* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on :03.05.2017
Judgment delivered on :09.05.2017
+ CS(COMM) 278/2017
FOODCRAFT INDIA PRIVATE LIMITED
..... Plaintiff
Through Mr. Chandra M. Lall, Sr. Adv. with
Ms. Vedanta Verma, Mr.Neeraj Roy
and Mr. Rupin Bahl, Advs
versus
SAURABH ANAND TRADING AS URBAN PALLETTE
RESTAURANTS & ORS
..... Defendants
Through Mr. Sushant Singh, Mr. Vineet
Chaudhary and Mr. Saurav Roy,
Advs.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J.
I.A. No.4601/2017 (under Order XXXIX Rules 1 & 2 of the Code) 1 The plaintiff Food Craft India Private Limited is a company incorporated in the year 2012under the Indian Companies Act. It is engaged in the business of providing delivery of Pan Asian food across Delhi/NCR. It specializes in gourmet delivery, bringing a taste of contemporary pan asian I.A. No.4601/2017 in CS (COMM) 278/2017 Page 1 of 27 cuisine to Delhi and the NCR. It strives to promote healthy living by making a conscious effort to reduce the use of artificial flavors, oils and sugars traditionally used in asian cooking. The plaintiff is the proprietor of the trademarks „ASIAN HAUS‟ and „SUSHI HAUS‟. The plaintiff opened its first delivery outlet under the trademark „ASIAN HAUS‟ in the year 2012 at Greater Kailash. He has now opened another outlet under the mark „ASIAN HAUS‟ at Gurgaon and two outlets under the mark „SUSHI HAUS‟ in Delhi as also in Gurgaon. The plaintiff has been extensively using „ASIAN HAUS‟ in relation to Pan Asian cuisine since its adoption in the year 2012. He has spent enormous sums of money in the advertisement and promotion of their outlets/restaurant under the mark „ASIAN HAUS‟. The plaintiff has filed an application seeking registration of his trademark vide TM Application No.2452613 in class 43 dated 01.01.2013. The said application is yet pending.
2 The plaintiff has further expanded its business and has opened „SUSHI HAUS‟ which caters a Japanese cuisine which outlet he is running since the year 2015. He is also in the process of launching other outlets/restaurants under HAUS formative marks such as DILLI HAUS and AMMA‟s HAUS for north Indian and south Indian cuisine. The process for initiating the same I.A. No.4601/2017 in CS (COMM) 278/2017 Page 2 of 27 has already started. Plaintiff has also applied for registration of the mark „SUSHI HAUS‟ vide TM Application No. 3033625 in class 29 on 01.11.2014 which is pending.
3 The sale figures of the plaintiff has grown over the years i.e. from the inception of his business which was in the year 2012; the turnover from Rs. 4 crores plus has gone up to more than Rs.13 crores. Details find mention in para 10 of the plaint. The books of accounts of the company maintained in the ordinary course of business are also a part of the record. The plaintiff further avers that „ASIAN HAUS‟ has been covered by the press in various newspapers and news articles; it is a well known mark associated with the trade of the plaintiff; so also „SUSHI HAUS‟. The reputation and popularity of the plaintiff‟s restaurant under the aforenoted marks has gone up many fold; the plaintiff has also developed the domain name www.asianhaus.com and www.sushihaus.in. He is also offering its services to a third party website and mobile applications like zomato.com, foodpanda.com, Paytm and quick wallet etc. 4 Because of the extensive use of the trademark „ASIAN HAUS‟ and HAUS formative marks which has also been used for „SUSHI HAUS‟ in respect of food and drinks and online delivery service, the plaintiff now has I.A. No.4601/2017 in CS (COMM) 278/2017 Page 3 of 27 an exclusive right to use the trademark „ASIAN HAUS‟ and other formative marks in respect of the said business. Further submission is that the word HAUS is a German term and adoption of the mark „ASIAN HAUS‟ by the plaintiff in relation to food is completely innovative and his own creation. These trademarks have now acquired a tremendous goodwill and reputation amongst the consuming public.
