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2017 Supreme(Del) 4920
IN THE HIGH COURT OF DELHI
Rajiv Sahai Endlaw, J.
RAMAIAH LIFE STYLE CAFE — Appellant
Vs.
EMINENT ENTERTAINMENT — Respondent
C.S. (COMM) No. 1433 of 2016
Decided On : 15-03-2017
Advocate Appeared:
For the Plaintiffs : Joseph Koshy, Sheetal Srivastava, Divyani.
For the Defendants : Siddhesh Kotwal, Shreya Bhatnagar, Urvashi Bandhu.
The central legal point established in the judgment is the mandatory nature of registration of assignment under Section 45 of the Trade Marks Act, 1999, and its implications on the plaintiff's entitlement to sue for infringement.
Headnote:
TRADE MARK - Infringement - Trade Marks Act, 1999, Section 53, Section 69 - Summary of Acts and Sections: The court discussed the plaintiff's claim of infringement of the trade mark 'RASTA' registered in Class 28 against Registration No. 1875323 and in Class 43 against Registration No. 1887336. The defendants raised objections under Section 53 of the Trade Marks Act, 1999, and Section 69 of the Partnership Act, 1932, regarding the plaintiff's entitlement to maintain the suit for infringement. The court analyzed the mandatory provisions of Section 45 of the Trade Marks Act, 1999, and its amendments, and the implications of non-registration of assignment of the trade mark by the plaintiff. The judgment highlighted the significance of registration of assignment and the lack of diligence on the part of the plaintiff in protecting its rights.
Fact of the Case:
The plaintiff filed a suit to restrain the defendants from infringing the trade mark 'RASTA' and for ancillary reliefs. The defendants objected to the suit, citing non-registration of the trade mark in the name of the plaintiff and the bar under Section 53 of the Trade Marks Act, 1999. The court analyzed the plaintiff's claim, the objections raised by the defendants, and the implications of non-registration of the trade mark assignment.
Finding of the Court:
The court found that the plaintiff's lack of diligence in registering the assignment of the trade mark and the non-application for registration of the assignment raised doubts about the plaintiff's entitlement to sue for infringement. The court dismissed the plaintiff's application for interim relief, emphasizing the mandatory nature of registration of assignment under Section 45 of the Trade Marks Act, 1999, and the lack of a prima facie case for grant of interim relief.
Issues: The issues revolved around the plaintiff's entitlement to maintain the suit for infringement, the objections raised by the defendants under Section 53 of the Trade Marks Act, 1999, and the implications of non-registration of the trade mark assignment by the plaintiff.
Ratio Decidendi: The court's decision was influenced by the mandatory provisions of Section 45 of the Trade Marks Act, 1999, and the lack of diligence on the part of the plaintiff in protecting its rights. The court emphasized the significance of registration of assignment and the implications of non-registration in determining the plaintiff's entitlement to sue for infringement.
Final Decision: The court dismissed the plaintiff's application for interim relief, citing the lack of a prima facie case for grant of interim injunction and the balance of convenience in favor of the defendants.
JUDGMENT :
Rajiv Sahai Endlaw, J.
IA No. 13020/2016 (u/O XXXIX R-1&2 CPC)
1. The plaintiff has instituted this suit to restrain the three defendants (i) from infringing/using the trade mark 'RASTA' of the plaintiff registered in Class 28 against Registration No. 1875323 and in Class 43 against Registration No. 1887336; (ii) from infringing the copyright of the plaintiff; and, (iii) for ancillary reliefs.
2. It is the case of the plaintiff (a) that the plaintiff, a partnership firm is engaged in the business of running a chain of cafe and restaurants and is a part of Ramaiah Group; (b) that as per the Deed dated 9th December, 2009 of assignment of trade mark, the plaintiff owns/is authorised to use trade marks which are used by them in the course of its business in connection with the sale of their products, both in India and internationally; (c) that one of such trade mark is "RASTA (with device)" and appears on the entry gate of the plaintiff's cafe; (d) that the plaintiff has used the said trade mark in a unique and distinctive style, get-up, writing type and colour scheme and the said trade mark has become associated in the mind of public and potential visitors to the cafe of the plaintiff; (e) that the said trade mark has been developed by Ramaiah Group and is being used by the said group since the year 2009; (f) that the plaintiff has also filed a trade mark registration application No. 1887336 dated 23rd November, 2009 with the Trade Marks Registry, Chennai with respect to goods and services falling under Class 43; (g) that the said trade mark is already registered in the name of M/s Ramaiah Developers & Builders (P) Ltd. in 2011 and 2013 respectively; (h) that being the assignee of the trade mark, the plaintiff has the exclusive right to use the same and has been using the trade mark extensively and over a long period of time; (i) that the defendants are engaged in the business of running services of providing entertainment and cultural activities in the form of music, live bands, live performances, discotheque and also service of providing food and drinks at the establishment of the defendants or for home delivery, with the defendants No. 2 & 3 being the partners of the defendant No. 1; (j) that the defendants on their website www.dineout.co.in/delhi/raasta-hauz-khas-villagesouth-delhi-286 have displayed photographs of products, the packaging whereof bears the plaintiff's trade mark; (k) that the defendants trade mark 'RAASTA' appears on the entrance gate of the lounge in a style identical to the plaintiff's trade mark 'RASTA'; (l) that the defendants are promoting their restaurants/cyber/food cafe which are similar to that of the plaintiff's under the same trade name, even after knowing that the exclusive right to use the trade name belongs to the plaintiff; (m) that in or around the year 2012, the plaintiff, on coming to know about the infringing activities of the defendants, in November, 2012 issued a cease and desist notice to the defendants; no response was received from the defendants; (n) however, the defendants filed an application for registration of the trade mark 'RAASTA' in Class 43.
3. The suit came up first before this Court on 21st October, 2016 when though summons of the suit and notice of the application for interim relief were issued but no ex-parte relief sought granted owing to the plaintiff having instituted the suit four years after learning of the allegedly infringing activities of the defendants.
4. The defendants have filed a common written statement pleading (i) that the trade mark seeking infringement of which the suit has been filed is not registered in the name of the plaintiff and the plaintiff is merely permitted user thereof and is barred by Section 53 of the Trade Marks Act, 1999 from instituting a suit for infringement thereof; (ii) that the suit is barred by limitation, as it could have been instituted only within three years of the plaintiff's learning of the allegedly infringing activitie
