Rajasthan High Court - Jodhpur
Indra Singh Chouhan vs M/S Bawarchi Fast Food on 25 March, 2021
Bench: Arun Bhansali
(1 of 10) [CMA-464/2020]
HIGH COURT OF JUDICATURE FOR RAJASTHAN AT
JODHPUR
D.B. Civil Misc. Appeal No. 464/2020
Indra Singh Chouhan S/o Late Shri Rameshwar Singh Chouhan,
Aged About 49 Years, R/o 1006, First Road, Near Nehru Park,
Sardarpura, Jodhpur (Raj.)
----Appellant
Versus
M/s Bawarchi Fast Food, Registered Partnership Firm Under
Indian Partnership Act, Inside Dehli Gate, Udaipur (Raj.)
Through Its Partners - (1) Kailash Sahu S/o Shri Uday Lal Sahu,
Aged 46 Years, (2) Pushkar @ Pukhraj S/o Uday Lal Sahu, Aged
44 Years, Both R/o Inside Delhi Gate, Udaipur (Raj.)
----Respondent
For Appellant(s) : Mr. Himanshu Solanki.
For Respondent(s) : Mr. D.S.Sodha for
Mr. Kuldeep Mathur
HON'BLE MR. JUSTICE SANGEET LODHA
HON'BLE MR. JUSTICE ARUN BHANSALI
Judgment
PER HON'BLE BHANSALI, J.
25/03/2021
This appeal under Order XLIII, Rule 1(r) CPC r/w Section 13
of the Commercial Courts Act, 2015 ('the Act of 2015') has been
filed against the order dated 08.01.2020 passed by the
Commercial Court, Udaipur, whereby the application filed by the
respondent under Order XXXIX, Rule 1 & 2 CPC has been accepted
and the appellant-non-applicant has been restrained from using
the word 'ckophZ' in Hindi and 'Bawarchi' or 'Bavarchi' in English
directly or indirectly for the purpose of providing food & drink /
restaurant & hotel services either himself or through his
representative, franchises or servants / employees.
(2 of 10) [CMA-464/2020]
A suit for injunction under the Trade Marks Act, 1999 ('the
Act') was filed by the respondent-plaintiff, inter-alia, with the
submissions that the plaintiff is a partnership firm; since 1993
under the trade mark of 'ckophZ' (Bawarchi) it was operating a
restaurant in the name of 'ckophZ QkLV QqM' and since 2013 was
operating a website 'bawarchirestaurant.in', through which it was
advertising its restaurant and providing online facility. It was
claimed that the restaurant has its goodwill and fame and is
popular among tourist and general public. It was claimed that for
the purpose of protecting his trade mark, the plaintiff made
application before the Registrar of Trade Marks, Ahmedabad and
from time to time registration certificates were issued. A list of
registration certificates six in number under various class i.e. 43,
30, 33 & 32 were indicated. It was claimed that since 1993, the
plaintiff is lawful proprietor and owner of the registered trade
mark 'ckophZ' (Bawarchi), word mark in Hindi and English and the
logo and therefore, only the plaintiff has the right to use the
same. It was alleged that the use of trade mark 'Bawarchi' by any
one else would create confusion in the mind of consumers and the
same would lead to passing of the services as that of the plaintiff
or in someway connected with the plaintiff. It was also claimed
that in relation to the trade mark, the plaintiff has a right under
the Act to restrain others from infringing the same and from
passing off under the common law.
It was then alleged that the defendant with a view to make
illegal profits by using the registered trade mark has started
(3 of 10) [CMA-464/2020]
operating restaurant in the name of ' ckophZ QkLV QqM', which is a
clear violation of the plaintiff's legal right and against the Act. It
was alleged that the services of the plaintiff and defendant are of
similar nature, they have similar consumers and marketing
channel, the names are phonetically similar and the trade marks
are also similar, which would result in confusion and deception and
the services would be passed off and therefore, it was necessary
to restrain the defendant.
It was claimed that the plaintiff become aware of the acts of
the defendant in the year 2015, after which legal notice for not
violating the trade mark was given, the defendant assured that he
would change the name and the application for registration of the
trade mark has been withdrawn on 21.05.2015, however, despite
withdrawal of the application, the restaurant is being operated in
the name of 'ckophZ QkLV QqM', which is illegal and falls within the
category of infringement / passing off and amounts to fraud on
public. Based on the said submissions, relief of permanent
injunction in the suit was claimed restraining the defendant from
using the trade mark 'Bawarchi' directly or indirectly.
