Foodworld vs Foodworld Hospitality Pvt. Ltd.
2009 Latest Caselaw 4881 Del

         IN THE HIGH COURT OF DELHI AT NEW DELHI

                                            Reserved on : August 27, 2009
                                            Date of Judgement: November 30, 2009

                                    CS(OS) No. 1143 of 2004

         FOODWORLD                                              ..... Plaintiff
                                             Through: Mr. Hemant Singh with
                                             Mr. Sachin Gupta, Advocates.


                           versus


         FOODWORLD HOSPITALITY PVT. LTD. ..... Defendant
                     Through: Mr. S.K. Bansal, Advocate.

         CORAM:
         HON'BLE DR. JUSTICE S.MURALIDHAR

                  1.Whether reporters of the local news papers
                   be allowed to see the order?                         Yes
                  2.To be referred to the Reporter or not?              Yes
                  3. Whether the order should be reported in the        Yes
                  Digest ?


                                     JUDGMENT

S. Muralidhar, J.

1. This suit, filed on 12th October 2004, prays for a decree of permanent

injunction to restrain the Defendant from marketing, selling, offering for

sale, advertising, directly or indirectly dealing in food products and food

business under the trademark and trade name FOODWORLD or any other

mark or name deceptively similar thereto as may likely to cause confusion or

deception amounting to passing off of Defendant‟s goods and business as

those of the Plaintiff. The other prayers in the suit are for delivery up of the

infringing packaging, labels and rendition of accounts and for a decree for

the amount due or in the alternative for Rs.20 lakhs as token damages.

Case of the Plaintiff

2. The Plaintiff M/s Foodworld is a registered partnership firm having its

registered office at Greater Kailash Part-II, New Delhi. It is stated that

earlier the Plaintiff was a proprietorship concern of which Mr. Iqbal Krishan

Dogra was the sole proprietor. Since 1987, the said concern was in the food

business which included institutional and outdoor catering under the

trademark/trade name FOODWORLD. On 15th March 2001, Mr. Dogra

inducted his wife Mrs. Meenakshi Dogra as a partner and by a partnership

deed dated 15th March 2001 converted the proprietorship concern into a

partnership firm.

3. An application was made on 4th August 1994 by Mr. Dogra and Mrs.

Meenakshi Dogra for registration of the trademark FOODWORLD (label) in

Class 30 of the Schedule to the Trade and Merchandise Marks Act 1958

(„TM Act 1958‟) i.e. coffee, tea, cocoa, sugar, flour preparation made from

cereals, bread, biscuits, cakes, pastry and confectionary etc. The said

registration was opposed by the Defendant and was pending at the time of

the filing of the suit.

4. The Plaintiff is also stated to have made application on 29th July 2004

under the Trade Marks Act 1999 („TM Act 1999‟) for grant of registration

for the trademark FOODWORLD in Class 29 [i.e meat, fish, poultry and

game, meat extracts, preserved, dried and cooked fruits and vegetables,

jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats]

and in Class 42 [i.e service of providing food and drinks, temporary

accommodation, medical hygienic and beauty care, veterinary and

agricultural services, legal services, scientific and industrial research,

computer programming, services that cannot be classified in other classes].

5. The Plaintiff claims that the trademark/trade name FOODWORLD has

been coined and adopted by the Plaintiff and used exclusively, continuously

and extensively in relation to the food business since 1987. It is stated that

the firm began with supplying packed executive lunches to various reputed

organisations like Eicher Goodearth Limited, Ranbaxy Lab. Ltd., Modi

Xerox, BHEL, Coal India, FICCI etc. It claims to have been running a

restaurant under the trademark/trade name FOODWORLD at the Inland

Container Depot (Dry Port), Tughlakabad, New Delhi since September

1993. Apart from institutional and outdoor catering, the Plaintiff was

allotted a contract for rendering mobile catering services on various trains

including the New Delhi-Jaipur-Ajmer Shatabadi Express. The Plaintiff

claims to have restaurant outlets apart from Tughlakabad also at Dadri in

UP. It is claimed that the Plaintiff caters to more than 6000 passengers on

various trains or through various outlets every day. The trademark/trade

name FOODWORLD appears on all the invoices and the food packaging. It

is also prominently displayed on various commodities like sugar, salt and

pepper sachets, toothpick packaging, on the cutlery supplied, on paper cups,

snacks etc. supplied to the passengers on the train. It is stated that the Indian

Railways has a maximum reach of people and connects even the remotest

corners of the country. It is accordingly claimed that the Plaintiff has thus

acquired "enviable goodwill and reputation in the trademark/trade name

FOODWORLD."

6. In para 7 of the plaint, the turnover figures of the Plaintiff for the years

ending on 31st March 1988 to 31st March 2004 have been indicated. As on

31st March 2004 the annual turnover was 9.56 crores. It is claimed that the

trademark/trade name FOODWORLD is distinctive of the goods and

business of the Plaintiff and has acquired secondary significance to connote

and denote the trade source and origin of the goods. It is stated that the

trademark/trade name FOODWORLD along with the goodwill of the

business thereunder was assigned in favour of the Plaintiff firm which

accordingly became the proprietor of the said trade mark FOODWORLD.

7. The Defendant M/s Foodworld Hospitality Pvt. Ltd., a company

incorporated under the Companies Act, 1956 having its office at Vasant

Kunj, New Delhi is also engaged in food business. The Plaintiff claims that

it became aware of the adoption of the trademark FOODWORLD by the

Defendant in July 2004 after receiving a copy of notice of opposition filed

by the Defendant against the Plaintiff‟s trademark Application No. 635965

in Class 30 for the mark FOODWORLD. Although notice of opposition

was received in May itself, it was brought to the attention of the partners of

the Plaintiff firm only in July. The Plaintiff then filed a counter statement to

the opposition. These proceedings were stated to be pending.

8. The Plaintiff claims to have sent a legal notice dated 12th August 2004

asking the Defendant to discontinue the use/adoption of the trademark

FOODWORLD. By its reply dated 25th August 2004, the Defendant

declined to do so and thereafter the present suit was filed.

9. The case of the Plaintiff is that the adoption of the mark FOODWORLD

by the Defendant in relation to food preparations or products is dishonest

and is bound to cause confusion or deception among the members of the

public and the trade on account of its identity with the Plaintiff‟s trademark

FOODWORLD. The use by the Defendant of the trademark FOODWORLD

in relation to food preparations, products and services is bound to lead the

members of the public to believe that the Defendant‟s goods or business

originate from the Plaintiff or that the Defendant has a trade connection or

association with or the approval of the Plaintiff. This, according to the

Plaintiff, amounts to passing off of the Defendant‟s goods as those of the

Plaintiff. It is alleged that the Defendant‟s conduct is dishonest and malafide

and motivated to misappropriate the Plaintiff‟s goodwill and reputation

attached to the trademark FOODWORLD. It is claimed that the illegal

action of the Defendant is causing irreparable loss and injury to the Plaintiff

in its business, goodwill and reputation and that the said injury cannot be

compensated in monetary terms.

Case of the Defendant

10. A written statement was filed by the Defendant on 8th November 2004. It

is claimed in the written statement that the Plaintiff is neither the proprietor

nor the owner of the trademark or trade name FOODWORLD. It is stated

that the Plaintiff has admitted to have accepted the disclaimer condition

imposed by the Registrar in the Plaintiff‟s Trade Mark Application under

registration No.635965 in Class 30. The Plaintiff‟s application was for the

artistic logo with the word/mark FOODWORLD which contains a device of

a globe in the letter „O‟. This application was advertised in the Trade Marks

Journal No. MEGA 3 dated 14th October 2003 with a disclaimer condition

that the registration of this trade mark would give no right to the exclusive

use of "GLOBE ALONG WITH FOOD & WORLD." It is submitted that

inasmuch as the Plaintiff has accepted this disclaimer the only right, if any,

that the Plaintiff has is to the artistic logo on the left side of the word/mark

FOODWORLD. It is further stated that in view of the disclaimer the

Plaintiff is estopped from claiming any exclusive right in the said trade

name/ trademark FOODWORLD.

