Bombay High Court
Mehboob Khan vs Firoz Qureshi And 2 Ors on 16 June, 2016
Bench: G.S. Patel
Mehboob Khan v Firoz Qureshi & Ors.
226-NMS-144-2015-CARTERS BLUE-F.DOC
JSN
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.144 OF 2015
IN
SUIT NO.38 OF 2015
MEHBOOB KHAN
Sole Proprietor, doing business under the
name and style of Carter's Blue, having his
office address / restaurant at Shop No. A3,
Royal Classic Building, Next to City Mall,
New Link Road, Andheri (West), Mumbai
400 053. ... PLAINTIFF
versus
1. FIROZ QURESHI
Proprietor, doing business under the
name and style of Mezbaan Carter's
Blue, having his office
addresses/restaurants at Opp. Cafe
Coffee Day, Next to Mezbaan
Restaurant, Carter Road, Bandra
(W), Mumbai 400 052 and at Shop
No.29, Link Plaza Commercial
Complex, Near Shreejee Restaurant,
Off. New Link Road, Next to Pratap
the Dhaba, Oshiwara, Jogeshwari
(West), Mumbai.
2. ZAID QURESHI,
Proprietor, doing business under the
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name and style of The Carter's Blue,
having office address /restaurant at
Opp. Café Coffee Day, Carter Road,
Bandra (W), Mumbai 52
C/o. M/s. F.S.K. Enterprises,
27, C & D, Kandivali Co-Operative
Industrial Estate Ltd., Charkop,
Kandivali (West), Mumbai - 400 067.
3. MAAZ QURESHI,
Proprietor, doing business under the
name and style of Mehboob Carter's
Blue, having his office
address/restaurant, Cafe Mezbaan
Restaurant, Pipe Road, Near Kurla
Station, Kurla (W), Mumbai 400
070.
4. HAKIM R. QURESHI,
who appears to be the proprietor of
Mezbaan Carter's Blue restaurant
having his restaurant at Opp. Café
Coffee Day, next to Mezbaan
Restaurant, Carter Road, Bandra
(W), Mumbai 400 052, and at Shop
No. 29, Link Plaza Commercial
Plaza, Near Shreejee Restaurant, Off
New Link Road, Next to Pratap da
Dhaba, Oshiwara, Jogeshwari (W),
Mumbai 400 102 and The Carter's
Blue restaurant opposite Café Coffee
Day, next to Mezbaan Carter's Blue,
Carter Road, Bandra (W), Mumbai
400 052 and who resides at 1st Floor,
Siraj Residency, Brahimwadi, Kurla
(W), Mumbai 400 070. ... DEFENDANTS
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A PPEARANCES
FOR THE PLAINTIFF Dr. V. V. Tulzapurkar, Senior Advocate
with Mr. Vinod Bhagat, Mr. Dhiren
Karania i/b G.S. Hegde and V.A.
Bhagat for the Plaintiff.
FOR THE DEFENDANT Mr. Aseem Naphade, with Mr. A.P. Singh,
Mr. Kushal Patel, i/b S.K. Srivastava
and Company for the Defendants.
CORAM : G.S.Patel, J.
ig DATED : 16th June 2016
ORAL JUDGMENT:
1. This is a motion for injunction and other reliefs in an action
for trade mark infringement and passing off. The Plaintiff first
obtained an order on 15th September 2014, after notice. That order
has not been disturbed in Appeal. However, what has happened
since the time of that order is most curious. The Defendants'
subsequent conduct does not provide any answer to the Plaintiff's
case either as first brought or as it now stands after an amendment.
2. The Plaintiff is the registered proprietor of a trade mark
'CARTER'S BLUE' in Class 43 (as of 16th June 2011) and Class
(as of 18th May 2013). The Plaintiff's case is that he began running
a restaurant under this mark as a sole proprietor from premises that
he took from their owner, the original 1st Defendant. There is no
dispute about this. These premises are at Carter Road, Bandra, near
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Amrut Building. This is now an area popular, especially among the
city's youth, for its many restaurants, pubs, bars and night spots.
