Delhi High Court
Foodcraft India Private Limited vs Saurabh Anand Trading As Urban ... on 9 May, 2017
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on :03.05.2017
Judgment delivered on :09.05.2017
+ CS(COMM) 278/2017
FOODCRAFT INDIA PRIVATE LIMITED
..... Plaintiff
Through Mr. Chandra M. Lall, Sr. Adv. with
Ms. Vedanta Verma, Mr.Neeraj Roy
and Mr. Rupin Bahl, Advs
versus
SAURABH ANAND TRADING AS URBAN PALLETTE
RESTAURANTS & ORS
..... Defendants
Through Mr. Sushant Singh, Mr. Vineet
Chaudhary and Mr. Saurav Roy,
Advs.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J.
I.A. No.4601/2017 (under Order XXXIX Rules 1 & 2 of the Code)
1 The plaintiff Food Craft India Private Limited is a company
incorporated in the year 2012under the Indian Companies Act. It is engaged
in the business of providing delivery of Pan Asian food across Delhi/NCR.
It specializes in gourmet delivery, bringing a taste of contemporary pan asian
cuisine to Delhi and the NCR. It strives to promote healthy living by making
a conscious effort to reduce the use of artificial flavors, oils and sugars
traditionally used in asian cooking. The plaintiff is the proprietor of the
trademarks „ASIAN HAUS‟ and „SUSHI HAUS‟. The plaintiff opened its
first delivery outlet under the trademark „ASIAN HAUS‟ in the year 2012 at
Greater Kailash. He has now opened another outlet under the mark „ASIAN
HAUS‟ at Gurgaon and two outlets under the mark „SUSHI HAUS‟ in Delhi
as also in Gurgaon. The plaintiff has been extensively using „ASIAN
HAUS‟ in relation to Pan Asian cuisine since its adoption in the year 2012.
He has spent enormous sums of money in the advertisement and promotion
of their outlets/restaurant under the mark „ASIAN HAUS‟. The plaintiff has
filed an application seeking registration of his trademark vide TM
Application No.2452613 in class 43 dated 01.01.2013. The said application
is yet pending.
2 The plaintiff has further expanded its business and has opened „SUSHI
HAUS‟ which caters a Japanese cuisine which outlet he is running since the
year 2015. He is also in the process of launching other outlets/restaurants
under HAUS formative marks such as DILLI HAUS and AMMA‟s HAUS
for north Indian and south Indian cuisine. The process for initiating the same
has already started. Plaintiff has also applied for registration of the mark
„SUSHI HAUS‟ vide TM Application No. 3033625 in class 29 on
01.11.2014 which is pending.
3 The sale figures of the plaintiff has grown over the years i.e. from the
inception of his business which was in the year 2012; the turnover from Rs. 4
crores plus has gone up to more than Rs.13 crores. Details find mention in
para 10 of the plaint. The books of accounts of the company maintained in
the ordinary course of business are also a part of the record. The plaintiff
further avers that „ASIAN HAUS‟ has been covered by the press in various
newspapers and news articles; it is a well known mark associated with the
trade of the plaintiff; so also „SUSHI HAUS‟. The reputation and popularity
of the plaintiff‟s restaurant under the aforenoted marks has gone up many
fold; the plaintiff has also developed the domain name www.asianhaus.com
and www.sushihaus.in. He is also offering its services to a third party
website and mobile applications like zomato.com, foodpanda.com, Paytm
and quick wallet etc.
4 Because of the extensive use of the trademark „ASIAN HAUS‟ and
HAUS formative marks which has also been used for „SUSHI HAUS‟ in
respect of food and drinks and online delivery service, the plaintiff now has
an exclusive right to use the trademark „ASIAN HAUS‟ and other formative
marks in respect of the said business. Further submission is that the word
HAUS is a German term and adoption of the mark „ASIAN HAUS‟ by the
plaintiff in relation to food is completely innovative and his own creation.
These trademarks have now acquired a tremendous goodwill and reputation
amongst the consuming public.
