STAR RESTAURANT PVT. LTD Vs. ADAAB HOTELS LTD

JUDGEMENT

(1.) IA No.16041/2012 (under Order 39 Rule 1&2 CPC), IA No.11565/2012 (under Section 151 CPC) &IA No.11566/2012 (under Order 39 Rule 4 CPC) in CS(OS) No.1638/2012

(2.) The case of "Adaab" is that the parties also entered into an agreement dated 16.8.2006 though the execution of this agreement has been disputed by "Star". This agreement permitted "Star" to open any restaurant under the name "Turquoise Cottage from the Orient" in India except Delhi and NCR. It was also stipulated in this agreement that the trade name "TC Restaurant and Pub" was the property of "Adaab". The ownership of "Star" for its registered trademark was also recognized in this agreement. Under this agreement, the commission deductable by "Adaab" from the liquor sale was fixed at 15% with a minimum of Rs 5 lakh per month for the first year. The minimum figure was to increase to Rs 5,30,000/- in the second year.

(3.) On 17.01.2000, "Adaab" applied for registration of the mark TC (in stylized form) in class 29 and 33, claiming user of the said mark since December 17, 1999. Later, they applied for registration of the said mark in class 42 on 12.10.2004, claiming user since 30.06.2004. On 22.01.2007, Star applied for registration of the mark Turquoise Cottage in class 42, claiming user since 01.01.2003. Prior to that Mr. Sanjay Khullar, director of Star had applied for registration of trademark TC in class 42 on 11.07.2005. When Star applied for registration of the trademark Turquoise Cottage with TC logo in class 42, it was reported by the Trademark Registry that a conflicting mark TC was already registered in favour of "Adaab" in class 42. On the said examination report of the Trademark Registry being forwarded to the plaintiff M/s O.P. Khaitan & Company, acting on its behalf, sent a reply on 02.02.2008, stating therein that the trademark TC with logo was derived from their trademark "Turquoise Cottage" which they were using since 2003. It was further stated in the said reply that the trademark of the applicants was not identical or similar to the conflicting marks and the marks, mentioned in the examination report, were distinguishable. With respect to the trademark of "Adaab", it was stated that the said mark was registered without logo, whereas the applicant"s trademark was inscribed in a specific device and, therefore, it will not lead to any deception or confusion amongst the public. It was also claimed that there was oral, visual and conceptual difference amongst the conflicting marks and the trademark of the applicant. It was pointed out in the reply that the applicant"s trademark "Turquoise Cottage with a logo TC" was a composite mark being used with a specific device in rectangle and circle, which on the face of it was different from the conflicting marks as mentioned in the search report of Trademark Registry and addition of the device had made a world of difference, as compared to the conflicting marks mentioned in the search report. It was requested that the applicant"s trademark should be read as a whole in its entirety, i.e., along with the device to distinguish the same from the conflicting marks.