SOUTH THINDIS Vs. BILLION SMILES HOSPITALITY (P) LTD.

JUDGEMENT

(1.) The appellant herein is the defendant in O.S. No. 25852/2011 while the respondent herein is the plaintiff. The parties would be referred to in their rank as in the suit for the purpose of convenience and clarity. In the suit filed by the plaintiff alleging that the defendant is infringing the plaintiffs Trade Mark No. 1485593 comprising the word "Southindies" with the device of "Jharni" by using a deceptively similar word "South Thindis" with the device 'Jharni', the plaintiff has sought for injunction against infringement and passing off the plaintiffs mark by the defendant. The plaintiff has also sought for the consequential relief of mandatory injunction and damages. In aid of the main relief, the plaintiff filed I.A. No. 1 under Order 39, Rules 1 and 2 of C.P.C. seeking for temporary injunction pending disposal of the suit. The Court below, after considering the application has by its order dated 31.10.2011 granted the order and restrained the defendant from using the trade mark "South Thindis". The defendant, therefore, claiming to be aggrieved by the said order has preferred this appeal.

(2.) Sri Harikrishna Holla, learned counsel for the defendant while assailing the order of the Court below would contend that the learned Trial Judge has not appreciated the matter in its correct perspective and has confused the issue. The name adopted by the defendant has reference to the dishes of the region, namely South India and as such, the same is saved under Section 35 of the Trade Marks Act, 1999 (hereinafter referred as 'TM Act'). The name of the defendant's hotel indicates that it caters eatables of Southern region and, therefore, it is called as 'South Thindis'. In view of the provision in Section 35 of the TM Act, the plaintiff cannot prevent the defendant from using the name even if the plaintiff is the owner of a similar registered Trade Mark. It is his contention that the mark of the plaintiff and defendant are not pictorially similar and as such, there is no infringement. The plaintiff, at best can allege passing off, but the same is not prima facie established by the plaintiff. In that regard, the plaintiff has not gained reputation by long user since the business commenced by the plaintiff is only as recent as in the year 2007 though it has been wrongly stated as 2006 in the application for registration. Hence, the question of the defendant riding on the reputation and passing off does not arise. The write up in the print media is subsequent to the date of filing the suit and as such, it cannot be a material in support of the reputation of the plaintiff. The name adopted by the plaintiff is a generic name and as such cannot claim exclusive right to use the same. There is no material to indicate that there is deception in the use of the name by the defendant. In any event, the class of customers of the plaintiff and defendant are different and as such, there would be no confusion. In this regard, reference is made to the menu card to indicate the vast difference in price of each dish in the plaintiffs restaurant as against that of the defendant. Hence, the customers would not be misled. Even if the plaintiffs case is accepted, the right to seek for injunction is defeated due to the conduct of acquiescence. Though notice was issued in the year 2009, the suit was not filed for two years. A person who sits by and watches the right being invaded cannot thereafter complain. It is, therefore, contended that order of the Court below is liable to be set aside and the injunction should be vacated.

(3.) Ms. Jayna Kothari, learned counsel for the plaintiff would, however, seek to sustain the order passed by the Court below. It is contended that the Court below after referring to all the materials was convinced that defendant had deceptively used a similar mark as that of plaintiffs mark. It is contended that the plaintiffs mark has been adopted in a particular get up as a single word 'Southindies' with the device 'Jharni' being placed in the position of 'O' after working on the same with expert guidance. The defendants have deliberately used the word 'South' and Thindis' to make it appear similar. Merely because an extra Th' is used by indicating two separate words, it cannot be considered as different as the pronunciation would be phonetically similar. The use of the device 'Jharni' in a prominent manner with the word "South Thindis" would indicate that it is a case of infringement and there is statutory bar. Under Section 29 of the TM Act, it would lead to infringement even if a deceptively similar mark is used. The plaintiff being in hospitality business and with an intention of providing fine dining restaurants for authentic South Indian dishes from the four southern States have worked from the year 2006 on building a reputation, though the mark was registered in the year 2007. The word "Southindies" was coined by engaging consultants and incurring huge expenses. The articles written about the plaintiffs restaurant are all prior to suit. In addition, the plaintiff has spent substantial amount on advertisement in the newspaper, magazines and even over the radio. Thus having built a reputation, the plaintiff has opened branches including the one known as 'upsouth' being a venture of 'Southindies' in Jayanagar, the vicinity wherein the defendant is located. The difference in price of the dish cannot be a criteria to contend that the customer would not be misled. On the other hand, if it is made cheaper and good food is not served, the reputation of the plaintiff would be effected, if a customer of imperfect recollection is unable to distinguish. The question of acquiescence does not arise as the period contemplated under Section 33 of the TM Act has not elapsed. In any event, the plaintiff did not sit by and watch. When the defendant started the business in 2009 itself, the notice has been issued. The defendant should have been prudent and discontinued at that stage, but when the plaintiff realised about the dishonest intention of the defendant to continue and have the mark registered, the plaintiff has filed the suit. The Court below has considered all aspects and has arrived at its conclusion and as such the same does not call for interference is her contention.