3. The Plaintiff and the original 1st Defendant entered into a
Conducting Agreement dated 1st April 2008. It is this Conducting
Agreement that forms the principle, and perhaps only, defence even
now. For this reason alone, it is necessary to read the relevant
portions of this Agreement as emphasised by Mr. Naphade for the
Defendants. A copy of the Agreement is annexed to the Plaint.1
4. Recital 3 of the Conducting Agreement reads:
AND WHEREAS the Owner at the request of the
Conductor has agreed to grant to the Conductor the
permission to occupy the said premises for residence
and snacks/eating house business in the name of
Carter Blues, subject to the terms and conditions
hereinafter mentioned.
Clauses 3 and 4 read:
(3) That the Conductor has paid to the Owner a sum
of Rs.50,000/- (RUPEES FIFTY THOUSAND ONLY) as and
by way of interest free security for due observance and
performance of the terms of this agreement, a receipt
whereof the Owner hereby admits and acknowledges at
the foot hereof.
(4) The Conductor while in use and occupation of
the premises shall pay to the Owner a sum of
Rs.3,000/- (RUPEES THREE THOUSAND ONLY) per
1 Plaint, Exhibit "G", pp. 98-102.
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month as and by way of monthly compensation and the
same shall be payable before 10th day of every month.
The Conductor shall also pay electricity charges of the
electric meter installed in the said premises.
5. Mr. Naphade's case, as I understand it, is that since the third
recital refers to 'Carter's Blue', and since this is a "Conducting
Agreement", it therefore necessarily follows from this alone,
without requiring that anything further be shown, that the business
of the "eating house" in the name of 'Carter's Blue' was the 1st
Defendant's; it could never have been the Plaintiff's. The Plaintiff
very seriously disputes this, and he has done so from the very
beginning.
6. Let us test the Defendants' argument. If what Mr. Naphade
says is correct, then the 1st Defendant must have had with him the
necessary municipal and other licenses such as an eating house
license, a shops and establishment license, and so on of a date prior
to that of the Conducting Agreement, i.e., 1st April 2008. It is also
not unreasonable to expect that the 1st Defendant would also be able
to show accounts of a business that he carried on in that name, i.e.,
as 'Carter's Blue'. In complete fairness, Mr. Naphade admits that
the Defendants do not have any such material, and they have never
had any of it.
7. Mr. Naphade says that the 1st Defendant applied for a license
and this should be sufficient. It is not; in itself this does not help
him. But once I find that that application was made only in 2009
(well after the date of the agreement), then it actually very seriously
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damages this defence. The reason is simple, and suggests itself. If
the 1st Defendant claimed to have a business in the name of
'Carter's Blue' before 1st April 2008, it is unclear how he could
have applied for a license to run that business only in 2009.
8. The Plaintiff's case regarding the mark is this that he was his
restaurant since April 2007 serving Lebanese, Arabic and Mughlai
food. The restaurant soon became very popular. The Plaintiff also
set up a catering service for parties and gatherings. The Carter Road
outlet was the Plaintiff's first restaurant. In March 2003, the
Plaintiff opened a second restaurant at Andheri, and in October
2013, with growing success, a third in Malad. In the meantime, the
Conducting Agreement to which I have earlier referred ended. The
Plaintiff gave up those premises in December 2013. He relocated his
restaurant with the mark 'Carter's Blue' to another building on
Carter Road. A statement of the Plaintiff's sales figures is annexed
to the Plaint.2 There is no real dispute about these. The fact that the
Plaintiff was able to open branches in rapid succession is itself
testimony to his growing restaurant's popularity, and to the steady
increase in its goodwill and reputation. In the Plaint, the Plaintiff
has set out various certificates and copies of awards that he has
received. He produces all this to show that the mark 'Carter's
Blue' is now exclusively associated with his own establishments,
apart from the fact that he is the registered proprietor of the mark in
question. The Plaint proceeds on the basis that after the license in
respect of the 1st Defendant's premises ended -- and, according to
Dr. Tulzapurkar for the Plaintiff, irrespective of the title given to the
2 Plaint, p. 33.
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document, it was a leave and license agreement simpliciter and
nothing further -- the 1st Defendant started a rival business from
the previously licensed premises. The Suit was filed at a time when
the 1st Defendant called this rival business 'Mezbaan Carter's
Blue'.
