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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
G.S.Patel, J.
Jagdish Gopal Kamath & Ors.- Plaintiffs
versus
Lime & Chilli Hospitality Services - Defendants
NOTICE OF MOTION NO. 2586 OF 2012, IN SUIT NO. 2549 OF 2012
Decided On : 11th March 2015
Plaintiffs, the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42, used these marks openly, continuously, and extensively since 1951, generating considerable goodwill and a high reputation. Defendant copied the registered marks and used them in relation to eateries serving South Indian cuisine in Jalgaon and Nashik. Plaintiffs filed an infringement and passing off suit. Defendant claimed that ‘Café Madras’ is incapable of registration; its use is not in Classes 16 or 42; there are several other establishments across India with the same name; Plaintiffs’ claim of goodwill is not borne out by its sales; this goodwill is geographically limited and Defendant’s use cannot cause confusion; and Plaintiffs cannot enforce their rights in view of Sections 18 and 28 of the Trade Marks Act, 1999. The Court held that the Defendant’s adoption of the mark is not bona fide. Plaintiffs’ reputation and goodwill are not geographically and territorially limited in the manner the Defendant suggests. Defendant’s mark is deceptively and confusingly similar to that of the Plaintiffs. Plaintiffs have established not just the possibility or likelihood of confusion or deception on their cause of action in passing off, but actual confusion and deception. The Court granted an injunction in favor of the Plaintiffs.
Fact of the Case:
Plaintiffs, the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42, used these marks openly, continuously, and extensively since 1951, generating considerable goodwill and a high reputation. Defendant copied the registered marks and used them in relation to eateries serving South Indian cuisine in Jalgaon and Nashik. Plaintiffs filed an infringement and passing off suit.
Finding of the Court:
The Court held that the Defendant’s adoption of the mark is not bona fide. Plaintiffs’ reputation and goodwill are not geographically and territorially limited in the manner the Defendant suggests. Defendant’s mark is deceptively and confusingly similar to that of the Plaintiffs. Plaintiffs have established not just the possibility or likelihood of confusion or deception on their cause of action in passing off, but actual confusion and deception.
Issues: Whether the Defendant’s adoption of the mark is bona fide or not, and (b) if not, whether that adoption is likely to prejudice or has actually prejudiced the Plaintiffs by dilution of the Plaintiffs’ mark or damage to the Plaintiffs’ reputation and goodwill, or both.
Ratio Decidendi: The essential feature of the two competing marks is the expression ‘Café Madras’. These are structurally, visually, and phonetically identical; the differences, if any, are trivial and irrelevant. The essential and prominent feature, the one that lingers in memory, is the expression or term ‘Café Madras’.
Final Decision: The Court granted an injunction in favor of the Plaintiffs.
INDEX
A. OVERVIEW.............................................................................................................3
B. FACTS......................................................................................................................6
C. ISSUES, SUBMISSIONS & FINDINGS.................................................................9
C1. Infringement...........................................................................................................10
C2. Passing Off.............................................................................................................33
D. THE DEFENDANT’S WRITTEN ARGUMENTS................................................43
E. DELAY AND BALANCE OF CONVENIENCE...................................................46
F. FINAL ORDER AND CONCLUSION...................................................................49
A. OVERVIEW
1. In a narrow lane, one of three that branches off to the east from the roundabout at Maheshwari Udyan in Mumbai’s central area of Matunga, there stands an unassuming eatery. A few steps lead into it. The space is not large: a few tables at the entry level with the proprietor at a high seat at the counter to the right of the entrance. Opposite the entrance is the kitchen with its serving hatches. A steep staircase to the left leads to a low-ceilinged mezzanine floor. Here, the space is even more cramped. On both levels, patrons share tables: large groups or families may spread across several tables and a solitary diner may find himself rubbing elbows with a complete stranger. This is Café Madras, the South Indian — or, more accurately, Udipi cuisine — specialty sit-down restaurant owned and managed by the Plaintiffs (“the Kamaths”), and it is both popular and renowned. Over time, it has acquired, say the Kamaths, a reputation non-pareil: the Kamaths pride themselves on the quality of their fare, traditional and authentic they say in every aspect, and the cleanliness of their kitchen. It is by no means a five-star establishment, and has no such pretensions. There is no fancy dinnerware (everyone has clean stainless steel) or table linen (paper napkins must do), but the service is quick and the food arrives fresh and there are long lines at its door every morning. The restaurant caters to all, from the well-heeled and wealthy to the decidedly middle class, with undifferentiated courtesy and efficiency. To be sure there are many other similar eating houses in the vicinity and elsewhere in Mumbai, but theirs, the Kamaths claim, stands apart. It is, they say, iconic.
2. The Kamaths claim to be the registered proprietors of the marks ‘Café Madras’ since 2005 in Classes 16 and 42. These registrations are valid and subsisting, without any application for rectification. The Kamaths have used these marks openly, continuously and extensively since 1951, generating considerable goodwill and a high reputation.
3. The Defendant, the Kamaths say, has copied the registered marks body and soul. The Defendant’s adoption is fraudulent and dishonest and it is used in relation to eateries serving South Indian cuisine though at locations in Jalgaon and Nashik. Importantly, there was a horrific incident at one of those locations, one that caused demonstrable damage to the reputation and the goodwill of the Kamaths’ marks.
4. The Defendant claims, in its various affidavits, that ‘Café Madras’ is incapable of registration; that the Defendant’s use is not in Classes 16 or 42; that there are several other establishments across India with the same name; that the Plaintiffs’ claim of goodwill is not borne out by its sales; that this goodwill is, in any case, geographically limited and the Defendant’s use in places several hundred kilometres away can have no possible diluting effect on and can cause no possible confusion with the Plaintiffs’ use of the expression; and that the Plaintiffs cannot enforce their rights in view of Sections 18 and 28 of the Trade Marks Act, 1999. The
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