[Cites 14, Cited by 0]
Bombay High Court
Indian Express And Commercial Ventures ... vs Fundamental Hospitality Private ... on 19 December, 2025
2025:BHC-OS:25517
ial-35432-2025.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO.35432 OF 2025
IN
COMMERCIAL IP (L) NO.35330 OF 2025
Indian Express and Commercial Ventures and ...Applicant/
VISHAL
Projects Private Limited Plaintiff
SUBHASH
PAREKAR Versus
Digitally signed by
VISHAL SUBHASH
PAREKAR
Date: 2025.12.19
Fundamental Hospitality Private Limited and ...Respondents/
20:15:20 +0530
Another Defendants
------------
Mr. Sandeep Parikh i/b. Mr. Liliaan Daas, Mr. Arsalan Thaver, Ms. Samishka
Malekar and Ms. Kajal Panhalkar i/b. Abhiraj Parab, for the Applicant/
Plaintiff.
Mr. Anand Mohan a/w. Mr. Lavin Hirani and Mr. Ishan Puranik i/b. Mr.
Vikramaditya Chavan, for Defendant Nos. 1 and 2.
CORAM : SHARMILA U. DESHMUKH
RESERVED ON : DECEMBER 01, 2025
PRONOUNCED ON : DECEMBER 19, 2025
--------------
ORDER :
1. This is an action for infringement of trade mark and passing off.
With consent the Interim Application is taken up for final hearing.
2. The Plaintiff and the Defendants are in the business of restaurant
services. The Plaintiff seeks to restrain the Defendants and their
employees, servants, agents assigns from using the impugned
trademark "HOM" by itself or in combination with any other word or any
other mark deceptively similar to the Plaintiff's trademarks "HOM",
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"HOM House Of Mandarin" and registered trademark "HOM House of
Mandarin" and from passing off their services as that of Plaintiff.
3. The Plaintiff has come with the case that in the year 2016, the
Plaintiff conceived and adopted the trade mark "House Of Mandarin"
and applied for registration of the trade mark in Class 16 and 43 on 26 th
July, 2017 and secured registration. In the year 2017, the Plaintiff
started a new restaurant under the trade mark "House of Mandarin"
which within a short period came to be popularly known by the acronym
"HOM". The Plaintiff runs two restaurants under the trade mark "HOM"
and " HOM House Of Mandarin", one at Bandra which was launched in
the year 2017 and the second restaurant at Powai which was launched in
the year 2019.
4. It is submitted that the members of general public refer and
identify HOM as the acronym of "House Of Mandarin" which has been
used by the Plaintiff for restaurant and hospitality business. The
Plaintiff therefore coined and adopted the trademark "HOM" for their
restaurant business. The plaint makes a reference to the newspaper
articles and social media posts to substantiate the association of the
acronym "HOM" with the registered trade mark "House of Mandarin".
The Plaintiff applied for registration of the mark "Asian Bistro by Hom"
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on 1st July, 2025 and for the mark "HOM" on 8th October, 2025.
5. It is stated that around September, 2025 the Plaintiff's Director
started receiving congratulatory messages from the restaurant
community and customers on impending opening of their new
restaurant HOM at which point of time, the Plaintiff became aware that
the Defendants have adopted an identical trade mark/ trade name HOM
for their restaurant services to be launched at Bandra which is few
meters away from the Plaintiff's restaurant "HOM-House Of Mandarin".
It is stated that Defendant No. 2 has filed an application on 5 th
September, 2025 for registration of the impugned trade mark.
6. The defence is that in November, 2024, the Defendants started
exploring the idea of launching high concept modern Indian restaurants
where open fire would play a central role in menu as well as visual
experience and developed the concept with professional marketing
agency named "No Fluff LLP". One of the names suggested by the
agency was the word 'HOM' which is a Sanskrit word describing the act
of pouring or offering something into fire. The Defendant's mark thus
came into existence, which is an independent and bonafide adoption. It
is stated that the restaurant under the mark HOM was launched
formally on 1st October, 2025 and prior to that in September, 2025 the
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launch was covered by news articles, social media etc. It is stated that
the Plaintiff does not have registration or any actionable goodwill in the
mark "HOM" as falsely claimed as the registered trade mark is "House
Of Mandarin" which is a composite label mark.