11. It is submitted that the non-disclosure of the above disclaimer in the

plaint amounted to suppression of a material fact and entailed outright

dismissal of the suit. It is stated that in the application made for the

registration of the trademark, the Plaintiff claimed user only since 1 st August

1994 and therefore the claim of being a user since 1987 was false to the

knowledge of the Plaintiff. It is further pointed out that the application was

filed in the name of Mr. Iqbal Krishan Dogra and Mrs. Meenakshi Dogra

and not in the name of the Plaintiff firm which was admittedly formed only

in March 2001. It is therefore alleged that the Plaintiff is not a legal entity

and has made wrong submissions as to its business and logo.

12. The Defendant claims to be engaged in the hospitality business and

manufacturing, running and operating restaurants under the service mark

FOODWORLD as well as the corporate name FOODWORLD. It has

claimed to have adopted the said service mark/trade name in 1998 and it has

been using it continuously, commercially and exclusively in the course of

trade. The Defendant also claims that the said service mark/trade name is

identified with the Defendant and indicates the business and service as

originated from the Defendant. It is further claimed that the consuming

public and the trade associates would identify the said service mark and

trade name with the Defendant alone. The Defendant also claimed that the

said service mark and the trade name has acquired secondary significance

and have become synonymous with the goods and business of the

Defendant. The Defendant claimed to have acquired considerable reputation

and goodwill to have conducted business running into lakhs of rupees.

13. The Defendant, in the year 2001, applied for registration of the said

service mark/trade name FOODWORLD in Class 29 and Class 30 since the

applications were under the Trade & Merchandise Marks Act, 1958 („1958

Act‟) which contained no provision for the registration of service marks.

Both the applications were advertised in the Trade Mark Journal on 25th

October 2003. No objection was filed by the Plaintiff to the said

applications. After the coming into force of the TM Act 1999 which

permitted registration of marks to be used in services, the Defendant filed an

application for registration of the service mark FOODWORLD in Class 42.

This application was also directed to be advertised by the Registrar of Trade

Marks. The Defendant also claimed to have applied and obtained a copyright

registration A-64449 of 2003. The copy of the certificate has been placed on

record. It is submitted that the subject matter of the copyright registration is

an original artistic work within the meaning of the Copyright Act, 1959 and

that the Defendant is the owner of the copyright therein. It is accordingly

submitted that the Defendant has its own and independent right in the

service mark and trade name FOODWORLD on the ground of honest and

concurrent user as well.

14. On 14th September 2005 the Defendant filed an amended written

statement to bring on record the fact that it had been granted registration for

the mark FOODWORLD in Class 30 on 1st June 2005 effective from 19th

December 2001. It was also granted registration in Class 29. The Defendant

also was granted copyright registration No. A-64449 of 2003 for the artistic

work.

15. In its replication, the Plaintiff claims that it had adopted and is the prior

user of the trademark/trade name FOODWORLD and has acquired enviable

goodwill and reputation. The contention is that on the principles of prior

adoption, continuous use and excellent quality control, the Plaintiff is the

legitimate proprietor of the trademark/trade name FOODWORLD. It is

asserted that notwithstanding the disclaimer for the device of the globe with

„Food‟ or the device of the globe in conjunction with the word `World‟ there

was no disclaimer with regard to the trademark FOODWORLD as a whole.

16. This Court did not grant any interim relief. On behalf of the Plaintiff,

Shri I. K. Dogra filed an affidavit dated 30th May 2006 by way of

examination-in-chief. Inter alia along with the affidavit, Shri Dogra

exhibited copies of the trademark applications made, the legal notice issued

and the copy of the opposition filed by the Plaintiff to the Defendant‟s

trademark application. The Plaintiff has also placed on record copies of the

visitor‟s book kept in the trains which contained the comments made by the

customers about the quality of the food supplied by the Plaintiff. The

figures of sales turnover as well as the copies of the balance sheet and profit

and loss account of the Plaintiff from March 2001 to March 2004 have been

placed on record.

17. The other witness of the Plaintiff, Shri Pradeep Kumar Nagpal (PW-2)

filed an affidavit dated 30th May 2006 by way of examination in chief. A

further affidavit dated 28th November 2006 by way of evidence of PW 1 has

been filed on behalf of the Plaintiff. PWs-1 and 2 were cross examined on

various dates. On behalf of the Defendant the affidavit dated 1st July 2006 of

Shri Sameer Puri DW-1 by way of evidence was filed. Shri Puri was cross-

examined on 5th July 2007.

Issues

18. By an order dated 5th April 2006 the following issues were framed:

"1. Whether the suit has been instituted by a competent and authorised person? OPP

2. Whether the Plaintiff is proprietor of the trademark/trade name FOODWORLD? OPP

3. Whether by the use of the word FOODWORLD the Defendant is passing off its goods and services as those of the Plaintiff? OPP

4. Whether the Defendant is prior user of the trademark/trade name FOODWORLD? OPD

5. Whether the Defendant is entitled to use the trademark/trade name FOODWORLD on account of honest and concurrent use? OPD

6. Whether the suit is barred by delay, acquiescence and laches? OPD

7. Whether the Plaintiff is guilty of suppressing material facts and has not come to the Court with clean hands?

OPD

8. Whether the Plaintiff is entitled to any relief as prayed for?"

The submissions of Mr. Hemant Singh, learned counsel for the Plaintiff and

Mr. S.K. Bansal, learned counsel for the Defendant have been considered.

Issue No.1: Whether the suit has been instituted by a competent and authorised person?

19. The plaint has been signed by Shri IK Dogra describing himself to be the

partner of the plaintiff firm. It is supported by the affidavit dated 12 th

October 2004 of Shri Dogra. The letter of authorisation dated 7th January

2004 given by Ms. Meenakshi Dogra, one of the partners of the Plaintiff

firm, to file the suit is marked as Ex. PW 1/1. This Court is satisfied that the

suit has been instituted by a competent and authorised person. Accordingly

this issue is decided in favour of the Plaintiff and against the Defendant.

Issue No.6: Whether the suit is barred by delay, acquiescence and laches?

20. The case of the Plaintiff is that it came to know about the adoption and

use of the trademark FOODWORLD by the Defendant in July 2004 when it

received the Defendant‟s notice of opposition to its application.

21. It is seen that the Plaintiff‟s application was advertised in the Trade

Marks Journal Mega No.3 dated 14th October 2003. The opposition filed by

the Defendant was dated 24th February 2004. The Plaintiff filed its counter

statement on 27th July 2004. The present suit has been filed on 12 th October

2004. In the circumstances it is held that the suit is not barred by laches or

delay.

Issue No.2: Whether the Plaintiff is proprietor of the trademark/trade name FOODWORLD?

22. The case of the Plaintiff is that it has been using the mark

FOODWORLD continuously since 1987 in relation to the food catering

business. There are invoices of FOODWORLD, having its office at Greater

Kailash in New Delhi, of the years 1990, 1991, 1992, 1993, and 1995

onwards. Letters addressed to the Senior Commercial Manager (Catering),

Northern Railways of 1st January 1997 including the bills for the period 16th

December 1996 to 31st December 1996 of the New Delhi-Jaipur-Ajmer-New

Delhi Shatabdi Express are on record. There are exhaustive invoices of

1997, 1998, 1999. The agreement for running mobile catering services with

the Northern Railways dated 13th March 1995 (Ex.PW 1/3.1) has been duly

proved. Of course, this agreement is with FOODWORLD which is the

proprietary concern, of which Shri Dogra was the sole proprietor.

23. Then we have sales tax registration in respect of M/s. FOODWORLD

with its registration valid from 17th March 1989. We have assessment orders

for the period 31st October 1987 to 31st March 1988; 1st April 1988 to 16th

March 1989 and 17th March 1989 to 31st March 1989. There are assessment

orders for the years 1989-90, 1990-91, 1991-92, 1992-93 onwards all in the

name of M/s. FOODWORLD. The assessment order dated 29 th March 2004

for the year 2002-03 notes that the Plaintiff is providing food services. The

turnover figures are also given in these assessment orders.

