Delhi High Court
Ramaiah Life Style Cafe vs Eminent Entertainment & Ors on 15 March, 2017
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision:- 15th March, 2017.
+ CS(COMM) 1433/2016
RAMAIAH LIFE STYLE CAFE ..... Plaintiff
Through: Mr. Joseph Koshy, Ms. Sheetal
Srivastava and Ms. Divyani, Advs.
Versus
EMINENT ENTERTAINMENT & ORS ..... Defendants
Through: Ms. Siddhesh Kotwal,Ms. Shreya
Bhatnagar and Ms. Urvashi Bandhu,
Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.13020/2016 (u/O XXXIX R-1&2 CPC)
1. The plaintiff has instituted this suit to restrain the three defendants (i)
from infringing / using the trade mark „RASTA‟ of the plaintiff registered in
Class 28 against Registration No.1875323 and in Class 43 against
Registration No.1887336; (ii) from infringing the copyright of the plaintiff;
and, (iii) for ancillary reliefs.
2. It is the case of the plaintiff (a) that the plaintiff, a partnership firm is
engaged in the business of running a chain of cafe and restaurants and is a
part of Ramaiah Group; (b) that as per the Deed dated 9 th December, 2009 of
assignment of trade mark, the plaintiff owns / is authorised to use trade
marks which are used by them in the course of its business in connection
with the sale of their products, both in India and internationally; (c) that one
of such trade mark is "RASTA (with device)" and appears on the entry gate
of the plaintiff‟s cafe; (d) that the plaintiff has used the said trade mark in a
unique and distinctive style, get-up, writing type and colour scheme and the
CS(COMM) No.1433/2016 Page 1 of 18
said trade mark has become associated in the mind of public and potential
visitors to the cafe of the plaintiff; (e) that the said trade mark has been
developed by Ramaiah Group and is being used by the said group since the
year 2009; (f) that the plaintiff has also filed a trade mark registration
application No.1887336 dated 23rd November, 2009 with the Trade Marks
Registry, Chennai with respect to goods and services falling under Class 43;
(g) that the said trade mark is already registered in the name of M/s Ramaiah
Developers & Builders (P) Ltd. in 2011 and 2013 respectively; (h) that being
the assignee of the trade mark, the plaintiff has the exclusive right to use the
same and has been using the trade mark extensively and over a long period
of time; (i) that the defendants are engaged in the business of running
services of providing entertainment and cultural activities in the form of
music, live bands, live performances, discotheque and also service of
providing food and drinks at the establishment of the defendants or for home
delivery, with the defendants No.2 & 3 being the partners of the defendant
No.1; (j) that the defendants on their website
www.dineout.co.in/delhi/raasta-hauz-khas-villagesouth-delhi-286 have
displayed photographs of products, the packaging whereof bears the
plaintiff‟s trade mark; (k) that the defendants trade mark „RAASTA‟ appears
on the entrance gate of the lounge in a style identical to the plaintiff‟s trade
mark „RASTA‟; (l) that the defendants are promoting their restaurants /
cyber / food cafe which are similar to that of the plaintiff‟s under the same
trade name, even after knowing that the exclusive right to use the trade name
belongs to the plaintiff; (m) that in or around the year 2012, the plaintiff, on
coming to know about the infringing activities of the defendants, in
November, 2012 issued a cease and desist notice to the defendants; no
CS(COMM) No.1433/2016 Page 2 of 18
response was received from the defendants; (n) however, the defendants filed
an application for registration of the trade mark „RAASTA‟ in Class 43.
3. The suit came up first before this Court on 21 st October, 2016 when
though summons of the suit and notice of the application for interim relief
were issued but no ex-parte relief sought granted owing to the plaintiff
having instituted the suit four years after learning of the allegedly infringing
activities of the defendants.
