OVERVIEW
This research update elucidates on the judgment recently given by the Bombay High Court (on March 11, 2015 in the case of Jagdish Gopal Kamath & Ors. v. Lime and Chilli Hospitality Services) on a cause of action of trade mark infringement and passing off by the owners of the famous “Cafe Madras” eatery situated in central Matunga, Mumbai against the owners of some other restaurants with the same name situated in Jalgaon and Nashik.
FACTS OF THE CASE
Cafe Madras is a south Indian speciality restaurant owned and managed by the “Kamaths” (Plaintiffs) and situated at Matunga in Mumbai. The Kamaths are registered proprietors of the marks “Cafe Madras” since 2005 in Classes 16 and 42. The Kamaths have used these marks openly, continuously and extensively since 1951, generating considerable goodwill and a high reputation and have won a large number of awards.
Lime and Chilli Hospitality Services (Defendants) started a restaurant in Jalgaon with the name “Café Madras” in 2004 and a second restaurant with the same name in Nashik in 2012. The Plaintiffs learnt about the same in 2012.
The Plaintiffs’ advocates sent cease-and-desist notices to the Defendants. The Defendant thereafter applied for registration of the mark Café Madras.
Plaintiffs’ Claims
The Plaintiffs filed a suit (a notice of motion) in the Bombay High Court accusing the Defendant of fraudulent and dishonest adoption (infringement) and also claimed that there was a horrific incident at one of those locations, one that caused demonstrable damage to the reputation and the goodwill of the Plaintiff’s trade mark.
Defendants’ Arguments
The trademark ‘Cafe Madras’ (either the words ‘Cafe’ or ‘Madras’ separately or by way of combination of the said words) was incapable of registration. There were several other establishments across India with the same name; that the Plaintiffs’ claim of goodwill is not borne out by its sales and was in any case, geographically limited (at best the limits of Mumbai) and the Defendant’s use in places several hundred kilometres away could not have any possible diluting effect on and can cause no possible confusion with the Plaintiffs’ use of the expression.
In light of the aforesaid circumstances, there was neither any case of infringement or passing off.
ISSUE
Whether the adoption of words / mark “Cafe Madras” by the defendants constituted an infringement / passing off of the Plaintiffs’ trade mark / trade name?
BOMBAY HIGH COURT’S JUDGMENT
The Court gave the judgment in favour of the Plaintiffs holding that a case on infringement and passing off was made. A synopsis of the judgment is as under:
On the basic test of comparing two trade marks to determine infringement
It was well settled that for comparing rival marks one must look at the mark as a whole as an average man of ordinary intelligence. Persons recall marks in generalities and by an overall recollection of an impression of it. Trivial and non-distinctive matters do not sufficiently distinguish a competing mark.
In an infringement action, the rival mark need not be an exact replica or clone. On the said test, the Court found the defendant’s trade mark to be deceptively similar in its structural, visual and phonetic similarity. The Court remarked that it doubted whether any person would attempt to differentiate between ‘Café Madras’ on its own and something like ‘Café Madras with a graphic of a banana leaf and the tag-line essence of real Udipi kitchen’.
On the law relating to registration of trade mark containing descriptive / generic words
In response to the argument of the defendants that the words “Cafe” and “Madras” were generic in nature, common to the trade and none could lay any exclusivity in the said mark, the Court held that the said words when taken together were capable of registration. Even a generic or descriptive word could, in some situations, acquire distinctiveness.
Relying on authorities, the Court held that it was entirely possible for a word or phrase wholly descriptive of goods and services to become so associated with those of a particular person that their use by another amounts to a representation by the second that his goods or services are those of the first. Although the phrase may be primarily descriptive, it may acquire a secondary meaning connoting exclusively the products or services of a particular person and none other.
A combination of two commonplace individually descriptive words may indeed acquire protective rights where the words in question come by long, prior and continuous use in relation to specific goods or services, to be uniquely identified with a particular supplier. It was possible adopt a phrase or an expression that contains multiple words, each of which is on its own commonplace and incapable of registration, yet taken together acquire a distinctiveness.
The Court also particularly noted that while on one hand the defendant said that the mark was incapable of registration / protection, on the other hand it simultaneously applied for registration of the same trade mark in its own name. The Court criticised the conduct of the defendant of blowing hot and cold / approbating and reprobating at the same time.
Whether the use of mark “Cafe Madras” or “Madras Cafe” was common to the trade?
In response to the argument of the defendant that the use of the mark was open to the trade, the Court relying on a Supreme Court’s judgment held that it was not enough that the use of the mark “Cafe Madras” was in used, but it was essential to prove that the same was in extensive use (i.e. there have been substantial common users).
Based on the evidence provided, the Court found that the said mark was not being used extensively and hence was not “common to the trade”.
Whether the Defendants’ use of the Plaintiff’s trade mark would be considered to be an honest adoption of trade mark as per section 30 of the Trade Mark Act?
