1/9 APP-517-16
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.517 of 2016
IN
NOTICE OF MOTION NO.144 OF 2015
IN
SUIT NO. 38 OF 2015
Firoz Qureshi and others .. Appellants
Versus
Mehboob Khan .. Respondent
...
Mr. Sharan Jagtiani with Mr.Rohan Kadam with Mr.Mohanish
Choudhari i/b Mr.Mohanish Chaudhari, for the appellants.
Dr.Virendra Tulzapurkar, Sr. Advocate with Mr.Vinod Bhagat with
Dhiren Karania i/b M/s.G.S. Hegde and V.A. Bhagat, Advocate for
respondent.
CORAM: DR. MANJULA CHELLUR, CJ. &
G.S. KULKARNI, J.
RESERVED ON: 19th JANUARY, 2017 PRONOUNCED ON: 3rd APRIL , 2017 JUDGEMENT.:- (PER DR.MANJULA CHELLUR, CJ) 1 The defendants before the trial Court are before us being aggrieved by the order of the learned trial Judge granting an injunction in terms of the impugned order. The respondent before Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 2/9 APP-517-16 this Court was the plaintiff before the learned Single Judge. The suit was in respect of an action for trade mark infringement and passing off.
2 In brief, the facts that led to the filing of the present Appeal need to be stated in short as below :-
The respondent - plaintiff claims to have started a restaurant under the trade mark "CARTER'S BLUE" as registered proprietor of the said trade mark in clause 43 as of 16 th June 2011 and as of 18th May 2013. In order to run the restaurant in the above mark by the sole proprietor, he admittedly took the premises from the original owner i.e. the first defendant. The premises in question are near Amrut Building, Carter Road, Bandra. 3 Apparently, the plaintiff is said to have entered into an agreement dated 1st April 2008 with the first defendant for conducting the business. According to the plaintiff, with the above mark, he was running his restaurant business since April 2007 serving Lebanese, Arabic and Mughlai food and became very popular soon. He was also extending catering services for all Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 3/9 APP-517-16 functions. He also claims that on the Carter Road, the plaintiff's was the first one to start the restaurant. In 2003, in the month of March, a second restaurant was opened in Andheri, followed by a third in Malad in the year 2013. In the meanwhile, the so-called conducting agreement between the plaintiff and first defendant came to an end. Consequently, he relocated his business with the mark "CARTER'S BLUE" to another building on the very same Carter Road. The plaintiff refers to various certificates and copies of awards so far as his restaurant is concerned. Successful establishment of more than one restaurant would indicate his popularity in the business. According to him, "Carter's Blue" is now exclusively associated with his own establishment, apart from being a registered proprietor of the mark in question. 4 It is further contended on behalf of the plaintiff that irrespective of the title given to the document for conducting business between him and the defendants, it was nothing but a leave and licence agreement and the problem started when the appellant - first defendant started a rival business at the premises where the plaintiff conducted his business as "Carter's Blue". The first defendant called this rival business as "Mezbaan Carter's Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 4/9 APP-517-16 Blue". According to the plaintiff, the search in the trade mark registry indicated that only on 25 th April 2013, the first defendant had sought for registration of the mark "Mezbaan Carter's Blue" in clause 43, claiming use from 5th March 2005. However, using the trade mark from 2005 is categorically denied by the plaintiff. According to the plaintiff, none of the defendants/appellants carried on any restaurant business using this rival mark. As a matter of fact, ad-interim injunction came to be granted on 15th September 2014 when the 4th defendant was not a party to the proceedings. He was later added as a party since he was the proprietor of Mezbaan Carter's Blue restaurant. The contention of 2nd and 4th defendants before the learned Single Judge was that they have changed their restaurant's name from "CARTER'S BLUE" to "CARTER'S EXPRESS". On 17th March 2015, in the affidavit filed by the first defendant appellant confirms the fact that after the order of the learned Single Judge on 15 th September 2014, the first defendant commenced his business as "CARTER'S EXPRESS", and according to them, "Carter's Express" is entirely distinctive without any similarity with that of "Carter's Blue". According to the first defendant, he was running a business called as "CARTER'S BLUE", as stated before the learned Single Judge in the arguments, Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 5/9 APP-517-16 but however, the statement in the affidavit is otherwise. According to the defendants, they no longer claim any right to use the mark "CARTER'S BLUE". They have categorically accepted that they have changed their name and mark subsequent to an order of injunction on 15th September 2015. They contend that they have given up using both "Mezbaan" and "Carter's Blue". In the light of the said contention before the trial Court, the learned Judge was justified in opining that the Notice of Motion from which the impugned order arose, is to be restricted to the controversy