Calcutta High Court
Mama Mia Foods Pvt. Ltd vs Mayfair Hotels & Resorts Ltd. & Anr on 11 August, 2016
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
OD-105
ORDER SHEET
GA 2335 of 2016
With
CS 188 of 2016
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
MAMA MIA FOODS PVT. LTD.
VERSUS
MAYFAIR HOTELS & RESORTS LTD. & ANR.
BEFORE:
The Hon'ble JUSTICE SANJIB BANERJEE
Date : 11th August, 2016.
Appearance:
Mr.Ranjan Bachawat, Sr. Adv.
Mr.Debnath Ghosh, Adv.
Mr.Soumy Roy Chowdhury, Adv.
Mr.Abhijit Sarkar, Adv.
Mr.Abhik Chitta Kundu, Adv.
Mrs.Abhradita Chatterjee, Adv.
..for the plaintiff.
Mr.Arnab Sardar, Adv.
..for the defendant no.1.
The Court: This is an action for infringement and passing-off in respect of the plaintiff's mark 'Mama Mia!'.
The plaintiff is the owner of three registered labels where 'Mama Mia!' appears prominently, but the plaintiff is not the registered owner of the mark 'Mama Mia!'. The first defendant is a company having its principal place of business in Bhubaneswer. It is alleged by the plaintiff 2 that the first defendant has copied the plaintiff's 'Mama Mia!' mark in calling restaurants or cafés within the precincts of the hotels owned, run and managed by the first defendant by the name of 'Mamma Mia! Café'.
The plaintiff primarily sells frozen desserts from its outlets and has now ventured into selling its frozen desserts and like products at other retail outlets and through other agencies. The plaintiff claims that it has built a sufficient reputation for others to be interested in copying its 'Mama Mia!' mark.
The second defendant continues to be the recorded registered owner of the label marks which the plaintiff claims to have obtained on assignment. The plaintiff represents that it has applied for the recording of its name as the registered owner of the label marks.
The first defendant says that at the moment it has named some restaurants or cafés at its hotels in Bhubaneswer and Rourkela as 'Mamma Mia! Café'. The first defendant also has hotels by the name of 'Mayfair' in Puri, Port Blair, Sikkim, Darjeeling, Goa and Gopalpur among others. The first defendant submits that at the moment it has no plans to use the 'Mamma Mia!' brand beyond the names of the restaurants and cafés within the precincts of the hotels run or managed by the first defendant.
The plaintiff has, prima facie, established its reputation and goodwill in 'Mama Mia!'. Notwithstanding the plaintiff not having any registration in respect of the words and the words only forming a part 3 of its registered labels, the plaintiff is entitled to protection. It must also be recognised that 'Mama Mia!' is not a common name or word and, as such, by its very nature, it is entitled to a greater degree of protection than a common word or a common name or a word of everyday parlance included as part of a device or label mark.
There will be an injunction restraining the first defendant from using the words or mark 'Mamma Mia!' or the words or mark 'Mama Mia!' or any similar mark or colourable imitation thereof in connection with any food product or eatery outside the precincts of the hotels run by the first defendant. Further, the first defendant will use the mark 'Mamma Mia!' only in connection with the eateries which have already been named as such but it will not christen any other eatery or the like by such name.
Affidavit-in-opposition be filed within a fortnight from date; reply thereto, if any, may be filed before the matter is taken up. The petition will appear as an adjourned motion in the monthly list of September, 2016.
Urgent certified website copies of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(SANJIB BANERJEE, J.) dg2