5 In March, 2017, the plaintiff learnt about the offending activities of the defendants who without any authorization was in the process of launching a food delivery outlet under the mark „CURRY HAUS‟. Upon inquiries it was learnt that the proposed food delivery outlets were to be launched in Delhi, Gurgaon and NCR. The plaintiff also learnt that the defendants own a restaurant under the name of „Masala House‟ at 4, Sunder Nagar, New Delhi; the defendants have deceitfully adopted the mark „CURRY HAUS‟ for their delivery service only to associate with the name of the plaintiff and to take benefit of the reputation and goodwill which the plaintiff has acquired in the said trademarks in relation to the food delivery business. The defendants are falsely suggesting to consumers that the services offered by them are originating from the plaintiff or that the services of the defendants are associated with the plaintiff. The plaintiff sent a cease I.A. No.4601/2017 in CS (COMM) 278/2017 Page 4 of 27 and desist notice (dated 20.03.2017) calling upon the defendants to cease and desist from using the trade name „CURRY HAUS‟ in relation to their business. A reply was received on 31.03.2017. This reply was not on behalf of „Masala House‟ but on behalf of an entity by the name of "Urban Palette Restaurants". To the best of the knowledge of the plaintiff, the defendants are partners in a partnership concern under the name of Urban Palette Restaurants; the plaintiff is not aware of their exact constitution. However discussions took place between the plaintiff and Urban Palette Restaurants. Nothing fructified. The plaintiff filed the present suit on 17.04.2017; the defendants allege that they have launched their five delivery outlets under the brand name „CURRY HAUS‟ on 11.04.2017. On 07.04.2017 and 09.04.2017, the internet check revealed that the defendants were in the process of launching these five outlets which were then opened on 11.04.2017. The aforesaid activities of the defendants in using the mark of the plaintiff „CURRY HAUS‟ which is associated with the well known business of the plaintiff is a clear attempt by them to encash upon the goodwill and reputation of the plaintiff‟s trademark and especially by being in the same trade.
6 The plaintiff has accordingly filed the present suit. Besides the prayers I.A. No.4601/2017 in CS (COMM) 278/2017 Page 5 of 27 in the suit, the pending application has been filed seeking an ad-interim injunction against the defendants restraining them from using the mark of the plaintiff „HAUS‟ which is associated with the mark of the plaintiff. 7 Written statement and reply to the pending application has been filed by the defendants. Foremost submission of the defendants is that the word „HAUS‟ is a non distinctive part of alleged name „ASIAN HAUS‟ and „SUSHI HAUS‟ on which the plaintiff claims to be the owner. Present suit in the present form is not maintainable. The plaintiff is guilty of an inequitable conduct; he cannot claim monopoly over the word „HAUS‟ on which basis the plaintiff seeks to prevent the defendants from using the mark „CURRY HAUS‟. This monopoly is expressly prohibited under the provisions of Section 17 of the Trademarks Act. A suit for passing of on the basis of a non-distinctive component of the word „HAUS‟ which is otherwise common to the trade is not maintainable in view of the aforenoted express prohibition. The plaintiff has concealed the fact that the word „HAUS‟ has been used by the other proprietors in India including those in Delhi and Gurgaon as also other metropolitan cities of India. It is worldwide used in various countries likes Japan, Germany, England, France, USA, Australia for restaurant business; it is either by use as a suffix or as a prefix to attribute I.A. No.4601/2017 in CS (COMM) 278/2017 Page 6 of 27 that the food is from a home or emanating from a house kitchen. It is not the plaintiff who has first started using the word „HAUS‟ as part of the name of a restaurant. There are several others who are already registered using the word „HAUS‟ as a part of their restaurants. The words „HAUS‟ or „HOUSE‟ are even otherwise phonetically similar; „HAUS‟ means „HOUSE‟ and the use of the word „HAUS‟ in a restaurant business is only indicative of a fact that the it home made food which is being served in the restaurant or provided through its delivery outlets. The word „HAUS‟ is a simple dictionary word which has an origin in the German language. This word „HAUS‟ has been used worldwide as a trade practice by restaurateurs and hotel merchants in relation to this business to form a name. Details of other parties who are using the word „HAUS‟ and „HOUSE‟ have been given in paras 7 and 9 of the written statement. It