7. In so far as the case of passing off is concerned, it is stated that
that the news articles appended to the plaint pertains to "House Of
Mandarin" and even sporadic reference to HOM in the material annexed
to the plaint are either undated, unreliable or offered specifically along
with the words "House Of Mandarin". It is stated that no independent
right of enforcement can arise by virtue of prior user, absent evidence
of substantial goodwill. It is stated that in all the relevant trade
channels such as Swiggy, Zomato etc., the Plaintiff's restaurant has been
referred to "House Of Mandarin" and not HOM. The application for
registration of the trade mark "HOM" has been filed on 8 th October,
2025 with false user of 26 th July, 2017 and without annexing single
document showing user since the year 2017. It is stated that, the
whatsapp chats are got up specifically to curate the record for filing of
the suit. It is further stated that there is no question of confusion as the
restaurant services offered by the Plaintiff and the Defendants are fine
dine space, priced at premium prices and the customers are discerning
customers. It is further stated that the Plaintiff's restaurant caters to
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chinese/ pan asian cuisine whereas the Defendant's restaurant caters
specifically to Indian cuisine which makes it even more distinct and
different.
8. In rejoinder affidavit it is stated that the Plaintiff has been
continuously using HOM as well known abbreviation of "House Of
Mandarin" since inception including on menu cards, packaging, social
media, delivery platforms etc. It is further stated that both marks co-
exists and demonstrates use of HOM. The Defendants claim about
distinguishing cuisines is immaterial as two restaurants in the same city
cannot simultaneously operate under the identical name HOM without
causing confusion. It is stated that the Plaintiff had already applied for
registration of the mark HOM in July, 2025 and is prior user which is a
determining factor for passing off.
9. Mr. Parikh, learned counsel for the Plaintiff points out the
registrations in respect of the device mark "House Of Mandarin" for
services of providing food, drink and hospitality services. He submits
that the Plaintiff's restaurant business and adoption of the mark "House
of Mandarin" and "Hom" is prior in time. He submits that the Plaintiff
uses the abbreviation HOM for its registered trade mark "House Of
Mandarin" and is popularly known by its acronym "HOM", and in order to
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substantiate the said contention has taken this Court through the news
articles, social media posts appended to the plaint. He would further
point out the use of mark HOM by the Plaintiffs on the visiting cards,
menu covers etc. He submits that even in respect of an unregistered
trade mark, which is an abbreviation of registered trade mark, statutory
protection is available. He submits that the goodwill and reputation of
the registered trade mark "House of Mandarin" naturally flows in the
acronym "Hom".
10. He submits that the application for registration of Asian Bistro
HOM was filed on 1st July, 2025 even prior to the Defendant's launching
of its restaurant and for the stand alone mark HOM on 8 th October,
2025. He would submit that the reputation and goodwill has been
demonstrated from the sales figures and advertisement expenses duly
certified by the Chartered Accountant. He further points out the
Defendants invoices as well as valet tags to show the use of the mark
HOM. He submits that confusion is not only likely but has occurred as
the general public has already associated the Defendant's outlet as that
of the Plaintiff. He would submit that the defence raised by the
Defendants of the difference in cuisine is immaterial as there is
likelihood of association with the Plaintiff's restaurant business. In
support he relies upon the following decisions:
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(i) Laxmikant V. Patel vs. Chetanbhai Shah and Anr.1
(ii) Balsara Hygiene Prodcuts Limited vs. Arun Chowdhury and
Anr.2
(iii) Impresario Entertainment and Hospitality Private Limited
vs. Social Tribe3
(iv) Empire Spices and Foods Limited vs. Sanjay Bhimraoji
Deshmukh Trading as M/s. Sanskriti Spices 4
(v) Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. 5
(vi) Mahindra & Mahindra Limited and Anr. vs. MNM Marketing
Pvt. Ltd. and Anr.6
(vii) Syed Mohideen vs. P. Sulochana Bai7
11. Mr. Anand Mohan, learned counsel for the Defendants would
submit that there is no question of infringement of unregistered trade
mark HOM. He submits that the claim in paragraph 7 of the plaint of the
registered mark "House Of Mandarin" coming to be popularly known as
HOM is without any corroborating evidence. Distinguishing the
judgment of Mahindra & Mahindra (supra), he submits that in that case
the Plaintiff was able to establish rights even in the acronym M & M,
1 (2002) 3 Supreme Court Cases 65.