5 In March, 2017, the plaintiff learnt about the offending activities of
the defendants who without any authorization was in the process of
launching a food delivery outlet under the mark „CURRY HAUS‟. Upon
inquiries it was learnt that the proposed food delivery outlets were to be
launched in Delhi, Gurgaon and NCR. The plaintiff also learnt that the
defendants own a restaurant under the name of „Masala House‟ at 4, Sunder
Nagar, New Delhi; the defendants have deceitfully adopted the mark
„CURRY HAUS‟ for their delivery service only to associate with the name
of the plaintiff and to take benefit of the reputation and goodwill which the
plaintiff has acquired in the said trademarks in relation to the food delivery
business. The defendants are falsely suggesting to consumers that the
services offered by them are originating from the plaintiff or that the services
of the defendants are associated with the plaintiff. The plaintiff sent a cease
and desist notice (dated 20.03.2017) calling upon the defendants to cease and
desist from using the trade name „CURRY HAUS‟ in relation to their
business. A reply was received on 31.03.2017. This reply was not on behalf
of „Masala House‟ but on behalf of an entity by the name of "Urban Palette
Restaurants". To the best of the knowledge of the plaintiff, the defendants
are partners in a partnership concern under the name of Urban Palette
Restaurants; the plaintiff is not aware of their exact constitution. However
discussions took place between the plaintiff and Urban Palette Restaurants.
Nothing fructified. The plaintiff filed the present suit on 17.04.2017; the
defendants allege that they have launched their five delivery outlets under
the brand name „CURRY HAUS‟ on 11.04.2017. On 07.04.2017 and
09.04.2017, the internet check revealed that the defendants were in the
process of launching these five outlets which were then opened on
11.04.2017. The aforesaid activities of the defendants in using the mark of
the plaintiff „CURRY HAUS‟ which is associated with the well known
business of the plaintiff is a clear attempt by them to encash upon the
goodwill and reputation of the plaintiff‟s trademark and especially by being
in the same trade.
6 The plaintiff has accordingly filed the present suit. Besides the prayers
in the suit, the pending application has been filed seeking an ad-interim
injunction against the defendants restraining them from using the mark of the
plaintiff „HAUS‟ which is associated with the mark of the plaintiff.
7 Written statement and reply to the pending application has been filed
by the defendants. Foremost submission of the defendants is that the word
„HAUS‟ is a non distinctive part of alleged name „ASIAN HAUS‟ and
„SUSHI HAUS‟ on which the plaintiff claims to be the owner. Present suit
in the present form is not maintainable. The plaintiff is guilty of an
inequitable conduct; he cannot claim monopoly over the word „HAUS‟ on
which basis the plaintiff seeks to prevent the defendants from using the mark
„CURRY HAUS‟. This monopoly is expressly prohibited under the
provisions of Section 17 of the Trademarks Act. A suit for passing of on the
basis of a non-distinctive component of the word „HAUS‟ which is otherwise
common to the trade is not maintainable in view of the aforenoted express
prohibition. The plaintiff has concealed the fact that the word „HAUS‟ has
been used by the other proprietors in India including those in Delhi and
Gurgaon as also other metropolitan cities of India. It is worldwide used in
various countries likes Japan, Germany, England, France, USA, Australia for
restaurant business; it is either by use as a suffix or as a prefix to attribute
that the food is from a home or emanating from a house kitchen. It is not the
plaintiff who has first started using the word „HAUS‟ as part of the name of
a restaurant. There are several others who are already registered using the
word „HAUS‟ as a part of their restaurants. The words „HAUS‟ or
„HOUSE‟ are even otherwise phonetically similar; „HAUS‟ means „HOUSE‟
and the use of the word „HAUS‟ in a restaurant business is only indicative of
a fact that the it home made food which is being served in the restaurant or
provided through its delivery outlets. The word „HAUS‟ is a simple
dictionary word which has an origin in the German language. This word
„HAUS‟ has been used worldwide as a trade practice by restaurateurs and
hotel merchants in relation to this business to form a name. Details of other
parties who are using the word „HAUS‟ and „HOUSE‟ have been given in
paras 7 and 9 of the written statement. It is pointed out that this long list of
users of the word „HAUS‟ and „HOUSE‟ in Delhi and the NCR region as
also in various other cities of India clearly reflect that the use of the word
„HAUS‟ is not an innovation of the plaintiff; no monopoly can be accorded
upon this word to the plaintiff. Present suit is not maintainable. It is liable
to be dismissed. It is further pointed out that the class of customers who
approach the plaintiff and the defendants are a well educated class; being a
home delivery service, they place an order over telephone after
understanding the difference of the outlets as well as the nature of the food
which is being served; whereas „ASIAN HAUS‟ and „SUSHI HAUS‟ are
serving pan asian and japanese cuisine respectively; „CURRY HAUS‟ as is
reflected from its menu is mainly dealing with Indian food; there is
absolutely no confusion. The suit of the plaintiff is liable to be dismissed.