9. The Plaintiff also says that in April 2014, on taking a search in
the trade mark registry, he found that the 1st Defendant had filed an
application for registration of the mark 'Mezbaan Carter's Blue'
on 25th April 2013 in Class 43, claiming use from 5th March 2005.
The Plaintiff disputes this. He says that none of the Defendants ever
ran any restaurant at all. They never used this rival mark.
10. On these facts, I granted an ad-interim injunction on 15th
September 2014. At that time, the 4th Defendant was not a party to
the Suit. He was added by a later application as he appeared to be
the proprietor of the 'Mezbaan Carter's Blue' restaurant.
11. Today, I find there are two Affidavits in Reply; one by the 2nd
Defendant3 of 2nd March 2015, and the other by the 4th Defendant4
of 3rd March 2015 respectively. In these, the 2nd and 4th Defendant
specifically say that they have changed their restaurant's name from
'Carter's Blue' to 'Carter's Express'. There is also a further
Affidavit filed by the 1st Defendant on 17th March 2015, in which
the 1st Defendant confirms in paragraph 4 that, after my order on
15th September 2014, the 1st Defendant commenced using the
3 Notice of Motion paperbook, p.53.
4 Notice of Motion paperbook, p.55.
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name and mark 'Carter's Express'. Defendants Nos. 1, 3 and 4 all
contend that 'Carter's Express' is entirely distinctive, and that
there is no similarity between it and 'Carter's Blue'.
12. This is the third reason why Mr. Naphade's argument that the
1st Defendant was himself running a restaurant called 'Carter's
Blue' must be rejected; the statements in the affidavits are
unequivocal admissions, and they are not qualified in any way.
Given these statements on Affidavit, I do not see how the
Defendants can any longer claim any right to use the marks
'Carter's Blue'. By their own admission, they are not using that
mark at all. They have accepted they cannot use 'Mezbaan
Carter's Blue' either. They have given up both. They have changed
their name and mark, and they have done so pursuant to an order of
injunction on 15th September 2015.
13. Thus, the only surviving point for decision before me in the
Notice of Motion today is whether the mark 'Carter's Express' can
be said to be deceptively and confusingly similar to 'Carter's Blue'.
After the Defendants adopted the 'Carter's Express' mark, the
Plaintiffs applied for ad-interim reliefs. Gupte J rejected that
application. He said, in paragraphs 4 and 5 of his 21st April 2015
order:
4. As far as the use by original Defendants of their
trade mark "CARTER'S EXPRESS" is concerned, prima
facie, this Court is of the view that the mark used by the
Defendants, namely, "CARTER'S EXPRESS", is not per se
deceptively similar to the trade mark "CARTER'S BLUE"
of which the Plaintiff is a registered proprietor. In the
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first place, the Plaintiff is not prima facie entitled to
monopoly of use in respect of the word "CARTER's" by
reason of his proprietorship of the registered trade
mark "CARTER'S BLUE". Secondly, even otherwise,
going by the phonetic or visual or structural similarity of
the trade marks, at this prima facie stage without any
material to show deception or confusion, it cannot be
said with any assurance simply on comparison of the
two marks that the two marks, namely, "CARTER'S
BLUE" and "CARTER'S EXPRESS" are deceptively similar
or are likely to cause any deception or conclusion. This
is particularly so, since the two marks are actually
names of two separate restaurants. In that view of the
matter, the Defendants will have to be afforded an
opportunity to show cause to the application seeking a
temporary restraint of user.
5. Accordingly, the Defendants are directed to file
reply to the Notice of Motion within a period of three
weeks from today. Rejoinder, if any, within two weeks
thereafter. Place the Notice of Motion for hearing after
the ensuing summer vacation, i.e. on 9th June 2015. In
the meantime, the Defendants are directed to keep an
account of their business carried on in the name of
"CARTER'S EXPRESS".
14. Dr. Tulzapurkar points out that this was prima facie view at
the ad-interim stage. It is true that even before me today, the
Plaintiff has placed no additional material. The argument turns on
an interpretation of Section 17 of the Trade Marks Act, 1999. Mr.
