Prior use and registration of a trademark are essential for establishing rights and preventing consumer confusion in trademark disputes.

JUDGMENT

Bhansali, J. - This appeal under Order XLIII, Rule 1(r) CPC r/w Section 13 of the Commercial Courts Act, 2015 ('the Act of 2015') has been filed against the order dated 08.01.2020 passed by the Commercial Court, Udaipur, whereby the application filed by the respondent under Order XXXIX, Rule 1 & 2 CPC has been accepted and the appellant-non-applicant has been restrained from using the word 'ckophZ' in Hindi and 'Bawarchi' or 'Bavarchi' in English directly or indirectly for the purpose of providing food & drink / restaurant & hotel services either himself or through his representative, franchises or servants / employees.

2. A suit for injunction under the Trade Marks Act, 1999 ('the Act') was filed by the respondent-plaintiff, inter-alia, with the submissions that the plaintiff is a partnership firm; since 1993 under the trade mark of   (Bawarchi) it was operating a restaurant in the name of and since 2013 was operating a website 'bawarchirestaurant.in', through which it was advertising its restaurant and providing online facility. It was claimed that the restaurant has its goodwill and fame and is popular among tourist and general public. It was claimed that for the purpose of protecting his trade mark, the plaintiff made application before the Registrar of Trade Marks, Ahmedabad and from time to time registration certificates were issued. A list of registration certificates six in number under various class i.e. 43, 30, 33 & 32 were indicated. It was claimed that since 1993, the plaintiff is lawful proprietor and owner of the registered trade mark (Bawarchi), word mark in Hindi and English and the logo and therefore, only the plaintiff has the right to use the same. It was alleged that the use of trade mark 'Bawarchi' by any one else would create confusion in the mind of consumers and the same would lead to passing of the services as that of the plaintiff or in someway connected with the plaintiff. It was also claimed that in relation to the trade mark, the plaintiff has a right under the Act to restrain others from infringing the same and from passing off under the common law.

3. It was then alleged that the defendant with a view to make illegal profits by using the registered trade mark has started operating restaurant in the name of which is a clear violation of the plaintiff's legal right and against the Act. It was alleged that the services of the plaintiff and defendant are of similar nature, they have similar consumers and marketing channel, the names are phonetically similar and the trade marks are also similar, which would result in confusion and deception and the services would be passed off and therefore, it was necessary to restrain the defendant.

4. It was claimed that the plaintiff become aware of the acts of the defendant in the year 2015, after which legal notice for not violating the trade mark was given, the defendant assured that he would change the name and the application for registration of the trade mark has been withdrawn on 21.05.2015, however, despite withdrawal of the application, the restaurant is being operated in the name of image 2, which is illegal and falls within the category of infringement / passing off and amounts to fraud on public. Based on the said submissions, relief of permanent injunction in the suit was claimed restraining the defendant from using the trade mark 'Bawarchi' directly or indirectly.

5. Alongwith the suit, an application under Order XXXIX, Rule 1 & 2 CPC was filed seeking temporary injunction based on prima facie case, balance of convenience and irreparable injury.

6. The appellant-defendant filed reply to the temporary injunction application denying the averments made in the application.

7. It was, inter-alia, indicated that though the plaintiff claims to be running the restaurant in the name of since 1993, however, the application for obtaining trade mark has been filed in the year 2013 and prior to that, the same was being used without registration. It was deni