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Adiga's Abhiruchi & Ors v. Adiga's Fast Food

Adiga's Abhiruchi & Ors
v.
Adiga's Fast Food

(High Court Of Karnataka)

Miscellaneous First Appeal No. 11075 Of 2006 (Cpc) | 28-08-2007


A.S. Bopanna, J:

1. The respondent herein is the plaintiff in O.S. No. 15261/2006. The plaintiff approached the Court below in the said suit seeking for a Judgment and decree of permanent injunction restraining the defendants and persons claiming under them from in any manner infringing the plaintiff's well established trade mark `ADIGA'S' or any other trade mark or trading style which would be deceptively similar to the plaintiff's trade mark/trading style using the offending trade name `ADIGA'S ABHIRUCHI' or any other deceptively similar trade name. Further ancillary reliefs with regard to passing off the said trade name is also prayed in the said suit. Along with the suit, the plaintiff also filed IA-I under Order 39 Rules 1 and 2 of CPC praying to restrain the defendants and persons claiming under them from infringing the trade mark `ADIGA'S' in respect of running vegetarian Hotel, restaurant and lodge.

2. The defendants on being notified of the suit have appeared and disputed the claim of the plaintiff made both in the plaint as well as in the application for temporary injunction and sought to justify their action of carrying on the business in the trade name as `N.K. ADIGAS ABHIRUCHI'. The Court below, after considering the rival contentions has allowed IA-I filed by the plaintiff by restraining the defendants in the manner prayed for by its order dated 13.9.2006. The defendants being aggrieved by the said order dated 13.9.2006 have impugned the same in this appeal.

3. The parties would be referred to in the same rank assigned to them in the Court below for the purpose of clarity.

4. The case of the plaintiff while filing the suit and also seeking the order of temporary injunction is that the plaintiff has been running its business as M/s. ADIGA'S FAST FOOD and has established the chain of Hotels in Bangalore under the trading name `ADIGA'S' which was commenced in the year 1993 and have also opened fast food joints by adapting the name ADIGA'S. Further it is the case of the plaintiff that they have obtained registration of the Hotel under various enactments and the application was also made for registration of the trade mark `ADIGAS' under the Trade Marks Act, 1999 (`the Act' for short) on 15.2.2001. The said trade mark has become distinctive to the concern of the plaintiff and the registration certificate is also issued under the Act on 23.9.2005. The said trade name ADIGA'S has become household name and the plaintiff has put in lot of effort to popularise the same. When this being the position, the defendants by adapting the same trading style ADIGAS by suffixing the word ABHIRUCHI for running vegetarian Hotel, restaurant and lodge have infringed the trade name and the said act of the defendants in only an attempt to give an impression to the general public that they are the branch/sister concern of the plaintiff establishment. It is therefore their case that the defendants have no manner of right, interest or authority to adapt the well established trading style of the plaintiff. In that background, the plaintiff is said to have issued a legal notice dated 28.1.2006 calling upon the defendants to refrain from using the said trade name.

5. As against the case putforth by the plaintiff the defendants have denied the allegations made by the plaintiff as baseless, frivolous and vexatious. The defendants have contended that they are not carrying on the lodging business. Even with regard to the allegations of infringement of the plaintiff's well established trade mark, the defendants have contended that the word `ADIGA' is a common community name in southern part of India particularly in coastal region of Karnataka carrying on the business of catering as family business. It is the further case of the defendants that Sri N.K. Adiga has specialised in catering business and therefore the term `Adiga' is generic in nature, synonymous with business of catering and the defendant has adapted his own name and has not infringed any existing trade name.

6. One other contention advanced by the defendants is that the trade name registered by the plaintiff itself is questionable and the same needs to be cancelled by the competent authority in view of Section 35 of the Act. Therefore, the suit itself is not maintainable. The defendants have therefore contended that the bona fide use of the name and style "N.K. ADIGAS ABHIRUCHI' cannot be prevented.

7. I have heard Sri J.S. Shetty, learned counsel appearing for the appellant who has advanced the very same contention taken by the defendants before the Court below and has further contended that the defendants have not infringed the trade mark. The mere use of the name belonging to a particular community cannot be said to be an infringement of the trade mark and since the said name belongs to a particular community engaged in catering business, any other person from the community cannot be prevented merely because one of them has secured registration of the same. As such the learned counsel contended that the very registration is questionable and in view of Section 35 of the Act, the defendants cannot be prevented. The learned counsel placed reliance on a decision of this Court in the case of Kirloskar Proprietary Ltd v. Kirloskar Dimensions Pvt Ltd (AIR 1997 KAR 1 : 1997 (17) PTC 507 (Kar)) to highlight this point. That apart, it is the contention of the learned counsel that even otherwise, the Court below though had considered the issue of a triable case, the Court has not bestowed its attention to two other aspects of the matter i.e., balance of convenience and irreparable loss. In this regard, the learned counsel placed reliance on a decision of this Court in the case of M/s. S.M.K.A. Enterprises V. M/s Suchita Industries (in MFA No. 4424/2002 decided on 31.7.2007).