4. The defendants have filed a common written statement pleading (i)
that the trade mark seeking infringement of which the suit has been filed is
not registered in the name of the plaintiff and the plaintiff is merely
permitted user thereof and is barred by Section 53 of the Trade Marks Act,
1999 from instituting a suit for infringement thereof; (ii) that the suit is
barred by limitation, as it could have been instituted only within three years
of the plaintiff‟s learning of the allegedly infringing activities of the
defendants; (iii) that the plaintiff firm is not pleaded to be registered with the
Registrar of Firms and the suit is barred by Section 69 of the Partnership Act,
1932; (iv) that the defendants adopted and started using the name
„RAASTA‟ for their restaurants since December, 2011; the logo of the
defendants was conceptualised and designed way back in the year 1999; (v)
that the defendants also host and maintain a website www.raastathestreet.in;
(vi) that the restaurants of the defendants under the name of „RAASTA‟ have
gained great popularity; (vii) that the plaintiff runs a restaurant "Rasta One
Place" in the State of Karnataka and the restaurant of the plaintiff and the
restaurants of the defendants cater to and attract completely different crowds
and it is impossible for either party to encroach upon the customer base and
market of the other party; (viii) that it is rather the plaintiff who in order to
CS(COMM) No.1433/2016 Page 3 of 18
take advantage of the success of the defendants‟ restaurants changed the
theme of its restaurants to as that of the defendants; (ix) that the plaintiff
cannot claim any exclusivity over the term „RASTA‟ as the term „RASTA‟
is publici juris and is a generic term which in Hindi language means a „Road
or Route‟; (x) that the defendants adopted the mark „RAASTA‟ inspired
from the Rastafrain Religion of Jamaica; the theme of the defendants
restaurants is Caribbean; (xi) that the trade mark registration of the plaintiff
is that of a label and logo and not the word „RASTA‟; (xii) that the label of
the plaintiff does not bear any similarity to the label of the defendants; (xiii)
that the essential features of the two marks are different.
5. The counsels have been heard.
6. The counsel for the defendants at the outset has contended that the
plaintiff is not entitled to any interim relief on the ground of laches,
acquiescence and waiver.
7. The counsel for the plaintiff had on 21 st October, 2016 relied on (i)
Hindustan Pencils (P) Ltd. Vs. India Stationery Products Co. AIR 1990
Delhi 19; (ii) Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. 226
(2016) DLT 711; and, (iii) Midas Hygiene Industries P. Ltd. Vs. Sudhir
Bhatia (2004) 3 SCC 90 to contend that delay does not come in the way of
grant of injunction. However on that date ex-parte injunction was denied to
the plaintiff observing that the said judgments may be relevant at the after
notice stage but were not relevant for the ex-parte stage.
8. The counsel for the defendants has next contended that the plaintiff
not being the registered proprietor is not even entitled to maintain a suit for
infringement and for this reason also, the question of granting any interim
relief to the plaintiff does not arise. Attention in this regard is drawn to
CS(COMM) No.1433/2016 Page 4 of 18
pages 23 & 24 of the plaintiff‟s documents being Certificate of Registration
of Trade mark bearing No.1887336 and 1875323 dated 23rd November, 2009
and 22nd October, 2009 of the label „RASTA‟ in Class 43 and in Class 28
respectively in the name of M/s Ramaiah Developers & Builders (P) Ltd. It
is further contended that though the plaintiff has at page 21 of its documents
filed a photocopy of a Deed of Assignment dated 9th December, 2009 of the
trade mark aforesaid executed by M/s Ramaiah Developers & Builders (P)
Ltd. in favour of the plaintiff but it is not the plea of the plaintiff that the said
assignment has been registered with the Registrar of Trade Marks or that the
name of the plaintiff appears as registered proprietor of the subject trade
marks. It is contended that the plaintiff, without being the registered
proprietor cannot maintain a suit for infringement of trade mark and in fact
this suit is liable to be dismissed.
9. The counsel for the plaintiff has referred to Modi Threads Limited Vs.
Som Soot Gola Factory AIR 1992 Delhi 4 and T.I. Muhammad Zumoon
Sahib Vs. Fathimunnissa alias Bibijan AIR 1960 Mad 80 (DB) to contend
that registration of assignment with the Registrar of Trade Marks is not
essential for maintaining a suit for infringement.
10. The counsel for the plaintiff during the hearing, to show mala fides on
the part of the defendants, handed over in the Court copies of the
applications dated 14th January, 2013 and 26th April, 2013 made by the
defendants No.2&3 for registration of the label mark „RAASTA‟ in Class 43
and the objection raised by the Registrar of Trade Marks thereto citing inter
alia the registered trade mark in favour of the M/s Ramaiah Developers &
Builders (P) Ltd. On the basis thereof it was argued that the defendants have
throughout been aware of the registration in favour of the plaintiff and for
CS(COMM) No.1433/2016 Page 5 of 18
this reason only had abandoned their applications.