Alongwith the suit, an application under Order XXXIX, Rule 1
& 2 CPC was filed seeking temporary injunction based on prima
facie case, balance of convenience and irreparable injury.
The appellant-defendant filed reply to the temporary
injunction application denying the averments made in the
application.
(4 of 10) [CMA-464/2020]
It was, inter-alia, indicated that though the plaintiff claims to
be running the restaurant in the name of ' ckophZ QkLV QqM' since
1993, however, the application for obtaining trade mark has been
filed in the year 2013 and prior to that, the same was being used
without registration. It was denied that the trade mark has been
infringed and / or the same was similar. It was also claimed that
both the marks were substantially different and there was no
likelihood of any confusion and deception as alleged. It was denied
that the application for registration of trade mark was withdrawn
on 21.05.2015 and it was also claimed that the same was still
pending.
Submissions were also made that the defendant has got
registration under the Rajasthan VAT Act from 01.12.2012 and is
having a food licence from the Department of Medical & Health
Services, Rajasthan since 16.03.2012 in the name of ' ckophZ QkLV
QqM' and that he was operating the restaurant since 1990, which is
prior in time than the plaintiff. It was denied that the plaintiff is
entitled to any permanent injunction.
In additional plea, it was submitted that the defendant was
operating restaurant in the name of 'ckophZ QkLV QqM' since
01.04.1990, whereas, the plaintiff was operating since 1993. The
defendant had user/registration under various laws since
16.03.2012, 21.08.2012 & 28.12.2012 gas connection, from
Department of Medical & Health Services, VAT Registration,
respectively. It was also submitted that the different trade marks
registration claimed by the plaintiff are in different classes
(5 of 10) [CMA-464/2020]
whereas the defendant was operating the restaurant under class
43 regarding which application has already been filed for
registration, which is pending. It was prayed that the application
be rejected.
The trial court, after hearing the parties, came to the
conclusion that prima facie the use of word 'ckophZ' by the plaintiff
for his business since 1993 was proved, which is supported by the
order dated 23.04.2018 by the Assistant Registrar of trade mark,
Ahmedabad, wherein it was found that the applicant has
registration under class 30 & 32 in the name of ' ckophZ' and was
using the trade mark since 1993. It was also held that though the
defendant claimed to be using the trade mark since 1990,
however, nothing has been placed on record to support the said
contention and the registration with the Tax Department and
Medical Department are of the year 2012 and application for
registration has also been filed in the year 2012 and therefore, the
prior use under different classes by the plaintiff was reflected.
The Court also came to the conclusion that the application,
which was filed in the year 2012, for which the application has
already been filed on 21.05.2015 for withdrawal of the said
application and is only pending for grant of permission by the
competent authority, who has discretion either to allow the
application without cost or impose cost. It was further held that
the word 'Bawarchi' and the word 'Bavarchi' are similar and their
Hindi versions were identical and as the plaintiff was using trade
mark 'ckophZ' since the year 1993, there was a prima facie case in
(6 of 10) [CMA-464/2020]
its favour. Whereafter, after referring to the judgment of Hon'ble
Supreme Court in Heinz Italia v. Dabar India Limited : 2007 (6)
SCC 1 again it was held that the plaintiff has prima facie case. The
Court also found that on account of phonetic similarity, there was
likelihood of a consumer getting confused. Based on its finding on
prima facie case, balance of convenience and irreparable injury
were also found in favour of the plaintiff-applicant and
consequently, injunction as noticed herein-before was granted.
Learned counsel for the appellant made submissions that the
Commercial Court was not justified in granting the injunction. It
was submitted that the plaintiff only had trade mark registration
under class 30 & 33, whereas the appellant had applied for trade
mark registration under class 43, which pertained to services for
providing food & drink; restaurant & hotel and therefore, the grant
of injunction in the present matter is not justified.
Further submissions were made that the registration
obtained by the respondent, pertains to the device mark and not
word mark and it is not even the case of the plaintiff that the
device mark of the plaintiff is being used by the appellant and
therefore, in view of provisions of Section 17(2) of the Act, the
plaintiff cannot seek infringement of only a part of the said trade
mark and on that count also order impugned deserves to be set-
aside.