In response to the arguments advanced by the defendants’ lawyers that under section 30 of the Trade Mark Act, the trade mark was not infringed when it was used (i)in accordance with honest practices or (ii) not to take unfair advantage of or detrimental to the distinctive character or repute of the trade mark, or (iii) was used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services, the Court held that one had to be careful to distinguish the legitimate use under the said section from the illicit use in passing off, where a defendant masquerades his goods or services as those of a plaintiff. Section 30 did not permit such passing off; it contemplates a narrowly tailored legitimate use by one person of another’s proprietary mark to uniquely identify the mark’s proprietor’s goods or services as those of the proprietor himself.
This “use of a mark” was not the same as “the use of a mark as a trade mark”. It is the use of a mark otherwise than as a trade mark, i.e., purely for descriptive purposes. Here, the Defendant used the mark not in any descriptive sense, but as a trade mark. The same was inferred from the Defendant’s own application for registration. Thus, it was hardly plausible to suggest that the Defendant uses ‘Café Madras’ to indicate descriptively that its services as a Cafe originate in Chennai or were “Madras-like”.
Bonafide use of a trade mark under section 35 of the Trade Mark Act
In response to the arguments advanced by the defendants that the use of the trade mark “Cafe Madras” by them would be regarded as bonafide as per section 35 of the Trade Mark Act, the Court (relying on one of its own division bench judgment given earlier) rejected the proposition observing that the defendant did not conduct a market survey or a search in the trade mark Register to ascertain whether or not the said mark was already registered.
On whether or not the defendant’s action construed to be “passing off” of the plaintiff’s trade mark and whether the reputation of the Plaintiff’s mark / trade name was geographically limited?
The Court noted that the Plaintiffs had acquired a considerable reputation and goodwill over a period of time and the same was not geographically limited.
Referring to an incident where a rat was found in the food served by the defendants’ establishment and which was widely reported in several leading newspapers including an internet edition of one of the newspapers, the Court held that the said incident had directly affected the plaintiff’s establishment because the reporting which was made in these newspapers was in the name of ‘Madras Cafe’ / ‘Cafe Madras’ and not in the name of Lime & Chilli Madras Cafe’ or with anything to distinguish it from being a branch / franchise of the Plaintiff’s ‘Cafe Madras’.
The Court further held that while in earlier times, a wide spread of information and knowledge would have been difficult to achieve and perhaps restricted only to the most posh and upper-end eateries, but the same was no longer true. The proliferation of websites that rank and review popular hotels and eateries puts information not only on desks of users from outside the immediate vicinities of any particular establishment but makes it available today even on cell phones and handheld devices. In this regard, the Court specifically referred to the websites of Zomato.com and Burrp.com. Therefore, the information was publicly accessible without geographical limitation.
OUR ANALYSIS & COMMENTS
Though the decision of the Court may not be a landmark judgment or that answering a substantive question of law, it nevertheless is very important from the commercial aspects of not only big restaurateurs but also famous eateries in India, who at several times encounter some other person(s) conducting business of restaurant / eatery using their name(s) not necessarily in the same locality / city / state but elsewhere in India.
With respect to the element of geographical distance, the judgment is very pragmatic in its approach as it takes into consideration the technological advancements wherein the name, goodwill and reputation of a business is no longer limited only the local limits of the city or the state in which the business is being conducted but becomes known nation-wide and in fact internationally as well.
The judgments provides clarity on the validity of registration of the trade mark which although consist of 2 or more generic words which individually may not be registerable, but when they are taken together in a combination, the phrase so evolved attains distinctiveness and hence becomes capable of registration.
It is important for the restaurateurs having a good trade name (but not having registered their trade mark) to claim their rights in the trade name without much delay and prevent others from using it because in absence of the same, there may be a risk of their trade name being considered as “publici juris” (i.e. the name, originally a good trade name may lose its character where the first person using the name allows others persons to use it without complaint).
For the restaurateurs who look to establish their business, it becomes important from them to conduct a trade mark search before assigning a trade name to their establishments, in absence of which even a honest / bonafide / innocent use of someone else’s trade name (without even having the intention of passing off) may not come to rescue and may ipso facto be considered as dishonest use without requiring further evidence.
About Bulwark Solicitors
Bulwark Solicitors is a law firm pioneered by Solicitor Chirag Sancheti and Advocate Deep Shridharani. The firm has expertise in the areas of both Litigation and non-Litigation. Under the non-litigation Law practice, the firm practices in the areas of Corporate Law, Intellectual Property Law, Bankruptcy & Insolvency Law, Competition Law, Real Estate and Conveyancing and DTAA Advisory. Further, under Corporate Law area, we practice Company Law, Securities Law, Mergers and Amalgamations, Private Equity and Venture Capital Investment Transactions, Legal Due Diligence and Foreign Exchange Management Law.