24. We have the partnership deed dated 15th March 2001 between Shri IK

Dogra and Mrs. Meenakshi Dogra (Ex.PW 1/2) and the registration of the

firm (Ex.PW 1/1) issued on 15th March 2001. In its counter statement to the

notice of opposition, the partnership firm adverts to the fact that it has been

assigned the mark FOODWORLD by the proprietary concern after the

consideration of the forming. The cross-examination of the witnesses for the

Plaintiff on this aspect has not yielded much to describe the exhaustive

evidence placed by the Plaintiff to show that it is not the proprietor of the

mark FOODWORLD.

25. In the considered view of this Court, there is overwhelming evidence

adduced by the Plaintiff to prove that the Plaintiff is the proprietor of the

mark. The Plaintiff has also placed on record a copy of the form TM-16

whereby the Trademarks Registry was informed that the status of the

applicant had changed from a proprietary concern to a partnership firm with

effect from 15th March 2001 and accordingly requested the name of the

applicant in the applications may be amended to Mr. IK Dogra and Ms.

Meenakshi Dogra, Indian nationals trading as FOODWORLD. Accordingly

this issue is decided in favour of the Plaintiff and against the Defendant.

Issue No. 3:Whether by the use of the word FOODWORLD the Defendant is

passing off its goods and services as those of the Plaintiff?

The elements of passing off

26. The present case is one of passing off. The Plaintiff has applied for

registration for the mark FOODWORLD whereas the Defendant holds a

registration both in respect of the trademark as well as copyright in

FOODWORLD. In order to succeed on the issues framed the Plaintiff has to

prove that the elements of passing off exist in the present case.

27. The leading modern authority on passing-off is the decision of the House

of Lords is Reckitt and Colman Products Ltd v. Borden Inc and others

[1990] 1 All ER 873, where the House of Lords explained the "classical

trinity" of passing off. Lord Oliver said:

"The law of passing off can be summarised in one short general proposition, no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get- up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff 's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."

28. Earlier, in the Advocaat case, Erven Warnink v. Townend [1979] 2 All

E.R. 927, in the leading speech of Lord Diplock it was observed:

"Spalding v. Gamage (1915) 32 RPC 273 (H.L.) and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing-off: (1) a misrepresentation (2) made by a trader 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 consequences) 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."

29. Courts in our country have been adhering to the above principles which

are recognised as part of the common law in the area of passing off. This

Court in M/s Smithkline Beecham and Ors v. M/s. Hindustan Lever Ltd.

and Ors 1999 PTC 775 (Del) held that "in order to prima facie prove a cause

of action for passing off certain pre-conditions are to be fulfilled. The first

ingredient to be prima facie pleaded and proved is goodwill, whereas the

second aspect to be proved is misrepresentation and the third such aspect

that is to be proved is the fact that such misrepresentation has led to

sufferance of damages. The plaintiffs have to prove that the defendant has

been using or is using in connection with his own goods a name, mark, sign,

or get up which has become distinctive with the plaintiffs. He also has to

prove in addition that the defendants' use of the said feature was calculated

or likely to deceive, which has resulted into injury actually to the goodwill

of the plaintiff. Since passing off action is based on deception and

misrepresentation there has to be enough pleadings in the plaint to indicate

that there was in fact deception, confusion and misrepresentation."

Distinctiveness

30. The first aspect to be considered is whether the Plaintiff has been able to

prove the distinctiveness of the mark in question. The mark in question,

FOODWORLD, is an arbitrary combination of two descriptive words, „food‟

and „world‟. The Plaintiff here is not unaware of this limitation and that in

such a case the burden is on the Plaintiff to prove distinctiveness by way of

long usage consistently over a period of time. The following passage from

Christopher Wadlow, The Law of Passing Off, (Thomson, Third Edn., 2004)

at Page 582 is helpful in this regard:

"A mark can only become distinctive by user, but there is no rule of law as to what kind or amount of user is necessary or sufficient to found the action. What is in issue is whether there has been a material misrepresentation, which in turn depends on whether the mark has become distinctive to sufficient proportion of the public. In general, the claimant‟s case will be strengthened by user which has lasted a long time and been on a large scale, but neither is essential. Cases in which the claimant has failed solely because of inadequate user have been rare in modern times. What is rather more common is that relatively small differences in the defendant‟s own mark, or field of business, will be held to afford a defence when the claimant‟s user has been slight. Occasionally, older decisions have referred to periods of several months, or even years, as being inadequate to appropriate marks of very low inherent capacity to distinguish. Although inherently distinctive marks will be protected after a short period than ones which are descriptive or otherwise non-distinctive, it may be doubted if the supposed marks in question would have been protected whatever the length of use."

31. The classic explanation of Parker J in Burberrys v. Cording (1909) 26

RPC 693 is as follows:

"It is important for this purpose to consider whether the word or name is prima facie in the nature of a fancy word or name, or whether it is prima facie descriptive of the articles in respect of which it is used. It is also important for the same purpose to consider its history, the nature of its use by the person who seeks the injunction, and the extent

to which it is or has been used by others. If the word or name is prima facie descriptive, or be in general use, the difficulty of establishing the probability of deception is greatly increased, and again, if the person who seeks the injunction has not used the word or name simply for the purpose of distinguishing his own goods from the goods of others, but primarily for the purpose of denoting or describing the particular kind of article to which he has applied it, and only secondarily, if at all, for the purposes of distinguishing his own goods, it will be more difficult for him to establish the probability of deception."

32. The general misconception as to what is a „descriptive‟ mark and what is

„generic‟ has sought to be explained in Christopher Wadlow, The Law of

Passing Off, (Thomson, Third Edn., 2004), at page 618 as under:

"In cases of passing-off involving verbal marks the converse of "distinctive" is often taken to be "deceptive". Unfortunately, there are really two different concepts behind that word, since "descriptive is often used when "generic" would be more appropriate. In English legal usage it is more consistent with the authorities to use "descriptive" as a term of art embracing "generic" as well as its natural meaning. The fact that one word has been used to cover two concepts which are related but not identical has resulted in some confusion of thought, especially in respect of arbitrary generic names for new goods or services."

33. The greater burden on the Plaintiff to justify protection of a „descriptive‟

mark was recognized by Lord Davey in Cellular Clothing v. Maxton &

Murray [1899] AC 326:

"[A] man who takes upon himself to prove that words, which are merely descriptive or expressive of the quality of the goods, have acquired the secondary sense to which I have referred, assumes a much greater burden.... than that of a man who undertakes to prove the same thing of a word not significant and not descriptive, but what has been compendiously called a `fancy‟ word.

The other observation which occurs to me is this, that where a man produces, or invents if you please, a new article, and attaches a descriptive name to it, a name which, as the article has not been produced before, has of course not been used in connection with the article, and secures for himself either the legal monopoly or a monopoly in fact of the sale of that article for a certain time, the evidence of persons who come forward and say that the name in

question suggests to their minds and is associated by them with the plaintiff‟s goods along, is of a very slender character..... He brings the article before the world, he gives it a name descriptive of the article all the world may make the article, and all the world may tell the public what article it is they make, and for that purpose they may prima facie use the name by which the article is known in the market."

34. The same principles were stated by Stephen J. in the High Court of

Australia (Full Court), in a passage which was quoted and approved by Lord

Scarman in Cadbury Schweppes v. Pub Squash Co [1981] 1 All ER 213

(PC):

"There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing-off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find comparatively small differences in a competitor‟s trade name will render the latter immune from action: Office Cleaning Services v. Westminster Office Cleaning Assn. per Lord Simonds. As his Lordship said, the possibility of blunders by members of the public will always be present when names consist of descriptive words. `So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.‟ The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe."

