Territorial jurisdiction in the context of trademark infringement and passing off cases

I.A. Nos. 1950/2017 (under Order XXXIX Rule 1 and 2 CPC) and 3139/2017 (under Order VII Rule 10 CPC)

1. Plaintiff in the present suit inter alia seeks permanent injunction against the defendant, its directors, principals, proprietor, agents, distributors, etc. from manufacturing, selling, marketing, advertising and/or offering its services and/or in any other manner using and/or allowing third parties to use the impugned trademarks ‘SOCIAL’ and ‘STONE WATER’ or any other trademarks or names similar to the plaintiff’s trademarks ‘SOCIAL’ and ‘STONE WATER’ either as trade mark or part of trade mark, trade name, corporate name, domain name or in any other manner to pass off its trade mark as and for the trademarks of the plaintiff and from intimating the manner of serving the beverages and food items in its ‘SOCIAL’ outlets the containers, receptacles, crockery, etc. and from passing off their goods and services as those of plaintiff in any manner. Further directions are prayed to the defendant to withdraw its applications bearing Nos. 3345382, 3348188 and 3076228 in Class 43 for ‘SOCIAL MONKEY’, ‘SOCIAL MONKEY’S’ and ‘STONE WATERS KITCHEN & LOUNGE’

2. Plaintiff is a company incorporated under Companies Act, 1956, having its registered office in Mumbai and is carrying on its business in Delhi from 12, Hauz Khas Village, New Delhi-110016 and a restaurant under the name and style of ‘SOCIAL’. Plaintiff is engaged in providing restaurant services and operating/managing coffee shops. Some of the well-known restaurants and coffee shops run by the plaintiff include Smoke House Deli, Stone Water Grill, Salt Water Café, Le Kebabiere, The Tasting Room and Prithvi Café. Plaintiff commenced its business in the year 2001 and in the year 2012 plaintiff adopted the trade mark ‘SOCIAL’ with respect to cafes.

3. It is claimed that plaintiff coined the unique concept of prefixing and/or suffixing the trade mark ‘SOCIAL’ with the particular area of the city in which the cafes were located and coined the trade marks HAUZ KHAS SOCIAL, CHURCH STREET SOCIAL, DEF COL SOCIAL, TODI MILL SOCIAL, SOCIAL CHATT. KHAR SOCIAL, PALLADIUM SOCIAL, COLABA SOCIAL, WHITEFIELD SOCIAL, ODEON SOCIAL, NEHRU PLACE SOCIAL, KORAMANGALA SOCIAL, CYBER HUB SOCIAL, VERSOVA SOCIAL, etc. The interior of the ‘SOCIAL’ cafes and bars of the plaintiff have been designed to give a rugged and bare feel to its visitors with brick walls and bare bulbs hanging down from the ceiling along with simple wooden and leather furniture, with each outlet having a distinct theme.

4. At present, plaintiff has set up and is managing and operating sixteen ‘SOCIAL’ cafes/restaurants in various places in India i.e. four in Delhi, one in Gurugram, eight in Mumbai and three in Bengaluru. Plaintiff is the registered proprietor of the trade mark ‘SOCIAL’ and its variants in various classes such as Class 9, 30, 33, 42 and 43 and the first registration relates back to May, 2014.

5. It is the case of the plaintiff that it is known for its unique manner of serving the beverages. Plaintiff is the registered proprietor of the beverage trade mark which relates to the unique style of serving under Class 33.

6. Plaintiff adopted the trade mark ‘STONE WATER GRILL’ in the year 2007 for one of its restaurant located by the river in Koregaon Park in Pune. Plaintiff got the trade mark ‘STONE WATER GRILL’ under Classes 30, 42 and 43 in November, 2007.

7. In January 2017, plaintiff came to know that the defendant was operating two restaurants using the trade mark ‘SOCIAL MONKEY’ in Hyderabad. It is the claim of the plaintiff that the defendant has emphasized on the word SOCIAL and copied the concept of the plaintiff of prefixing/suffixing the trade mark ‘SOCIAL’ with another word being ‘MONKEY’ in this case. Further, plaintiff has a popular beverage by the name ‘A GAME OF SLING’ and the defendant has named a beve