2 2002 SCC OnLine Cal 625.
3 2025 SCC OnLine Bom 2389.
4 2025 SCC OnLine Bom 2259.
5 (2001) 5 Supreme Court Cases 73.
6 2014 SCC OnLine Bom 1343.
7 (2016) 2 Supreme Court Cases 683.
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which was registered and in the present case, the pleadings and
material in the present case makes out no case of independent rights in
acronym. He would further submit that even in the respect of passing
off, the Plaintiff has failed to satisfy even a single ingredient of the
cumulative test of goodwill, misrepresentation and likelihood of injury.
He submits that the Defendants adoption of the mark HOM is honest
and bonafide adoption and there is no deception or misrepresentation.
He submits that there is no cogent case of goodwill and reputation of
HOM as on the date of adoption of the mark by the Defendant. He
submits that the material relied upon by the Plaintiff is undated without
any pleading as to when the said material was designed or printed and
installed or used and it is only after the filing of the suit that the re-
branding addition has occurred. He submits that the Chartered
Accountant certificate sets out the sales for the "House Of Mandarin"
business as a whole and much of the Plaintiff's business is not even
done with reference to HOM. He submits that, there is no
misrepresentation or deception and there is a clear difference of
offerings by the rival parties and the customers are both discerning
customers. He submits that there is no use of HOM by the Plaintiff on
the primary trade avenues such as Swiggy, Zomato etc and the evidence
of actual confusion is unreliable and not supported by any affidavit. In
support he relies upon the following decisions :
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(i) Foodworld vs. Foodworld Hospitality Pvt. Ltd. 8
(ii) Turning Point and Anr. vs. Turning Point Institute Pvt. Ltd. 9
(iii) Aegon Life Insurance Co. Ltd. vs. Aviva Life Insurance Co.
India Ltd.10
(iv) IAL No. 7446 of 2025 Dt.03-09-2025 (Bombay High Court)
(v)Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd. and
Ors.11
(vi) Exegesis Infotech (India) Pvt. Ltd. vs. Medimanage
Insurance Broking Pvt. Ltd.12.
12. In rejoinder Mr. Parikh would point out paragraph Nos. 9, 10 and
11 of the plaint to submit that that there are sufficient pleadings to
demonstrate that the Plaintiff's trade mark "House Of Mandarin" is
popularly referred by the acronym "HOM". He would further submit that
the Chartered Accountant's certificate makes specific reference to sales
figure of "House Of Mandarin" along with HOM and it is a matter of
evidence as to whether the sales figure refers to "House Of Mandarin"
along with additional mark HOM or not. He submits that the prominent
part of the registered trade mark is HOM. He submits that the
subsequent use by the Defendants is an admitted position and being a
8 2009 SCC OnLine Del 3862.
9 2018 SCC OnLine Del 10257.
10 2019 SCC OnLine Bom 1612.
11 MANU/SC/0315/2001.
12 2015 SCC OnLine Bom 3797.
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prior user the Plaintiff is entitled to protection even of the abbreviation
of trade mark. He would further submit that as held in the case of
Mahindra (supra), the goodwill in the registered trade mark naturally
flows into the abbreviations and therefore it cannot be said that there is
no goodwill attached to the abbreviation HOM.
REASONS AND CONCLUSION:
13. During the hearing, this Court had posed a specific query to Mr.
Parikh as to whether infringement is claimed of the mark "House of
Mandarin" or "HOM". The response was that the rival marks are HOM
vs. HOM. The Plaintiff's case is therefore of infringement not of the
registered trade mark "House of Mandarin" but its abbreviation "HOM"
and for passing off in respect of HOM.