35. Contending that the mark FOODWORLD lacks distinctiveness, learned

counsel for the Defendant submitted that in an action for passing off the

Court was first required to consider whether the Plaintiff was the proprietor

of a distinctive mark and thereafter whether the Defendant was passing off

his goods and services as that of the Plaintiff. Reliance was placed upon the

decision in Manish Vij v. Indra Chugh 2002 (24) PTC 561 (Del) where the

word „kabadibazaar" was held not to be a newly coined but a descriptive

word as it imparted information directly and it required no imagination to

connect it with second hand goods. He has also relied upon the case of Vijay

Kumar Ahuja v. Lalita Ahuja 2002 (24) PTC 141 (Del) where it was held

that neither party can claim any right to exclusive use of common language

words and names such as "MISTER", "DEFENCE", "ARUN" and "ML"

unless they acquired great reputation and goodwill or assumed secondary

significance.

36. On the other hand, learned counsel for the Plaintiff has contended that

the Defendant, which itself claims to the exclusive right to use

FOODWORLD cannot challenge it as descriptive. Reliance is placed upon

the decision in Automatic Electric Limited v. RK Dhawan 1999 PTC (19)

81 (Del). In that case, this Court held that "the fact that the defendant itself

has sought to claim trade proprietary right and monopoly in "DIMMER

DOT", it does not lie in their mouth to say that the word "DIMMER" is a

generic expression." It was further pointed out that the publication of the

application made by the Plaintiff was with a disclaimer and that this by itself

was indicative of the fact that the mark lacked distinctiveness.

37. In order to prove distinctiveness, learned counsel for the Plaintiff has

contended that a descriptive and laudatory trademark is entitled to protection

if it assumes a secondary meaning. In support of this contention, he has

relied upon Godfrey Philips India Ltd v. Girnar Food and Beverages (P)

Ltd 2005 (30) PTC 1 (SC) and Ishi Khosla v. Anil Aggarwal 2007 (34) PTC

370 (Del). In Ishi Khosla, this Court while granting interim injunction held

that the mark "Whole Foods" had acquired secondary meaning and was not

descriptive. It was further laid down that in order to acquire secondary

meaning, "it is not necessary that product is in the market for number of

years, as observed earlier. If a new idea is fascinating and appeals to the

consumers, it can become a hit overnight."

38. First it is necessary to consider the effect of the disclaimer in the present

case and its effect if any on the distinctiveness of the Plaintiff‟s mark.

Section 17 of the the TM Act 1958 deals with the effect of a disclaimer, is

set out below:

"17. Registration of trade marks subject to disclaimer If 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

(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 tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration:

Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made."

39. The corresponding provision in the TM Act 1999 is Section 17, which is

set out below:

"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 taken 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

(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."

40. What is common to the two provisions is that they treat differently the

class of marks that are "common to trade" or are "otherwise of a non-

distinctive character." The difference is that under the 1958 Act recognises

the concept of disclaimer in respective of the non-distinctive part of the

mark and yet preserves the right of a proprietor of such mark to seek

protection of such mark unaffected by such disclaimer. The 1999 TM Act on

the other hand does not recognise any concept of disclaimer. It states that the

proprietor of such mark shall have no exclusive right in respect of such mark

notwithstanding that he may have a registration of such mark in his favour.

41. As far as the present case is concerned, it may be recalled that the

Plaintiff‟s application was for the artistic logo with the word/mark

FOODWORLD which contains a device of a globe in the letter „O‟. This

application was advertised in the Trade Marks Journal No. MEGA 3 dated

14th October 2003 with a disclaimer condition that the registration of this

trade mark would give no right to the exclusive use of "GLOBE ALONG

WITH FOOD & WORLD." This Court fails to appreciate how the said

disclaimer helps the Defendant to show that the Plaintiff‟s mark is not

distinctive. In the first place, the Plaintiff is not claiming inherent

distinctiveness of the mark but distinctiveness on account of long usage.

Secondly, at the time when the Plaintiff‟s first application was made in 1994

the 1958 Act applied. In terms of the 1958 Act the mere fact that there was a

disclaimer would not prevent the Plaintiff from seeking an injunction against

passing off. Thirdly, since the marks are identical, if the Plaintiff‟s mark is

merely descriptive, then so is the Defendant‟s. In terms of the 1999 Act

neither can claim any right of exclusive use to such mark. Fourthly, the

Defendant applied for and obtained registration of the mark FOODWORLD.

The Defendant cannot possibly contend that the mark is not one in respect of

which there cannot be an action brought by the Plaintiff against the

Defendant for passing off.

Evidence as to distinctiveness

42. There can be no doubt that the mark FOODWORLD is not inherently a

distinctive mark. It is the case of the Plaintiff that the mark has attained

distinctiveness on account of long usage. This calls for examination of the

evidence led by the Plaintiff on the point. Much of this evidence is also

relevant for the issue whether the Plaintiff is the prior user of the mark.

43. The Plaintiff states that it has been using the mark FOODWORLD

continuously since 1987 in relation to the food catering business. There are

invoices of FOODWORLD, having its office at Greater Kailash in New

Delhi, of the years 1990, 1991, 1992, 1993, and 1995 onwards. Letters

addressed to the Senior Commercial Manager (Catering), Northern Railways

of 1st January 1997 including the bills for the period 16th December 1996 to

31st December 1996 of the New Delhi-Jaipur-Ajmer-New Delhi Shatabdi.

There are exhaustive invoices of 1997, 1998, 1999. The agreement for

running mobile catering services with the Northern Railways dated 13 th

March 1995 (Ex.PW 1/3.1) has been duly proved. Of course, this agreement

is with FOODWORLD which is the proprietary concern, of which Shri

Dogra is the sole proprietor. Then we have sales tax registration in respect

of M/s. FOODWORLD with its registration valid from 17th March 1989.

We have assessment orders for the period 31st October 1987 to 31st March

1988; 1st April 1988 to 16th March 1989 and 17th March 1989 to 31st March

1989. There are assessment orders for the years 1989-90, 1990-91, 1991-92,

1992-93 onwards all in the name of M/s. FOODWORLD. The assessment

order dated 29th March 2004 for the year 2002-03 notes that the Plaintiff is

providing food services. The turnover figures are also given in these

assessment orders.

44. Ex. PW 2/1 is the statement of sales turnover of the Plaintiff for the year

ending 31st March 1988 to 31st March 2005 as certified by PW2 Sh. Pradeep

K. Nagpal, the Chartered Accountant of the Plaintiff. Ex. PW 2/2 contains

the balance sheets of the Plaintiff from the year 2001 till the year ending 31 st

March 2005. From these documents, it is evident that the sales turnover of

the Plaintiff has increased from Rs. 1,18,663 (in 1988) to Rs. 9,88,01,846 (in

2005).

45. Then we have the evidence of the Defendant himself. In his reply in the

cross-examination, the Defendant has tacitly admitted that the mark is not

only distinctive but that there is likelihood of deception by using the word

FOODWORLD by some other person. There has been no attempt at re-

examining the Defendant on this aspect. Therefore on the first aspect of

distinctiveness, it must be held that the Plaintiff has been able to establish

that its use of the mark FOODWORLD in relation to institutional catering

has attained distinctiveness on account of long usage. But then this is only

the first of the requirements in the action for passing off.

Reputation and goodwill

46. The second requirement is that of goodwill and reputation. The law in

this regard has been summed up neatly in Perkins v. Shone 2004 EWHC

2249 (Ch D) as under:

"Commercially goodwill is recognised as a form of property, and transactions in goodwill occur constantly in all areas of business. The law also recognises that goodwill exists, and affords it a measure of protection through the law of passing off. However, the degree of legal protection is not as extensive as the factual and commercial content of goodwill. To some extent that is necessarily so given the factors which make up the goodwill of a business or of a particular line of business. The essence of goodwill has been encapsulated judicially in Lord Macnaghten's expression 'the attractive force which brings in custom': IRC v Muller [1901] AC 217 at 223. To a large measure it lies in the de facto expectation that an established line of business will continue: that the customers will carry on purchasing the goods or services and that the suppliers will carry on providing the supplies which enable the goods or services to be provided. But those are not matters which can be given legal protection as some species of property right. The goodwill value of a business can be reinforced by making long term contracts with customers or suppliers, but goodwill can exist and can have a significant value even in the absence of long term contracts. In such cases it exists as a commercial reality although major elements of it do not and cannot receive legal protection."

