Mehar Wing Services Private ... vs M/S Jindal Restaurant
2017 Latest Caselaw 2622 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                Judgment reserved on :16.5.2017
                                Judgment delivered on :24.5.2017
+     CS(COMM) 173/2016

      MEHAR WING SERVICES PRIVATE LIMITED & ANR

                                                                   ..... Plaintiffs

                       Through       Mr. Sanjeev Singh and Mr. D.K.
                                     Yadav, Advs.

                       versus



      M/S JINDAL RESTAURANT

                                                                  ..... Defendant

                       Through       Mr. K.K. Sharma, Sr. Adv. with Ms.
                                     Bhanita, Adv



CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

INDERMEET KAUR, J.

I.A. No.3282/2016 (under Order XXXIX Rules 1 & 2 of the Code), I.A. No.4272/2016 (under Order XXXIX Rule 4 of the Code) & I.A. No.4600/2016 (under Order XXXIX Rule 2-A of the Code) in CS(COMM) 173/2016

1. Plaintiff No. 1 is a company by the name of "Mehar Wing Services

Private" Limited duly incorporated under the Indian Companies Act, 1956.

Its principal place of business is at Wazir Pura Road, Opposite Sanjay

Talkies, Agra. Plaintiff No. 2 is a partnership firm and carrying on trade and

business under a mutual understanding with plaintiff No.1. The main object

of plaintiff No.1 was hospitality and dining; it has an exclusive fine dining

restaurant in Agra with the trade name „PINCH OF SPICE‟. The company

started its business in the year 2007. After the huge success of this

restaurant, three other outlets have been opened. The plaintiff‟s trademark

„PINCH OF SPICE‟ is with respect to an array of goods and services namely

restaurant, bar, providing food and drink, self-service restaurant, etc. It is a

coined trade mark/trade name of the plaintiff and is highly distinctive in

itself. The plaintiff has been using this trade mark/name in this distinctive

get up, make up and in an artistic manner. It has a developed a well known

reputation.

2. The plaintiff had applied for registration of the said trade mark

„PINCH OF SPICE‟ in class 43. On the date of filing of this suit, this

application was pending. The trade mark „PINCH OF SPICE‟ came to be

registered in favour of plaintiff No.1 company on 29.03.2017 in class 43

during the pendency of the suit and this fact by way of an amended plaint has

been taken on record on 10.04.2017. In para 15 of the plaint, the sale

turnover of the plaintiff company which includes year-wise sale figures of

not only plaintiff No.1 but also of plaintiff No. 2 as also of another company

by the name of "Silver Spoon Food and Beverages" is on record. The

documents relating to "Silver Spoon Food and Beverages" were initially not

on record. On query, learned counsel for the plaintiff has brought these

documents on record which substantiates that "Silver Spoon Food and

Beverages" is a partnership firm in which one Manpreet Singh is a partner.

Manpreet Singh is also a partner in plaintiff No. 2; he is also the director of

plaintiff No. 1 having a 34% shareholding. The contention of the plaintiff is

that the services and goods of the plaintiff have acquired status of a high

quality product which has been created by the plaintiff himself; he is

advertising the said trade name and trademark and his web presence has also

been felt which is available online through his website www.pinchofspice.in.

3. The defendant is engaged in the same nature of business. He is also

carrying on the business of food and drinks. It started using the trademark

„PINCH OF SALT‟ in the year 2015 which is deceptively similar to the

registered trademark of the plaintiff not only visually, structurally but the

basic idea and essential features are also the same. The defendant has

substantially copied the well known trademark of the plaintiff which thus

amounts to infringement of the intellectual property rights of the plaintiff.

The dishonesty of the defendant is writ large as by merely replacing the word

„SPICE‟ with „SALT‟ would make no difference to the overall similarity of

the trademark of the plaintiff which largely remains the same. The defendant

has infringed upon the registered mark of the plaintiff.

4. Inquiries have revealed that the defendant has applied for registration

of the impugned trademark on 25.06.2015 falsely claiming user since

29.04.2015; a cease and desist notice dated 29.10.2015 was sent to the

defendant; the defendant is till date not registered. The defendant is

infringing upon the goodwill and reputation of the plaintiff which he has

been built over the years. Cause of action for the present suit arose in the

last week of October, 2015 when the plaintiff learnt about the impugned

adoption and user of the trademark by the defendant. Irreparable loss and

injury will be suffered by the plaintiff in case the defendant is not injuncted

from using this trade mark/name. The interim injunction granted in favour

of the plaintiff on 11.03.2016 deserves to be confirmed.