Naphade's submission is that neither of the two integers or
components of 'Carter's Blue' lend themselves to any kind of
exclusivity or monopoly. The Plaintiff is the registered proprietor of
'Carter's Blue'. The word 'Carter' comes from the name of a road
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or a proper noun. It is not distinctive. The word 'Blue' is an
ordinary, everyday word; a colour and a noun, and it is also not
distinctive.
15. Dr. Tulzapurkar's submission is, first, that the mark must be
seen as a whole. The question of similarity is to be tested not integer
against integer, but rather by taking the mark in its entirety and
comparing it to the rival mark also in its entirety. This is the well
established test in law. His second submission is that Section 17(2)
has several disjunctive clauses. The Plaintiff claims no exclusivity in
the components of his mark. He only says that the Defendants'
mark, taken as a whole, is strikingly and confusingly similar to that of
the Plaintiff.
16. Section 17 of the Trade Marks Act, 1999 says:
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
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(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 added)
17.
Simply put, it seems to me to amount to no more than this:
that where a mark consists of several non-distinctive components,
the mark may yet be registered; and exclusivity attaches only to the
mark in its entirety, not deconstructed into its component bits. That
is sub-section (1). Then sub-section (2) says that such a registration
of a mark grants no exclusivity over its constituent components
unless registration has been sought or granted for those components.
Components that are publici juris or non-distinctive are incapable of
registration. To illustrate: registration of 'Red & White' for
cigarettes creates no monopoly over either Red or White.
18. Why should we need a section like this? After all, it seems at
one level to over-state the obvious. The answer, I believe, lies in a
fundamental of the law relating to trade marks: the grant of
exclusivity and of monopoly. What Section 17 does is to balance that
grant or claim of exclusivity against genuine and healthy
competition. It guards against a person conjoining two or more
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ordinary, simple words and then laying claim to a monopoly of each
to the exclusion of all others.
19. This section has occupied the time and attention of very
many Courts. A reference to a few should suffice. In Veena Nalin
Merchant and Ors. v Laljee Godhoo & Co. and Ors.,5 R.D. Dhanuka J
of this Court held that a when a trade mark consists of several
matters, its registration confers on the proprietor exclusivity only to
the trade mark taken as a whole. In Alaknanda Cement Pvt. Ltd. v
Ultratech Cement Ltd.,6 a Division Bench of this Court said that if a
trade mark consists of several matters, its registration confers
exclusivity on the proprietor only to use the trade mark as a whole.
When a trade mark contains any part that is not the subject of a
separate application and which is not separately registered by the
proprietor or is contained in matters common to the trade or that are
otherwise of a non-distinctive character, the registration of the
composite confers no exclusive right in any of its parts. In
Alaknanda Cement, the Division Bench referred to the decision of a
learned single Judge (S Banerjee J) of the Calcutta High Court in
Three-N-Products Pvt. Ltd. v Emami Ltd.7 I believe a reference to the
relevant portion of that decision to be appropriate to this case too.
That decision analyses the section with admirable precision and
insight.
32. The registration of a device or label would entitle
the proprietor to protection against the use of such
5 2015 (3) Bom. C. R. 778.
6 2012 (1) Bom. C. R. 519.
7 2009 (41) PTC 689 (Cal).
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device or label by a rival in trade if the rival's use is
identical or similar to the registered trademark and the
use is in connection with identical or similar goods or
services covered by such registered trademark and it
appears to court that the rival's mark is likely to cause
confusion or is likely to have an association with the
registered mark. If the two marks are identical and the
goods and services covered by either mark are also
identical, there is a presumption that arises in favour of
the proprietor of the registered mark and, for
interlocutory purposes, it may be enough to earn the
plaintiff its injunction. If the two marks are identical and
the goods and services are similar or if the two marks
are similar and the goods and services are identical,
the court has to weigh the likelihood of confusion or
assess whether the defendant's mark is likely to have
an association with the plaintiff's registered mark.
33. The identity or similarity of the marks has to be
assessed on the basis of the entirety of the mark as
registered. The identity or similarity of the defendant's
mark with the plaintiff's as referred to in Clauses (a)
and (b) of Sub-section (2) of Section 29 of the 1999 Act
has to be read in the context of Section 17(1) of the Act.
