2011 Supreme(Mad) 3470

2011 (4) LW 193
High Court of Judicature at Madras
R. BANUMATHI & B. RAJENDRAN
Thalappakattu Biriyani and Fast Food, rep by its Partner
Versus
M/s. Thalappakatti Naidu Ananda Vilas Biriyani Hotel, rep by its Partner N. Dhanabalan
O.S.A.Nos.199 to 201 & 217 to 219 of 2011
Decided on : 01-08-2011

The essential feature of a trade mark is to be considered and overall similarity of the word is likely to mislead and cause confusion.

Headnote:

TRADEMARK - INFRINGEMENT - DECEPTIVE SIMILARITY - BALANCE OF CONVENIENCE - INTERIM ARRANGEMENT - JURISDICTION - AMENDMENT OF PLEADINGS - REGISTRATION OF TRADEMARK - STATUTORY RIGHTS - INJUNCTION - RESTRAINT OF TRADE - PASSING OFF - COMMON LAW - DISTINCTION BETWEEN INFRINGEMENT AND PASSING OFF - ESSENTIAL FEATURES OF TRADEMARK - PERMITTED USE - DELAY AND LACHES - ACQUIESCENCE - WEAK MARK - OVERALL SIMILARITY - IRREPARABLE INJURY - COMPARATIVE HARDSHIP - DISCRETION OF COURT.

Fact of the Case:

Plaintiff, a proprietor of a restaurant chain known as "Thalappakatti Naidu Biriyani Hotel", filed a suit for permanent injunction restraining the Defendant from infringing or passing off the trade mark or trading style "Thalappakatti Naidu Biriyani Hotel". The Defendant, who had commenced using the identical or deceptively similar trade mark and trading style "Thalappakattu Biriyani & Fast Food", resisted the application contending that they had established extensive popularity among the public in respect of their trade mark "Thalappakattu Biriyani & Fast Food" and that the word "Thalappakattu" means turban which is a common name and therefore, Plaintiff cannot claim exclusive right over the name "Thalappakatti". The single Judge, after elaborate consideration of the facts and law, found that Plaintiff was the prior user who had established the usage of the name "Thalappakatti Naidu Biriyani Hotel" and granted injunction in favor of the Plaintiff. Aggrieved by the order, Defendant filed appeals. Plaintiff also filed appeals challenging the refusal of injunction in respect of four outlets then existing.

Finding of the Court:

The Court held that the order of Division Bench in O.S.A.Nos.223 and 224 of 2008, which permitted the Defendant to change the name as "Chennai Rawther Thalappakattu Biriyani" as an 'interim arrangement', could not be taken to be limited only to the circumstances prevailing at that time i.e., four shops then existing on 19.11.2008. The Court further held that the impugned order of the learned single Judge did not amount to varying/modifying the order of Division Bench. The Court also held that the suit for infringement was not barred under Or.2, Rule 2 C.P.C. and that the subsequent suit for infringement was not barred under Or.2, Rule 2 C.P.C. The Court further held that the essential feature of the Plaintiff's mark was "Thalappakatti" which was deceptively similar to the Defendant's mark "Thalappakattu" and that the Defendant's mark was likely to mislead and cause confusion. The Court also held that the balance of convenience was in favor of the Plaintiff and that the Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge.

Issues: 1. Whether the order of Division Bench in O.S.A.Nos.223 and 224 of 2008, which permitted the Defendant to change the name as "Chennai Rawther Thalappakattu Biriyani" as an 'interim arrangement', could be taken to be limited only to the circumstances prevailing at that time i.e., four shops then existing on 19.11.2008? 2. Whether the impugned order of the learned single Judge amounted to varying/modifying the order of Division Bench? 3. Whether the suit for infringement was barred under Or.2, Rule 2 C.P.C.? 4. Whether the subsequent suit for infringement was barred under Or.2, Rule 2 C.P.C.? 5. Whether the essential feature of the Plaintiff's mark was "Thalappakatti" which was deceptively similar to the Defendant's mark "Thalappakattu" and that the Defendant's mark was likely to mislead and cause confusion? 6. Whether the balance of convenience was in favor of the Plaintiff? 7. Whether the Defendant had made out any substantial ground for interference with the well considered order of the learned Judge?

Ratio Decidendi: 1. The order of Division Bench in O.S.A.Nos.223 and 224 of 2008, which permitted the Defendant to change the name as "Chennai Rawther Thalappakattu Biriyani" as an 'interim arrangement', could not be taken to be limited only to the circumstances prevailing at that time i.e., four shops then existing on 19.11.2008, as the order was passed on the consent of both parties and was clearly stated to be an "interim arrangement" without prejudice to the contention of the parties in the suit. 2. The impugned order of the learned single Judge did not amount to varying/modifying the order of Division Bench, as the Plaintiff had obtained the registration of trade mark and the Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge. 3. The suit for infringement was not barred under Or.2, Rule 2 C.P.C., as the Plaintiff had obtained the registration of trade mark and the Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge. 4. The subsequent suit for infringement was not barred under Or.2, Rule 2 C.P.C., as the Plaintiff had obtained the registration of trade mark and the Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge. 5. The essential feature of the Plaintiff's mark was "Thalappakatti" which was deceptively similar to the Defendant's mark "Thalappakattu" and that the Defendant's mark was likely to mislead and cause confusion, as the word "Thalappakatti" was a prominent part of the trade mark and the Defendant had arbitrarily adopted the word mark "Thalappakattu" which amounted to infringement of Plaintiff's registered trade mark. 6. The balance of convenience was in favor of the Plaintiff, as the Defendant had knowingly adopted the impugned mark "Thalappakattu" and started new shops and now cannot contend that the balance of convenience is in their favor. 7. The Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge, as the Defendant had not made out any substantial ground for interference with the well considered order of the learned Judge.

Final Decision: The Appeals O.S.A.Nos.199 to 201 of 2011 preferred by the Defendant were dismissed. Defendant was directed to remove the name "Thalappakattu" and other required changes in the shops opened after 19.11.2008 within a period of six weeks. The appeals O.S.A.Nos.217 to 219 of 2011 preferred by the Plaintiff were dismissed.