MOODS HOSPITALITY PVT. LTD. Vs. NESTLE INDIA LTD.

JUDGEMENT

(1.) BY this order, I propose to dispose off the aforesaid application filed by the plaintiff under Order 39 Rules 1 & 2 read with Section 151 CPC seeking ad -interim injunction against the defendant to restrain the defendant from infringing their registered trademark "Yo!" per se or in conjunction with any logo/mark/letters, or otherwise trading under the mark "Yo!" or any other deceptively similar mark thereto or colorable imitation thereof, whether by using the expression by itself or as a part of any other mark/name in respect of goods covered by the registrations obtained by the plaintiffs in respect of the said mark as detailed in the plaint. A further restraint is sought against the defendants from, in any manner, using the mark "Yo!" per se or in conjunction with any other logo/mark/letters or any other mark deceptively similar thereto so as to pass -off or enable or assist others to pass -off their business and product as those of the plaintiff's.

(2.) THE plaintiff claims that it is a private limited company registered under the Companies Act, 1956. It operates under the brand name/house mark "Yo! China". plaintiff claims to be the first and largest Chinese food chain in India and it is stated that it is known for the quality of its products and services by the name "Yo! China". The plaintiff's restaurants offer fast food services in a child friendly atmosphere which is widely acclaimed and accepted. The plaintiff states that it started using "Yo! China" for carrying on its restaurant business of Chinese food since the very first day when its restaurants came into existence. The plaintiff company was established in the year 2002 with the aim to deliver high quality Chinese food in India at very reasonable prices. The first "Yo! China" restaurant was started in May, 2003 at a mall in Gurgaon. Since then it has grown into 40 restaurants, which is a mix of company owned and franchise outlets spread over 15 cities across India. Apart from these restaurants, there are a number of other kiosks and take away points where the food products of the plaintiff are sold. The per month average of customers/guests who visit "Yo! China" is stated to be about 5 lakhs. It is stated that the plaintiff coined expression "Yo! China" in the year 2002 in order to distinguish its business, trade identity and products/services from others. It is stated that the word "Yo" (without the exclamation mark) is primarily an American slang used for calling attention, expressing encouragement or excitement, or a greeting. The word "Yo' is not descriptive of the goods and services of the plaintiff and thus is arbitrarily applied. Further, it has no direct or remote reference to the nature or quality of the goods or services being provided by the plaintiff, thus making it inherently distinctive. It is stated that the expression "Yo!" (with an exclamation mark) was coined and adopted by the plaintiff in combination with red and yellow colours signifying "energy". When the expression "Yo!" is used with the word "China", it portrays American Chinese Food which is specific and unique to the plaintiff. The plaintiff submits that it has built, developed and nurtured the trademark "Yo!" and "Yo! China" since the year 2002 and has made extensive use of the said expression "Yo!" since its inception for almost everything that had anything to do with their business and products/services. It is further stated that the expression "Yo!", because of its inherent distinguish ability and extensive use as indicated herein, has become distinctive of the plaintiff in the eyes of the consumers as also in the trade, industry and restaurants of fast food across the country. Further, the use of a specific colour combination of red and yellow for its packaging material, advertisements, interiors of its restaurants and kiosks, menu cards, uniform of employees, etc., has also become distinctive of the plaintiff's trademark "Yo! China" and "Yo!". The plaintiff further states that in the year 2005 -06, the plaintiff company launched an innovative product called "Yo! on the Go" which was essentially noodles (chowmein) served in a box with different variants, which the consumer can pick and move. More recently this product was renamed "Yo! Box". The plaintiff specifically had a noodles (chowmein) product with 4 variants in takeaway and home delivery packs called "Yo! On the Go" and "Yo! Box". This product of the plaintiff serving noodles (chowmein) in take away boxes has been a great success and was appreciated by customers in all age groups. It is further stated that the trademark "Yo!" which is also the first mark of plaintiff's trade name/trading style/house mark "Yo! China", is a registered trade mark and has been intact with the plaintiff company and travels with the plaintiff company in all its activities and related business ventures, e.g. "Yo! Box", "Yo! On the Go", "Yo! Dimsum", "Yo! Carts" etc. The plaintiff's team of personnel deployed in its restaurants wears a uniform with "Yo! Team" written on the back of the T -shirts, and a cap with the word "Yo!" in the front. Yo! is also the most prominent part of the plaintiff's advertisements which uses expressions like, "Fly Yo! Over", "How Yo!mantic" etc. The plaintiff submits that its application for registration of "Yo! Dimsum" is pending with the Registrar of Trademarks. The plaintiff has indicated its sales figures over a period of 3 years from 2004 -05 onwards which shows substantial revenue growth over this period. The plaintiff states that it has incurred considerable expenditure from 2004 -05 and 2006 -07 on advertisement and promotion of Trade Marks "Yo!" and "Yo! China". As a result of its extensive and continuous use, coupled with widespread publicity, it is claimed that the Trade Marks "Yo!" and "Yo! China" have become well known marks within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999 (for short 'The Act'). The plaintiff claims that it has got its marks "Yo!" and "Yo! China" registered as trademark/services mark under the following classes:

(3.) THE grievance of the plaintiff against the defendant is that the defendant company is manufacturing and marketing, inter alia, noodles (chowmein) under the name and style of "Maggi Cuppa Mania instant noodles" in two flavours "Masala Yo!" and "Chilly Chow Yo!". It is stated that the said products are a direct take on the product of the plaintiff "Yo! On the Go!". It is alleged that the defendant has deliberately, and with intention to gain from the goodwill and reputation of the plaintiff and also to mislead the customers used the trademark "Yo!" while mentioning the flavours of the noodles contained in the said packs as "Masala Yo!" and "Chilly Chow Yo!". The case of the plaintiff is that the expression "Yo!" used by the defendant on its packaging is neither descriptive of the product contained in the defendant's packaging, nor it relates to the quality of the product at all. The use of the mark "Yo!" on the packaging by the defendant is solely with the intention of misleading the consumers and making gains over the goodwill and reputation of the plaintiff's registered trademark "Yo!". It is stated that the impugned use by the defendant of the plaintiff's registered trademark is a case of infringement and passing off by the defendant under the Trademarks Act. The mark "Yo!" adopted by the defendant on their "Maggi Cuppa Mania" is stated to be visually, phonetically and structurally similar to the mark of the plaintiff. The plaintiff claims that the use of the said mark by the defendant would cause confusion and deception amongst the trade and public at large leading them to believe that the goods and services of the defendant originate from, or have a trade connection, approval or association with the plaintiff. It is stated that "Yo!" is the most essential feature of the plaintiff's trademark. The use by the defendant of a mark, which is identical to the plaintiff's trademark amounts to infringement of the said registered trademark. It is stated that the goods being offered by the defendant with the infringing mark is almost identical to the goods/services of the plaintiff.