Anna Maria Forgione And Anr vs Fire And Ice Holidays Inn Private ...
2025 Latest Caselaw 1509 Cal/2

Calcutta High Court

Anna Maria Forgione And Anr vs Fire And Ice Holidays Inn Private ... on 28 March, 2025

Author: Ravi Krishan Kapur

Bench: Ravi Krishan Kapur

                       IN THE HIGH COURT AT CALCUTTA
                                 ORIGINAL SIDE
                     (Intellectual Property Rights Division)

BEFORE:
The Hon'ble Justice Ravi Krishan Kapur

                            IA NO. GA-COM/1/2025
                              In IP-COM/14/2025

                    ANNA MARIA FORGIONE AND ANR
                                 Vs.
              FIRE AND ICE HOLIDAYS INN PRIVATE LIMITED



For the petitioner               : Mr. Debnath Ghosh, Sr. Adv.
                                   Mr. Sourajit Dasgupta, Adv.
                                   Mr. S. Prasad, Adv.
                                   Mr. P. Basu, Adv.


For the respondent               : Mr. Mr. Ayan Banerjee, Adv.
                                   Mr. Avijit Dey, Adv.

Judgment on                      : 28.03.2025

Ravi Krishan Kapur, J.:

1. This is a suit for infringement.

2. Briefly, the petitioner no.1 is a chef and runs a pizzeria and restaurant by

the name of "Fire and Ice". The name "Fire and Ice" was conceived of by

the petitioner as far back as in January 1995. The first such restaurant

had commenced operations at Katmandu, Nepal. Over the passage of

time, the business of the petitioner has gained tremendous goodwill and

reputation. Subsequently, the petitioner has also opened a restaurant in

Kolkata in or about 2005. The mark and phrase "Fire and Ice" has been

conceived of and adopted by the petitioner in relation to its business and

it is alleged that the same has acquired a distinctive character and there

is immense popularity and goodwill associated with the mark. The

petitioner has also obtained registration in its favour. The unique colour

combination, getup and overall trade dress is also distinctively associated

with the business of the petitioner exclusively and none other.

3. The petitioner also alleges that the words "Fire" and "Ice" are essential

features of the mark of the petitioner and are exclusively associated with

the petitioner.

4. In or about July 2024, the petitioner came to learn that another

restaurant has been opened by the defendant having the name "Fire and

Ice" and thereby infringes upon the mark of the petitioner.

5. By a notice dated 10 July 2024, the petitioner had called upon the

respondent to cease and from using the impugned mark. Subsequently,

the petitioners were surprised to learn that the respondent had also filed

an application for registration of the mark "Fire and Ice Holiday Inn".

6. It is alleged that in running a restaurant with the impugned name there is

dishonest and ulterior intent to trade on the goodwill of the petitioner.

Hence, the instant suit and the prayers for interim protection.

7. The matter had been adjourned on several dates. The respondent has filed

an undertaking on 4 March 2025 which is taken on record signed by the

promotors to the effect that they are ready and willing to forthwith change

their name and not use the mark "Fire and Ice". The respondent also

undertakes that they will not proceed to abandon the trade mark

application for the registration of the mark "Fire and Ice Holiday Inn". In

view of the unconditional undertaking filed by the respondent there is no

scope for adjudication of any dispute. The grievance of the petitioner has

for all purposes been resolved.

8. In such circumstances, there shall be an order of injunction limited to the

extent that the respondent shall not use the impugned mark "Fire and

Ice" either as trade mark or services or trade name and is restrained from

doing so. The respondent is also directed to take necessary steps to

change the impugned trade name on or before 15 April 2025. In terms of

the above undertaking, the respondent is also directed to take steps to

withdraw the proceedings before the Registry.

9. It is made clear that there has been no adjudication on whether the word

"Fire" or "Ice" independently and separately forms a distinctive part of the

trading name or mark of the petitioner or whether the petitioner is

entitled to claim any right in respect thereof.

10. With the above directions nothing further survives in the suit or the

interlocutory application.

11. By consent of the parties both the suit and the interlocutory application

being IP-COM 14 of 2025 and GA-COM 1 of 2025 respectively stand

disposed of.

12. Let there be a decree in terms of the above.

(Ravi Krishan Kapur, J.)