5. Written statement and reply to the pending application has been filed.

A separate application under Order XXXIX Rule 4 of the Code has also been

filed. The defence of the defendant is that there is no similarity in the trade

name of the plaintiff qua the trademark of the defendant. „PINCH OF

SPICE‟ is different and distinct from „PINCH OF SALT‟; the manner in

which it is written, its label, trade-dress are all distinctive. Section 17 (2)

makes it clear that notwithstanding anything contained in Section 17 (1)

where a trademark comprises of words of which some of the words are non-

distinctive; registration of that mark shall not confer any right which forms

only a „part‟ of the „whole‟ of the trademark which is registered. The word

„PINCH‟ has also been used by several other food and beverage chains,

some of whose documents have been brought on record to substantiate this

argument. Submission of the defendant is that to constitute infringement, it

would be necessary to show that the impugned trademark is identical and

deceptively similar to the registered trademark of the plaintiff which the

plaintiff has failed to do. Not only the name, meaning, font, colour, writings

of the trademark/lable/trade dress of „PINCH OF SPICE‟ (plaintiff) is

distinct and different from „PINCH OF SALT‟ (defendant); the visual and

phonetic dis-similarity is also evident. The logo adoption is also distinct.

6. On merits, it is pointed out that plaintiff No. 2 has no connection with

the plaintiff No. 1 as far as the present proceedings are concerned. It is not as

if plaintiff No. 2 has been assigned or transferred this trade name or it is in

any manner connected with this registered trade name which is only in

favour of plaintiff No. 1. It is pointed out that plaintiff No. 1 is running only

one restaurant by the name „PINCH OF SPICE‟ in Agra; he has no other

outlet in Delhi and no document to this effect has been placed on record.

The defendant has a reputation of his own; he is running restaurant in East

Delhi where he is carrying on his business under the name of „PINCH OF

SALT‟. It has no connection with the restaurant business of the plaintiff

which is restricted to only one outlet at Agra. There is no violation of the

rights of the plaintiff. In fact irreparable loss and harm will be suffered by

the defendant if this injunction is permitted to operate as the business of the

defendant cannot be shifted.

7. Replication was filed by the plaintiff reiterating the averments made in

the plaint and denying the defence sought to be set up by the defendant.

8. On behalf of the plaintiff, arguments have been addressed by Mr.

Sanjeev Singh. Learned counsel for the plaintiff while reiterating the

averments made in the plaint points out that since he has a registration in his

favour, the defence set up by the defendant that the label, trade-dress and the

logo are not similar to the registered trademark of the plaintiff would have

little relevance. Further the trademark of the plaintiff has been registered

without any disclaimer. Learned counsel for the plaintiff in support of his

submissions has placed reliance upon a judgment of a Bench of this Court

reported as 2013 (56) PTC 471 (Del) Mohan Meakin Limited Vs. A.B. Sugars

Limited. It is pointed out that in this case even where there was a phonetic

similarity between the marks „OLD MONK‟ and „TOLD MOM‟, the Court

had considered it to be a fit case to grant injunction in favour of the plaintiff.

For the same proposition, that the visual and phonetic similarity of the trade

name of the plaintiff makes out a clear case of deception, reliance has been

placed upon 2014 (59) PTC 42 (Del) Allied Blenders & Distillers Pvt. Ltd.

Vs. Shree Nath Heritage Liquor Pvt. Ltd. as also 1999 IAD (Delhi 603

Automatic Electric Limited Vs. R.K. Dgawan & Anr. It is pointed out that

the goods and services of the defendant are clearly identical and in that case

(supra) where the defendants were using the trademark „DIMMER DOT‟

against the plaintiff‟s registered mark „DIMMERSTAT‟, the defendants had

been restrained from doing so. The similarities in the two trade names of the

plaintiff and the defendant are writ large. It is a clear case of a dishonest

adoption. Reliance has also been placed upon AIR 2002 SC 275 Laxmikant

V. Patel Vs. Chentanbhat Shah; submission being that even presuming that

there is an absence of intention to deceit, it would not be a defence as this is

a case where a clear case of dishonesty and absence of fairplay qua the act of

the defendant is made out.