Even if Section 29 of the 1999 Act is seen to be
tempered by Section 17 thereof, if a device mark is
pitted against another device mark or a word mark is
pitted against another word mark, the tests would be
simpler than in the present case. It is not as
inconceivable, however, as comparing apples and
oranges in putting up a device mark to stop a word
mark or vice versa but there are inherent complexities.
34. The right that the owner of a device or label mark
obtains is, loosely speaking, somewhat similar to
copyright. It is as much the writing or etching in a
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device or label, and the design and colour combination
thereof, over which the registered proprietor gains
rights as the manner of depiction thereof. It is possible
that a registered mark is made up of several
components which are distinctive and
notwithstanding separate registrations in respect of
such distinctive parts not having been obtained by the
owner of the registered mark, such proprietor is
entitled to cite one distinctive part as being
inseparable from the registered whole or such
distinctive part being the most outstanding attribute
of the mark and thus assert a right over the distinctive
part. But in view of Section 17(2)(a) of the 1999 Act,
such assertion has to be as in passing off and may
not be made in aid of a case of infringement. Section
17(2) and the world beyond the statute that is
recognised in Section 27 of the 1999 Act has a
combined effect of permitting the registered owner to
claim exclusivity of a part of the whole of the
registered mark, but only on a cause of action of
passing off.
35. The words "the registration thereof shall not
confer any exclusive right" towards the end of Section
17(2) have to be understood in the context. The import
of such words is that the registration of the composite
mark will not ipso facto confer any exclusive right as
to the parts of the composite mark. But if the owner
can establish exclusivity aliunde, the owner can assert
the exclusivity. The registered owner is entitled to
protection of its goodwill in such prominent feature as
in an action for passing off unless the registered owner
seeks to rely on Section 17(2)(b) of the Act in respect of
a distinctive matter not common to the trade.
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36. But it would appear that an infringement action
may not be run on the basis of an unregistered part of
the registered whole of a trademark. Alternatively,
and even if it is assumed for argument's sake that
Section 17(2)(a) of the 1999 Act does not altogether
preclude a claim of exclusivity over a part of a
registered mark, such part has to be registrable under
the Act to qualify for protection. The word "Ayur",
prima facie, does not appear to be capable of
distinguishing the goods or services of a person from
those of another as it seems to consist exclusively of an
indication which may serve in the trade to designate
the nature of the goods. The plaintiff's claim of
infringement based on its "Ayur" mark as part of its
device registrations is found to be unacceptable at the
interlocutory stage.
(Emphasis added)
20. I do not believe there to be substance to Mr. Naphade's
submission. To accept it implies an acceptance that Section 17(2)
wholly defeats Section 17(1): i.e., where a trade mark has several
components or integers that are per se non-registrable or non-
distinctive, therefore their combination or composite too enjoys no
exclusivity. This is contrary to the plain language of the section. We
must read both harmoniously. To put it differently, the whole is
greater than the sum of its parts: the whole may enjoy an exclusivity
its parts do not and cannot.
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21. Very recently, Gupte J held in Ultratech Cement Ltd v Dalmia
Cement Bharat Ltd.:8
12. ... Sub-section (2) of Section 17 operates
notwithstanding anything contained in sub-section (1).
Sub-section (1) provides that when the trade mark
consists of several matters, its registration confers on
the proprietor exclusive right to the use of the mark
'taken as a whole'. Sub-section (2) is cast in negative
terms. It provides that when either of the conditions in
clauses (a)(i) or (ii) or (b) obtains, the registration of the
mark "shall not confer any exclusive right in the matter
forming only a part of the whole of the trade mark so
registered." If such "matter" forms only a part of the
whole of the trade mark, the registration of such trade
mark does not confer any exclusive right in the
"matter" to its proprietor.
(Emphasis added)
22. There is yet another difficulty in Mr. Naphade's way. The
Defendants have now applied for 'Carter's Express' and they do
claim exclusivity over this name or mark. A fortiori, this implies the
Defendants' acceptance of the proposition that the expression must
be tested in its entirety; for they, too, can claim no exclusivity in its
components; and by their own argument today, if neither Carter nor
Express lend themselves to exclusivity, then the aggregate cannot
either. But that is not the Defendants' stand. They do claim
exclusivity in 'Carter's Express' taken as a whole. They cannot say
that the Plaintiffs' registration of the whole must be disregarded, but
8 Notice of Motion No. 76 of 2014 in Suit No. 42 of 2014, decided on 10
June 2016.