8. On the other hand, Sri Harikrishna Holla, learned counsel appearing for the respondent would contend that the respondent is the proprietor of the trade mark `ADIGA'S' and even prior to the said registration, the plaintiff was carrying on the business with such a trade name from the year 1993 and the preparation of vegetarian food falls under the schedule to the Act and the plaintiff has got the registration under class 42 of the Act. The learned counsel would also refer to the other registration certificates under the different enactments to establish the fact that the business is being carried on from the year 1973 in the name ADIGA'S FAST FOOD and it is the said name ADIGA which has been thereafter registered under the provisions of the Act. Further the business is being carried on in the trade name ADIGA. The learned counsel would further contend that the defendants had announced the opening of their hotel in the name as ADIGA'S ABHIRUCHI and as such immediately the legal notice dated 28.1.2006 was issued to the defendants. It is only to take up a frivolous defence, the defendants have thereafter attempted to state that the business is being run in the name and style as N.K. ADIGA ABHIRUCHI to contend that N.K. stands for the name of the proprietor viz., Nithin K. Adiga. Apart from the fact that it is a frivolous defence, the same cannot be taken up by the defendants in view of the law laid down by the different High Courts that the business cannot be carried on by the person infringing by merely adding a prefix or suffix to the registered trade mark of another. In this regard, the learned counsel would place reliance on the following decisions:

(i) M/s. Rightway v. M/s Rightways Foot Wear And Another (1986 PTC 337)

(ii) Deepam Silk International v. Deepam Silks (1998 PTC 18)

(iii) Montari Overseas Ltd. v. Montari Industries Ltd (1996 PTC 16)

(iv) Kirloskar Diesel Recon. (P) Ltd. v. Kirloskar Proprietory Ltd. 1997 (17) PTC 507 (Kar)

(v) Mangalore R.K. Beedies v. Mohammed Hanif (ILR 1993 KAR 2393)

In addition to the same, learned counsel also placed reliance on the decisions in the cases of Dr. Reddy's Laboratories Ltd v. Reddy Pharmaceuticals Ltd. (2004 (29) PTC 435) and M/s Bajaj Electriclas Ltd. v. M/s Metals & Allied Products (1988 PTC 133) to repel the contention putforth by the defendants that the said name has been adapted since the defendants belonged to that community. Further with regard to the nature of consideration while granting the injunction in the matter relating to trade mark, the learned counsel would also place reliance on the decision in the case of M/s. S.M.K.A. Enterprises v. M/s Suchita Industries (MFA No. 4424/2007 decided on 31.7.2007).

9. In the light of the contentions advanced by the respective learned counsel what would emerge is that the plaintiff claims to be running hotels, restaurants and fast food outlets in the name of M/s. ADIGA'S FAST FOOD for more than a decade from the year 1993 onwards and have acquired vide reputation and good will in the field of vegetarian preparations and catering. The plaintiff had therefore made an application for registration of the trade mark ADIGA'S under the Act on 15.2.2001 and a certificate dated 23.9.2005 is also issued. On registration of the said trade mark ADIGA'S in respect of the classification in class 42 of the Schedule IV to the Act regarding providing food, drink and temporary accommodation. The class of the items provided in class 29 and 30 would also arise. When this was the position, the defendants started their business by adapting the very same trade name of the plaintiff and suffixed the word ABHIRUCHI to the same. The photographs produced in this regard would indicate that the defendants had put up a banner indicating that the outlet known as ADIGA'S ABHIRUCHI would open shortly. It is at that point the plaintiff got issued the notice dated 28.1.2006 calling upon the defendants not to infringe the trade name of the plaintiff. Thereafter the defendants appear to have started the business in the name as N.K. ADIGA ABHIRUCHI. As such the plaintiff has filed the suit for the relief of restraint against using of the trade name of the plaintiff.