8 Replication has been filed reiterating the averments made in the plaint
and denying the defence set up in the written statement.
9 On behalf of the plaintiff, arguments have been addressed by learned
senior counsel Mr. Chander M. Lall. The averments made in the plaint have
been reiterated. It is reiterated that the plaintiff has acquired a goodwill and
reputation by a continuous user of the trade name „ASIAN HAUS‟ which
was the first pan asian delivery outlet/restaurant set up by the plaintiff in the
year 2012. The word „HAUS‟ is innovative and is a creation of the plaintiff
as the word „HAUS‟ although means a „HOUSE‟ but has no connection with
the trade which the plaintiff is doing i.e. the business of supply of food
through its delivery outlets. „SUSHI HAUS‟ set up in 2015 is also a delivery
outlet where food is supplied on a telephonic order placed upon the plaintiff.
This delivery service is not restricted to Delhi but across the NCR including
Gurgaon. The defendants have encashed upon the goodwill and reputation
of the plaintiff; nothing prevented the defendant from opening its second
outlet under the name „HOUSE‟ as admittedly „Masala House‟ is a restaurant
being run by him; the word „HAUS‟ has deceitfully been adopted by him
only to ride upon the goodwill and reputation which the plaintiff has built up
over the years. The trade of the plaintiff and the defendants is the same; it is
a delivery outlet service which even otherwise is a concept fairly new in
India. The plaintiff in support of his stand that a prima-facie case has been
made out by him entitling him to an injunction has relied upon 2007 Indlaw
DEL 606 Ishi Khosla Vs. Anil Aggarwal and Another as also another
judgment reported as Sunil Mittal & Anr Vs. Darzi On Call decided in CS
(COMM) 1381/2016 delivered on 19.04.2017. It is pointed out that where
"whole food" was the mark of the plaintiff, in that case, in spite of mark
having a dictionary meaning was entitled to a protection. To support the
same submission, reliance has also been placed upon MANU/SC/0169/2011
T.V. Venugopal Vs. Ushodaya Enterprises Ltd. and Anr. It is pointed out
that the stand of the defendants that the plaintiff has not chased or followed
up his case against other persons who are also using the word „HAUS‟ would
not be a defence available to the defendants and for this proposition reliance
has been placed upon 98 (2002) DLT 499 Info Edge (India) Pvt. Ltd. And
Anr Vs. Shailesh Gupta and Anr.as also 2008 (38) PTC 49 (Del) Shri Pankaj
Goel Vs. Dabur India Ltd.; injunction cannot be refused to the plaintiff on
this count. Learned senior counsel for the plaintiff additionally points out
that at the time when the defendant opened its outlets a notice of opposition
had already been served upon him asking him to desist from using the name
of the plaintiff; he having opened his outlet on 11.04.2017 when up to that
date negotiations were going on between the parties is itself suggestive of a
dishonest adoption by the defendant of the trade name of the plaintiff which
he has done at his own risk and cost. He cannot use this as a fair defence.
For this proposition reliance has been placed upon 2013 AD (Delhi) 130 Red
Hat INC Vs. Mr. Hemant Gupta & Others as also 207 (2014) Delhi Law
Times 35 Bloomberg Finance LP Vs. Prafull Saklecha & Others.
