The common law right of passing off is superior to statutory rights of registration, and prior user rights prevail in trademark disputes, especially when prior representations to the trademark registry are inconsistent.

JUDGMENT :

1. Appellant and Respondent have locked horns over use of the tradename ‘Anna’ for operating their respective eateries serving south Indian delicacies. The word ‘Anna’ may otherwise sound to be generic, used in many parts of the country, especially in the southern states, to address an elder brother or a person in position of brotherly affection or someone older. However, since the word ‘Anna’ is largely associated with southern India, there appears to be growing tendency to name eateries serving idli, dosas and other south Indian delicacies with the word ‘Anna’. This appears to be the reason why Plaintiff and Defendant claim exclusivity in the name ‘Anna’ by registering their respective trademarks. Plaintiff owns registered trademarks ‘ANNA IDLI GRUHA’, whereas Defendant is the owner of registered trademark . Appellant/Plaintiff, an admitted prior user, seeks restraint order against Respondent/Defendant from using the mark for operating his restaurant in Pune, contending that use of the Mark amounts not only to infringement of Plaintiff’s trademarks, but also passing off.

THE CHALLENGE

2. The Appeal is filed challenging the Order dated 30 January 2022 passed by the District Judge-4, Pune rejecting the application at Exhibit-5 filed for grant of temporary injunction in the suit instituted by the Appellant-Plaintiff. In the application at Exhibit-5, Appellant-Plaintiff sought to temporarily restrain the Defendant from interfering, marketing, advertising and selling products or services under the trademark “Anna” identical, phonetically confusing or deceptively similar to Plaintiff’s registered trademark ‘Anna Idli’ and to further restrain the Defendant from infringing Plaintiff’s trademark or passing off products and service under Plaintiff’s trademark.

FACTS

3. Facts of the case, as captured from pleadings filed by the parties before the Trial Court, are that Plaintiff is a proprietary concern engaged inter alia in the business of providing services relating to manufacturing, marketing and serving of food products under the mark ‘ANNA IDLI GRUHA’, etc. He claims use of the trademark/device mark of since 20 September 2011 under which mark, he has been manufacturing, marketing and serving various types of Idlis, Dosas and other South-Indian food products. Plaintiff filed applications for registration of trademarks/device marks of ‘Anna Idli Gruha’ and ‘Anna Idli’ under the provisions of the Trademarks Act, 1999 and that the Trademarks Registry has issued Certificates for trademark/device mark of ‘ANNA IDLI GRUHA’, in Plaintiff’s favour and this is how Plaintiff claims to be the registered proprietor of those trademarks/device marks.

4. It is Plaintiff’s case that in pursuance of the business activities of manufacturing, marketing and serving various types of idlis, dosas and other south Indian products under the trademarks ‘‘ANNA IDLI GRUHA’, , he has established a wide setup and network in the country and as of now, he has set up outlets of ‘Anna Idli’ in various cities like Bijapur, Solapur, Pune, Nagpur etc. Plaintiff has relied upon in the plaint, sales figure of business using the trademark since the year 2011-12 till the date of filing of the suit.

5. Plaintiff noticed that the Defendant was intending to start his business concern under the mark which according to the Plaintiff, is identical and visually, structurally and deceptively similar to Plaintiff’s registered trademark/device mark of . Plaintiff noticed a banner of the Defendant under the caption “Coming Soon” and noticed that the Defendant was planning to commence the same business as that of the Plaintiff by using the mark. With this cause of action, which allegedly arose on 29 September 2022, Plaintiff has instituted Regular Civil Suit (Trade Mark) No. 14 of 2022 before the District Court, Pune on/or about 1 October 2022 seeking to restrain the Defe