Jagdish Gopal Kamath and Ors. v. Lime & Chilli Hospitality Services
Jagdish Gopal Kamath and Ors. v. Lime & Chilli Hospitality Services
IN THE HIGH COURT OF BOMBAY
Notice of motion no. 2586 of 2012 in Suit no. 2549 of 2012
Decided On: 11.03.2015
Facts:
• Plaintiffs claimed to be the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42. Plaintiffs had used the said mark openly, continuously and extensively since 1951 for restaurants serving South Indian cuisine in Mumbai.
• Defendant adopted the identical mark for identical services and was using the same in Jalgaon.
• In 2012, the Plaintiff came to know of the use of the mark ‘Café Madras’ by the Defendant.
• On 21st June 2012, the Plaintiffs’ Advocates sent a cease-and-desist notice to the Defendant.
• On 10th July 2012, the Defendant applied for registration of the mark Café Madras.
• On 16th July 2012, the Plaintiffs sent a further cease-and-desist notice to the Defendant,
• Till 25th September 2012, both sides were communicating through their counsels.
• Plaintiff became aware in September 2012 that the Defendant had opened a second restaurant named Café Madras in Nashik.
• Plaintiff filed a suit for infringement of trade mark and passing off against the Defendant in the High Court of Bombay in December 2012
Plaintiffs’ Case:
• Defendant has copied the registered marks body and soul. The essential feature of the two competing marks is the expression ‘Café Madras’.
• Defendant’s adoption is fraudulent and dishonest and it is used in relation to eateries serving South Indian cuisine.
Defendant’s Case:
• ‘Café Madras’ is incapable of registration. Neither ‘Cafe’ nor ‘Madras’ are registrable; and the combination is not registrable either. Taken together, the two words are therefore a purely descriptive and not a distinctive expression; and given the spread of use, it is a generic term for a restaurant or eating house that serves South Indian cuisine. There is no case made out of infringement, because there is nothing to infringe.
• There are several other establishments across India with the same name.
• Plaintiffs’ registration is of a device.
• No case of passing off because the three-fold or ‘Trinity’ test is not satisfied: there is no representation, let alone a misrepresentation, by the Defendant.
• Plaintiffs’ reputation and goodwill, if any, are geographically and territorially limited to Mumbai.
• The Defendant has applied for registration of a composite mark comprising the word ‘Madras Cafe’. Therefore, the law of estoppel that the Defendant has applied for the same mark and hence cannot call Plaintiffs’ mark as generic or common to trade will not exist in the present case.
Court’s Observations:
On Plaintiffs’ registration
Plaintiffs’ registrations were subject to a solitary condition and limitation: no exclusivity was conferred for the use of the word ‘Madras’
On similarity of marks and infringement/Plaintiffs’ registration is of a device
It is true that the Plaintiffs’ registration is subject to a condition or limitation vis-a-vis the word ‘Madras’. Yet that would make as good as no difference, for one must look at the mark in its entirety.
We must, of necessity, consider what is the essential, prominent and leading feature of that mark, by whatever name called (label, device, composite, word). Even if the Defendant’s case is to be accepted, there is nothing essential or prominent in that so-called device other than the words ‘Café Madras’. This is what is protected. It is no answer at all for the Defendant to say that it has used those very words but in some other stylization and, consequently, that there is no infringement. There is simply no basis for this in trade mark law; indeed, it defeats the statutory purpose and intent, for it would then be open hunting season on every single such registration: every infringer could then claim a different ‘style’ or ‘font’ or placement and thus dilute a mark duly registered, and which registration remains unchallenged.
On Expression ‘Café Madras’ being common to trade
I do not see how the Defendant can possibly take any such position. Of necessity, it means that none can lay any claim to exclusivity in this mark. But the Defendant has itself applied for the registration of a device mark with the expression ‘Café Madras’ as its leading, prominent and essential feature. Is it at all possible for the Defendant to say that the Plaintiffs’ mark is ‘common to the trade’ and simultaneously apply for registration, implicit in which is the contention that it is not common to the trade and capable of exclusivity?
Applications for registration are not idle formalities. Every application for registration has consequences. It carries with it the expectation of being granted exclusivity and a monopoly. It implies that the applicant believes the mark to be exclusive and capable of registration, that it is not generic, descriptive or common to the trade.
Every application for registration therefore posits an acceptance of distinctiveness.
The distinction that Defendant draws is that the Defendant’s application is for a device mark, and, for that reason, no estoppel attaches. But here again the Defendant’s argument is self-defeating.
One must see what it is that constitutes the singular distinguishing feature of such a device. The answer to that is, and can only be, the expression ‘Café Madras’. Now if the Defendant’s application too features precisely this as its leading feature, then it is no argument at all to say that there is some additional feature
On the defence that the mark is being used by various third parties
The law in this regard is well established. To succeed, the Defendant must establish that the marks on which it relies are many and that they are in extensive use and that they have, by reason of that wide usage, passed into the realm of the generic to the extent that they can no longer be said to describe any particular purveyor or user. It is not enough to merely show some use; the Defendant, on whom this burden lies, must show use by the trade that is extensive.