9. Arguments have been countered. On behalf of the defendant, it is

pointed out that although the plaintiff has obtained a registration in class 43

of the trademark „PINCH OF SPICE‟ during the pendency of the suit, yet a

perusal of the trademark/name of the defendant would show that there is a

clear distinction between the two. Not only is the manner of writing the two

trade names different and distinct but their trade-dress, description, logo and

its presentation are also wholly dis-similar. „PINCH‟ is even otherwise a

generic word which is used in all food preparations. It is common to the

trade of restaurant; food and dining. Learned senior counsel for the

defendant in support of his submission has placed reliance upon a judgment

in M/s J.K. Oil Industries Vs. M/s Adani Wilmar Limited in CS (OS)

No.13/2010 delivered on 10.02.2010. It is pointed out that the word „KING‟

which was a part of the registered trademark of the plaintiff („OILKING‟),

the Court was of the view that the word „KING‟ is a common distinctive

word used in the industry of marketing and manufacture of edible oils and

other allied products and thus the plaintiff could not have a monopoly on this

word. The defendant has also placed reliance upon a judgment of a Bench of

this Court in Lowenbrau AG and Anr. Vs. Jagpin Breweries Ltd and Anr in

CS (OS) No.1810/2007 delivered on 14.01.2009; the ratio of this case also

comes to the aid of the defendant.

10. Arguments have been heard. Record has been perused.

11. The plaintiff is carrying on business under the trademark/name

„PINCH OF SPICE‟. Plaintiff No. 1 has been carrying on this business since

the year 2007. Plaintiff No. 2 is a partnership firm. On a query put to the

learned counsel for the plaintiff, he admits that there is only one restaurant

which has been opened by plaintiff No. 1 and this outlet is in Agra; his

submission in the plaint that there are three more outlets of which one is in

Agra and two outlets are in Delhi is incorrect. The documents which include

sale bills/invoices of this restaurant „PINCH OF SPICE‟ running at Agra

shows that this business is being carried out by the plaintiff only at Agra. On

a specific query put to the learned counsel for the plaintiff as to how he had

made a wrong statement qua the other outlets, his submission is that plaintiff

No. 2 is a partnership firm in which Manpreet Singh a director of plaintiff

No. 1 is also a partner which also has the business of running of restaurants;

this is no answer to the specific query raised as admittedly „PINCH OF

SPICE‟ is the trademark/name of plaintiff No. 1. This trademark/name has

not been assigned in favour of plaintiff No. 2; the business, if any, of the

partnership firm of plaintiff No. 2 will have no impact on the business of

plaintiff No. 1. This Court notes that in para 15 of the plaint, the year-wise

sale figures of plaintiff No. 1 as also of plaintiff No. 2 have been depicted.

At the cost of repetition, plaintiff No. 2 has no connection with this

trademark/name „PINCH OF SPICE‟ which is registered in the name of

plaintiff No. 1. The sale figures of third firm "Silver Spoon Food and

Beverages" (placed on record only at the asking of the Court) also have no

connection with plaintiff No. 1‟s registered trademark/name. Merely

because plaintiff No. 2 ("Vertex Hospitality") and "Silver Spoon Food and

Beverages" have a partner who is also a director in plaintiff No. 1 would not

make the sale turnover of plaintiff No. 2 and "Silver Spoon Food and

Beverages" have any connection with the business of plaintiff No. 1.

Plaintiff No. 1 is a distinct entity of its own. In fact this is a mis-

representation and a wrong statement of fact which has been made by the

plaintiff. Again at the cost of repetition, there is no document of any sale

figure/invoice of any other restaurant being run by plaintiff No. 1 except one

single outlet in Agra under the name of „PINCH OF SPICE‟.

12. Relevant would it be to extract the trade markes/names of the plaintiff

and defendant which are evidenced in the chart below:

Plaintiff's-

Defendant's-

13. A naked eye bare comparison of the two marks would show that there

is no attempt to deceive by the defendant and this is by applying the test of a

reasonable man or that of an unwary customer.

14. „PINCH OF SPICE‟ has been created in an artistic format over a

saucer held on a hand from where vapours are emanating. The last words

read as „The Lasting Impression‟. The trademark/name of the defendant

„PINCH OF SALT‟ is written differently and distinctively; the word

„PINCH‟ is in capitals; in a straight format unlike the „PINCH‟ of the

plaintiff where the alphabet „P‟ is in an italized and artistic format. „PINCH

OF SALT‟ is even otherwise described as a "multi cuisine family restaurant

and bar". Over and above this logo is a chef cap where a „pinch of salt‟ is

shown to be dropping from the index finger and thumb of a hand. The trade-

dress, label, get up of the two trade-names are also distinct and different;

there is no connection between the two.

