Gautam Gambhir v. D.A.P. and Co. and Ors.

Gautam Gambhir v. D.A.P. and Co.and Ors.

CS(COMM) 395/2017 before the Hon’ble High Court of Delhi

Date of decision: 13th December, 2017

 Brief Facts:

• Plaintiff, Mr. Gautam Gambhir, a prominent International Cricket Player of India had received numerous accolades over the years. Defendant was running a restaurant with the tag line ‘by Gautam Gambhir’, without any permission or license from the Plaintiff.
• Coincidentally, the Defendant’s name was also Gautam Gambhir.
• Plaintiff filed a suit for permanent injunction seeking to restrain the Defendant from using the name ‘Gautam Gambhir’ for its restaurants.

Plaintiff’s Contentions:

• Plaintiff is an international cricket player since 2003.
• The name ‘Gautam Gambhir’, upon being mentioned, immediately gets associated with the Plaintiff only and no one else. The said name carries with itself immense goodwill and reputation
• Due to the use of the tagline, Plaintiff was recently approached by few individuals who enquired if the Defendant’s restaurants were owned by him.
• Tagline seems to have been added to the names of the said restaurants to deceive the public into believing that the restaurants are owned by the Plaintiff.
• Plaintiff discovered in November, 2016 about promotion of Defendant’s restaurants.
• The unauthorized use of the name of the Plaintiff is causing actual confusion in the minds of the consumers. One such instance was when a user on Zomato was clearly misled into believing that the restaurant belonged to the Plaintiff. In fact, due to low quality of food and service, user had criticized the restaurant thus indirectly tarnishing the image of the Plaintiff.
• Even an innocent representation of one’s surname may lead persons to believe that goods/services belonged to another person.

Defendant’s Contentions:

• Defendant owns the concerned restaurants. The first restaurant under the name and style of ‘Blu Wavs by Gautam Gambhir’ was started in Rajouri Garden, New Delhi in 2014.
• In 2015 another restaurant under the name and style of ‘Play Reloaded by Gautam Gambhir’ was opened in Rajouri Garden.
• Two more restaurants under the name and style of ‘Ghungroo by Gautam Gambhir’ and ‘Hawalat by Gautam Gambhir’ were opened subsequently.
• Defendant had applied for the trademark for ‘Hawalat Lounge and Bar by Gautam Gambhir’ much prior to the issuance of legal notice by the Plaintiff.
• Defendant has also applied for the trademark ‘Ghungroo by Gautam Gambhir’.
• Defendant at no incidence in the past ever related himself with the Plaintiff.

The Hon’ble Court dismissed the suit.

Reasoning of the Hon’ble Court:

1. There is no material on record to infer that the Defendant ever represented to the public in any manner that the said restaurants were owned by the Plaintiff or he was associated with them in any manner.
2. The Defendant is running at present four restaurants which were opened at different stages. One restaurant was opened in 2014 and no steps, whatsoever, were taken by the Plaintiff that time to seek restraint order; the present suit was filed only in May, 2017.
3. Defendant is entitled to carry on ‘his’ business in ‘his’ ‘own’ name. The law is that no one is entitled to carry on his business in such a way as to represent that it is the business of another, or is in any way connected with the business of another. Of course, an individual is entitled to carry on his business in his ‘own’ name so long as he does not do anything more to cause confusion with the business of another and if he does so honestly/bonafide. In the instant case, the Plaintiff is not associated with the restaurant business.
4. Nothing has come on record if any time, the Plaintiff was invited for any inauguration or function of the restaurants in question.
5. Plaintiff has given only one instance of an individual who had some confusion with the said restaurants to be owned by the Plaintiff. No ‘disclaimer’ was ever issued by the Plaintiff to dispel the so called confusion in the public who recognized the Plaintiff only to be associated with Cricket.
6. The said restaurants are being run by the Defendant after getting necessary permission from the authorities.
7. When the logo ‘Hawalat Lounge and Bar by Gautam Gambhir’ was registered by the Trademarks Registry in Class 43, under No.3436616 on 20.12.2016 in respect of restaurant service, there was no objection before the Trademark Registry.
8. It is categorically claimed by the Defendant that inside or outside the restaurants, he had never displayed any picture/photo /poster of the Plaintiff to cause confusion in the public.
9. In all the webpages/online platforms and at all his displays otherwise, viz. stationery, wall pictures, merchandises, etc. the Defendant has very prominently put numerous of his ‘own’ pictures to associate his ‘own’ identity with his ‘own’ restaurant business.
10. Nothing has emerged on record if there was any loss to the goodwill of the Plaintiff in his field i.e. Cricket because of running of the restaurants by the Defendant with the tag line in his ‘own’ name.

Our Comments:

We disagree with the reasoning (Points 1 to 10 above) provided by the Hon’ble Court in the said decision. Our reasons for disagreement are as follows:

Point 1. The law does not require the Defendant to have malafide intentions. As long as there is likelihood of confusion, even innocent violation of goodwill is not allowed.[1]

Point 2. First, there is no imputation that the Plaintiff knew about those restaurants. Even if the Plaintiff did know, there is no positive act on part of the Plaintiff to encourage the Defendant to go ahead with opening multiple restaurants.[2] The Plaintiff on coming to know, issued legal notice and filed a suit.

Point 3. It is correct that everyone is entitled to do a business in their own name. However, not in a name which has the potential of causing confusion. The Learned Single Judge completely negates confusion. At the end, the Hon’ble Courts have to see larger public interest, which is to avoid customer confusion.

Point 4. Irrelevant. In our view a celebrity is not required to be in the same field as the infringer. This is for the reason that a celebrity’s personality rights extend to all goods and services and not restricted to its own field. The Hon’ble Court has applied the concept of similarity of goods to a personality rights dispute based on passing off. In such a case, passing off happens irrespective of the field of celebrity or the field of infringer.

Point 5.  Plaintiff need not show actual confusion. Likelihood of confusion is sufficient.[3]The Plaintiff need not put a disclaimer.

Point 6. Completely Irrelevant. The bodies that gave Defendant these permissions do not go into the fact of customer confusion and violation of personality rights but safety/hygiene etc.

Point 7. Plaintiff may have missed the bus. The suit is not for infringement but for passing off. Even if the Defendant has a registration, Plaintiff can succeed.[4]

Point 8. The Hon’ble Court fails to consider the doctrine of Initial Interest Confusion.[5] Further, name of a celebrity is enough to cause confusion.

Point 9. May be. However, you can decide for yourself after perusing the below image as to whether there is a likelihood of confusion.

 

Point 10. Loss of goodwill is not the test. Likelihood of damages is the test.[6] For remaining part, please refer Point 4. above.

An appeal was filed against the said decision. As per our knowledge, it was not pressed and thus was consequently dismissed.

[1] Laxmikant Patel v. Chetanbhat D. Shah; 2004 (28) PTC 1

[2] Wockhardt Limited v. Torrent Pharmaceuticals Ltd. and Ors.; 2018 (76) PTC 225 (SC)

[3] Supra note 1

[4] N.R. Dongre and Ors. vs. Whirlpool Corpn. and Anr.; 1996 PTC (16) 583 (SC)

[5] Baker Hughes Limited & Anr. vs Hiroo Khushalani & Anr. 74 (1998) DLT 715

[6] Supra note 1