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2019 Supreme(Del) 2496
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATEEK JALAN, J.
Arun Chopra – Appellant
Versus
Kaka-Ka Dhaba Pvt Ltd & Ors - Defendants
CS(COMM) 728 of 2018
Decided on : 18-11-2019
For the Appellant :Ms.Shobhana Takiar, Advocate
For the Respondent:Mr.Hiren Kamod & Mr.Rahul Vidhani, Advocates
The main legal point established in the judgment is that the plea of invalidity of a registered trademark must be prima facie tenable for the court to raise an issue regarding the same and adjourn the case for rectification proceedings.
Headnote:
Trade Marks Act - Stay of Proceedings - Section 124 - Summary of Acts and Sections: Sections 30 and 124 of the Trade Marks Act, 1999 - The court discussed the relevant provisions of Sections 30 and 124 of the Act, as well as the interpretation of these provisions as laid down in the judgment of Patel Field Marshal Agencies and Ors. vs. P.M. Diesels Ltd. and Ors. (2018) 2 SCC 112, followed by this Court in Abbott Healthcare Pvt. Ltd. vs. Raj Kumar Prasad and Ors. 249 (2018) DLT 220. The court also considered the decision of this Court in Abbott Healthcare (supra) and the order of a Coordinate Bench in Apex Shoe Company Pvt. Ltd. vs. Baldev Singh [CRP No. 80/2019, decided on 22.08.2019].
Fact of the Case:
The plaintiff filed a suit alleging infringement of his registered trademark 'K-D-H KAKE-DA-HOTEL' by the defendants' use of the marks 'KAKA-KA DHABA', 'KAKA-KA HOTEL', 'KAKA-KA RESTAURANT' and 'KAKA-KA GARDEN'. The defendants claimed use of the mark since 15.05.2006, although on their website it has been stated that the mark is being used since 1982. The plaintiff sought stay of proceedings in the suit under Section 124 of the Trade Marks Act, 1999, as he had applied for cancellation of the registration of the defendants' mark before the Intellectual Property Appellate Board (IPAB) and therefore sought stay of proceedings in the suit under Section 124 of the Act.
Finding of the Court:
The court found that the plaintiff's plea of invalidity of the defendants' mark was prima facie tenable based on the phonetic and structural similarity between the registered mark of the plaintiff and the words 'KAKA-KA' which form the principal part of the mark registered by defendant no.1. The court raised an additional issue as to the validity of the defendant's mark and stayed the suit pending adjudication of the rectification application by the IPAB.
Issues: The issues included whether the registration of the mark 'IMAGE' under application number 1451242 in favour of the defendant no.1 is invalid and liable to be rectified.
Ratio Decidendi: The court's decision was influenced by the relevant provisions of Sections 30 and 124 of the Trade Marks Act, 1999, as well as the interpretation of these provisions as laid down in the judgment of Patel Field Marshal Agencies and Ors. vs. P.M. Diesels Ltd. and Ors. (2018) 2 SCC 112, followed by this Court in Abbott Healthcare Pvt. Ltd. vs. Raj Kumar Prasad and Ors. 249 (2018) DLT 220. The court also considered the decision of this Court in Abbott Healthcare (supra) and the order of a Coordinate Bench in Apex Shoe Company Pvt. Ltd. vs. Baldev Singh [CRP No. 80/2019, decided on 22.08.2019].
Final Decision: The application was allowed and the suit was stayed until disposal of the rectification application filed by the plaintiff before the IPAB.
JUDGMENT :
I.A. 15056/2016 in CS (COMM) 728/2018
1. This is an application by the plaintiff for stay of the proceedings in the present suit under Section 124 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”).
Facts
2. The plaintiff has filed the present suit on 06.03.2014 alleging infringement of his registered trademark “K-D-H KAKE-DA-HOTEL” by the defendants’ use of the mark “KAKA-KA DHABA”, “KAKA-KA HOTEL”, “KAKA-KA RESTAURANT” AND “KAKA-KA GARDEN”. His contention is that he is running a restaurant under the trademark “K-D-H KAKE-DA-HOTEL”, the mark having been adopted by his late father in 1931 in respect of a restaurant in Lahore. The registration of the mark was first granted in favour of his father on 14.12.1950. The case of the plaintiff is that he came across the defendants’ application for registration of the label mark “IMAGE” in February 2014 and thereafter discovered that the defendants are trading under the names “KAKA-KA DHABA”, “KAKA-KA HOTEL”, “KAKA-KA RESTAURANT” AND “KAKA-KA GARDEN”. The trademark application revealed that the defendants claimed use of the mark since 15.05.2006, although on their website it has been stated that the mark is being used since 1982.
3. The defendants filed a written statement dated 13.05.2014, in which one of the defences taken is that the defendant no.1 has a registered trademark “IMAGE” which was registered on 15.05.2006. The defendant no.1 claims to have used the mark since 14.08.1997. It is stated in the written statement that although defendant no.1 was incorporated in 1997, and its claim of user of the mark could not pre-date its incorporation, the mark was used since 1980s for a food cart and since 1993 for a restaurant. The defendants have therefore inter alia invoked the exemption provided in Section 30(2)(e) of the Act.
4. The replication filed by the plaintiff in July, 2014 controverted the defendants’ contention that there is no similarity between the plaintiff’s registered marks and the marks used by the defendants.
5. In the present application, filed on 02.12.2016, the plaintiff states that he has applied for cancellation of the registration of the defendants’ mark before Intellectual Property Appellate Board (“IPAB”) in December 2016 and therefore seeks stay of proceedings in the suit under Section 124 of the Act.
6. During the course of proceedings, an ex-parte ad-interim order of injunction against the use of the impugned marks was passed on 10.03.2014. The plaintiff’s application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as “the CPC”) (IA No. 4382/2014) and the defendants’ application under Order XXXIX Rule 4 of the CPC (IA No. 9392/2014) were disposed of by a judgment dated 28.11.2018 in the following terms:-
“11. It is not seriously in dispute that the defendants have been using the expression ‘Kaka-ka’ since at least 15 years in the city of Nashik. They were earlier running four outlets but presently three outlets are operational. They have several employees and have gained reputation locally. The Plaintiff has gained immense reputation in Delhi and the reputation may be spilled over in various parts of the country, but they have only one outlet. Various issues are to be adjudicated which would need evidence including as to whether the names/marks as also whether there is any likelihood of confusion owning to prior use of its name. On the balance, the following interim arrangement would serves the ends of justice.
(1) The Defendants are permitted to use the name ‘Kaka-ka’ Dhaba‘.’Kaka-ka Restaurant’ and ‘Kaka-ka Garden’ for the three restaurants/outlets already operating in Nashik, Maharashtra. However, they will not use the name ‘Kaka-ka Hotel’.
(2) The Defendants shall not open any further outlet with the name ‘Kaka-ka’, during the pendency of the present suit.
(3) The Defendants shall maintain complete accounts of all sales which they are conducting in their three restaurants/outlets. The company