15. Applying the test of a reasonable man, there is absolutely no confusion

of the trade-name of the plaintiff and of the defendant. The test prescribed of

„infringement‟, of deceptive similarity, identity with and association with

registered trade mark and of likelihood of confusion, simply put, is a test of

possibility of the goods under the impugned trade mark being purchased by

the intending consumers thereof, owing to the trade mark they bear, as the

goods earlier consumed by them and which they intend to repeat or as

originating from the same manufacturer/supplier whose goods were

consumed and intended to be repeated or as goods recommended to them for

purchase or consumption. A trade mark, in the absence of anything else, is

the „face‟ of the goods by which the customer/consumer thereof identifies or

recognizes or remembers the goods. Such

identification/recognition/remembrance is dependent on the memory of the

customers/consumer of such goods. It is well settled in the several dicta that

the test is not of photogenic or perfect memory but of an imperfect

memory/recollection.

16. The word „PINCH‟ is a common generic word; although there is no

disclaimer to the registration of the plaintiff yet it cannot be lost sight that

the word „PINCH‟ is related to the restaurant and dining industry. Any

symbol, word or get up commonly used by traders in connection with their

trade and in respect of which no particular trader can claim an exclusive right

to use may be considered common to that particular trade, or public, juris.

Further words, expressions, or devices which are descriptive of particular,

goods are open to use by all persons engaged in the trade. Such matters

which are generally of a non distinctive character may or may not be in

actual use at any particular time. What is important is that the trading public

has a right to use them in connection with their business. Whether a matter

is or is not common to the trade is again a question of fact. The word

„PINCH‟ is at the cost repetition related to the restaurant and food industry.

17. The submission of the plaintiff that he has a registration of the mark

„PINCH OF SPICE‟ as a whole also appears to be mis-conceived.

Section 17 of the Trademarks Act reads as under:-

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.

18. Section 17 (2) stipulates that where the trademark which is common to

the trade or is otherwise of a non-distinctive character, registration thereof,

will not confer any exclusive right in the matter forming only a „part‟ of the

„whole‟ of the trademark so registered. This sub-Section comes to the aid of

the defendant. The word „PINCH‟ is common to the trade in which the

plaintiff and the defendant are operating.

19. The high-level reputation which the plaintiff claims is also not

established by any document. There is no record to substantiate this

submission. Moreover, this business of the plaintiff is confined to Agra;

even presuming that the plaintiff is doing this business since the year 2007,

had it really had a renowned reputation, it‟s outlets would have expanded but

they have been confined to Agra alone. On the other hand, the defendant is

carrying on his business since the year 2015; his application seeking

registration is pending. He also has a Public Performance Licence from the

Indian Performing Rights Society to allow their music to be played at his

restaurant. The defendants‟ advertisement campaign is also evident from the

newspaper clippings (East Delhi Update). A computer generated search

report filed by the defendant further shows that the word „PINCH‟ is not

confined to the business of the plaintiff No.1 alone. The word „PINCH‟ is

being used in class 29 (dried and cooked foods, jellies, jams, fruits sauces,

eggs, milk and milk products) by other users also who are operating in

various parts of the country.

20. The word „PINCH‟ has not attained a secondary meaning to the goods

and services of the plaintiff. As already discussed supra, the plaintiff not

having been able to show that it has a reputation and goodwill which has

travelled beyond Agra; there is nothing to suggest that the word „PINCH‟ is

associated only with the services of the plaintiff. The words „PINCH OF

SPICE‟ and „PINCH OF SALT‟ even otherwise are wholly dis-similar

phonetically and in sound. There is also no visual resemblance. The

question of confusion would not arise even remotely.

21. The plaintiff has failed to build a prima-facie case. The plaintiff in

order to establish „infringement‟ must have established that the impugned

trademark of the defendant is identical and deceptively similar to the

registered trademark of the plaintiff. The plaintiff has failed to do so. The

plaintiff has also failed to build up a case that the said word „Pinch‟ is

distinctive to the business of the plaintiff and has acquired a secondary

meaning associated wholly with the trade name of the plaintiff.

22. Balance of convenience is in favour of the defendant. His business

cannot be stopped. He is carrying on its business since the year 2015.

Irreparable loss and injury in fact will be suffered by the defendant in case he

is not allowed to continue his business; he cannot be stifled in the trade. The

plaintiff having failed to build up a prima-facie case, the interim injunction

granted in favour of the plaintiff on 11.03.2016 is also liable to be vacated.

It is accordingly vacated.

23. Applications disposed of.

INDERMEET KAUR, J 24th MAY, 2017/A