Arun Chopra vs Kaka-Ka Dhaba Pvt Ltd & Ors
2018 Latest Caselaw 7029 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
                                     Date of decision: 28th November, 2018
+                        CS(COMM) 728/2018
      ARUN CHOPRA                                    ..... Plaintiff
                         Through:     Ms. Shobhana Takiar, Advocate.
                                      (M:9810962950)

                         versus

      KAKA-KA DHABA PVT LTD & ORS           ..... Defendants
                  Through: Mr. Akhil Sibal, Senior Advocate
                           with Mr. Hiren Kamod and Mr. Rahul
                           Vidhani, Advocate for D-1 to 6.
                           (M:9811545888)

      CORAM:
      JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

I.As. 4382/2014 (u/O XXXIX Rules 1 &2 CPC) & 9392/2014 (u/O XXXIX Rule 4 CPC)

1. The Plaintiff has filed the present suit for infringement of registered trademark and other reliefs. The Plaintiff's case is that it adopted the trademark „Kake Da Hotel‟ which is operating from Shop No. 74 Municipal Market, Connaught Circus, New Delhi-110001. It is claimed in the plaint that the name was adopted in 1931 when the said name was used for a restaurant which was started in Lahore, Pakistan. Post partition, the founder of the Plaintiff, late Shri Amolak Ram Chopra shifted to Delhi and opened a restaurant in the same name. The claim of the Plaintiff is that the name of

the Plaintiff's outlet „Kake Da Hotel‟ has acquired enormous reputation and goodwill. The earliest trademark registration dates back to 14 th December, 1950 and the claim of the user is from 1st June, 1931 in respect of goods falling in class 30. The details of the trademark registration have been placed on record. It is also claimed that after several years of use, the Plaintiff has also registered the trademarks „K-D-H Kaku-Da-Hotel‟ and „K-D-H Kake- Da-Hotel‟ as detailed in paragraph 4 of the plaint. The registered trade mark of the Plaintiff is as under:

The Plaintiff also claims that the Plaintiff's outlet has received excellent reviews in the print and the electronic media and the name is associated only

with the Plaintiff's restaurant.

2. The present suit is filed on the ground that the Defendants have started use of the name/mark „Kaka-Ka Dhaba‟ for food outlets in Nashik, Maharashtra. The manner in which the Defendants use the mark is set out in the visiting card of the Defendants which is at page 43 of the list of documents.

The claim of the Plaintiff is that the use of the mark „Kaka-Ka‟ for food outlets infringes upon the registered trademark of the Plaintiff. The Plaintiff

has placed on record images of the restaurants of the Defendants in Nashik as also the menu cards.

3. The case of the Defendants in the written statement is that the Defendants adopted the mark „Kaka-Ka Dhaba‟ in 1997. However, it is claimed that there was a food cart being used by the family since the early 1980s called „Kaka-Ka Dhaba‟. However, the outlet is claimed to have been started in the year 1993 or at least since 1997. The Defendants claim that they have three outlets which are enumerated in paragraph (iv) of the written statement are as under:-

"(i) 8/9 Pragati Market, Opp. Lekhi Nagar, Mumbai- Agra Road, Nashik-422009,Maharashtra;

(ii) Opposite Bhonsala Military School, Gangapur Road, Nashik-

422013, Maharashtra; and

(iii) Dindori Road, Pokhar Colony, Panchavati, Nashik-422002, Maharashtra."

4. The Defendants thus claim that these three outlets were started at least 17 years ago and the expression 'Kaka-Ka' has been used by them for these outlets with different descriptions as under: -

1) Kaka-Ka Dhaba- 8/9 Pragati Market, Opp. Lekha Nagar, Mumbai Agra Road, Nashik - 422009

2) Kaka-Ka Hotel- Opp. Bhosala Military School, Gangapur Road, Nashik

3) Kaka-Ka Garden- Dindori Road, Pokhar Colony, Panchavati, Nashik - 422009

5. It is submitted that the Plaintiff has no reputation in Nashik, Maharashtra and the Defendants have gained their own reputation. It is

further submitted that the word 'Kaka' is generic and no monopoly can be claimed in the same.

6. This Court has heard the learned counsels for the parties today and on the interim arrangement that can be worked out inasmuch as the registration of the Defendants is under challenge by the Plaintiff in the IPAB.

7. The only question that needs to be adjudicated is the interim order that needs to be passed during the pendency of the present suit. At the initial stage in the suit, an ex-parte order was passed on 10th March 2014 in the following terms:

"It is submitted that plaintiff has exclusive rights over the trade mark 'KAKE-DA-HOTEL', which has attained high reputation in the market. It is alleged that defendants have started using the deceptively similar marks 'KAKA-KA-DHABA', 'KAKA-KA HOTEL, 'KAKA-KA RESTAURANT' and 'KAKA-KA GARDEN', which are identical to the trade mark of plaintiff. I have heard learned counsel for the plaintiff and perused the plaint as well as documents annexed herewith and am of the view that plaintiff has made out a, prima facie, case in his favour that defendants have adopted deceptively similar mark as that of plaintiff‟s registered trade mark so as to encash its reputation. In case ex-parte ad interim injunction is not granted, the plaintiff shall suffer irreparable loss and injury, inasmuch as balance of convenience is also in his favour.