The list that the Defendant adduces is poor evidence indeed. It is a litany of names and website addresses derived from a casual saunter through an Internet-based search. There is no statement that this information has been in any way verified, or even attempted to be verified. This is a sort of ‘lazy sweep’, a trawling for data without assessment as to accuracy or validity. This is not what the law expects or demands.
Interestingly, the Defendant does not say whether it ever caused any search to be taken at all. On the contrary, it appears that the examination report of the impugned mark cited the Plaintiffs’ registrations. It is impossible to accept the proposition, therefore, that the Defendant’s adoption of the impugned mark was honest or bona fide. The auguries of innocence — a market survey, a search in thetrade mark Register — are all missing.
On Passing Off
How might we test the Plaintiffs’ case in passing off? To succeed, the Plaintiffs must show that the Defendant is attempting to masquerade its services as those of the Plaintiffs. Now if the mark a defendant chooses to adopt so nearly resembles in its essentials the mark that the plaintiff can show they have used for a length of time, then confusion, deception and the likelihood of each are inevitable, and the plaintiff must succeed. In this case, there is not only such a similarity. Actual confusion is demonstrated.
On Plaintiffs’ goodwill extending beyond Mumbai
It is worth recalling some of the material cited by the Plaintiffs in support of their claim to having acquired a considerable reputation and much goodwill. There are, as we have seen, write ups in several popular magazines of a wide public circulation. These are not merely guides to eateries in the city, though there are those too. There are in addition write ups extolling the quality of the food and the service at the Kamaths’ Café Madras eatery in Matunga. There are awards. There are laudatory comments on television and in the media. There is at least one international encomium, and it comes from an internationally renowned and highly regarded master chef, Mr. Gordon Ramsay. This is a tribute not in the context of western cuisine but a decidedly uncompromising local cuisine that claims to have remained true to its roots.
Given the material, it is not, I think, possible to accept that the Kamath’s Café Madras eatery has a very limited and localised reputation, one that does not travel beyond the narrow frontiers of its immediate vicinity; at best, the city itself.
We also have to see how a reputation is built and affected with the advent of new modes of communication, specifically the Internet, and the impact of globalisation. In the written brief, Defendant cites several authorities in support of the proposition that a business’s goodwill is generally confined to its market, i.e., that goodwill has a geographical limitation. These are Star Industrial Co. Ltd. v. Yap Kwee Kor[1976] FSR 256; Athlete Foot Marketing Association Inc v. Cobra Sports Ltd. [1980] PRC 343; IRC v. Muller & Co.’s Margarine Ltd. [1901] A.C. 217; Baskin-Robbins Ice Cream Co. v. Gutman [1976] FSR 545; and Panhard et Levassor v. Panhard Levassor Motor Co. Ltd. [1901] 2 Ch 513.
All these decisions are of some historicity: the earliest of 1901, the most recent of 1980; every single one of them before the advent of the Internet and the game-changing systemic shifts it has wrought in the way the world does business; indeed, in the way the world sees itself.
In earlier times, such a spread of information and knowledge would have been difficult to achieve and perhaps restricted only to the most posh and upper-end eateries. This is 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 environs of any particular establishment but makes it available today even on cell phones and handheld devices. There are any number of such sites internationally, and some exclusively for Indian hotels and restaurants. The most popular of these are, possibly, Zomato.com and Burrp.com, among others. That these are used by almost everyone is self-evident. If further proof is needed, it is in this very record, and it is provided by the Defendant itself. For, in its listing of the so-called other eateries with the same name (Exhibit “C” to the Defendant’s Affidavit in Reply dated 7th August 2014) 44 of the 51 items are cross-linked by their website addresses to entries and locations at zomato. The others are similar search engines (yellowpages.co.in, plus.google.com, mojostreet.com, timescity.com). Indeed, all the entries save one in this list are cross-referenced to some search engine, the only exception being that of a restaurant in a starred category hotel chain (ITC Hotels’ Grand Chola, Chennai); and even that is referenced to a website. All of these are publicly accessible without geographical limitation. If this is so, then there can be no question that the Plaintiffs’ reputation is not locally confined, contrary to what Defendant suggests.
On the defence that ‘Café Madras’ is generic and both ‘Cafe’ and ‘Madras’ are incapable of registration
Plaintiffs use the mark ‘Café Madras’ — those two words taken together — for half a century or more. The expression has come to define them, and it defines them with some degree of exactitude.
A man may 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. He uses this year on year for several decades. He comes to be known by that expression, locally and perhaps even wider a field. Is he to be told by an imitator that all those years count for nothing? That a reputation carefully nurtured and built up is nothing more than dust? That a registration obtained and as yet unchallenged is merely a whisper in the wind? I do not believe that is either the intent or the purpose of this branch of the law.
Injunction was granted in favour of the Plaintiff.