11. Before proceeding further, I may notice that the plaintiff in the present
suit has not claimed any relief on the ground of passing off and though has
claimed relief, besides on the ground of infringement of trade mark also on
the ground of infringement of copyright but no case for infringement of
copyright is made out, as the trade mark (label) of the plaintiff and the
defendants though have the word „RASTA‟ or „RAASTA‟ in common but
otherwise are as distinct as day and night. The same would be obvious from
the comparison herein below:
Trade Mark (Label) of Plaintiff Trade Mark (Label) of Defendants
12. Thus, the first question to determine is, whether the plaintiff is entitled
to maintain a suit for infringement or to interim relief therein, without its
name on the register of the Registrar of Trade Marks as proprietor of the
mark of which infringement is claimed.
13. The counsel for the plaintiff, on enquiry, whether the plaintiff has
made an application to the Registrar of Trade Marks for registration of the
assignment, states that it has not been filed so far, as need was not felt, the
plaintiff being part of a closely held group but the application will now be
CS(COMM) No.1433/2016 Page 6 of 18
filed.
14. I, in Sun Pharmaceuticals Industries Limited Vs. Cipla Limited 2009
(108) DRJ 207 had an occasion to deal with the question. The counsel for
the defendant therein relied on Soundarapandian Match Works Vs. M.
Jayarama Chetty (1950-2000) (Suppl) (2) PTC 145 (Mad) and Shaw
Wallace & Co. Ltd. Vs. Superior Industries Ltd. 2007 (35) PTC 782 (Del).
In the first of the said judgments, a learned Single Judge of the Madras High
Court held that having regard to the rigour of Section 44 of the Trade and
Merchandise Marks Act, 1958, as long as the registration of the assignment
has not been completed, the assignee cannot seek to exercise any right. It
was reasoned that the Registrar is entitled to refuse to register the assignment
and till the assignment is registered, it cannot be known whether the
registration would be effected or not. It was further held that without
registration, the document of assignment is inadmissible to prove the title to
the trade mark by assignment and thus till such registration, there is no right
in the assignee to prevent anyone. In Shaw Wallace & Co. Ltd. supra, this
Court held that till the time the Registrar, Trade Marks does not record the
title in favour of the assignee, the deed of assignment cannot be admitted in
evidence. I of my own referred to Ratansi Mulji Vs. Vinod Ratilal Gandhi
AIR 1991 Bom 407 quashing the prosecution for unauthorised use of trade
mark at the instance of a person assignment in whose favour had not been
registered, holding that without registration of assignment, no rights can be
pleaded on the ground of the trade mark having assigned or transmitted. Per
contra, the counsel for the plaintiff in Sun Pharmaceuticals Industries
Limited supra relied on Modi Threads Limited supra and Grandlay
Electricals (India) Ltd. Vs. Vidya Batra 1998 PTC (18) Delhi holding that
CS(COMM) No.1433/2016 Page 7 of 18
even if the application for getting transferred the registered trade mark in the
office of the Registrar of Trade Marks is pending, that does not debar the
party from protecting the violation of the trade mark at the hands of
unscrupulous persons by filing an action in Court of law for injunction. It
was reasoned that during the interregnum period when the application is kept
pending for consideration by the Registrar of Trade Marks, dishonest persons
cannot be allowed to make use of the said trade mark and to illegally enrich
themselves. It was further held that title accrues on the execution of the
assignment deed and all other follow up actions which are required to be
taken under the Trade Marks Act do not change the title already acquired in
this respect. It was yet further reasoned that if in spite of the party having
applied to the Registrar of Trade Marks, no action is taken by the Registrar,
the party cannot be blamed therefor.
15. I, in Sun Pharmaceuticals Industries Limited supra, on consideration
of the aforesaid judgments held (i) that the reasoning which prevailed with
the Madras High Court in Soundarapandian Match Works supra had not
been considered in Modi Threads Limited supra and Grandlay Electricals
(India) Ltd. supra; (ii) however another learned Single Judge of this Court in
Astrazeneca UK Ltd. Vs. Orchid Chemicals and Pharmaceuticals Ltd.
