Bombay High Court
Firoz Qureshi And 3 Ors vs Mehboob Khan on 3 April, 2017
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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
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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
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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
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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,
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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
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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
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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
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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
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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)
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