14. The case pleaded in the plaint is that the Plaintiff's registered
trade mark "House Of Mandarin" was adopted and conceived in the year
2016 and within short period of time came to be popularly referred to
as HOM. The Plaintiff therefore seeks statutory protection qua the
acronym of the registered trade mark. The acronym though capable of
independent registration has been applied for registration on 8 th
October, 2025 i.e. after the launching of the Defendant's restaurant.
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15. The provisions of the Trade Marks Act affords statutory
protection to registered trade mark and gives right to take action
against infringement of the registered trade mark. To seek extension of
the benefit of registration of the mark House of Mandarin to the
abbreviation HOM, Mr. Parikh would rely upon the decision of Mahindra
& Mahindra Limited vs MNM Marketing Pvt Ltd (supra). It is necessary
to consider the decision in some detail. In that case, action was brought
for infringement of the Plaintiff's registered trademark "M & M". The
Plaintiff was the registered owner of the marks Mahindra (word per se
and label) Mahindra and Mahindra (word per se and label) and M & M
(word per se and label). The benefit of the goodwill and reputation of
the mark Mahindra/ Mahindra and Mahindra was sought to be extended
to the mark M&M on the basis that the marks have become immensely
popular amongst the members of the public and trade that the same
has naturally flown into and is associated with the abbreviation M&M. It
was claimed that the benefit of use and registration of Mahindra and
Mahindra inures to its natural abbreviation.
16. The learned Single Judge of this Court considered the material
produced such as the specimen news reports of the years 1969, 1972
and 1985 to 2011 to hold that the said trademark M & M being a natural
abbreviation of their well known mark Mahindra and Mahindra is used
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by the Plaintiff in the course of their business and the Plaintiffs are
known and referred amongst the members of the trade, public, press
and other media as M & M since at least 1969. In these facts, the learned
Single Judge accepted the contention that the popularity, goodwill and
reputation of the marks Mahindra /Mahindra and Mahindra has naturally
flown into and is associated with the acronym M & M in any field of
business/activity and benefit of use and registration of the marks
Mahindra/Mahindra & Mahindra inures to its natural abbreviation. The
learned Single Judge also referred to the extract from the commentary
"McCarthy on Trademarks and Unfair Competition" stating that several
Court decisions have indicated that:
"where as a result of use by customers, the trade or by news media, an
abbreviation has become identified in the public mind with a particular
company, then that abbreviation is a protectable trade mark, even if the
company itself has not formally used the abbreviation as a trademark. It is
public use that will set the stage for confusion, which is the evil to be
remedied in trade mark cases."
17. In that case there was sufficient material placed before the Court
for coming to a prima facie finding that the popularity, goodwill and
reputation of the marks Mahindra/Mahindra & Mahindra naturally
flowed into the abbreviation M&M. It also helped that the abbreviation
M&M was registered. The issue which mainly arose for consideration
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was as regards the goodwill and reputation of the registered trade
marks to be associated with the abbreviation as the action was for
infringement of registered acronym as well as passing off. In that
context the learned Single Judge considered the facts to hold that the
goodwill and reputation flowed in the abbreviation.
18. In my view, the said decision is an authority for the proposition
that the benefit of use and registration of the trade marks inures to the
natural abbreviation subject to the satisfaction that the use of the
abbreviation/acronym for purpose of business is to such an extent that
the general public and members of the trade recognize the Plaintiff by
the acronym. To put it simply the abbreviation must take the mantle of
being the brand identifier indicating the source of the services as that
of the Plaintiff which is the essence of trade mark protection. The
abbreviation must be shown to be identified in the public mind with the
company. It is therefore necessary for the Plaintiff to produce cogent
material on record to demonstrate that the abbreviation when used will
be associated only with the Plaintiff in the public mind.