Submission is that the denial of the interim injunction at this stage would
cause an extreme hardship to the plaintiff and the defendant who has entered
into the business just four days before the filing of the present suit knowing
fully well that an opposition to the same has been served by him, is not
entitled to any discretionary relief.
10 These arguments have been countered. Arguments on behalf of the
defendants have been addressed by Mr. Sushant Singh, Advocate. It is
pointed out that a dictionary word which is so in the instant case cannot be
monopolized; it is a common term and „HAUS‟ which means a „HOUSE‟ is
closely linked with the trade of the defendant which is a home made
preparations being delivered through the five outlets which the defendants
have already launched under the brand name „CURRY HAUS‟. Learned
counsel for the defendant has placed reliance upon 227 (2016) DLT 681
Living Media India Ltd. & Others Vs. Alpha Dealcom Pvt. Ltd. and Others
as also another judgment reported as 2007 (35) PTC 610 (Del) Diageo North
America, Inc. and Anr. Vs. Shiva Distilleries Limited. Reliance has been
placed upon 157 (2009) DLT 791 Lowenbrau AG and Anr. Vs. Jagpin
Breweries Ltd. and Anr. As also another judgment of the Apex Court
reported as (2010) 2 SCC 142 Skyline Education Institute (India) Private
Limited Vs. S.L. Vaswani and Another. It is pointed out that in this last
judgment, the Apex Court had held that "Skyline" is a part of a name being
used by various trade companies for describing different types of
institutes/institutions; conclusion being that the word „Skyline‟ could be held
to be nothing but generic. In the instant case also the word „HAUS‟ is a well
known dictionary word being used commonly not only in India but the world
over for the restaurant and hotels business. Submission is that even
presuming the plaintiff has acquired a distinctiveness, the distinctiveness is
on the combination of the two words „ASIAN HAUS‟ and „SUSHI HAUS‟;
he cannot claim his right over a single word which is a commonly used term;
although it originates from the German language yet German is a language
which has been made mandatory in India; after Sanskrit in almost all
government schools including the Kendriya Vidyalaya it is to be taught. To
substantiate this proposition, he has placed reliance upon a newspaper
clipping. The Article from "McCarthey on Trademarks" and the doctrine of
"foreign equivalence" has also been relied upon. It is pointed out that
foreign words are held to be generic where similarity in sound is the same
and they are recognized as such; „HOUSE‟ and „HAUS‟ are almost similar
in hearing and as such it necessarily has to be held to be a generic word. No
prima-facie case has been made out by the plaintiff; in the absence of a
prima-facie case having been made out by him, the question of consideration
of a balance of convenience and irreparable loss/injury would not arise. For
this proposition reliance has been placed upon 1990 Supp (1) SCC 727
Wander Ltd. and Anr. Vs. Antox India P. Ltd. as also another judgment of a
Bench of the Karnataka High Court reported as ILR 1989 KARNATAKA
1701 Sri Gowrishankara Swamigalu Vs. Sri Siddhaganga Mutt. Where a
prima-facie case is not made out, further investigation on the other two
parameters dealing with the grant of an interim injunction may not be
considered by the Court. The conduct of the plaintiff does not entitle him to
any relief as he is not the innovator of the word „HAUS‟; before he advances
his case on equity, he must himself show that he is not guilty of any mis-
representation; he being guilty of being an imitator is not entitled to any
equity in his favour. For this proposition reliance has been placed upon AIR
1990 Delhi 233 Prem Singh Vs. Ceeam Auto Industries.
11 Arguments have been heard. Record has been perused.
12 The present suit is a case of passing off. Admittedly neither party has
any registration. The plaintiff has applied for registration of his mark
„HAUS‟ on 01.11.2013 in clause 29. It is not the case of the defendant that
he has any registration in his favour.
