The judgment established the importance of trans-border reputation, prior adoption and use of a mark, and the connection between businesses in trademark infringement cases.

SANJAY KISHAN KAUL, J.

1. The claim of the respondent-plaintiff to a trans-border reputation in the mark BUDDHA-BAR for music albums and the allegation of an infringement thereof by the appellants/defendants gave rise to legal proceedings inter-se the parties.

2. The respondent-plaintiff filed a civil suit on the Original Side of this Court. An interlocutory application for injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (the said Code for short) was filed along with the plaint. The respondent-plaintiff was granted an ad interim ex parte injunction and thus the appellants-defendants moved an application under Order 39 Rule 4 of the said Code for vacation of the interim injunction. The learned Single Judge in terms of the impugned order dated 11.03.2004 has confirmed the interim injunction.

.3. It is the case of the respondent-plaintiff that the trademark BUDDHA-BAR was first adopted and used in the year 1996 as the name of a restaurant in Paris by the respondents affiliate company George V Restauration. The name is stated to have acquired immense reputation. The music albums played at the restaurant by the well-known Disco Jockeys were compiled into CDs as they became extremely popular. These CDs were sold under the name BUDDHA-BAR from the year 1999 onwards by the respondent-plaintiff. It is thus the plea of the respondent- plaintiff that the mark BUDDHA-BAR is connected with the respondent-plaintiff inasmuch as its affiliate ran the restaurant business under the said trademark while the respondent-plaintiff on its own has been using the said mark in relation to music albums after three years. It is also the case of the respondent-plaintiff that this trademark has been registered by the respondent- plaintiff in many countries such as the European Community, USA, Canada, Japan, New Zealand, France, Hong Kong etc. in Classes 9 and 41 and that the reputation generated by the respondent-plaintiff has spread across the world and has spilled over to India prior to the adoption of the mark BUDDHA-BAR by the appellants-defendants in February, 2002. The respondent-plaintiff pleaded that the adoption of the mark BUDDHA-BAR by the appellants-defendants is dishonest. The mark BUDDHA-BAR has been constituted by a unique combination of two words which would otherwise have no correlation with each other and the adoption of an identical mark in relation to identical goods being music albums without any explanation by the appellants-defendants as to why and how they came to have adopted the mark BUUDHA-BAR itself shows the dishonest intent on the part of the appellants-defendants. The plea raised is that the only object was to play on the goodwill of the mark of the respondent-plaintiff.

4. The respondent-plaintiff has filed material in the form of paper cuttings of magazines and other publications to establish that not only is the mark BUDDHA- BAR well known all over the world, but it has been so known even in India through circulation of its material. The appellants-defendants have relied upon a single advertisement dated 14.02.2002 to demonstrate their adoption of this mark prior to the respondent-plaintiffs adoption of the mark. It has been stated that there has been blatant copying of the artistic features of the inlay card of the music album BUDDHA-BEATS of the respondent-plaintiff released in 2001 by the appellants-defendants when the release was under a licence of the respondent-plaintiff.

.5. The impugned Order shows that the following defence raised by the appellants- defendants has been considered: i)The respondent-plaintiff has failed to establish proprietary rights in the mark BUDDHA-BAR as the restaurant business was owned by its affiliate company which is not a party in the suit; ii) The respondent-plaintiff failed to prove the user for the year 1999-2000 since such user is of Claude Challe of ChallO Music; iii)The respondent-plaintiff had failed to establish user rights in India and the first i

Click Here to Read the rest of this document