whether "CARTER'S EXPRESS" can be said to be deceptively and confusingly similar to that of CARTER'S BLUE. 5 At the initial stage of ad-interim relief in the order dated 21st April 2015, it was observed that prima facie, the mark used by the defendants - appellants "CARTER'S EXPRESS" is not per se deceptively similar to the trade mark "CARTER'S BLUE" of which the plaintiff respondent is a registered proprietor. On merits, the learned Single Judge after referring to Section 17(2) of the Trade Marks Act, 1999 (hereinafter referred to as 'the said Act") was of the opinion that whenever or wherever a mark consists of several non-descriptive components, the mark may be Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 6/9 APP-517-16 registered, but exclusivity is with reference only to the trade mark in its entirety, and not with reference to different components of the entire mark as contemplated u/s.17(1) of the said Act. He was justified in opining that under those circumstances, in terms of Section 17(2) of the Act, registration of a mark does not lend exclusivity over its components unless registration has been sought or granted for those individual components. He was further right in opining that components are publici juris (generic terms) or non-descriptive or incapable of registration. 6 Learned Judge referred several cases of Veena Nalin Merchant & ors Vs. Laljee Godhoo & Co & ors, 2015(3) Bom.C.R. 778 and Alaknanda Cement Pvt.Ltd Vs. Ultratech Cement Ltd, 2012(1) Bom.C.R. 519. It is well settled that when a trade mark consists of several matters, its registration confers exclusivity to the proprietor so far as the trade mark if taken as a whole. In other words, even if the trade mark consists of several components, the benefits of registration confers exclusivity to the proprietor only if the said trade mark is referred to as a whole mark, and not the individual components. It is also well settled that when a trade would consists of several parts, if any part which Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 7/9 APP-517-16 is not a subject matter of separate application and if separately not registered in favour of the proprietor, and if it is common to the trade not being a non-distinctive character, then proprietor cannot claim exclusivity over individual components. 7 In the present case, the appellant's claim is exclusivity if the mark CARTER'S BLUE is taken as a whole. As against the claim of the respondent- plaintiff that when the two marks that of the appellants and of the respondent are considered visually and phonetically i.e. "CARTER'S EXPRESS" AND "CARTER'S BLUE", there is a similarity.
8 Apparently, there is nothing on record to show that when appellants/defendants handed over the premises to the respondent- plaintiff to run the restaurant in the premises, till then the first defendant was running his business in the name of "CARTER'S BLUE". As of now, from the material it goes to show that "CARTER'S BLUE" gained popularity when the plaintiff established the restaurant business. The turnover of the plaintiff's business from 2008 onwards is a clear indication of goodwill and reputation attached to the mark "CARTER'S BLUE". There is Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 8/9 APP-517-16 nothing on record to show that prior to 2007 or 2008, first defendant had anything to do with the mark either "CARTER'S BLUE" or "CARTER'S EXPRESS".
9 The document, at this stage does not clearly establish that the defendants had anything to do with running a restaurant in the name of 'CARTER'S BLUE" prior to 1st April 2008. On the other hand, the premises and the requisite licence for running such restaurant do stand in the name of the respondent/plaintiff. The plaintiff is a registered proprietor of the mark "CARTER'S BLUE". That apart, only after the respondent handed over the premises to the defendants and moved somewhere else, the appellants- defendants set up their rival business in the name "MEZBAAN CARTER'S BLUE", later "CARTER'S EXPRESS", after abandoning "MEZBAAN CARTER'S BLUE". There is no prohibition to have restaurant business within the vicinity of plaintiff's business so far as the defendants are concerned, but under what name is the question? The appellants sought registration of "CARTER'S EXPRESS" only on 22nd October 2014 though they claim the use from 1999. There is nothing on record to show that either prior to 1st April 2008 or prior to 22nd October 2014, they had anything to Tilak ::: Uploaded on - 11/04/2017 ::: Downloaded on - 27/08/2017 21:57:21 ::: 9/9 APP-517-16 do with this "CARTER'S EXPRESS". On the other hand, they had started using this mark only after ad-interim order dated 15 th September 2014 was passed. Therefore, their claim of using the said name since September 1999 falls to ground. The learned Judge was justified in saying that the appellants neither could satisfy the Court with regard to their claim of "MEZBAAN CARTER'S BLUE" nor "CARTER'S EXPRESS".
10 In the above circumstances, we are of the opinion that learned Judge was justified in granting injunction in respect of both Infringement and passing off.
11 We decline to interfere in this Appeal.
12 Accordingly, Appeal is dismissed.
(G.S. KULKARNI, J.) (CHIEF JUSTICE)
Tilak
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