is pointed out that this long list of users of the word „HAUS‟ and „HOUSE‟ in Delhi and the NCR region as also in various other cities of India clearly reflect that the use of the word „HAUS‟ is not an innovation of the plaintiff; no monopoly can be accorded upon this word to the plaintiff. Present suit is not maintainable. It is liable to be dismissed. It is further pointed out that the class of customers who approach the plaintiff and the defendants are a well educated class; being a I.A. No.4601/2017 in CS (COMM) 278/2017 Page 7 of 27 home delivery service, they place an order over telephone after understanding the difference of the outlets as well as the nature of the food which is being served; whereas „ASIAN HAUS‟ and „SUSHI HAUS‟ are serving pan asian and japanese cuisine respectively; „CURRY HAUS‟ as is reflected from its menu is mainly dealing with Indian food; there is absolutely no confusion. The suit of the plaintiff is liable to be dismissed. 8 Replication has been filed reiterating the averments made in the plaint and denying the defence set up in the written statement. 9 On behalf of the plaintiff, arguments have been addressed by learned senior counsel Mr. Chander M. Lall. The averments made in the plaint have been reiterated. It is reiterated that the plaintiff has acquired a goodwill and reputation by a continuous user of the trade name „ASIAN HAUS‟ which was the first pan asian delivery outlet/restaurant set up by the plaintiff in the year 2012. The word „HAUS‟ is innovative and is a creation of the plaintiff as the word „HAUS‟ although means a „HOUSE‟ but has no connection with the trade which the plaintiff is doing i.e. the business of supply of food through its delivery outlets. „SUSHI HAUS‟ set up in 2015 is also a delivery outlet where food is supplied on a telephonic order placed upon the plaintiff. This delivery service is not restricted to Delhi but across the NCR including I.A. No.4601/2017 in CS (COMM) 278/2017 Page 8 of 27 Gurgaon. The defendants have encashed upon the goodwill and reputation of the plaintiff; nothing prevented the defendant from opening its second outlet under the name „HOUSE‟ as admittedly „Masala House‟ is a restaurant being run by him; the word „HAUS‟ has deceitfully been adopted by him only to ride upon the goodwill and reputation which the plaintiff has built up over the years. The trade of the plaintiff and the defendants is the same; it is a delivery outlet service which even otherwise is a concept fairly new in India. The plaintiff in support of his stand that a prima-facie case has been made out by him entitling him to an injunction has relied upon 2007 Indlaw DEL 606 Ishi Khosla Vs. Anil Aggarwal and Another as also another judgment reported as Sunil Mittal & Anr Vs. Darzi On Call decided in CS (COMM) 1381/2016 delivered on 19.04.2017. It is pointed out that where "whole food" was the mark of the plaintiff, in that case, in spite of mark having a dictionary meaning was entitled to a protection. To support the same submission, reliance has also been placed upon MANU/SC/0169/2011 T.V. Venugopal Vs. Ushodaya Enterprises Ltd. and Anr. It is pointed out that the stand of the defendants that the plaintiff has not chased or followed up his case against other persons who are also using the word „HAUS‟ would not be a defence available to the defendants and for this proposition reliance I.A. No.4601/2017 in CS (COMM) 278/2017 Page 9 of 27 has been placed upon 98 (2002) DLT 499 Info Edge (India) Pvt. Ltd. And Anr Vs. Shailesh Gupta and Anr.as also 2008 (38) PTC 49 (Del) Shri Pankaj Goel Vs. Dabur India Ltd.; injunction cannot be refused to the plaintiff on this count. Learned senior counsel for the plaintiff additionally points out that at the time when the defendant opened its outlets a notice of opposition had already been served upon him asking him to desist from using the name of the plaintiff; he having opened his outlet on 11.04.2017 when up to that date negotiations were going on between the parties is itself suggestive of a dishonest adoption by the defendant of the trade name of the plaintiff which he has done at his own risk and cost. He cannot use this as a fair defence. For this proposition reliance has been placed upon 2013 AD (Delhi) 130 Red Hat INC Vs. Mr. Hemant Gupta & Others as also 207 (2014) Delhi Law Times 35 Bloomberg Finance LP Vs. Prafull Saklecha & Others. Submission is that the denial of the interim injunction at this stage would cause an extreme hardship to the plaintiff and the defendant who has entered into the business just four days before the filing of the present suit knowing fully well that an opposition to the same has been served by him, is not entitled to any discretionary relief.