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that their own adoption must receive full voice. On the footing that
he who stands by a section must fall by the section, the Defendants'
contentions on Section 17 must be rejected.
23. The question then resolves itself into whether the
Defendants' 'Carter's Express', taken as a whole, is deceptively,
confusingly or strikingly similar to the Plaintiffs' 'Carter's Blue'. I
believe it is. The reasons are many. Structurally (two words put
together, each beginning with Carter, with a second word tacked
on), there is no difference at all. Phonetically and visually, too, the
similarity is too close to be acceptable.
24. Then there is the question of deception, part of the cause of
action in passing off. I imagine that among the nightclubbing crowd,
the Defendants' establishment will very likely be seen as a 'quick' or
'quick service' branch of the Plaintiffs' restaurant. Hardly anyone is
going to make a careful, nuanced distinction between the two. In
fact, given our experience of the modern predilection for
abbreviating almost everything (140 characters or less, for instance),
I expect the reference to be simply 'Carter's' and it is then
impossible to tell whether the reference is to the Plaintiffs'
restaurant or that of the Defendants. This is not just something that
must await formal proof at the trial. It is sufficient, in my view, to
recognize the potential or possibility for an interim injunction. Read
with the Plaintiff's proof, annexed to the Plaint,9 of his growing
business -- a turnover of about Rs.1 crore from April 2008 onward
-- there can be no doubt about the reputation and goodwill that now
9 Plaint, Exhibit "C", p. 33.
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attaches to his mark. In any case, the Defendants' evident
desperation to adopt a mark that is so deceptively similar is itself a
testimonial, albeit unintended, to the Plaintiff's reputation.
25. There is a third factor, and this possibly tilts the balance
completely against the Defendants. I do not see how these two
marks can be tested one against the other even as a whole without
looking at a history of their respective adoptions. Indeed, I believe it
is for this purpose that Mr. Naphade, while fairly conceding that on
infringement, the case is covered against him in view of earlier
decisions (including Jagdish Gopal Kamath & Ors. v Lime & Chilli
Hospitality Services,10 though I have not found need to reference that
judgment), yet attempts to lay claim to the business and to
emphasize the Conducting Agreement. I have considered and
rejected his submissions based on that document earlier: viz., (1)
that the Defendants have no material to show that they were running
a restaurant named 'Carter's Blue' before 1st April 2008; (2) that
all the licenses and permissions for that restaurant are in the name
of the Plaintiff; and (3) it is the Plaintiff who is the registered
proprietor of the mark 'Carter's Blue'. But all this must be seen in
context. For it is only after the Plaintiff gave up the premises and
moved elsewhere did the Defendants set up their rival business, first
in the name of 'Mezbaan Carter's Blue', since abandoned, and
now in the name of 'Carter's Express'. I do not mean to suggest
that the Defendants are not at liberty to set up a rival restaurant
business. Of course, they are, and they may do so right next to the
Plaintiff. However, for the Defendants to do so with a name or mark
5 2015 (3) Bom. C. R. 496.
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so deceptively similar to the Plaintiffs, and without any
demonstrated prior history of running a restaurant under any such
name does not seem to me to be accidental. It is deliberate, and it is
by design. It is no test in law to juxtapose the two marks. One must
have regard to the common recollection of it; and one must also
have regard to the Defendants' explanation as to how they happened
on their mark. If that is found wanting, the adoption is dishonest and
mala fide. The Defendants applied for registration of 'Carter's
Express' only on 22nd October 2014, but claimed user since 24th
September 1999. I find this more than a little puzzling, given that
before this Court on Affidavit, the Defendants have in terms said
they began use of the 'Carter's Express' mark only after the ad-
interim order of 15th September 2014. The claim to 'user' since
24th September 1999 is wrong by about a decade and a half.
