaintiff to seek an injunction in this regard. Attempts were also made to compare the trade mark of the plaintiff and that of the appellant to submit that the same were not similar. It was prayed that the order impugned deserves to be set-aside. 15. Learned counsel appearing for the respondent supported the order impugned. 16. It was submitted that the applicant is in possession of a word mark registration for ckophZ under class 43 & 30 since 31.07.2013; word mark registration for 'Bawarchi' since 27.09.2011 under class 43; another registration for ckophZ QkLV QwM alongwith ckophZ in Hindi under class 30 since 22.09.1997 as device and registration for ckophZ QkLV QwM alongwith ckophZ in Hindi under class 33 since 26.04.2012 and therefore, the plea raised with regard to the plaintiff not in possession of the trade mark registration under class 43 is baseless. 17. Further submissions were made that the application for withdrawal of registration was indeed filed by the appellant, despite filing of the application, merely because order on the application was not passed, which is only related to as to whether the cost is to be imposed or not, the appellant cannot claim that the proceedings are still pending. 18. With reference to the material available on record, it was emphasized that there is no difference whatsoever in the registered trade mark of the plaintiff and that being sought to be usurped by the appellant. It was denied that the term of 'Bavarchi' is generic and that the plaintiff only has registration of device mark and not the word mark. It was submitted that the trial court has thoroughly considered all the aspects and therefore, the order impugned does not call for any interference. 19. It was denied that the term of 'Bavarchi' is generic and that the plaintiff only has registration of device mark and not the word mark. It was submitted that the trial court has thoroughly considered all the aspects and therefore, the order impugned does not call for any interference. 19. We have considered the submissions made by learned counsel for the parties and have perused the material available on record as well as the record of the Commercial Court. 20. The facts are not in dispute wherein the plaintiff based on the prior user and registration of the trade mark , has filed the suit and the appellant though claims that his application for registration is still pending with the Registrar, presently do not have any such registration. It is also not the case of the appellant that he has sought cancellation of registration of trade mark granted to the plaintiff. The material on record clearly reflects that the plaintiff is in possession of trade mark registration under various classes including class 43. 21. The plea sought to be raised by learned counsel for the appellant that the plaintiff does not have word mark registration, is apparently contrary to the record as word mark registration for ckophZ dated 31.07.2013 and word mark registration of 'Bawarchi' in class 43 since 27.09.2011 is on record. 22. In view thereof, the plea sought to be raised based on Section 17(2) of the Act regarding using a part of the trade mark device by the plaintiff for alleging infringement also apparently has no basis. 23. The submission made that there is no similarity between the trade mark of the appellant and of the plaintiff, is to say the least without any basis, inasmuch as, the use of word ckophZ in Hindi is identical and in English, except for difference by using the word 'V' instead of 'W' in Bawarchi, neither there is any phonetic change nor the word changes in any manner and therefore, the attempt made to claim otherwise cannot be countenanced. 24. So far as the plea raised that the word ckophZ is generic in nature, for substantiating the said submission, the appellant has failed to place on record any material to indicate wide spread user of the term so as to claim the same to be generic in form. 24. So far as the plea raised that the word ckophZ is generic in nature, for substantiating the said submission, the appellant has failed to place on record any material to indicate wide spread user of the term so as to claim the same to be generic in form. In fact, the appellant except from his own user, has not produced any user under any class to claim the same to be generic. 25. So far as the plea regarding pendency of the proceedings before the trade mark authorities is concerned, if the plea of the appellant regarding pendency of the proceedings is correct, the application is pending since the year 2012 and the counsel despite query by the Court is unable to indicate its status after passage of over 09 years and therefore, if the application is still pending, the appellant must pursue the said application. 26. In view thereof, the submissions made seeking to question the validity of the order passed by the Commercial Court granting injunction against use of the registered trade mark, have no substance. 27. Consequently, the appeal has no substance, the same is, therefore, dismissed.