(2006) 32 PTC 733 had also taken the same view and held that the rights in
the trade mark come on the basis of assignment deeds and the plaintiffs
cannot be denied the rights in the trade mark which they had got on the basis
of the assignment deeds in their favour on the ground that in the records of
the Registrar of Trade Marks, the trade mark was still shown in the name of
the assignor; (iii) the Supreme Court in Collector of Central Excise
Ahmedabad Vs. Vikshara Trading and Investment (P). Ltd. 2003 (27) PTC
CS(COMM) No.1433/2016 Page 8 of 18
603 though not directly concerned with the issue had held that once it was
not in dispute that there was an assignment, the mere fact that the assignment
was not registered could not alter the position; (iv) that the learned Single
Judge of the Madras High Court in Soundarapandian Match Works supra
had not considered the earlier judgment of the Division Bench of that Court
in T.I. Muhammad Zumoon Sahib supra; (v) that registered trade mark is
different from registered proprietor; (vi) that assignment under Section 2(b)
is an assignment in writing by an act of parties concerned and does not
require registration; (vii) that for assignment to be complete, the Registrar is
not involved; (viii) that from the language of Section 45(1) of the Trade
Marks Act also, the assignee acquires title to the registered trade mark on
assignment and not by registration; (ix) that registration is of title acquired
by assignment; (x) that a dispute as to assignment can be raised by the
assignor or by some person claiming prior assignment and not by strangers
or by persons claiming adversely to the assignor; (xi) that thus the assignee
immediately on assignment acquires title to the registered trade mark and
title to the registered trade mark exists in assignee even before registration
under Section 45(1); (xii) that what prevailed with the Madras High Court in
Soundarapandian Match Works supra was the inaction of the plaintiff
therein to even apply to the Registrar of Trade Marks; (xiii) that however the
plaintiff in Sun Pharmaceuticals Industries Limited supra had applied for
registration of the assignment as far back as in the year 2000 and there was
nothing to show that the plaintiff was in any way to blame for the Registrar
having not decided the application either way; the plaintiff could not be
made to suffer for the actions of the Registrar; (xiv) that Section 45(2) of the
Trade Marks Act prohibiting admission into evidence of any assignment till
CS(COMM) No.1433/2016 Page 9 of 18
registered was in the nature of Section 35 of the Indian Stamp Act, 1899
prohibiting the Courts from admitting into evidence documents not duly
stamped i.e. to ensure registration of assignments; (xv) thus the plaintiff,
notwithstanding being not registered was held entitled to exercise rights as
registered proprietor of the trade mark.
16. I have wondered whether the reasoning which prevailed with me in
Sun Pharmaceuticals Industries Limited supra should prevail in the facts of
the present case also, where the plaintiff inspite of assignment claimed in its
favour as far back as on 9th December, 2009 and inspite of knowledge of
infringement of the said trade mark by the defendants as far back as in 2012,
has till date not taken any steps for registration of the assignment in its
favour.
17. Section 45 as it existed at the time of Sun Pharmaceuticals Industries
Limited supra as under:
"45. Registration of assignments and transmissions - (1)
Where a person becomes entitled by assignment or transmission
to a registered trade mark, he shall apply in the prescribed
manner to the Registrar to register his title, and the Registrar
shall, on receipt of the application and on proof of title to his
satisfaction, register him as the proprietor of the trade mark in
respect of the goods or services in respect of which the
assignment or transmission has effect, and shall cause
particulars of the assignment or transmission to be entered on
the register:
Provided that where the validity of an assignment or
transmission is in dispute between the parties, the Registrar
may refuse to register the assignment or transmission until the
rights of the parties have been determined by a competent
court.
(2) Except for the purpose of an application before the
CS(COMM) No.1433/2016 Page 10 of 18
Registrar under sub-section (1) or an appeal from an order
thereon, or an application under section 57 or an appeal from
an order thereon, a document or instrument in respect of which
no entry has been made in the register in accordance with sub-
section (1), shall not be admitted in evidence by the Registrar or
the Appellate Board or any court in proof of title to the trade
mark by assignment or transmission unless the Registrar or the
Appellate Board or the court, as the case may be, otherwise
directs."
has w.e.f. 8th July, 2013 been substituted by the Trade Marks
(Amendment) Act (40) of 2010 as under:
"45. Registration of assignments and transmissions--(1)
Where a person becomes entitled by assignment or transmission
to a registered trade mark, he shall apply in the prescribed
manner to the Registrar to register his title, and the Registrar
shall, on receipt of the application, register him as the
proprietor of the trade mark in respect of the goods or services
in respect of which the assignment or transmission has effect,
and shall cause particulars of such assignment or transmission
to be entered on the register.
(2) The Registrar may require the applicant to furnish
evidence or further evidence in proof of title only where there is
a reasonable doubt about the veracity of any statement or any
document furnished.
(3) Where the validity of an assignment or transmission is in
dispute between the parties, the Registrar may refuse to register
the assignment or transmission until the rights of the parties
have been determined by a competent court and in all other
cases the Registrar shall dispose of the application within the
prescribed period.