10. Insofar as the first issue relating to the triable case which arose in the suit, the sequence of events noticed above and the fact that the trade name ADIGA'S is registered as a trade mark under the provisions of the Act and that the defendants have adapted the trade name N.K. ADIGA'S ABHIRUCHI would indicate that the trade mark of the plaintiff has been infringed by the defendants. Though the defendants have contended that their trade name is not similar to the trade name of the plaintiff inasmuch as the defendants have started the business in the name of N.K. ADIGA'S ABHIRUCHI, the said contention of the defendants cannot be accepted for the reason that in the decisions cited by the learned counsel for the plaintiff in the case of M/S RIGHT WAY, the High Court of Jammu and Kashmir has considered this aspect of the matter in detail wherein the plaintiff was carrying on the business as M/S RIGHT WAY FOOT WEAR, whereas the defendants attempted to carry on the business as NEW RIGHT WAY FOOT WEAR. The Court after considering this aspect was of the view that there was infringement and the defendant was prevented from using the same. Further this Court in the case of DEEPAM SILK INTERNATIONAL has also held that adapting the very same name or a similar trade name would amount to infringement and the balance of convenience was in favour of the plaintiff therein for grant of injunction. The High Court of Delhi in the case of MONTARI considering the adoption of first name as MONTARI would amount to infringement and further in the said case, considering that the balance of convenience was in favour of grant of injunction, had granted the injunction against the use of such name. In the decision of Mumbai High Court in the case of Kirloskar Diesel Recon. (P) Ltd., The Court Considering The Corporate Name Of Kirloskar Proprietary Limited was of the view that M/s Kirloskar Diesel required to be injuncted from using the same name. Further the Division Bench of this Court while considering the issue in the case of Mangalore R.K. Beedies had indicated that the defendant adapting the trade name as New Mangalore R.K. Beedies would infringe the trade name of the plaintiff therein since it was deceptively similar. Therefore the defendant was injuncted in the said proceedings.

11. Contrary to the same, the learned counsel for the appellant/defendant places reliance on a decision of this Court in the case of Kirloskar Proprietary Limited v. Kirloskar Dimensions Pvt. Ltd. (AIR 1997 KAR 1 : 1997 (17) PTC 507 (Kar)). As noticed earlier in fact the Bombay High Court had granted injunction in respect of the very same Kirloskar Proprietary Limited, but in the present case, this Court was of the view that the temporary injunction need not be granted. However, the distinguishing feature in refusing injunction has been that the plaintiff and the defendants were not engaged in the common field of activity and business of the defendants is altogether different from that of the business of the plaintiff. Further the defendant had already commenced their business much earlier to the issue which cropped up before this Court and as such considering the balance of convenience, the injunction had not been granted. In the instant case, the said decision cannot come to the aid of the defendant since the filed of activity and business is similar to one another inasmuch as both the plaintiff as well as the defendants are engaged in vegetarian Hotel, restaurant and catering business.

12. The next question that requires consideration is with regard to the contention putforth by the defendant that since the said business is a business of the community to which the defendant belong and since the community has the common as ADIGA, the same cannot be prevented more particularly in view of the provisions contained in Section 35 of the Act. At the outset, with regard to the common name being shared by the members of the community, the said issue came up for consideration in the case of D.R. REDDY and in the case of Bajaj Electricals Ltd. cited supra. In the first case, the Delhi High Court has held, the contention that such a name had been adapted since the name of the Managing Director of the defendant/company was Mr. Reddy cannot be accepted since the same would lead to confusion and deception and therefore the defendant was restrained from adapting the trade name REDDY. Further in the case of Bajaj Electricals also, the High Court of Bombay was of the view that the contention of the defendant that the Surname of the defendant being Bajaj, the defendant are entitled to use their own name is to be rejected. That being so, the contention of the defendant that the name ADIGA being the community name, the same could be used and therefore N.K. ADIGA has been used cannot be accepted since the same would infringe the trade mark of the plaintiff. Further with regard to the contention that Section 35 of the Act would not entitle the proprietor or a registered user of a registered trade name to interfere with any bona fide use by a person of his own name or that of his place or business would not come to the assistance of the defendant not only in view of the above stated decisions but the question in the present case would be as to whether the use of N.K. ADIGA ABHIRUCHI has been done in a bona fide manner. In this regard, the Photographs produced before the Court below would indicate that at the first instance the defendant had notified by displaying the banner as ADIGA'S ABHIRUCHI would be opening shortly. The said name is a direct infringement of the trade name of the plaintiff which is a registered one. It is only after legal notice was issued by the plaintiff, the defendant had changed the name as N.K. ADIGA ABHIRUCHI and that too N.K. has been displayed insignificantly, which would clearly indicate that it has been changed only to pre-empt and overcome the protest of the plaintiff. As such the plaintiff cannot take shelter under the said provision. Even otherwise the Act provides for rectification and correction of the register vide chapter VII of the Act and as such if the defendant is aggrieved by the registration of the trade mark by registering the name of the community, it would be open to the defendant to take recourse to the remedy contemplated therein and cannot make use of the provision for infringing a trade mark which is registered.