19. In this background, the material produced by the Plaintiff will
have to be scrutinized to ascertain whether the use of the abbreviation
HOM by the Plaintiff was to such an extent as being identified by the
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public with the Plaintiff. Looking into the pleadings, paragraph 9 of the
Plaint pleads that in 2017 the Plaintiff started a new restaurant under
the trademark "House Of Mandarin" which within a short period came to
be popularly referred to by the acronym "HOM". The pleadings are
extremely vague, and bereft of any elaboration as to the extent of the
identification of HOM with the Plaintiff's establishment. There are
numerous ways in which it can be demonstrated that the Plaintiff's
restaurant is popularly known as HOM in this era of advanced
information technology. There can be social media posts, customer
reviews, reference to the Plaintiff's restaurant as HOM by the trade
vendors, restaurant community. The Plaintiff had launched its second
restaurant in the year 2019. As the Plaintiff's claim is that the first
restaurant was launched in 2017 and was popularly referred to as HOM,
the promotional material for launch of second restaurant would
prominently reflect the mark "HOM". There is no such cogent material
produced by Plaintiff.
20. What is necessary to be shown is that by virtue of the
identification as HOM, the Plaintiff has taken is steps for rebranding by
giving details of the conceptualization, use and adoption of the brand
logo of HOM. The pleadings and supporting documentation in that
respect are unfortunately missing. It is also pertinent to note that on
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the delivery platforms such as Swiggy, Zomato etc. which play an
important role in online food delivery system, the Plaintiff's restaurant
has been referred to House Of Mandarin and not HOM. A specific plea in
that respect has been taken by the Defendant which has not been
disputed by the Plaintiff in the rejoinder. Perusal of the extracts of the
delivery platforms shows reference to House of Mandarin and not HOM.
To extend the benefit of use and registration of a registered trade mark
to an acronym, the acronym must be shown to be consistently in public
domain and contemporaneously documented.
21. Another aspect that militates against the Plaintiff's claim is that
the House of Mandarin was registered in the year 2017 and within short
span of time came to be popularly known as HOM. In these
circumstances, the natural conduct would be to capitalize the brand
identifier as the value of the trade mark is to stimulate the sales. The
Plaintiff has acted to the contrary while registering its other mark
"Asian Bistro by HOM" in July, 2025. Perusal of the signage, uniform,
menu card of Asian Bistro would show that prominence is given to the
words Asian Bistro and the word HOM is depicted in negligible font.
Instead of according greater visibility to the word HOM in the sub brand
Asian Bistro, the reverse has occurred which prima facie creates a doubt
about the Plaintiff's claim. In so far as the registration application of
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the device mark HOM is concerned, the application has been filed on 8 th
October, 2025 just two days prior to the filing of the present suit and is
evidently after launch of the Defendant's restaurant.
22. In order to substantiate its claim, paragraph 10 of the Plaint,
refers to several news articles, social media platforms. In all, the
reference in paragraph 10 is to four articles. There is only one article
using HOM in the headline, whereas in the other articles, the word
HOM is not prominent and is based on quote by the founder of House
of Mandarin. The Plaintiff first restaurant was launched in the year
2017. During the period of eight years i.e. from the year 2017 to 2025,
there are only four articles featured on the Plaintiff as set out in the
plaint. In this era of pervasive social media, the publishing of such few
articles with time gaps is prima facie insufficient to hold identification of
the abbreviation in the public mind with the Plaintiff. Even accepting
that these are specimen articles, I do not find the articles to make
prominent reference to the Plaintiff's establishment by the
abbreviation to demonstrate a unified identification of the marks
"House of Mandarin" and "HOM". The Plaintiff has produced two
invoices of the year 2024 using HOM which is insufficient to prima facie
demonstrate extensive use of trade mark HOM or that the Plaintiffs
were popularly known by the mark HOM.
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23. The photographs of facade and signage of the Plaintiff's
establishment are unsupported by relevant pleadings as to its
installation and use. In so far as the Plaintiff's website extract at Page
62 is concerned, the website makes a mention of Asian Bistro by Hom.