(4) Until an application under sub-section (1) has been filed,
the assignment or transmission shall be ineffective against a
person acquiring a conflicting interest in or under the
CS(COMM) No.1433/2016 Page 11 of 18
registered trade mark without the knowledge of assignment or
transmission."
18. It needs to be considered whether Section 45 as it now stands requires
re-consideration of the view taken in Sun Pharmaceuticals Industries
Limited supra.
19. Sub-section (4) of Section 45 of the Trade Marks Act as it now stands
is new. It makes the assignment ineffective against a person acquiring a
conflicting interest in or under the registered trade mark without the
knowledge of assignment or transmission. The defendants herein have
however not acquired any conflicting interest in or under the registered trade
mark.
20. There are certain other differences in Section 45 pre and post the
amendment thereof w.e.f. 8th July, 2013. While under the sub-section 45(2)
as it stood prior to the amendment w.e.f. 8 th July, 2013, a document or
instrument in respect of which no entry had been made in the register in
accordance with the sub-section (1) was to be not admitted in evidence by
any Court in proof of title to the trade mark by a assignment or transmission
unless the Court otherwise directed, in the amended Section 45 such
impediment on the Court has been removed. The amended Section 45 also
grants liberty to the Registrar, Trade Marks to require the applicant to furnish
evidence or further evidence in proof of title if entertains any doubt. It
follows that while the prohibition contained on admission into evidence of a
deed of assignment if not entered in the register has been removed, power
has been given to the Registrar to ask applicant to furnish evidence or further
evidence in proof of title under the deed of assignment or transmission of a
CS(COMM) No.1433/2016 Page 12 of 18
registered trade mark.
21. The said changes in Section 45 however do not call for a change in the
view taken in Sun Pharmaceuticals Industries Limited supra. I may
however record that the Division Bench of the High Court of Bombay in
Parksons Cartamundi Pvt. Ltd. Vs. Suresh Kumar Jasraj Burad 2012 SCC
OnLine Bom 438 has held that though prior to the amendment registration of
assignment under Section 45 could not be said to be a mere formality but is
so after the amendment.
22. One thing which is however clear as a day light on a reading of
Section 45 is that registration of assignment under Section 45 is mandatory.
This is evident from the use of the word „Shall‟ in Section 45(1).
23. Thus it is mandatory for a assignee of a registered trade mark to apply
in the prescribed manner to the Registrar, Trade Marks to register his title
thereto.
24. Seen in this light what distinguishes the present case from Sun
Pharmaceuticals Industries Limited supra and the judgments relied upon
therein is that while in all those cases the plaintiff had applied to the
Registrar, Trade Marks for registration of his title to the trade mark by
assignment or transmission and non-registration was not attributable to any
default on the part of the plaintiff therein, the plaintiff herein for the last
nearly eight years from the date of the claimed assignment and for the last
nearly five years since the admitted knowledge of claimed infringement has
not even applied to the Registrar of the Trade Marks for registering the
assignment of trade mark in its favour. The possibility of the plaintiff not
doing so for reasons not spelled out before this Court cannot be ruled out.
CS(COMM) No.1433/2016 Page 13 of 18
The fact that the plaintiff has not chosen to make M/s Ramaiah Developers
& Builders (P) Ltd. as a party to this suit also raises doubt as to the validity
of the assignment, on the basis whereof this suit for infringement has been
filed.
25. Even otherwise, I am of the opinion that if this Court inspite of such
delays and neglect on the part of the plaintiff grants to the plaintiff all the
benefits and privileges to which a registered proprietor is entitled to, the
same would amount to this Court allowing mandatory provisions of the
statute to be flouted and/or not penalising the plaintiff therefor, making the
statutory provisions otiose.
26. I may in this regard notice that Section 2(1)(v) of the Trade Marks Act
defines a registered proprietor in relation to a trade mark as meaning the
person for the time being entered in the register as proprietor of the trade
mark and Section 28, on registration of a trade mark, gives to the registered
proprietor of the trade mark right to obtain relief in respect of infringement
of the trade mark. The words „registered proprietor‟ in Section 28 would take
their meaning from Section 2(1)(v) meaning the person for the time being
entered in the register as proprietor of the registered trade mark. The plaintiff
till date is neither the person for the time being entered in the register as
proprietor of the trade mark for infringement of which the suit has been filed
nor has applied therefor.
27. I have also enquired, whether there is any time limit for applying
under Section 45 of the Trade Marks Act.