47. The Defendant has argued that the Plaintiff has not proved user of the

mark on its goods and services as such. In other words, it is the case of the

Defendant that the Plaintiff has no reputation of its own; it is wholly

dependant on a single customer viz., the Railways to build its entire

reputation. The fact however is that the Plaintiff has been able to bring on

record suggestion/complaints books of passengers using the trains in which

the Plaintiff renders catering service. The comments of a representative

sample of some of the passengers does show that the Plaintiff has been able

to build a name for itself in catering business. Its logo and mark is displayed

in the paper tissues, the sachets etc. served with the food on the trains. The

mark and logo have therefore good visibility. The catering services are also

on trains that criss-cross the country.

48. There is also merit in the contention of the learned counsel for the

Plaintiff that the requirement of the law is about the use of the mark in any

form not limited to use on goods. Under Section 2(2)(b) of the 1958 Act, the

use of mark in relation to goods shall be construed as a reference to the use

of the mark upon, or in any physical or in any other relation whatsoever, to

such goods. The use of a mark shall be construed as a reference to the use of

a printed or other visual representation of the mark. In terms of the 1958 Act

which was in force when the alleged passing off took place, the contention

of the Plaintiff that its user of the mark FOODWORLD for its catering

services must be considered as use of the mark by it has merit. A collective

appreciation of the above evidence leads this Court to the conclusion that the

Plaintiff has been able to prove the existence of the next element of a

passing off action, viz. that in relation to catering services the Plaintiff has a

reputation and goodwill.

Deception and Confusion

49. The third and most crucial limb of the passing off action is for the

Plaintiff to prove that the use of the identical mark by the Defendant has

caused deception and confusion amongst the consumers and the trade. In his

reply in the cross-examination, the Defendant has tacitly admitted that the

mark is not only distinctive but that there is likelihood of deception if the

word FOODWORLD were to be used by some other person. The question

really, therefore, is whether the use by the Defendant of the mark

FOODWORLD has lead to or is likely to lead to confusion and deception.

The plea of common field of activity

50. It is the plea of the Plaintiff that the Defendant is in a common filed of

activity, being in the restaurant business, and therefore there was greater

likelihood of confusion since the mark used by both of them was identical. It

must be noted at this juncture that the Defendant‟s restaurants are not named

„Foodworld‟. The Defendant is at present using the mark only as a part of its

corporate/trade name. In order to appreciate whether the two are in a

common filed of activity, the law in this regard may be first noticed.

Christopher Wadlow, in The Law of Passing Off, (Thomson, Third Edn.

2004), while dealing with the relevance of "common fields of activity",

states at page 341:

"....In the first place, the misrepresentation in passing-off is hardly ever an express one. Instead, the court has to decide whether in all the circumstances of the case the use by the defendant of a particular name, mark or get-up is likely to deceive. Clearly, the similarity or dissimilarity of the parties‟ respective fields of business is one more

important factor to consider. In general, the closer they are the more likely it is that the public will assume there to be a connection. Secondly, if the existence of a misrepresentation may be inferred, then the similarity of the fields of activity may again become relevant on the logically separate question of likelihood of damage.

The "common field of activity" has different degrees of relevance on the two issues. Where it is the existence of a misrepresentation which is in issue the matter is entirely one of degree: in a blatant case there need be no common field in any real sense at all, but even competition between the parties will not outweigh such factors as strong dissimilarities in the respective marks. On the issue of damage a more important criterion than the common field is the existence or absence of actual competition. If the claimant stands to lose sales to the defendant then damage will normally be inferred. If not, then similarities in the respective fields of business are still of some weight in deciding whether damage in one of the other forms recognised by law will occur, and on what scale."

51. In Harrods Ltd v Harrodian School Ltd [1996] RPC 697 (Court of

Appeal) Millet L.J. described the relevance of common field of activity in

the following terms:

"What the plaintiff in an action for passing off must prove is not the existence of a common field of activity but likely confusion among the common customers of the parties.

The absence of a common field of activity, therefore, is not fatal; but it is not irrelevant either. In deciding whether there is a likelihood of confusion, it is an important and highly relevant consideration

". . . whether there is any kind of association, or could be in the minds of the public any kind of association, between the field of activities of the plaintiff and the field of activities of the defendant":Annabel's (Berkeley Square) Ltd v G Schock (trading as Annabel's Escort Agency) [1972] RPC 838 at page 844 per Russell LJ.

In the Lego case Falconer J likewise held that the proximity of the defendant's field of activity to that of the plaintiff was a factor to be taken into account when deciding whether the defendant's conduct would cause the necessary confusion.

Where the plaintiff's business name is a household name the degree of overlap between the fields of activity of the parties' respective businesses may often be a less important consideration in assessing whether there is likely to be confusion, but in my opinion it is always a relevant factor to be taken into account.

Where there is no or only a tenuous degree of overlap between the parties' respective fields of activity the burden of proving the likelihood of confusion and resulting damage is a heavy one."

52. The counsel for the Defendant has pleaded that as the Plaintiff is

involved only in the business of catering and the Defendant is in hospitality

business and runs and operates restaurants, there is no "common field of

activity" leading to no deception or likelihood of confusion amongst the

public or the prospective customers of the Plaintiff. In support of this

argument, he relies upon Sona Spices Pvt Ltd v. Soongachi Tea Industries

Pvt Ltd 2007 (34) PTC 91 (Del) and First Computers v. A Guruprasad

1996 PTC (16) 27 (Mad) (DB). In Sona Spices, the Plaintiff who was the

prior registered owner of trademark "Sona" was using the same for spices

and was a recent entrant in tea business. However, the Defendant was using

the same brand name for tea for around 30 years and was also a registered

owner of the same brand name. This court rejected the Plaintiff‟s application

for interim injunction on the ground that the Defendant was a prior user of

the mark „Sona‟ in respect of tea business and the Plaintiff failed to prove

any established business in respect of tea. Moreover, the Court allowed the

Defendant‟s application to restrain the Plaintiff from marketing tea under the

trade name „Sona‟. In First Computers, the Plaintiff was a trader in

computes. He was not a manufacturer but sold already manufactured

computers. The Defendant was neither a manufacturer, nor a seller of

computers. His job was training people in the use of computers. In such

circumstances where the likely customers were also educated people, the

Division Bench of Madras High Court did not find any ground to grant

interim relief to the Plaintiff. Reliance is also placed on the decision in

Britannia Industries Ltd v. Cremica Agro Food Ltd 2008 (38) PTC 89

(Del). In that case, the Plaintiff was using the trademark "GREETINGS" in

relation to biscuits, cakes and bakery products whereas the Defendant‟s

products were a combination of assorted biscuits. The Court refused to grant

interim injunction and did not find it to be a prima facie case of interim relief

to the Plaintiff.

53. In My Kinda Town Ltd. v.Soll 1983 RPC 407 the Plaintiffs were running

a restaurant in London under the name "The Chicago Pizza Pie Factory".

The defendants were also operating a restaurant in London named "L.S.