Further submissions were made that the trial court has given
undue weightage to the fact that an application seeking
withdrawal of the registration application was filed by the
appellant before the Registrar of trade marks, it was indicated that
(7 of 10) [CMA-464/2020]
though one of the counsel representing the appellant filed the
application, while no order has been passed on the said
application, another counsel representing the appellant is pursuing
the application for registration and therefore, also the order
impugned deserves to be set-aside.
Submissions were also made that the word ' ckophZ' is generic
in nature and as such, the same does not confer any right on the
plaintiff to seek an injunction in this regard.
Attempts were also made to compare the trade mark of the
plaintiff and that of the appellant to submit that the same were
not similar. It was prayed that the order impugned deserves to be
set-aside.
Learned counsel appearing for the respondent supported the
order impugned.
It was submitted that the applicant is in possession of a word
mark registration for 'ckophZ' under class 43 & 30 since 31.07.2013;
word mark registration for 'Bawarchi' since 27.09.2011 under
class 43; another registration for ' ckophZ QkLV QqM' alongwith 'ckophZ'
in Hindi under class 30 since 22.09.1997 as device and
registration for 'ckophZ QkLV QqM' alongwith 'ckophZ' in Hindi under class
33 since 26.04.2012 and therefore, the plea raised with regard to
the plaintiff not in possession of the trade mark registration under
class 43 is baseless.
Further submissions were made that the application for
withdrawal of registration was indeed filed by the appellant,
despite filing of the application, merely because order on the
(8 of 10) [CMA-464/2020]
application was not passed, which is only related to as to whether
the cost is to be imposed or not, the appellant cannot claim that
the proceedings are still pending.
With reference to the material available on record, it was
emphasized that there is no difference whatsoever in the
registered trade mark of the plaintiff and that being sought to be
usurped by the appellant. It was denied that the term of 'Bavarchi'
is generic and that the plaintiff only has registration of device
mark and not the word mark. It was submitted that the trial court
has thoroughly considered all the aspects and therefore, the order
impugned does not call for any interference.
We have considered the submissions made by learned
counsel for the parties and have perused the material available on
record as well as the record of the Commercial Court.
The facts are not in dispute wherein the plaintiff based on
the prior user and registration of the trade mark ' ckophZ', has filed
the suit and the appellant though claims that his application for
registration is still pending with the Registrar, presently do not
have any such registration. It is also not the case of the appellant
that he has sought cancellation of registration of trade mark
granted to the plaintiff. The material on record clearly reflects that
the plaintiff is in possession of trade mark registration under
various classes including class 43.
The plea sought to be raised by learned counsel for the
appellant that the plaintiff does not have word mark registration,
is apparently contrary to the record as word mark registration for
(9 of 10) [CMA-464/2020]
'ckophZ' dated 31.07.2013 and word mark registration of 'Bawarchi'
in class 43 since 27.09.2011 is on record.
In view thereof, the plea sought to be raised based on
Section 17(2) of the Act regarding using a part of the trade mark
device by the plaintiff for alleging infringement also apparently has
no basis.
The submission made that there is no similarity between the
trade mark of the appellant and of the plaintiff, is to say the least
without any basis, inasmuch as, the use of word ' ckophZ' in Hindi is
identical and in English, except for difference by using the word 'V'
instead of 'W' in Bawarchi, neither there is any phonetic change
nor the word changes in any manner and therefore, the attempt
made to claim otherwise cannot be countenanced.
So far as the plea raised that the word ' ckophZ' is generic in
nature, for substantiating the said submission, the appellant has
failed to place on record any material to indicate wide spread user
of the term so as to claim the same to be generic in form. In fact,
the appellant except from his own user, has not produced any user
under any class to claim the same to be generic.
So far as the plea regarding pendency of the proceedings
before the trade mark authorities is concerned, if the plea of the
appellant regarding pendency of the proceedings is correct, the
application is pending since the year 2012 and the counsel despite
query by the Court is unable to indicate its status after passage of
over 09 years and therefore, if the application is still pending, the
appellant must pursue the said application.
(10 of 10) [CMA-464/2020]
In view thereof, the submissions made seeking to question
the validity of the order passed by the Commercial Court granting
injunction against use of the registered trade mark, have no
substance.
Consequently, the appeal has no substance, the same is,
therefore, dismissed.
(ARUN BHANSALI),J (SANGEET LODHA),J
Rmathur/-
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