The pleading in the plaint is that in the year 2025, the Plaintiff adopted
and started using the trade mark "Asian Bistro by Hom". The website
extract therefore is of recent origin. Considering that the "HOM" brand
logo must have been designed either in house or through an external
agency, the pleadings to that effect are expected. There are no
pleadings in the plaint giving details about the concept, design, use and
adoption of the brand logo "HOM". The material produced by the
Plaintiff in the form of menu cards, tax, delivery stickers are all undated.
It is therefore a matter of trial as to whether the Plaintiff is popularly
known by the acronym "HOM". The requirement of association of the
abbreviation "HOM" in public mind with the Plaintiff has prima facie
remained unsatisfied in present case and therefore no benefit of
registration of the trade mark "House of Mandarin" can be extended to
"HOM" to maintain an action for infringement of the mark HOM.
24. Coming to the common law rights, it is well settled that a passing
off action is common law remedy to protect the goodwill and reputation
against misrepresentation by another which causes or is likely to cause
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confusion amongst consumers. The classic trinity test of goodwill,
misrepresentation and likelihood of injury will have to be satisfied. It
cannot be disputed that in common law jurisdiction, passing off right is
broader and superior remedy than that of infringement.[See S. Syed
Mohiden (supra).
25. The superior right existing in the common law is unaffected by
the non-registration of the trade mark and is also recognized by Section
27(2) of the Trade Marks Act. In a recent decision of Pernod Ricard
India Private Limited and Ors. vs. Karanveer Singh Chhabra Trading 13
the Hon'ble Apex Court summarized the legal principles governing the
infringement of trade mark and passing off. In so far as the action of
passing off is concerned, the Hon'ble Apex Court noted that passing off
action applies to both registered and unregistered marks, and is rooted
in the principle that one trader should not unfairly benefit from the
reputation built by another and key distinction between the two lies in
the requirements of proof. It held that in a passing off action, the
plaintiff must prove: (i) the existence of goodwill or reputation in the
mark, (ii) a misrepresentation made by the defendant, and (iii) a
likelihood of damage to the plaintiff's goodwill. It held that an intent to
deceive is not a necessary element nor actual deception or damage be
proved but proof of likelihood of confusion or deception is required. It
13 2025 SCC OnLine SC 1701.
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also held that in a passing off action, the defendant's goods need not be
identical to those of the plaintiff they may be allied or even unrelated,
provided the misrepresentation is such that it affects or is likely to
affect the plaintiff's business reputation. Passing off is grounded in
equitable principles and imposes a higher evidentiary burden to
safeguard commercial goodwill under common law.
26. It is trite that passing off action is a tortious action of deceit and
injunction against passing off cannot be granted for asking. In Parker
Knoll Limited vs. Knoll International Ltd.14 it was held as under:
"secondly to deceive is one thing. To cause confusion is another. The
difference in this; when you deceive a man, you tell him a lie. You make a false
representation to him and thereby causing to believe a thing to be true which
is false. You may not doing it knowingly or intentionally, but still you do it and
so you deceive him. But you may cause confusion without telling him lie at all
and without making any false representation to him. You may indeed him tell
him the truth, the whole truth and nothing but a truth but still you may cause
confusion in his mind, not by any fault of yours, but because he has not
knowledge or ability to distinguish it from the other pieces of truth known to
him or because he may not even take the trouble to do so".
27. It would also be apposite to make a reference to the decision in
the case of Cadila Health Care Ltd (supra). The Hon'ble Apex Court laid
14 1962 RPC 265
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down the following factors to be considered in an action for passing off
on the basis of unregistered trade mark generally for deciding the
question of deceptive similarity :
a) The nature of the marks.
b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as
trade marks.
d) The similarity in the nature, character and performance of the
goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing
the marks they require, on their education and intelligence and a
degree of care they are likely to exercise in purchasing and/or using
the goods.
f) The mode of purchasing the goods or placing orders for the
goods and
g) Any other surrounding circumstances which may be relevant in
the extent of dissimilarity between the competing marks.
28. The judicial pronouncements concretize the well established
principles of goodwill, misrepresentation and likelihood of damage for
establishing case of passing off.
