The judgment established that the registration of a composite mark confers exclusivity to the proprietor of the mark as a whole, and not to its individual components, and considered the likelihood of confusion and association between the marks in the context of passing off.

1. This is a motion for injunction and other reliefs in an action for trade mark infringement and passing off. The Plaintiff first obtained an order on 15th September 2014, after notice. That order has not been disturbed in Appeal. However, what has happened since the time of that order is most curious. The Defendants’ subsequent conduct does not provide any answer to the Plaintiff’s case either as first brought or as it now stands after an amendment.

2. The Plaintiff is the registered proprietor of a trade mark ‘CARTER’S BLUE’ in Class 43 (as of 16th June 2011) and Class (as of 18th May 2013). The Plaintiff’s case is that he began running a restaurant under this mark as a sole proprietor from premises that he took from their owner, the original 1st Defendant. There is no dispute about this. These premises are at Carter Road, Bandra, near Amrut Building. This is now an area popular, especially among the city’s youth, for its many restaurants, pubs, bars and night spots.

3. The Plaintiff and the original 1st Defendant entered into a Conducting Agreement dated 1st April 2008. It is this Conducting Agreement that forms the principle, and perhaps only, defence even now. For this reason alone, it is necessary to read the relevant portions of this Agreement as emphasised by Mr. Naphade for the Defendants. A copy of the Agreement is annexed to the Plaint, Plaint, Exhibit “G”, pp. 98–102.

4. Recital 3 of the Conducting Agreement reads: AND WHEREAS the Owner at the request of the Conductor has agreed to grant to the Conductor the permission to occupy the said premises for residence and snacks/eating house business in the name of Carter Blues, subject to the terms and conditions hereinafter mentioned.

Clauses 3 and 4 read:

(3) That the Conductor has paid to the Owner a sum of Rs.50,000/- (RUPEES FIFTY THOUSAND ONLY) as and by way of interest free security for due observance and performance of the terms of this agreement, a receipt whereof the Owner hereby admits and acknowledges at the foot hereof.

(4) The Conductor while in use and occupation of the premises shall pay to the Owner a sum of Rs.3,000/- (RUPEES THREE THOUSAND ONLY) per month as and by way of monthly compensation and the same shall be payable before 10th day of every month. The Conductor shall also pay electricity charges of the electric meter installed in the said premises.

5. Mr. Naphade’s case, as I understand it, is that since the third recital refers to ‘Carter’s Blue’, and since this is a “Conducting Agreement”, it therefore necessarily follows from this alone, without requiring that anything further be shown, that the business of the “eating house” in the name of ‘Carter’s Blue’ was the 1st Defendant’s; it could never have been the Plaintiff’s. The Plaintiff very seriously disputes this, and he has done so from the very beginning.

6. Let us test the Defendants’ argument. If what Mr. Naphade says is correct, then the 1st Defendant must have had with him the necessary municipal and other licenses such as an eating house license, a shops and establishment license, and so on of a date prior to that of the Conducting Agreement, i.e., 1st April 2008. It is also not unreasonable to expect that the 1st Defendant would also be able to show accounts of a business that he carried on in that name, i.e., as ‘Carter’s Blue’. In complete fairness, Mr. Naphade admits that the Defendants do not have any such material, and they have never had any of it.

7. Mr. Naphade says that the 1st Defendant applied for a license and this should be sufficient. It is not; in itself this does not help him. But once I find that that application was made only in 2009 (well after the date of the agreement), then it actually very seriously damages this defence. The reason is simple, and suggests itself. If the 1st Defendant claimed to have a business in the name of ‘Carter’s Blue’ before 1st April 2008, it is unclear how he could have applied for a license to run that business only in 2009.

8. The Plai