26. I do believe that 'Carter's Express', when used in the context
of an eatery is unacceptably similar to the Plaintiff's mark 'Carter's
Blue'. I am also convinced that the Defendants' explanation for
their adoption of this second mark ('Carter's Express') is no better
than their explanation for their adoption of the first rival mark
('Mezbaan Carter's Blue'). It does not merit acceptance. It
inspires no confidence. It seems to me clear that all that the
Defendants seek to do is to pass off their business as being somehow
connected to the Plaintiff's business. There is no other conceivable
reason or explanation for the trajectory of the Defendants' conduct.
27. I will grant the injunctions in both infringement and passing
off.
16th June 2016
Mehboob Khan v Firoz Qureshi & Ors.
226-NMS-144-2015-CARTERS BLUE-F.DOC
28. The ad-interim order of 15th September 2014 is confirmed as
the final order on the Notice of Motion against all the Defendants,
viz., in terms of prayers (a) and (b). In addition, there will also be an
injunction in terms of prayer (c). For convenience, all three prayers
are set out below.
(a) that pending the hearing and final disposal of the
suit, the Defendants by themselves, their
proprietors/partners, servants, operators, agents,
franchisees, successors, assignees, transferees and all
those connected with them in their business be
restrained by an order and injunction of this Hon'ble
Court from in any manner whatsoever offering,
promoting, marketing and/or using in relation to their
restaurant and food catering business of offering food
and drinks, other like hospitality services and as the
names of their restaurants the impugned marks and
names MEZBAAN CARTER'S BLUE, THE CARTER'S BLUE,
MEHBOOB CARTER'S BLUE and CARTER'S EXPRESS or
any mark or name identical with and/or deceptively
similar to the Plaintiff's trade marks CARTER'S BLUE, for
such use thereof by the Defendants amounts to
infringement of the Plaintiff's said trade mark registered
under Nos. 1963602 and 2533547 in classes 43 and 35
respectively;
(b) that pending the hearing and final disposal of the
suit, the Defendants by themselves, their proprietors
/partners, servants, operators, agents, franchisees,
successors, assignees, transferees and all those
connected with them in their business be restrained by
an order and injunction of this Hon'ble Court from in
any manner whatsoever offering, promoting, marketing
and/or using in relation to their restaurant and food
16th June 2016
Mehboob Khan v Firoz Qureshi & Ors.
226-NMS-144-2015-CARTERS BLUE-F.DOC
catering business of offering food and drinks, other like
hospitality services and as the names of their
restaurants the impugned marks and names MEZBAAN
CARTER'S BLUE, THE CARTER'S BLUE, MEHBOOB
CARTER'S BLUE and CARTER'S EXPRESS or any mark or
name identical with and/or deceptively similar to the
Plaintiff's distinctive and reputed trade mark CARTER'S
BLUE, for such use thereof by the Defendants amounts
to passing off or enable others to pass off the
Defendant's business, services and goods as and for
those of the Plaintiff or in any way associated with or
connected with the Plaintiff;
(c)
that pending the hearing and final disposal of the
Suit, the Defendants by themselves, their proprietors /
partners, servants, operators, agents, franchisees,
successors, assignees, transferees and all those
connected with them in their business be restrained by
an order and injunction of this Hon'ble Court from in
any manner whatsoever offering, promoting, marketing
and / or using in relation to their trade and business
name the impugned marks/ words MEZBAAN CARTER'S
BLUE, THE CARTER'S BLUE, MEHBOOB CARTER'S BLUE
and CARTER'S EXPRESS or any names / words identical
with and /or deceptively similar to the Plaintiff's trade
name and trade mark CARTER'S BLUE, for such used
thereof by the Defendants amounts to infringement of
the Plaintiff's said trade mark registered under
Nos.1963602 and 2533547 in classes 43 and 35
respectively besides leading to passing off the
Defendants' business and services as and for those of
the Plaintiff or in any way connected with or associated
with the Plaintiff.
16th June 2016
Mehboob Khan v Firoz Qureshi & Ors.
226-NMS-144-2015-CARTERS BLUE-F.DOC
29. At Mr. Naphade's request, the operation of this order in
relation to the mark 'Carter's Express' (but not in relation to the
Defendants' use of the 'Carter's Blue' marks) is stayed for a period
of three weeks from the date when this judgment is uploaded.
(G.S. PATEL, J.)
16th June 2016