10 These arguments have been countered. Arguments on behalf of the I.A. No.4601/2017 in CS (COMM) 278/2017 Page 10 of 27 defendants have been addressed by Mr. Sushant Singh, Advocate. It is pointed out that a dictionary word which is so in the instant case cannot be monopolized; it is a common term and „HAUS‟ which means a „HOUSE‟ is closely linked with the trade of the defendant which is a home made preparations being delivered through the five outlets which the defendants have already launched under the brand name „CURRY HAUS‟. Learned counsel for the defendant has placed reliance upon 227 (2016) DLT 681 Living Media India Ltd. & Others Vs. Alpha Dealcom Pvt. Ltd. and Others as also another judgment reported as 2007 (35) PTC 610 (Del) Diageo North America, Inc. and Anr. Vs. Shiva Distilleries Limited. Reliance has been placed upon 157 (2009) DLT 791 Lowenbrau AG and Anr. Vs. Jagpin Breweries Ltd. and Anr. As also another judgment of the Apex Court reported as (2010) 2 SCC 142 Skyline Education Institute (India) Private Limited Vs. S.L. Vaswani and Another. It is pointed out that in this last judgment, the Apex Court had held that "Skyline" is a part of a name being used by various trade companies for describing different types of institutes/institutions; conclusion being that the word „Skyline‟ could be held to be nothing but generic. In the instant case also the word „HAUS‟ is a well known dictionary word being used commonly not only in India but the world I.A. No.4601/2017 in CS (COMM) 278/2017 Page 11 of 27 over for the restaurant and hotels business. Submission is that even presuming the plaintiff has acquired a distinctiveness, the distinctiveness is on the combination of the two words „ASIAN HAUS‟ and „SUSHI HAUS‟; he cannot claim his right over a single word which is a commonly used term; although it originates from the German language yet German is a language which has been made mandatory in India; after Sanskrit in almost all government schools including the Kendriya Vidyalaya it is to be taught. To substantiate this proposition, he has placed reliance upon a newspaper clipping. The Article from "McCarthey on Trademarks" and the doctrine of "foreign equivalence" has also been relied upon. It is pointed out that foreign words are held to be generic where similarity in sound is the same and they are recognized as such; „HOUSE‟ and „HAUS‟ are almost similar in hearing and as such it necessarily has to be held to be a generic word. No prima-facie case has been made out by the plaintiff; in the absence of a prima-facie case having been made out by him, the question of consideration of a balance of convenience and irreparable loss/injury would not arise. For this proposition reliance has been placed upon 1990 Supp (1) SCC 727 Wander Ltd. and Anr. Vs. Antox India P. Ltd. as also another judgment of a Bench of the Karnataka High Court reported as ILR 1989 KARNATAKA I.A. No.4601/2017 in CS (COMM) 278/2017 Page 12 of 27 1701 Sri Gowrishankara Swamigalu Vs. Sri Siddhaganga Mutt. Where a prima-facie case is not made out, further investigation on the other two parameters dealing with the grant of an interim injunction may not be considered by the Court. The conduct of the plaintiff does not entitle him to any relief as he is not the innovator of the word „HAUS‟; before he advances his case on equity, he must himself show that he is not guilty of any mis- representation; he being guilty of being an imitator is not entitled to any equity in his favour. For this proposition reliance has been placed upon AIR 1990 Delhi 233 Prem Singh Vs. Ceeam Auto Industries.
