The main legal point established in the judgment is the prima facie evidence of infringement and passing off, the prior usage of the trade name by the plaintiff, and the likelihood of confusion among customers.

JUDGMENT

RAGHUBIR DASH, J.

1. The order of ad interim injunction dated 4.1.2014 passed in I.A. No. 145 of 2013 arising out of Civil Suit No. 5 of 2013 in the court of the learned District Judge, Khurda is under challenge in this appeal. The appellant is the defendant in the suit and the respondent is the plaintiff. The plaintiff is a Private Limited Firm incorporated under the provisions of the Indian Companies Act, 1956. The suit has been filed for permanent injunction restraining the defendant from continuing or repeating any infringement of the plaintiff’s registered trade marks as well as passing off the defendant’s goods and services as that of the plaintiff.

2. Plaintiff’s case, in nutshell, is that in the year 2001 it opened one restaurant as a proprietory concern, exclusively dealing with Odia Cuisine under the trade name and style Dalma. The name of a famous Odia recipe Dalma was adopted as the trade name and mark of the firm. The Restaurant prepares and serves Odia Cuisine. With the success of the Restaurant, the plaintiff expanded its business to other districts in Odisha. In the year 2005 the plaintiff formed a Company under the Companies Act, 1956 and opened its Restaurant at three more places in the capital city of Odisha and other outlets in the districts of Puri and Sundargarh under the trade and brand name Dalma. The plaintiff is the first to adopt the brand and label Dalma having a unique get up and colour combination with the word Dalma encased inside a quadrilateral and has been using the brand and label continuously since 2001, as a result the brand has acquired immense reputation and goodwill over a period of twelve years. The consumers associate the said brand with the plaintiff and none else. Plaintiff has also acquired statutory rights in the said brand, both in Odia and English scripts, by obtaining registration certificates thereof from the Trade Mark Registry, Government of India. In November 2011, the plaintiff’s attorney had issued a public caution notice about the details of plaintiff’s trade marks registration to caution other traders not to copy its trade marks to run similar business under its trade name.

As against the defendant the plaintiff has alleged that in or around November 2012 it came across the defendant’s products being offered for sale in different places at Bhubaneswar under an identical/deceptively similar brand name in his restaurant business serving Odia Cuisine. Thus, the defendant has infringed the plaintiff’s trade mark. It is further alleged that the defendant’s use of the trade mark in question is fraudulent, intended to confuse and deceive members of the public by creating an impression that the defendant’s trade has got nexus with that of the plaintiff. Thus, the defendant is passing off its inferior services as that of the plaintiff.

3. The defendant has filed counter in the I.A. contending that the term Dalma or Dalema is common to the trade in which the parties are. Being a customary and generic name, it is being commonly used by many hotels and restaurants within Bhubaneswar city as well as other parts of the State of Orissa. Dalma or Dalema is a customary Odia Cuisine. The words are neither invented nor coined by the plaintiff. They are in existence since time immemorial. Therefore, registration of the trade mark Dalma or Dalema in favour of the plaintiff is in violation of Section 9 of the Trade Marks Act, 1999. Further assertion made by the defendant is that it has never offered to sell his product to the customers representing the same to be that of the plaintiff. Defendant’s product is different from that of the plaintiff in all respect. Therefore, the question of passing off does not arise at all. Further contention is that the plaintiff did never object to many other traders rendering their business using the trade name Dalma or Dalema, thereby tacitly allowing them to carry on their business in the said trade name for which the words have become publici jur