13 In Wander Limited (supra), the Apex Court had an occasion to
consider the principles for grant of an interlocutory injunction in a passing
off action. Relevant extract reads herein as under:-
"An infringement action is available where there is violation of
specific property right acquired under and recognized by the statute. In a
passing-off action, however, the plaintiffs right is independent of such a
statutory right to a trade mark and is against the conduct of the defendant
which leads to or is intended or calculated to lead to deception. Passing-off
is said to be a species of unfair trade competition or of actionable unfair
trading by which one person, through deception, attempts to obtain an
economic benefit of the reparation which another has established for himself
in a particular trade or business. The action is regarded as an action for
deceit. The tort of passing-off involves a misrepresentation made by the
trader to his prospective customers calculated to injure, as a reasonably
foreseeable consequence, the business or goodwill of another which actually
or probably, causes damages to the business or good of the other trader...
........
The concept and principle on which passing off action is grounded is that a
man is not to sell his own goods under the pretence that they are the goods
of another man. A trader needs protection of his right of prior user of a
trade mark as a benefit of the name and reputation earned by him cannot be
taken advantage of by another trader by copying the mark and getting it
registered before he could get the same registered in hi favour. We see no
reason why a registered owner of a trade mark should be allowed to deceive
purchasers into the belief that they are getting the goods of another while
they would be buying the goods of the former which they never intended to
do. In an action for passing off if should not matter whether
misrepresentation or deception has proceeded from a registered or an
unregistered user of a trade mark. He cannot represent his own goods as the
goods of somebody else".
14 It is on this touchstone that the respective averments of the parties and
their documentary evidence has to be considered.
15 Pursuant to the incorporation of the plaintiff company in the year
2012, the plaintiff started its business of providing delivery of Pan Asian
cuisine across Delhi/NCR. The concept of home delivery of food is not a
very well recognized concept; it has started gaining momentum and
popularity only recently. Admittedly the plaintiff had started this business in
the year 2012. His trade name was „ASIAN HAUS‟. „ASIAN HAUS‟ as is
evident from its menu had a concentration on asian preparations which
catered largely to the chinese pallet. Its first outlet was opened in the year
2012 at Greater Kailash. His business expanded. He opened another outlet at
Gurgaon under the same name in 2015. In 2015, his delivery outlet under the
brand name „SUSHI HAUS‟ also started business not only from Delhi but
also from Gurgaon catering to its customers in the NCR Region. The
advertisement and promotional program of these outlets/restaurants i.e.
„ASIAN HAUS‟ and „SUSHI HAUS‟ is evident from the invoices reflecting
the money spent by the plaintiff on this campaign. The write ups relating to
healthy eating advertised by these brand names i.e. „ASIAN HAUS‟ and
„SUSHI HAUS‟ which caters both to asian cuisine and Japanese cuisine
reflect their popularity. The write-ups published in the Aviation Times in
December, 2016, besides other health magazines; the Pioneer, Hindu,
Sunday Guarding and Zoom Bailey all reflect the reputation which the
„ASIAN HAUS‟ and „SUSHI HAUS‟ have acquired by innovation of this
new concept of „chef at home‟ i.e. where the chef would come to their house
and cook delicious food according to the taste and appetites of customers.
These write ups show that these delivery outlets supply fresh, soft and
delicious foods. Blogs relating to said cuisine have been uploaded by foodies
who have savored these gourmet preparations; whereas „ASIAN HAUS‟
specializes in Chinese cuisine; „SUSHI HAUS‟ specializes in Japanese
cuisine; both of them are home delivery outlets; the concept being to bring
healthy food to your doorstep.