29. To resist the first ingredient of goodwill and reputation, Mr.
Mohan would point out absence of goodwill and reputation in the stand
alone mark HOM. The decision of Mahindra & Mahindra (supra) holds
that the natural abbreviation of a well known registered trade mark
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would result in the popularity, goodwill and reputation of that mark to
naturally flow into and be associated with the acronym as used. For
associating the goodwill and reputation of the registered mark with the
acronym, the circumstances as existed in case of Mahindra (supra) must
be shown to exist. In such eventuality, it is not necessary to establish
goodwill and reputation in stand alone mark of HOM. As discussed
above, there is no cogent material produced by the Plaintiff to persuade
this Court to accept that the Plaintiff's use of the abbreviation is to such
an extent so as to be popularly known and be associated in the public
mind with the abbreviation. I am thus not inclined to accept the
submission that the goodwill and reputation of House of Mandarin must
be held to naturally flow into HOM.
30. There is no standalone sales figure and advertisement expenses
produced in respect of standalone mark HOM. Though the chartered
accountant certifies the sales turnover of the trade mark House of
Mandarin(HOM), prima facie the same cannot be accepted as goodwill
and reputation of the mark HOM. It cannot be debated that the test is
of cumulative satisfaction and even if one the ingredients are not
satisfied, the case of passing off is not established.
31. Going one step further, though not required as one of the
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ingredients of existence of goodwill has been answered against the
Plaintiff, passing off requires proof of likelihood of confusion or
deception. Firstly for confusion to exist, the Plaintiff must be shown to
be popularly known by the abbreviation, which is not so and secondly
even to show confusion and deception, the reliance on few whatsapp
chats is unacceptable. The chats are undated and unsupported by
pleadings as regards the dates and details. Neither are the chats
substantiated by affidavits of the concerned individuals. I do not find
any material to persuade this Court to come to a prima facie finding that
if the relevant consumer base were to come across the acronym HOM,
they would be confused as to whether the same refers to the Plaintiff or
the Defendants.
32. There is nothing produced before this Court to suggest that the
Defendants made any attempted misrepresentation to portray its
restaurant as that of the Plaintiff intentionally or unintentionally or put
out a false representation. It is necessary to show false representation,
even if unintentional, to the public that leads it to believe that the
goods and services of the Defendant are that of the Plaintiff. The
sporadic instances by way of whatsapp chat which even prima facie are
not substantiated are not enough to restrain the use of the mark by the
Defendants. It is necessary to have sufficient material on record than is
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placed by the Plaintiff in order to sustain a prima facie case of passing
off.
33. Even upon prima facie comparison of the rival marks, the
Defendant's mark demonstrates different calligraphy from that of the
Plaintiff's mark as the Defendant uses the mark Hom in a stylized
manner and form which is distinct from that of the Plaintiff's mark HOM
which is depicted in straight English alphabets.
34. In so far as the adoption of the Defendant's mark is concerned,
the Defendant has prima facie placed material on record to substantiate
the manner in which the mark was adopted which idea was borne in
November, 2024 and has thereafter culminated into adoption of the
mark HOM. Contrast are the vague and sketchy pleadings in respect of
Plaintiff's association with the abbreviation HOM.
35. Dealing with the decisions relied upon by Mr. Parikh, the decisions
reiterates the well settled principles pertaining to action for
infringement and trade mark and there is no quarrel with the
propositions laid down in the said decisions. It is only the applicability
of the well settled proposition of law to the facts of each case which
differs and when so applied in the present case, in my view, there is no
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prima facie case made out for infringement of trade mark and
copyright. The likelihood of injury to the Plaintiff, could have been
considered if there was prima facie material on record to demonstrate
that the Plaintiff were popularly known by the mark HOM and the use of
the impugned mark would result in causing injury. It is also not denied
that both the restaurants are premium restaurants which would
obviously cater to a distinct well informed and well educated consumer
base and the likelihood of confusion is bleak in such cases.
36. In light of the above discussion, the Plaintiff has failed to make
out prima facie case for grant of interim relief. Interim Application
stands dismissed.
(SHARMILA U. DESHMUKH, J.)