13. Having considered these aspects of the matter and having come to the conclusion that there is a triable issue and a prima facie case has been made out by the plaintiff with regard to infringement of the trade mark of the plaintiff the next question that would arise is as to whether in the present facts and circumstances of the case, the tripod test should be followed by the Court below before granting the injunction. It is in this regard both the learned counsel have relied upon the decision of this Court in the case of M/s. M.K.A. Enterprises v. M/s Suchita Industries (MFA 4424/07) to contend that from the view point of the plaintiff nothing more is required to be considered and from the view point of the defendant that other two issues relating to balance of convenience and irreparable loss also would have to be considered by the Court below which has not been done in the present case. A careful perusal of the cited order passed by this Court has provided instances wherein the said test is required to be followed and in cases where it is not required. This Court had come to the conclusion that when the case putforth by the plaintiff is of infringement of a deceptively similar trade mark keeping in view the success rate of the plaintiff, the other questions also require consideration. While adverting on the matter further this Court had taken certain instances with regard to the nature in which such consideration is required and after considering the decision of the Hon'ble Supreme Court in the case of Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia ((2004) 3 SCC 90) in the Laxman Rekha and Magic Laxman Rekha had come to the conclusion that insofar as certain services provided if the trade name infringes another trade name even with a prefix or a suffix, the same would amount to infringement and no other consideration is required since the protection provided under the Act by way of injunction in rem would only get formalised by way of injunction in personum. It is with regard to certain packaging products this Court was of the view that a further consideration may be necessary in the facts of each case if the original name and deceptively similar name appear phonetically or visually similar. If this decision is kept in view to consider the present facts and circumstances of the case, both the plaintiff as well as the defendants are in the business of catering and preparing vegetarian food articles and as such if the defendant runs such another outlet indicating the very same name of the plaintiff merely by prefixing or suffixing certain other name which is similar to the trade mark of the plaintiff, the question of balance of convenience and irreparable loss would not arise since a common customer would believe that the same is a sister concern or another outlet of the original outlet viz., one being run by the plaintiff.

14. In any event, in a matter of this nature, it would ultimately be difficult to assess the damage that may be suffered by the plaintiff since if at all the defendant adapting the similar trade name as that of the plaintiff does not provide tasty and proper service of food articles, the same would also affect the business of the plaintiff wherever they are carrying on since the same would spread by word of mouth and such a loss cannot be quantified. Further on the other hand if the defendant makes a profit by taking advantage of the name of the plaintiff, that portion of the gain made by the defendant cannot be assessed in a case of this nature. While considering this aspect and if the convenience of the defendant is also looked into, in a business of this nature where food articles are prepared and supplied, since the defendants have started the outlet only in the year 2006 preventing the defendant from using the name does not mean stopping of their business, but only forcing them to change the name of the outlet which would mean that they would be entitled to continue with the very same business. But with a different name which would not infringe the plaintiff's name. Their success or otherwise in the business would depend on the quality of the food stuff they would provide and the same need not depend on the name they have adapted for their business. Even from this angle, there would be no inconvenience or loss that would be caused to the defendants and as such the said aspects do not require a detailed consideration in the nature which is made while grant of temporary injunction in a normal circumstances.

15. In this background, a perusal of the order passed by the Court below on 13.9.2006 impugned in this appeal would indicate that the Court below has referred to the contentions putforth by both the parties and considering that the trade mark has been infringed has proceeded to grant the order of injunction as prayed for. That being so the said order is neither capricious nor perverse so as to call for interference in an appeal of limited jurisdiction under Order 43 Rule 1 of CPC.

Accordingly, the appeal is devoid of merit and the same is rejected. Parties to bear their own costs.

Advocates List

For The Appellants Shri J.S. Shetty, Advocate. For The Respondent Shri Harikrishna S. Holla, Advocate.

For Petitioner
  • Shekhar Naphade
  • Mahesh Agrawal
  • Tarun Dua
For Respondent
  • S. Vani
  • B. Sunita Rao
  • Sushil Kumar Pathak

Bench List

HON'BLE MR. JUSTICE A.S. BOPANNA

Eq Citation

2007 (35) PTC 548 (KAR)