16 The word „HAUS‟ is a German origin and its German dictionary
meaning is a "house". The plaintiff rightly points out that the trade which
the plaintiff is carrying on i.e. supply of food through its delivery outlets is
not in any manner connected with the meaning of this word. The submission
of the defendant that „HAUS‟ connotes homemade food and these delivery
outlets relate to delivery of home made food appears to be far fetched. The
word „HAUS‟ in the Indian context does not breed that level of familiarity
which would leave the customer of a kind which caters to the plaintiff and
the defendant‟s services to believe that „HAUS‟ connotes a home kitchen
preparation. The plaintiff has admittedly been in this business under the
trade name „ASIAN HAUS‟ since the year 2012. The initial one outlet in
Greater Kailash, New Delhi expanded to a second one in Gurgaon. Two
other outlets under the second brand name „SUSHI HAUS‟ are operating
from Delhi and Gurgaon as well. „SUSHI HAUS‟ is in business since the
year 2015. Since inception i.e. from the year 2012 up to the year 2017, the
sale figures of the plaintiff have increased enormously; the initial turnover in
the year 2012 which was Rs. 4 crores plus has now gone up to more than Rs.
13 crores. Admittedly the plaintiff is using the word „HAUS‟ to cater to its
food delivery outlets since the year 2012 and escalation of its sale figures are
reflective of the popularity of its brand name which was initially one outlet
but has now expanded to five under two brand names i.e. „ASIAN HAUS‟
and „SUSHI HAUS‟, all these are indicators of the goodwill and reputation
which the plaintiff has developed in the food market. There is thus no doubt
that the plaintiff has acquired a distinctive reputation and goodwill of its own
under the said trade names „ASIAN HAUS‟ and „SUSHI HAUS‟.
17 The defendant is running a restaurant business and has a restaurant at
Sunder Nagar carrying on its business under the brand name „Masala
House‟. „Masala House‟ caters for Indian food. In March, 2017, the
plaintiff learnt about the proposal of the defendant to start a food delivery
outlet under the mark „CURRY HAUS‟. The plaintiff called upon the
defendant by a cease and desist notice dated 20.03.2017; desisting them from
using the mark „CURRY HAUS‟ in relation to this same business. Their
reply was received on 31.03.2017. Negotiations were in fact going on
between the plaintiff and Urban Palette Restaurants as the plaintiff on an
internet search had learnt that Urban Palette Restaurants was proposing this
outlet which was an entity no different from the entity who had set up
„Masala House‟. Negotiations were on till 09.04.2017. The defendant
launched its five delivery outlets under the brand name „CURRY HAUS‟ on
11.04.2017. This was at the risk and cost of the defendant as the defendant
was fully aware that the plaintiff has put him to notice that the „HAUS‟ is the
brand name of the plaintiff. The defendant has been advised to use
„HOUSE‟ which he was using for his „Masala House‟ but the defendant had
not acceded to this request.
18 The submission of the defendant on this count that the word „HAUS‟
is a well known terminology and no one can have a monopoly on this word,
in the facts of the instant case, is a mis-conceived submission. The word
„HAUS‟ does not find mention in the English dictionary. Learned counsel
for the defendant had pain stakingly drawn from the attention of the Court to
the definition of the word „HAUS‟ in the "Collins English dictionary"; the
word „HAUS‟ does not find mention there; the word in the English
dictionary is „HAUS FRAU‟ which means a „house wife‟. "HAUS" is not
an ordinary English language word. This Court also notes that it is not a
restaurant which the plaintiff is running but a food delivery chain which
supply food on telephonic orders being placed upon them which concept, at
the cost of repetition, is not very well established in our country; it is only
now gaining a momentum. The definition of „HAUS‟ in the German
dictionary being „HOUSE‟ is not indicative of the business which the
plaintiff has set up which is the supply of food at the doorstep of the
customer. This idea of the plaintiff of delivery of food was admittedly much
prior in time to that of the defendant i.e. five years before; it was then a new
and „out of the box‟ idea. The defendant was running a restaurant business;
functioning under the name „Masala House‟. What could have led the
defendant to adopt „HAUS‟ instead of user of the word „House‟ in the same
trade which the defendant was not doing up to date (food delivery outlet)?
The defendant admittedly being in a restaurant business and not delivery of
food, this could be nothing but the dishonest intent on the part of the
defendant to encash upon the goodwill and reputation which the plaintiff had
developed in the food delivery chain market.
