RAINFOREST CAFE INC Vs. RAINFOREST CAFE

JUDGEMENT

(1.) This order shall dispose off IA No. 341/2000 being the plaintiff's application for the issuance of ex-parte ad interim injunction under Rules 1 and 2 of Order XXXIX and I.A. 342/ 2000 filed by the plaintiff under Order XXVI Rule 9 and IA 2310/2000 which is the corresponding application of the defendants filed under Rule 4 of the same Order. At the first hearing the following order had been passed:

(2.) Mr. Chidambram, learned Senior Counsel for the plaintiff, has submitted that the plaintiff commenced business in 1994 and has obtained seventy Trade Mark registrations' internationally, and another hundred odd applications are pending In India, these applications were fried on 17/4/1997,7/5/1997 and 17/8/1998 and are pending in Class 16 and 27. It was emphasised that the plaintiff has thirty-seven restaurants world-wide. The plaintiff has advertised extensively and has expended very large sums of money as a consequence. Its success is evident from Articles/ Press Reports written on it, and from Awards it has already bagged. The plaintiff has its own web-site, the domain name having been allotted in 1995, Its shares are quoted and traded on the NASDAQ. .The plaintiff has placed documentary evidence on record which sufficiently supports these submissions. Mr. Chidambram, learned Senior Counsel for the plaintiff, has also argued that the plaintiff has received application's for franchises in India and has entered into an agreement with a Malaysian company to open new outlets in various countries The obvious transborder reputation which the plaintiff has built-up calls to be protected, as has been done in the WHIRLPOOL decisions, N.R. Dongre Vs. Whirlpool Corp., 1996 PTC (16)(DB) 476, and N.R. Dongre Vs. Whirlpool Corp.. 1996 PTC (16) SC 583. He has also cited Caesar Park Hotels and Resorts Inc. Vs. Westinn Hospitality Services Ltd., 1999 PTC (19)(DB) 123, and has filed a copy of the unreported judgment of a Single Judge of the High Court of Bombay in Notice of Motion No. 854 of 1999 in Suit No. 1680 of 1999 entitled Taco Bell Corporation Vs. Taco Bell & Anr. Two compilations have been filed by the plaintiff but it would be of little purpose to mention each case cited therein. It has been underscored that the defendants started business as recently as November, 1999 under the name of Rainforest Cafe and has applied for Trade Mark Classes 29 and 30 on 22/7/1999 and 1/8/1999. Mr. Chidambram also submitted that the degree to which name in question was arbitrary coined, or created, it should attract corresponding protection,

(3.) Mr. A.M. Singhvi, learned Senior Counsel for the defendants, contended that transborder reputation cannot be relied upon without regular business activity in the country. Since the plaintiff had not commenced any operations in India an action in passing off was not possible. Deception had not been pleaded or made out, since the plaintiff was not the registered holder of a Trade Mark an infringement action was also not possible. The decision in the WHIRLPOOL case was inapplicable for these reasons. The plaintiff had no 'presence' in India - no restaurant, no good will, no advertisement, no user of the name and no activity. The plaintiff must prima facie prove that some person was mislead into patronising the defendants mistakenly believing it to be the plaintiff branch, or franchise etc.