11 Arguments have been heard. Record has been perused. 12 The present suit is a case of passing off. Admittedly neither party has any registration. The plaintiff has applied for registration of his mark
„HAUS‟ on 01.11.2013 in clause 29. It is not the case of the defendant that he has any registration in his favour.
13 In Wander Limited (supra), the Apex Court had an occasion to consider the principles for grant of an interlocutory injunction in a passing off action. Relevant extract reads herein as under:-
"An infringement action is available where there is violation of specific property right acquired under and recognized by the statute. In a passing-off action, however, the plaintiffs right is independent of such a I.A. No.4601/2017 in CS (COMM) 278/2017 Page 13 of 27 statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reparation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by the trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader... ........
The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as a benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in hi favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off if should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of somebody else".
14 It is on this touchstone that the respective averments of the parties and I.A. No.4601/2017 in CS (COMM) 278/2017 Page 14 of 27 their documentary evidence has to be considered.
15 Pursuant to the incorporation of the plaintiff company in the year 2012, the plaintiff started its business of providing delivery of Pan Asian cuisine across Delhi/NCR. The concept of home delivery of food is not a very well recognized concept; it has started gaining momentum and popularity only recently. Admittedly the plaintiff had started this business in the year 2012. His trade name was „ASIAN HAUS‟. „ASIAN HAUS‟ as is evident from its menu had a concentration on asian preparations which catered largely to the chinese pallet. Its first outlet was opened in the year 2012 at Greater Kailash. His business expanded. He opened another outlet at Gurgaon under the same name in 2015. In 2015, his delivery outlet under the brand name „SUSHI HAUS‟ also started business not only from Delhi but also from Gurgaon catering to its customers in the NCR Region. The advertisement and promotional program of these outlets/restaurants i.e. „ASIAN HAUS‟ and „SUSHI HAUS‟ is evident from the invoices reflecting the money spent by the plaintiff on this campaign. The write ups relating to healthy eating advertised by these brand names i.e. „ASIAN HAUS‟ and „SUSHI HAUS‟ which caters both to asian cuisine and Japanese cuisine reflect their popularity. The write-ups published in the Aviation Times in I.A. No.4601/2017 in CS (COMM) 278/2017 Page 15 of 27 December, 2016, besides other health magazines; the Pioneer, Hindu, Sunday Guarding and Zoom Bailey all reflect the reputation which the „ASIAN HAUS‟ and „SUSHI HAUS‟ have acquired by innovation of this new concept of „chef at home‟ i.e. where the chef would come to their house and cook delicious food according to the taste and appetites of customers. These write ups show that these delivery outlets supply fresh, soft and delicious foods. Blogs relating to said cuisine have been uploaded by foodies who have savored these gourmet preparations; whereas „ASIAN HAUS‟ specializes in Chinese cuisine; „SUSHI HAUS‟ specializes in Japanese cuisine; both of them are home delivery outlets; the concept being to bring healthy food to your doorstep.