Grunts Chicago Pizza Company". The plaintiff used the words "Chicago

Pizza" in its menu and in connection with all aspects of the restaurant as

descriptive of this kind of pizza. The plaintiff filed an action seeking

injunction to restrain the defendants from operating any restaurant under the

name "L.S. Grunts Chicago Pizza Company" or any other name including

the name "Chicago Pizza Co." The plaintiff alleged that the decor, contents

of the menu and style of the defendants' restaurant were very similar to the

plaintiffs' and that the use by the defendants of the name „Chicago Pizza

Co.‟ would cause confusion that the defendant‟s restaurant was that of the

plaintiff or one connected therewith. It was held by the Court of Appeals that

the words "Chicago Pizza" were descriptive and the Plaintiff could not by

incorporating such name as part of its corporate trading style claim a

monopoly over such name. It was held that the plaintiff had to show that the

use of the potentially confusing descriptive words „Chicago Pizza‟ in the

defendants' trading name was an "operative misrepresentation calculated in

the circumstances to lead a substantial section of the public to the belief that

the two restaurants were connected". Further it was held that the trial judge

had rightly held that the words "Chicago Pizza" were descriptive of the main

products served by the two restaurants, and that the plaintiff could not object

to the defendants serving that kind of pizza under that name; such

descriptiveness was a factor which fell to be considered against the

background of the facts as a whole in assessing whether there had been a

misrepresentation. It was observed that "having been a de facto monopolist,

the plaintiff had to put up with a degree of confusion when the product to

which it had given a descriptive name, and which it had until then been its

monopoly, began to be sold by another." Injunction was therefore refused.

Evidence of actual deception and confusion

54. In order to assess whether the fields of activity of the Plaintiff and the

Defendant are common and whether in turn that has led to deception and

confusion, the evidence has to be looked at. Here the Court would like to

begin the discussion by noting that the kind of evidence which would have

to be produced by a Plaintiff to show deception and confusion at an

interlocutory stage would be qualitatively different from the evidence

required to be produced at the final stage of the trial to prove deception.

Where the trial of a suit has been pending for a number of years, it should be

possible for the Plaintiff to produce such evidence to show actual instances

of both deception as well as damage caused to the business and reputation of

the Plaintiff. It hardly needs to be stated that most of the reported judgments

in the area of trademarks are at the interlocutory stage of interim injunction

where the entire discussion centers around the likelihood of deception and

confusion. That question is answered invariably at the interlocutory stage on

the basis of pleadings and documents when the Court does not have before it

the entire evidence.

55. Parker J. explained in Burberrys v. Cording (supra) the principles

governing the kind of evidence required to prove passing-off:

"The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name or, indeed, in any other way, to represent his own goods as being the goods of another to that other‟s injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property to protect which it is granted is not property in the word or name, but property in the trade or goodwill which will be injured by its use. If the use of a word or name be restrained, it can only be on the ground that such use involves a misrepresentation, and that such misrepresentation has injured, or it calculated to injure, another in his trade or business.

If no case of deception by means of such misrepresentation can be proved, it is sufficient to prove the probability of such deception, and the court will readily infer such probability if it be shown that the word or name has been adopted with any intention to deceive. In the absence of such intention, the degree of readiness with which the court will infer probability of deception must depend on the circumstances of each particular case, including the nature of the word or name the use of which is sought to be restrained. xxx But whatever be the nature of [sic or] history of the word or name, in whatever way it has been used, either by the person seeking the injunction or by others, it is necessary, where there has been no actual deception to establish at least a reasonable probability of deception. In such cases the action is, in effect a quia timet action, and unless such reasonable probability be established, the proper course is, in my opinion, to refuse an injunction, leaving the plaintiff to his remedy if cases of actual deception afterwards occur."

56. Taking a cue from the above observations, this Court is of the view that

in a suit for passing off at the final stage it is not sufficient for the Plaintiff to

merely talk of a likelihood of deception and confusion. Christopher Wadlow,

the Law of Passing Off, 3rd Edn (2004), states at page 590:

"It often happens that one and the same sign, or two closely similar, may be in use by more than one business. On the traditional understanding of the tort, it was necessary for the claimant to prove that the sign relied on was distinctive of him alone in whatever might be defined as his field of business. The modern definition of the law is based on misrepresentation. If the sign is used by the claimant alone, then the likelihood is that it is distinctive of him and adoption of it by a competitor raises a prima facie case of passing-off. If this is not the case, then one must look beyond the sign itself at all the relevant circumstances to see if the defendant is making a misrepresentation that his goods of business are those of the claimant. If so, it need not matter that the claimant‟s case may rely to some extent on a sign which is not unique to him. So in Parker & Son (Reading) v Parker [1965] RPC 323 the common surname Parker was used by several estate agents in or near Reading, but it was abundantly clear that the defendant was passing himself off as the plaintiffs‟ and in Mappin & Webb v Leapman (1905) 22 RPC 398 the defendant claimed that Mappins' A1 Quality on his goods denoted a separate business carried on as Mappin & Sons, but he too was clearly passing them off as the plaintiffs‟."

57. In Kerly's Law of Trademarks and Tradenames, 13th Edn (2001) at

Page 522 it is stated:

"Instances of actual deception need not be proved if the court is otherwise satisfied of the probability of deception; although in the absence of cases of actual deception the evidence adduced must be "of the most cogent sort". On the other hand, cases of actual deception are not necessarily conclusive: for example, where their number is comparatively insignificant; or where the defendant has done nothing but what he was entitled to do, as where he has only used marks common to the trade. Furthermore, people who allow themselves to be deceived seldom make good witnesses, with the result that their evidence can usually be brushed aside by a judge who is not otherwise convinced."

58. Therefore what becomes important to prove deception and confusion is

both the extent and the quality of the evidence. When one examines

decisions of courts in the U.K. in passing off actions, after the evidence has

concluded, then it can be appreciated that several categories of consumers

and exhaustive trade evidence is led to prove actual deception and

confusion. Even to show a likelihood of confusion, the evidence is of a

number of consumers and not merely the parties to the suit. In Christopher

Wadlow, the Law of Passing Off, Third Edn (2004), it is stated at page 807:

"There is no doubt that evidence is admissible from actual consumers as to whether they would be deceived, and this applies a fortiori to evidence of actual deception. Conversely, absence of evidence of actual deception when the defendants‟ conduct has persisted openly for a substantial period of time may justify the inference that such deception has not occurred on any significant scale. This obviously does not apply if the action is quia timet or effectively so, and the speed with which passing-off actions may now be brought to trial also provides a reason why evidence of actual confusion may not be forthcoming."

59. In Neutrogena v Golden [1996] RPC 473 Jacob J. explained the risks

involved in such decision being formed only on the basis of a judge‟s

subjective perception of what is likely to cause deception. He said:

"If the judge‟s own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one‟s own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more `it depends on the evidence‟."

60. Likewise in Chocosuisse Union des Fabricants Suisses de Chocolat

and others v Cadbury Ltd 1999 RPC 826 (CA) it was held that the question

whether or not there had been, or was likely to be, confusion between the

Cadbury product "Swiss Chalet" and chocolate made in Switzerland "was a

question of fact for the judge who had heard the witnesses; and who had a

much better opportunity than this court can have to evaluate what he

described as the "flavour" of the evidence." The appellate court was advised

to "resist the invitation - even, at times, the temptation - to retry what are in

essence „jury‟ questions on the basis of witness statements and transcripts of

evidence." In fact in the said case extensive evidence of actual consumers

was led to prove the existence of actual deception and confusion. For more

instances involving evidence of likelihood of as well as actual confusion, see

Wagamama Ltd. v. City Centre Restaurants [1995] FSR 713 (Ch D) and

Brestian v. Try [1958] RPC 161 (CA).

61. In H.P. Bulmer Ltd. and Showerings Ltd. v. J. Bollinger S.A. [1978]

RPC 79 it was observed by Buckley, L.J. (at p. 106):

"In the absence, as I think, of reliable direct evidence of public confusion, was the learned Judge justified in inferring that a substantial portion of the public have been, or are likely to be, misled into believing that Babycham is what the Judge described as a "Champagne product"? (Judgment page 134, line 20). In reaching this conclusion the Judge seems to have entirely disregarded, or at any rate to have given no weight to, the fact that for some 25 years Babycham had been advertised and sold on the very large scale which I have mentioned. If there were any real likelihood of confusion, it seems to me inconceivable that the defendants would not have been able to adduce direct evidence of it. Not a single witness from the general public was called to say that he had been confused or misled. Not a single publican was called to say that he had experience of customers who had been confused; and the vast majority of sales of Babycham in the United Kingdom take place in public houses. The only witness from the catering trade was Mr. Martin who at the relevant time was concerned only with an off-licence business, and whose evidence in my view merits very little weight."

