MCDONALDS CORPORATION Vs. MACGILZ FAST FOOD

JUDGEMENT

(1.) The appellant has filed a suit for seeking relief of perpetual injunction for infringement of trade mark, passing of and that for alleged such violation, damages and a declaration has been sought for rendering the account for the profits earned accordingly. An application under Order 39, Rules 1 and 2 read with Section 151, C.P.C. had also been filed. The said application has been dismissed by the learned Additional District Judge, Amritsar, vide order dated February 8, 2002.

(2.) The appellant has asked for temporary injunction for restraining the defendant-respondent from using the name "Mac" as prefix to "Gilz" either as its trading style or trade mark deceptively and/or confusingly similar to the trade mark of the appellant i.e. "McDonalds MacFries Maharajah Mac and Big Mac", such usage being made in relation to its business/goods so. as to pass off its business/goods as and for the business of the plaintiff-appellant. The import of the suit is that the word "Mac" wherever is being used by the defendant be not used for passing off such goods as being belonging to "McDonalds".

(3.) The defendant is carrying on business of running a restaurant at Amritsar under the name and style of "MACGILZ FAST FOOD". One of the partners of the said firm is Randip Singh Gill. It is alleged that it was in 1948, Dick and Maurice (Mac) McDonald founded their first McDonalds restaurant. However, in India, such restaurant under the said name was opened for the first time on October 13, 1996 in Vasant Vihar, New Delhi. Thereafter, 24 more such restaurants have been made operational in Delhi, Mumbai, Noida and Jaipur. There are about 20000 such restaurants in about 119 countries and the territories of the world. McDonalds have become famous in the business of fast food service and their trade mark has been registered at various places. In India, such applications have been filed with the requisite authorities in the year 1983 and 1987 whereby the registered pioprietor of the trade mark sought to be registered are McDonalds and Corporate logo "M" BIG MAC, Ronald McDonald and Clown figures. It is alleged that by virtue of such registrations, the plaintiff-appellant has the exclusive right to use the said trade mark. The applications filed in respect of the said registrations are still pending. The claim is that the plaintiff-appellant is proprietor of family of trade marks with the prefix or suffix "Mac and Me" and that application for registration of such trade marks have been filed in India in the year 1993, 1995, 1996 and 1997. These applications are also pending before the Registrar of Trade Marks. The word "Mac/Me" is prominent and significant feature of the plaintiffs various trade marks which are being used extensively all over the world. The reputation of the plaintiff-appellant in this regard has been recognised transborder. The said trade mark has been recognised and mentioned in the book "world Class Business-A Guide to 100 most powerful Global Corporations". McDonalds is also listed in the Guinness Book of Records as the worlds largest chain of Restaurants. The sales figures run in billions of U. S. Dollars and that the plaintiff-appellant spends more than a billion U. S. Dollars by way of advertisements, for the promotion of business all over the world. Thus, people, who travel from all the countries to USA, form impressions and impacts so far as the service rendered by McDonalds is concerned. The user of the prefix and suffix "Me and Mac" having been recognised all over the world, the other competitors have been declined the usage of the same by way of judicial pronouncements made in the respective countries. If "Mac and MC" is allowed to be used as prefix and suffix by any one, the general public at large and the regular customers would likely be deceived/confused into believing that the defendants restaurant with trade style "MACGILZ" have some connection with the plaintiff-appellant. Resultantly, a notice is stated to have been served upon the defendants requiring them to desist from using the prefix and suffix as above. It has been specifically required that the defendant could not arid should not use the aforesaid trade mark while notifying the price of the burger, fries, pizza, imli, nuggets etc. because in front of all these the prefix and suffix has been added as i.e. "Mc/ Mac."