16 The word „HAUS‟ is a German origin and its German dictionary meaning is a "house". The plaintiff rightly points out that the trade which the plaintiff is carrying on i.e. supply of food through its delivery outlets is not in any manner connected with the meaning of this word. The submission of the defendant that „HAUS‟ connotes homemade food and these delivery outlets relate to delivery of home made food appears to be far fetched. The word „HAUS‟ in the Indian context does not breed that level of familiarity which would leave the customer of a kind which caters to the plaintiff and I.A. No.4601/2017 in CS (COMM) 278/2017 Page 16 of 27 the defendant‟s services to believe that „HAUS‟ connotes a home kitchen preparation. The plaintiff has admittedly been in this business under the trade name „ASIAN HAUS‟ since the year 2012. The initial one outlet in Greater Kailash, New Delhi expanded to a second one in Gurgaon. Two other outlets under the second brand name „SUSHI HAUS‟ are operating from Delhi and Gurgaon as well. „SUSHI HAUS‟ is in business since the year 2015. Since inception i.e. from the year 2012 up to the year 2017, the sale figures of the plaintiff have increased enormously; the initial turnover in the year 2012 which was Rs. 4 crores plus has now gone up to more than Rs. 13 crores. Admittedly the plaintiff is using the word „HAUS‟ to cater to its food delivery outlets since the year 2012 and escalation of its sale figures are reflective of the popularity of its brand name which was initially one outlet but has now expanded to five under two brand names i.e. „ASIAN HAUS‟ and „SUSHI HAUS‟, all these are indicators of the goodwill and reputation which the plaintiff has developed in the food market. There is thus no doubt that the plaintiff has acquired a distinctive reputation and goodwill of its own under the said trade names „ASIAN HAUS‟ and „SUSHI HAUS‟. 17 The defendant is running a restaurant business and has a restaurant at Sunder Nagar carrying on its business under the brand name „Masala I.A. No.4601/2017 in CS (COMM) 278/2017 Page 17 of 27 House‟. „Masala House‟ caters for Indian food. In March, 2017, the plaintiff learnt about the proposal of the defendant to start a food delivery outlet under the mark „CURRY HAUS‟. The plaintiff called upon the defendant by a cease and desist notice dated 20.03.2017; desisting them from using the mark „CURRY HAUS‟ in relation to this same business. Their reply was received on 31.03.2017. Negotiations were in fact going on between the plaintiff and Urban Palette Restaurants as the plaintiff on an internet search had learnt that Urban Palette Restaurants was proposing this outlet which was an entity no different from the entity who had set up „Masala House‟. Negotiations were on till 09.04.2017. The defendant launched its five delivery outlets under the brand name „CURRY HAUS‟ on 11.04.2017. This was at the risk and cost of the defendant as the defendant was fully aware that the plaintiff has put him to notice that the „HAUS‟ is the brand name of the plaintiff. The defendant has been advised to use „HOUSE‟ which he was using for his „Masala House‟ but the defendant had not acceded to this request.
18 The submission of the defendant on this count that the word „HAUS‟ is a well known terminology and no one can have a monopoly on this word, in the facts of the instant case, is a mis-conceived submission. The word I.A. No.4601/2017 in CS (COMM) 278/2017 Page 18 of 27 „HAUS‟ does not find mention in the English dictionary. Learned counsel for the defendant had pain stakingly drawn from the attention of the Court to the definition of the word „HAUS‟ in the "Collins English dictionary"; the word „HAUS‟ does not find mention there; the word in the English dictionary is „HAUS FRAU‟ which means a „house wife‟. "HAUS" is not an ordinary English language word. This Court also notes that it is not a restaurant which the plaintiff is running but a food delivery chain which supply food on telephonic orders being placed upon them which concept, at the cost of repetition, is not very well established in our country; it is only now gaining a momentum. The definition of „HAUS‟ in the German dictionary being „HOUSE‟ is not indicative of the business which the plaintiff has set up which is the supply of food at the doorstep of the customer. This idea of the plaintiff of delivery of food was admittedly much prior in time to that of the defendant i.e. five years before; it was then a new and „out of the box‟ idea. The defendant was running a restaurant business; functioning under the name „Masala House‟. What could have led the defendant to adopt „HAUS‟ instead of user of the word „House‟ in the same trade which the defendant was not doing up to date (food delivery outlet)? The defendant admittedly being in a restaurant business and not delivery of I.A. No.4601/2017 in CS (COMM) 278/2017 Page 19 of 27 food, this could be nothing but the dishonest intent on the part of the defendant to encash upon the goodwill and reputation which the plaintiff had developed in the food delivery chain market.
