The Delhi High Court expounded that the registered proprietor does not get exclusive rights over a mark if that mark is descriptive in nature. While dismissing the appeal, it also clarified that the use of a part of a composite mark by another party does not always result in the two marks being deceptively similar.
Brief Facts:
The Respondents were owners of a restaurant named “SANJHA CHULHA” in Faridabad whereas the Appellant too was engaged in a similar business and opened a restaurant in New Delhi with the same name. The Appellant had filed an application for interim relief seeking restraining orders against the Respondents from using the name “SANJHA CHULHA” and marks that are deceptively similar. The application of the Appellant was rejected and hence, the present appeal has been preferred.
History of the Case:
The Appellant had contended that he has been in the business since 1986 under the name and style of “SANJHA CHULHA”. It was argued that due to the growing reputation of the business, the Appellant expanded by opening more restaurants at different locations. The Appellant claimed that he had even gotten the trademark registered under different classes. However, while filing for the wordmark “SANJHA CHULHA” vide trademark applications, the Respondents objected to his application. The Appellant contended that due to the unique design, structure, and combination of different colors and features, etc., the work qualified as “artistic work” and therefore, the Appellant even got it registered under the Copyright Act, 1957.
The Appellant had even raised objections before the trademark registry when the Respondents tried to register the said mark. One of the applications filed by the Appellant raising objection to the claims of the Respondent that he had been using the mark since 1992 is pending before the Trademark Registry. Pursuant to the issuance of several notices, a suit was instituted by the Appellant seeking a permanent injunction against the Respondent and the Learned Commercial Court had granted an ex parte ad interim injunction vide which Respondent was restrained from using the said mark and name “SANJHA CHULHA”. Subsequent to this the Respondent filed an application for vacating the said injunction order and the Appellant had preferred an application claiming violation of the said injunction order.
The learned Commercial Court accepted the contentions of the Respondent and opined that the word “SANJHA CHULHA” is now commonly associated with general dhabas and therefore, the Appellant does not have an exclusive right to use the word. The learned Court also pointed out that the Respondent is a prior user and the distance between the restaurants is wide enough that none of the parties can solicit customers. Based on these reasons, the Court held the word “SANJHA CHULHA” to be descriptive.
Contentions of the Appellant:
The Appellant contended that due to the business line of both parties being similar in nature, there was confusion created in the minds of the customers. It was argued that the Appellant is both the prior user and the registered proprietor of the said trademark. It was contended that a lot of money and time has been spent to build reputation and identity through the marks and the same has been a significant factor in increasing the sales of the appellant. This is why the appellant’s trademark has acquired the status of a well-known trademark.
Contentions of the Respondent:
It was argued by the Respondent that the name “SANJHA CHULHA” translates into community clay oven in Punjabi language and therefore, is not coined by the Appellant. It was contended that the sales of the Respondent were more than the sales of the Appellant and also that the distance between the restaurants of both the parties was wide enough that customers were not common. It was argued that the Respondent is a prior user and the registration in favor of the Appellant should be canceled. The words “SANJHA CHULHA” are associated with eateries and therefore, the Appellant does not have any exclusive right to use the said words.
Observations of the Court:
The Court observed that the Appellant was not a registered user as he had filed for registration of the word mark “SANJHA CHULHA” but he was not granted the registration due to the opposition. The Court pointed out that the Appellant had failed to prove that he was using the mark since 1991. It also remarked that if false information was given to obtain registration, the same is a good ground to cancel the registration. The assertions of the Appellant contradicted each other and hence, were not credible enough to support his contentions. The Court observed that the contentions of the Respondent were credible as indeed the sales of the respondent were much higher than that of the Appellants.
The Court expounded that merely because in the application the Appellant contended the use of the word mark from a certain date is not evidence that the Appellant has been using the mark since that date. It has to be established properly that the use and adoption of the said trademark was in fact from the date as alleged.
With respect to whether any exclusive right is conferred for the usage of the words “SANJHA CHULHA”, the Court opined that registration of composite mark does not always grant exclusivity. If a prominent part of the registered trademark is used by another party either on a standalone basis or as a part of the composite mark, then this could be an indication of the deceptively similar marks. However, when a part of a composite mark is used by another party, it does not always result in the two marks being deceptively similar.
The term “SANJHA CHULHA” is descriptive as it is used in Punjabi Language and it has also acquired a figurative meaning, “kitchen”. No exclusive right is conferred on a proprietor that includes the usage of descriptive or common words. Therefore, merely because the mark has been registered, the party cannot claim exclusivity over the usage of descriptive words.
The decision of the Court:
The Court based on the reasons dismissed the appeal clarifying that the findings are tentative and only limited to the extent of examining whether the order passed by the Learned Commercial Court requires interference or not. The Court opined that there is no reason to declare the order as arbitrary or perverse and therefore, dismissed the appeal.
Cause Title: Sanjha Chulha v. Sanjha Chulha & Ors.
Bench: Hon’ble Mr. Justice Vibhu Bakhru, Hon’ble Mr. Justice Amit Mahajan
Decided on: November 02nd, 2022
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