Accordingly, till further orders, defendants are restrained from using the trade marks 'KAKA-KA-

DHABA', KAKA-KA HOTEL', 'KAKA-KA RESTAURANT' and 'KAKA-KA GARDEN' or any other mark which is deceptively similar to the plaintiff‟s mark 'KAKE-DA-HOTEL'."

8. A perusal of the Plaintiff's trademark registration shows that the

Plaintiff is registered for the mark „Kake-Da-Hotel‟ and the Plaintiff is also using the mark „K-D-H‟ along with it. On the other hand, the Defendants are using the trademark „Kaka-Ka Restaurant‟, „Kaka-Ka Hotel‟, „Kaka-Ka Dhaba‟ and „Kaka-Ka Garden‟. However, the Defendants have applied for registration only for `Kaka-Ka Dhaba'.

9. The Plaintiff has only one outlet in Delhi though there is no doubt that the Plaintiff's user is extremely long and extensive. The question as to whether the word „Kaka‟ or „Kake‟ can be monopolised by any party is to be adjudicated at trial. However, the Plaintiff has no outlet anywhere else in the country and has only one outlet in Delhi. Even as on date, considering the fact that the Defendants also have a registered trademark, the following interim arrangement would be in the interest of justice and would also ensure that the status quo is not completely changed during the pendency of the suit.

10. The Supreme Court in the celebrated judgement of Wander Ltd. and Ors. v. Antox India P. Ltd. 1990(Supp) SCC 727 observed, in the context of grant of interlocutory injunctions as under:

"9.Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injucntion, it is stated "....is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if

the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

11. It is not seriously in dispute that the Defendants have been using the expression `Kaka-ka' since at least 15 years in the city of Nashik. They were earlier running four outlets but presently three outlets are operational. They have several employees and have gained reputation locally. The Plaintiff has gained immense reputation in Delhi and the reputation may be spilled over in various parts of the country, but they have only one outlet. Various issues are to be adjudicated which would need evidence including as to whether the defendants had knowledge of the Plaintiff when they adopted their names/marks as also whether there is any likelihood of confusion owing to the geographical areas of operation. There is no doubt that the Plaintiff is prior user of its name. On the balance, the following interim arrangement would serves the ends of justice.

(1) The Defendants are permitted to use the name „Kaka-Ka Dhaba‟, „Kaka-Ka Restaurant‟ and „Kaka-Ka Garden‟ for the three restaurants/outlets already operating in Nashik, Maharashtra. However, they will not use the name „Kaka-Ka Hotel‟.

(2) The Defendants shall not open any further outlet with the name „Kaka-Ka‟, during the pendency of the present suit.

(3) The Defendants shall maintain complete accounts of all sales which they are conducting in their three restaurants/outlets. The company 'Kaka-Ka Dhaba Pvt. Ltd. shall continue to operate under the said name. However, no fresh company/firm or any other entity shall be commenced by the name „Kaka-Ka‟.

(4) All the outlets running in Nashik, Maharashtra are stated to be under the control and management of Mr.Jugesh Chaddha and Mr.Mahesh Chaddha Defendant No.2 and Defendant No.6 respectively. Both the said individuals shall file their undertakings before this Court that if any order is passed for damages/rendition of accounts, they shall be abide by the same and they shall file the quarterly accounts of their outlets at the end of each quarter by the 10th of the next month.

(5) The Defendants shall change the name „Kaka-Ka Hotel‟ within 30 days.

12. The interim order already granted shall stand modified in the above

terms.

13. I.As. 4382/2014 & 9392/2014 are disposed of. I.As. 9962/2014 (u/O XXXIX Rule 2A CPC), 15094/2016 (u/O XXXIX Rule 2A CPC) & 9410/2017 (u/O XXXIX Rule 2A CPC)

14. Mr. Jugesh Chaddha - Defendant No.2 is present in Court. He submits that the allegations in the contempt though are denied, he undertakes and assures this Court that the interim order passed would be abided by and complied with scrupulously and that there would be no violation of the same. Taking on record and accepting this personal undertaking given by Defendant No.2, the contempt applications are disposed of.

15. Defendant No.2 and all others in control of the three outlets and the company are directed to scrupulously abide by the interim order passed today. Any violation of the said order passed today, would entail strict action in accordance with law.

CS(COMM) 728/2018 & I.A. 15056/2016

16. Learned counsel for the Plaintiff shall place on record a copy of the cancellation petition filed before the IPAB by the Plaintiff seeking cancellation of the registered trademark of the Defendants. Let the needful be done within two weeks.

17. List for hearing on 20th December, 2018.

PRATHIBA M. SINGH JUDGE NOVEMBER 28, 2018 Rekha