19 This is especially keeping in view the dates in mind. The plaintiff, at the cost of repetition, had served a desist notice upon the defendant on 20.03.2017 which had been replied by the defendant on 31.03.2017; parties were in active negotiations up to 09.04.2017; on 11.04.2017, five outlets were launched by the defendant under the same brand name „HAUS‟ which was being questioned by the plaintiff. It cannot be said that the defendant has entered the market honestly and with no dishonest intent. 20 In Ishi Khosla (supra) while dealing with the grant of an injunction in a case of passing off for trade name „Whole foods‟ reverting to the dictionary meaning of the „whole foods‟, a Bench of this Court was of the view that even holding that the „whole food‟ is an ordinary English word, it necessarily has to be protected for the reason that the plaintiff has been able to establish that all her food products were associated with this trade name and this concept had been created and conceptualized by the plaintiff i.e. natural foods which are not processed in the ordinary manner.
21 In T.V. Venugopal (supra), the Apex Court had inter-alia held as I.A. No.4601/2017 in CS (COMM) 278/2017 Page 20 of 27 under:-
"ii. The plaintiff's adopted name would be protected if it has acquired a strong enough association with the plaintiff and the defendant has adopted such a name in common field of activity i.e. the purchasers test as to whether in the facts of the case, the manner of sale, surrounding circumstances etc. would lead to an inference that the source of product is the plaintiff". 22 The use of the word „HAUS‟ is strongly associated with the plaintiff‟s trade; adoption by the defendant of the same name five years after the business of the plaintiff had already acquired a well established name can be described as nothing but an unfair user.
23 In AIR 1969 Bom 24 Sundar Parmanand vs. Caltex (India) Ltd., a Division Bench of the Bombay high Court cited with approval the words of Lord Denning in 1962 RPC 265 that where a person selected a mark with intention to deceive and cause confusion, he must be given credit for success in his intention. The Court held that in such a case "we should not hesitate to hold that the use of that mark is likely to deceive and cause confusion." This Court further held that the fact that the applicant had given no explanation for adoption of CALTEX would be an additional factor to be taken into consideration and an inference could be drawn that he adopted CALTEX "to take advantage of the reputation of the mark of the opponents." I.A. No.4601/2017 in CS (COMM) 278/2017 Page 21 of 27 24 In AIR 1985 All 242 Bata India Limited vs. Pyare Lal & Co., A. Banerji, J., of the Allahabad High Court held that the question "why should the defendant-respondent use the name "Bata" is a very material one. There is no plausible answer so far to this. The Court injuncted the defendant who had started using BATAFOAM in respect of its foam mattresses by holding that "the user of the name or mark BATA by the defendant is indicative of their (dishonest) intent.
25 It has now been well established and it is settled law that an action for passing off is a common law remedy being an action in substance of desist under the law of torts. The defendant appears to have by a manipulation intended to ride upon the goodwill of the plaintiff. He cannot be permitted to do so. Section 17 of the Trademarks Act does not come to the aid of the defendant. Beside the fact that this provision relates to the registration of a trademark and the present case being a case of passing off; Section 17 (2)(b) also does not help him. This Court has already held that the word „HAUS‟ has a distinctive character and is associated with the business of the plaintiff. This argument is without any merit.
26 The submission of the defendant that a prima-facie case has not been set up by the plaintiff is a mis-conceived submission. The word „HAUS‟ is I.A. No.4601/2017 in CS (COMM) 278/2017 Page 22 of 27 not generic; applying the test of an ordinary reasonable man and especially the customer who would order online delivery food would but necessarily be confused with „CURRY HAUS‟ and believe it to be an extension or another elaboration of the delivery outlets of „ASIAN HAUS‟ and „SUSHI HAUS‟. „ASIAN HAUS‟ was catering to Pan Asian cuisine. „SUSHI HAUS‟ came to be established catering for Japanese cuisine. „CURRY HAUS‟ if permitted to use the same trade name „HAUS‟; applying the test of a reasonable man it can only be presumed that „CURRY HAUS‟ is an addition outlet of this HAUS group i.e. of „ASIAN HAUS‟ and „SUSHI HAUS‟ which now specializes in Indian cuisine.