62. In Morecambe and Heysham v. Mecca Ltd (1966) RPC 423 it was

observed (at p. 439):

"Similarly, I find it very hard to believe that a member of the public, knowing of the plaintiffs‟ contest and anxious to attend the finals at

Morecambe, would find himself or herself by mistake sitting in the Lyceum in Drury Lane. In the absence of evidence of actual confusion during the five years throughout which the defendants had been conducting their contest under the title „Miss Britain‟, I do not feel able to come to the conclusion that I ought to treat confusion as being something that is likely to occur; and for that reason, although I confess that I feel some sympathy for the plaintiffs in this case. I do not feel able to grant them the relief which they seek."

63. In Harrods Ltd v Harrodian School Ltd. (supra), the question was

whether the use by the Defendant of their name (Harrodian School) would

lead to confusion among the public that they were misrepresenting

themselves as being connected with the Plaintiff (Harrods Ltd). The

injunction was refused for lack of evidence of actual deception and

confusion. Millet LJ., observed:

"If any confusion really did exist then, given the time which elapsed between the publication of the brochure, the opening of the school, and the trial, I would have expected the plaintiffs to be in a position to call evidence that some of their huge number of customers had asked for a brochure for the school or had enquired whether the store supplied uniforms for the school, or had otherwise manifested their impression that the school was connected with the store. No such evidence was called."

It was held that the Plaintiffs had "failed on the evidence to establish any

real likelihood of confusion or damage to their goodwill."

64. The Plaintiff has relied on the decision in Mahendra and Mahendra

Paper Mills Ltd v. Mahindra and Mahindra Ltd. AIR 2002 SC 117 to

contend that the question of likelihood of confusion or deception has to be

decided by courts and not by testimony of witnesses. It requires to be

noticed that in Mahendra the Supreme Court was dealing with a case in

which the Defendant-company was yet to commence its business and utilise

the name of „Mahendra‟ or „Mahendra & Mahendra‟. The Plaintiff was

using the name „Mahindra‟ and „Mahindra & Mahindra‟ since five decades.

In the present case, the Defendant is already engaged in its business and has

been using the mark FOODWORLD for well over a decade. The observation

of the Supreme Court in Mahendra, therefore, would not be applicable to

the present case where the Defendant is already in the market for a

considerable period of time. Hence, in the present case, the burden is on the

Plaintiff to prove likelihood of or actual deception or confusion by leading

some concrete evidence.

65. The mere stray statement of the Defendant in his cross examination that

the use of the mark FOODWORLD by any other person is likely to cause

deception or confusion cannot be determinative of the issue whether in fact

the use by the Defendant of the mark is likely to or has actually caused

deception and confusion. While the Plaintiff has been able to lead evidence

to prove his reputation and goodwill, there is really no evidence of actual

deception and confusion. It is not possible go by the mere likelihood of

confusion when both the Plaintiff and Defendant have been co-existing in

their respective fields of business for several years without there being

anything to show that the Defendant has harmed the Plaintiff‟s business as a

result of the use of an identical mark as part of its trading name.

66. The case of the Defendant is that it is not in the same line of trade as that

of the Plaintiff. The evidence shows that the Plaintiff essentially provides

catering services for the Railways. It provides packaged food on trains. The

Plaintiff does not appear to have entered into any other business activity

during these years. On the other hand, the Defendant has not entered into the

field of outdoor and institutional catering. None of those restaurants run by

the Defendant have been named by it using the mark FOODWORLD. Its

restaurants are known by the names „Lotus Pond‟ and „Bamboo Shoots‟. The

Defendant only appears to be using the mark as part of its trade name or

corporate name and on its invoices. Therefore as far as no common field of

activity presently exists, it is not possible to hold that there is likelihood of

deception and confusion on account of the use of the mark FOODWORLD

by the Defendant.

67. As regards the elements of passing off, while the Plaintiff has been able

to show that it is the proprietor and the prior user of the mark

FOODWORLD and that it has built a reputation in the area of catering

services using that mark, the Plaintiff has been unable to show that the

Defendant‟s use of such mark as part of its trading name and for restaurant

business has caused or is likely to cause deception or confusion. The

Plaintiff has also not been able to prove actual damage to its reputation and

business.

68. As the discussion on the succeeding issues show, the Defendant is no

doubt using an identical mark and is also not a prior or honest user of the

mark. It may be a concurrent user of the mark since 1998. Nevertheless, the

Plaintiff has not been able to prove the essential element of passing off

which is deception and confusion among the consumers and the trade as

regards the Defendant‟s use of the mark as part of its trading name for the

business of running restaurants. Issue No.3 is accordingly answered.

Issue No.4: Whether the Defendant is prior user of the trademark/trade name FOODWORLD?

69. The Plaintiff‟s application for registration of the mark in question is

pending whereas the Defendant has got registration for the trademark

FOODWORLD in its favour. The plea of the Defendant in resisting the

passing off action is that it is the prior user of the mark. The onus is

therefore is on the Defendant to make good this plea.

70. In its application filed for registration of the trademark, the Plaintiff

disclosed that it has been using the mark since 1st August 1994. In the notice

of opposition filed on 24th February 2004 by the Defendant, it claimed that

"the opponent adopted the said trademark in relation to the aforementioned

goods in the year 1998 and has been continuously using these since then up

to the present time." In the application filed in Classes 30 and 29 the

Defendant claimed its user since 2001. It is plain that as far as the question

of prior user is concerned, the Plaintiff has already placed on record invoices

of the proprietary concern showing the name FOODWORLD as well as the

logo from as early as 31st March 1990. It has also placed on record the sales

tax document which shows that it had a registration in its favour since 17 th

March 1989.

71. The Defendant, on the other hand, has been able to show invoices only

from 1st June 1999. The Defendant‟s sales tax documents are that of after

1999. There is no question therefore of Defendant succeeding in its plea of

being the prior user. On the other hand, the Plaintiff has been able to

successfully show that it is the prior user of the mark in relation to the

services provided by it. Accordingly Issue No.4 is answered against the

Defendant and in favour of the Plaintiff.

Issue No. 5: Whether the Defendant is entitled to use the trademark/trade name FOODWORLD on account of honest and concurrent use?

72. We then come to the plea of the Defendant that it is an honest and

concurrent user. The counsel for the Defendant claims its use of the mark

FOODWORLD to be honest and concurrent to the Plaintiff. In support of his

claim, the Defendant has relied upon the decision in London Rubber Co. v.

Durex Products 1964 (2) SCR 211. In that case, Durex Products Inc., of

New York City, U.S.A. made an application before the Deputy Registrar of

Trade Marks for registering the mark "Durex" used by it on contraceptive

devices. Its claim was disputed by the London Rubber Co., Ltd., London, a

well-established manufacturer of surgical rubber goods and registered owner

of the mark "Durex". The objection of London Rubber Co. was overruled.

The appeal was also dismissed by the High Court. The Supreme Court

restored the order of Deputy Registrar on the ground of honest and

concurrent use as there was no single instance of deception and no

likelihood of deception either.

73. Challenging the contention of "honest and concurrent use", the counsel

for the Plaintiff has relied upon the cases of B.K. Engineering v. UBHI

Enterprises AIR 1985 Del 210 (DB), Power Control Appliances v. Sumeet

Machines Pvt Ltd. 53 (1994) DLT 723 (SC), Century Traders v. Roshan

Lal Duggar AIR 1978 Del 250 and Laxmikant V. Patel v. Chetnabhai

Shah and Anr (2002) 3 SCC 65. In B.K. Engineering, the Plaintiff and

Defendant firms were engaged in the manufacture of cycle bells. The

Plaintiff was using the mark "B.K." whereas the Defendant was using the

mark "B.K. 81" for its cycle bells. As the misrepresentation was prima facie

established being in its nature calculated to deceive, the Court granted

temporary injunction in favour of the Plaintiff.