19 This is especially keeping in view the dates in mind. The plaintiff, at
the cost of repetition, had served a desist notice upon the defendant on
20.03.2017 which had been replied by the defendant on 31.03.2017; parties
were in active negotiations up to 09.04.2017; on 11.04.2017, five outlets
were launched by the defendant under the same brand name „HAUS‟ which
was being questioned by the plaintiff. It cannot be said that the defendant
has entered the market honestly and with no dishonest intent.
20 In Ishi Khosla (supra) while dealing with the grant of an injunction in
a case of passing off for trade name „Whole foods‟ reverting to the dictionary
meaning of the „whole foods‟, a Bench of this Court was of the view that
even holding that the „whole food‟ is an ordinary English word, it necessarily
has to be protected for the reason that the plaintiff has been able to establish
that all her food products were associated with this trade name and this
concept had been created and conceptualized by the plaintiff i.e. natural
foods which are not processed in the ordinary manner.
21 In T.V. Venugopal (supra), the Apex Court had inter-alia held as
under:-
"ii. The plaintiff's adopted name would be protected if it has acquired
a strong enough association with the plaintiff and the defendant has adopted
such a name in common field of activity i.e. the purchasers test as to whether
in the facts of the case, the manner of sale, surrounding circumstances etc.
would lead to an inference that the source of product is the plaintiff".
22 The use of the word „HAUS‟ is strongly associated with the plaintiff‟s
trade; adoption by the defendant of the same name five years after the
business of the plaintiff had already acquired a well established name can be
described as nothing but an unfair user.
23 In AIR 1969 Bom 24 Sundar Parmanand vs. Caltex (India) Ltd., a
Division Bench of the Bombay high Court cited with approval the words of
Lord Denning in 1962 RPC 265 that where a person selected a mark with
intention to deceive and cause confusion, he must be given credit for success
in his intention. The Court held that in such a case "we should not hesitate to
hold that the use of that mark is likely to deceive and cause confusion." This
Court further held that the fact that the applicant had given no explanation
for adoption of CALTEX would be an additional factor to be taken into
consideration and an inference could be drawn that he adopted CALTEX "to
take advantage of the reputation of the mark of the opponents."
24 In AIR 1985 All 242 Bata India Limited vs. Pyare Lal & Co., A.
Banerji, J., of the Allahabad High Court held that the question "why should
the defendant-respondent use the name "Bata" is a very material one. There
is no plausible answer so far to this. The Court injuncted the defendant who
had started using BATAFOAM in respect of its foam mattresses by holding
that "the user of the name or mark BATA by the defendant is indicative of
their (dishonest) intent.
25 It has now been well established and it is settled law that an action for
passing off is a common law remedy being an action in substance of desist
under the law of torts. The defendant appears to have by a manipulation
intended to ride upon the goodwill of the plaintiff. He cannot be permitted to
do so. Section 17 of the Trademarks Act does not come to the aid of the
defendant. Beside the fact that this provision relates to the registration of a
trademark and the present case being a case of passing off; Section 17 (2)(b)
also does not help him. This Court has already held that the word „HAUS‟
has a distinctive character and is associated with the business of the plaintiff.
This argument is without any merit.
26 The submission of the defendant that a prima-facie case has not been
set up by the plaintiff is a mis-conceived submission. The word „HAUS‟ is
not generic; applying the test of an ordinary reasonable man and especially
the customer who would order online delivery food would but necessarily be
confused with „CURRY HAUS‟ and believe it to be an extension or another
elaboration of the delivery outlets of „ASIAN HAUS‟ and „SUSHI HAUS‟.
„ASIAN HAUS‟ was catering to Pan Asian cuisine. „SUSHI HAUS‟ came
to be established catering for Japanese cuisine. „CURRY HAUS‟ if
permitted to use the same trade name „HAUS‟; applying the test of a
reasonable man it can only be presumed that „CURRY HAUS‟ is an addition
outlet of this HAUS group i.e. of „ASIAN HAUS‟ and „SUSHI HAUS‟
which now specializes in Indian cuisine.