27 The Supreme Court in AIR 1963 SC 449 Amritdhara Pharmacy Vs. Satya Deo Gupta, has held the mark AMRITDHARA to be deceptively similar to the mark LAXMANDHARA. The Apex Court in the said Judgment further stipulated that the issue was to be examined by applying the test of an unwary purchaser having average intelligence and imperfect recollection. The Supreme Court in the said case held that even though a critical comparison of the two names may disclose some points of differences, yet an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two products. I.A. No.4601/2017 in CS (COMM) 278/2017 Page 23 of 27 28 The term „HAUS‟ having a German origin cannot be said to be an ordinary generic word; it has been coined by the plaintiff for its trade which trade is also un-connected with the meaning of „HAUS‟; food delivery outlets are not associated with houses or homes. The defendant is in fact targeting the same customer base as that of the plaintiff. 29 The submission of the defendant that the plaintiff has not chased the other persons who are carrying out business by using the prefix or suffix „HAUS‟ is also an argument which is mis-conceived. Besides noting the submission of the plaintiff that he has served a notice to desist to "Hakka Haus", the additional submission of the plaintiff that he cannot be denied an injunction merely because he has not proceeded against other similar names is an argument which has no force. This aspect has been dealt with in the judgment of Info Edge. Relevant extract of which reads herein as under:- It was also contended by the counsel for the defendant that there are many websites and domain names almost with similar name, which re existing and, therefore, there cannot be any monopoly to the plaintiff and also that the plaintiff having not proceeded against them for similar reliefs, is not entitled to proceed only against the defendant. The said contention was refuted by the plaintiff by placing on record a chart that the other websites with almost similar names are wither non-functional or are foreign language websites and they have nothing to do with jobs. It is thus prima facie established that I.A. No.4601/2017 in CS (COMM) 278/2017 Page 24 of 27 those websites/domain names stand apart and on a different footing from the domain names of the plaintiff and the defendant. There is neither any occasion nor is there any immediate necessity for the plaintiff to proceed against those websites/domain names, which are non-functional and non- relatable to the activity of employment and jobs. The plaintiff, therefore, cannot be denied relief and an injunction only because it has not proceeded against other similar names. As a matter of fact, when action is initiated, one similar domain name has to be always the first and that cannot be the reason for denying injunction to the plaintiff.
30 In fact, in 2004 (29) PTC 435 Dr. Reddy Laboratories v. Reddy Pharmaceuticals a Single Judge of this Court has held as under: ...the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.
31 In 1980 RPC 31 Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd., , Lord Diplock stated the essential characteristics of a passing off action as under:
I.A. No.4601/2017 in CS (COMM) 278/2017 Page 25 of 27 (1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
32 These parameters appear to be fulfilled. The plaintiff has been able to establish a prima-facie case. The plaintiff has been in the business since the year 2012. The defendant inspite of desist notice had launched its outlets on 11.04.2017. Present suit has been filed on 17.04.2017; the defendant was aware of the fact that the plaintiff will take action against him as the parties were in fact in active negotiations up to 09.04.2017. The adoption of the same trade name by the defendant was to say the least dishonest. Balance of convenience thus lies in favour of the plaintiff. In fact if the defendant is not injuncted from using the same trade name „HAUS‟ in the same business which the plaintiff is doing, an irreparable loss and injury would be suffered by the plaintiff.
33 Accordingly the defendant is restrained by an interim injunction from using the name „HAUS‟ for his delivery outlets; he is at liberty to use the word „CURRY HOUSE‟ which was the proposal which has been put to him I.A. No.4601/2017 in CS (COMM) 278/2017 Page 26 of 27 even in the course of the arguments but which was not acceptable to the defendant.
34 Application disposed of in the above terms.
INDERMEET KAUR, J
MAY 09, 2017
A
I.A. No.4601/2017 in CS (COMM) 278/2017 Page 27 of 27