74. The decision on this issue essentially turns on the evidence. The replies

given by Mr. Sameer Puri in his cross-examination on this aspect are

inconsistent. He stated as under:

"I am the Director of the defendant company since its inception i.e. 1998.

Prior to 1998 I was in the same business of hospitality business of managing, running and creating restaurants besides catering services.

The said business was under the name and style "Ranch Gourmet Services Pvt. Ltd."

I was also the Director of the said company but I was not the promoter of the said company. I joined "Ranch Gourmet Services Pvt. Ltd." in 1992.

I did my hotel management three year diploma course in 1994, thereafter I started working with various organizations.

I worked with Mc Dowell, Meridian, Maurya and Indian Airlines.

I had submitted a tender for catering services in Railways around 1993-94 while I was working with "Ranch Gourmet Services Pvt. Ltd." I do not recall exact date.

I did not get any opportunity to cater for the Railways.

Last I met Mr. I K Dogra 2 to 3 years back. We were colleagues in Mc Dowell during the period 1985-86.

I was not aware about the application of tender by Mr. I K Dogra to cater for the Railways in the year 1993 or 1994. Even I was not aware about the application of the tender of Railway catering by other persons.

I did not make any efforts to find out the competitors because it was too early stage.

I am duly authorized to sign and verify the written statement.

I am not sure as to whether I have placed my authorization to sign the written statement or to depose on behalf of the defendant but the same can be produced as and when required.

I was the Promoter/Director of the defendant company. Me and my partner decided to conceive the company‟s name "FOODWORLD". We did not have any specific reason to put that name but after 15 to 30 minutes thought we decided to choose that name.

Ques: You chose to adopt the trade name the word "Foodworld" because the same was related to the food items and not otherwise?

Ans: This could have been one of the reason.

I was not aware that Mr. I K Dogra was also in the food business under the same trademark "Foodworld".

There is another company in Chennai which was also operating its business under the same trademark "Foodworld". I became aware when they filed objections before Registrar of Trademarks.

The name of the said company was "Spencer" which was Chennai based.

I am not sure, if I had opposed the application of trademark "Foodworld" by anybody else.

In 2001 we had applied for registration of the trademark. In 2004 somewhere in the month of January and February we became aware that Mr. Dogra has also applied for trademark "Foodworld". Thereafter, we opposed the same. In the month of August 2004, Mr. Dogra sent a legal notice which was duly replied to."

75. The following factors are apparent from an analysis of the above

evidence. First, it is plain that Mr. Puri knew even at the time he planned to

start his business that Mr. Dogra was in the business of catering. It is

unlikely that Mr.Puri while working with Ranch Gourmet Services Pvt. Ltd.

in 1993-94 and having submitted a tender for catering services in the

Railways, was unaware of the Plaintiff as a proprietary concern having

submitted similar tender. In fact, Mr. Puri states that "prior to 1998 I was in

the same business of hospitality business of manufacturing, running and

creating restaurants besides catering services." Although he states that he

was not aware of the application for tender by Mr. Dogra to catering for the

Railways in the year 1993-94, this reply does not inspire confidence. Also

the reply that he and his partner decided to conceive the company‟s name

FOODWORLD without any specific reason but only after thinking for about

15 to 30 minutes does not inspire confidence. Both the entities are in the

catering business and the coinage of the word FOODWORLD by the

Defendant does not appear to be something that they could have thought of

at the spur of the moment. It is significant that the Defendant never filed a

suit to restrain the Plaintiff from infringing the mark FOODWORLD. This

is despite filing the notice of opposition in 2004 before the Registrar. The

prior user also indicates that the Plaintiff was already in the business since at

least 1989. It is not, therefore, possible to accept the plea of the Defendant

that its user of the mark FOODWORLD was honest. It is, however, possible

that the Defendant was a concurrent user after 1998 but not in relation to the

catering services with which the Plaintiff‟s mark is associated. Issue No.5 is

answered accordingly.

Issue No. 7: Whether the Plaintiff is guilty of suppressing material facts and

has not come to court with clean hands?

76. The submission of the Defendant is that by not disclosing in the plaint

that the publication of the application of the Plaintiff in the Trademarks

Journal for registration of the mark FOODWORLD was with a disclaimer,

the Plaintiff had suppressed a material fact and was therefore not entitled to

any relief. This Court has already held that nothing really turns on the

disclaimer as far as the Plaintiff is concerned. Its right to seek an injunction

for passing off still remains. Moreover, it is not as if any interim relief was

granted to the Plaintiff. Therefore no prejudice can be said to have been

caused to the Defendant as a result of the non-mention of this fact in the

plaint. Finally, the Plaintiff has placed on record the copy of the relevant

page of the Trademarks Journal which clearly mentions the disclaimer. It is

therefore not as if this material was totally suppressed from the court.

Accordingly this issue is answered in favour of the Plaintiff and against the

Defendant.

Issue No.8: Whether the Plaintiff is entitled to any relief as prayed for?

77. In his cross-examination the Defendant has stated that "the brand name

FOODWORLD is not only used in the restaurant, it is also used in the

outdoor catering services and institutional catering services." He states that

the Defendant has been submitting quotations for institutional catering since

2003. It appears to this Court that as long as the Defendant‟s field of

activity is restricted to restaurants and it uses FOODWORLD as part of its

corporate name and there can be no element of confusion or deception as

long as this position remains unchanged. However, if as stated by the

Defendant, he has been submitting tenders for institutional catering and

outdoor catering as well, then there is a likelihood of deception and

confusion if the Defendant enters these fields. Therefore while the

Defendant cannot, on the basis of the evidence that has emerged, be

injuncted from continuing to run its restaurants under the present names, if it

enters the institutional catering and outdoor catering business, then there is

more than a likelihood of the deception and confusion since that would be an

identical field of activity. In the latter contingency the Plaintiff would be

entitled to an injunction to restrain the defendant form using the mark for

such activity.

78. A limited conditional injunction is possible to be granted in certain

contingencies. In Kerly's Law of Trademarks and Tradenames, 13th Edn.

(2001) at 676 it is stated:

"In a case where it may be possible for the defendant to use the mark or name in question without passing off, the injunction is granted in qualified form.

Where the mark or name is one in which the claimant cannot claim an exclusive right, but which to many people indicates his goods or business, it is proper to qualify the injunction against using it by such words as "without clearly" (or "sufficiently") distinguishing his goods from the claimant‟s. In cases where use of the mark or name without qualification need not be deceptive, an even weaker form may be employed: the prohibition being qualified by the addition "so as to represent" or "so as to lead the belief" that the defendant‟s goods or business are the claimant‟s. In the special case of a word that is used by some as a description of the goods, although to some it is a trade mark of the claimant, what is known as the "Havana" or "Corona" form may be adopted, the prohibition being qualified by such words as "without making it clear to the customer that it is not of the goods of the claimant"."

79. The situation then boils down to this. As long as the Defendant does not

enter the fields of business of institutional and outdoor catering services, it

can continue to use its present corporate name and conduct its business as at

present. However, in the event the Defendant enters the business of

institutional and outdoor catering services the Defendant will be injuncted

from using the mark FOODWORLD as part of its corporate name and as

part of its business and services. An injunction, to this extent, will issue

against the Defendant and in favour of the Plaintiff.

80. As regards other reliefs, the Plaintiff has not been able to prove actual

damage, if any, that has resulted from the Defendant having used the mark

FOODWORLD in respect of its line of business. Accordingly the prayer for

damages is rejected. There is no need therefore for the Defendant to be

ordered to render accounts or deliver up any documents. These prayers are

also rejected.

81. The suit is accordingly decreed in part to the above extent. Costs to be

borne by the parties. Decree sheet be drawn up accordingly.

S. MURALIDHAR, J.

th November 30 , 2009 dn