27 The Supreme Court in AIR 1963 SC 449 Amritdhara Pharmacy Vs.
Satya Deo Gupta, has held the mark AMRITDHARA to be deceptively
similar to the mark LAXMANDHARA. The Apex Court in the said
Judgment further stipulated that the issue was to be examined by applying
the test of an unwary purchaser having average intelligence and imperfect
recollection. The Supreme Court in the said case held that even though a
critical comparison of the two names may disclose some points of
differences, yet an unwary purchaser of average intelligence and imperfect
recollection would be deceived by the overall similarity of the two products.
28 The term „HAUS‟ having a German origin cannot be said to be an
ordinary generic word; it has been coined by the plaintiff for its trade which
trade is also un-connected with the meaning of „HAUS‟; food delivery
outlets are not associated with houses or homes. The defendant is in fact
targeting the same customer base as that of the plaintiff.
29 The submission of the defendant that the plaintiff has not chased the
other persons who are carrying out business by using the prefix or suffix
„HAUS‟ is also an argument which is mis-conceived. Besides noting the
submission of the plaintiff that he has served a notice to desist to "Hakka
Haus", the additional submission of the plaintiff that he cannot be denied an
injunction merely because he has not proceeded against other similar names
is an argument which has no force. This aspect has been dealt with in the
judgment of Info Edge. Relevant extract of which reads herein as under:-
It was also contended by the counsel for the defendant that there are many
websites and domain names almost with similar name, which re existing and,
therefore, there cannot be any monopoly to the plaintiff and also that the
plaintiff having not proceeded against them for similar reliefs, is not entitled
to proceed only against the defendant. The said contention was refuted by
the plaintiff by placing on record a chart that the other websites with almost
similar names are wither non-functional or are foreign language websites
and they have nothing to do with jobs. It is thus prima facie established that
those websites/domain names stand apart and on a different footing from the
domain names of the plaintiff and the defendant. There is neither any
occasion nor is there any immediate necessity for the plaintiff to proceed
against those websites/domain names, which are non-functional and non-
relatable to the activity of employment and jobs. The plaintiff, therefore,
cannot be denied relief and an injunction only because it has not proceeded
against other similar names. As a matter of fact, when action is initiated,
one similar domain name has to be always the first and that cannot be the
reason for denying injunction to the plaintiff.
30 In fact, in 2004 (29) PTC 435 Dr. Reddy Laboratories v. Reddy
Pharmaceuticals a Single Judge of this Court has held as under:
...the owners of trade marks or copy rights are not expected to run after
every infringer and thereby remain involved in litigation at the cost of their
business time. If the impugned infringement is too trivial or insignificant and
is not capable of harming their business interests, they may overlook and
ignore petty violations till they assume alarming proportions. If a road side
Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not
expected to swing into action and raise objections forthwith. They can wait
till the time the user of their name starts harming their business interest and
starts misleading and confusing their customers.
31 In 1980 RPC 31 Erven Warnink B.V. v. J. Townend & Sons (Hull)
Ltd., , Lord Diplock stated the essential characteristics of a passing off action
as under:
(1) misrepresentation, (2) made by a person 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
consequence 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.
32 These parameters appear to be fulfilled. The plaintiff has been able to
establish a prima-facie case. The plaintiff has been in the business since the
year 2012. The defendant inspite of desist notice had launched its outlets on
11.04.2017. Present suit has been filed on 17.04.2017; the defendant was
aware of the fact that the plaintiff will take action against him as the parties
were in fact in active negotiations up to 09.04.2017. The adoption of the
same trade name by the defendant was to say the least dishonest. Balance of
convenience thus lies in favour of the plaintiff. In fact if the defendant is not
injuncted from using the same trade name „HAUS‟ in the same business
which the plaintiff is doing, an irreparable loss and injury would be suffered
by the plaintiff.
33 Accordingly the defendant is restrained by an interim injunction from
using the name „HAUS‟ for his delivery outlets; he is at liberty to use the
word „CURRY HOUSE‟ which was the proposal which has been put to him
even in the course of the arguments but which was not acceptable to the
defendant.
34 Application disposed of in the above terms.
INDERMEET KAUR, J
MAY 09, 2017
A