28. The counsel for the plaintiff states that there is none.
29. Chapter IV of the Trade Marks Rules, 2002 deals with assignment and
CS(COMM) No.1433/2016 Page 14 of 18
transmission and Rule 72 thereunder provides for impounding of instruments
not properly or sufficiently stamped. From the copy of the Deed of
Assignment filed by the plaintiff, it does not appear to be stamped. It would
thus be liable to be impounded, if presented for registration of assignment.
30. Another thing which may be taken note of is that the assignment
claimed is of a date, though after the date of the application for registration
but prior to the date of registration. The Deed of Assignment filed shows the
assignment to be otherwise than in connection with the goodwill of the
business in which the mark was used. Per Section 42 of the Trade Marks
Act, where the assignment of trade mark is made otherwise than in
connection with goodwill of business, the assignment shall not take effect
unless the assignee not later than the expiration of six months from the date
of assignment applies to the Registrar for advertisement of assignment and
advertises it in such form and manner as the Registrar may direct. Rule 79
also prescribes a period of six months for registration of such an application.
The said period of six months has long since lapsed.
31. I may also record that High Court of Madras in Nico Quality Products
Vs. N.C. Arya Snuff and Cigar Co. MANU/TN/2680/2013, after
considering the amendment of Section 45 and relying inter alia on a
judgment of the Division Bench of the High Court of Madras in Orchid
Chemicals & Pharmaceuticals Ltd. Vs. Wockhardt Limited
MANU/TN/0391/2013 has held that where assignment of trade mark is made
without goodwill of business, filing of application to the Registrar of Trade
Marks for the advertisement of assignment is mandatory and a condition
precedent for assignment to take effect. Holding so, the application for
CS(COMM) No.1433/2016 Page 15 of 18
interim relief was dismissed. Though appeals being O.S.A. Nos.28-29/2014
thereagainst were preferred to the Division Bench but were on 18 th March,
2015 disposed of as not pressed.
32. All the said facts raise a doubt as to the entitlement of the plaintiff to
sue for the relief of infringement and are enough to deny to the plaintiff the
equitable relief of interim injunction.
33. The aforesaid facts also show the lackadaisical conduct of the plaintiff
qua the trade mark. This Court while dealing with the applications for
interim injunction is not to come to the rescue of a person who is found to be
not diligent in protecting its rights.
34. In Hindustan Pencils (P) Ltd. supra cited by the counsel for the
plaintiff to contend that delay, laches, acquiescence and waiver would not
disentitle the plaintiff to the relief of permanent injunction, what was held
was that inordinate delay would not defeat an action for grant of temporary
injunction where the use by the defendant of the mark was found to be
fraudulent. It was also held in the facts of that case that the delay on the part
of the plaintiff was not inordinate. Similar was the reasoning in Midas
Hygiene Industries P. Ltd. supra and in Win-Medicare Pvt. Ltd. supra.
35. On perusal of the label mark of the plaintiff and the defendants I am
unable to at this stage hold the conduct of the defendants to be dishonest or
fraudulent to hold that, notwithstanding the admitted delay of four years on
the part of the plaintiff in approaching the Court after knowledge of use of
mark by the defendants, the defendants are not entitled to set-up the plea of
laches, acquiescence and waiver. The defendants though were made aware
by the Registrar of the Trade Marks of the registration in favour of the
CS(COMM) No.1433/2016 Page 16 of 18
plaintiff, cannot be said to have practised any fraud in adoption of the subject
mark. In this regard the nature of the business for which the plaintiff as well
as the defendants are using the mark also assumes significance. The use of
the mark by both is for a stand-alone restaurant / eatery as distinct from
restaurants in a chain of hotel. The goodwill and reputation of such stand-
alone restaurant is mostly territorial i.e. confined to the city in which it is
situated and at least at this stage no possibility can be fathomed of the
patrons confusing between restaurants in far of cities even if of the same
name. In fact some of the names like Quality, Embassy, Sher E Punjab, Pindi
are common to restaurants in different cities.
36. Moreover a perusal of the two label marks also belies any fraud or
dishonesty on the part of the defendants in incorporating the word
„RAASTA‟ on their label mark. Label mark of the plaintiff as well as of the
defendants are entirely different.
37. Yet another interesting factor which one has experienced in recent
times in relation to eateries / restaurants / bars / lounges catering to the
youngsters is that such restaurants have a limited shelf life with the patrons
thereof desiring different experience and not wanting to repeat the
experience. Recent years have witnessed the same owner / proprietor of a
restaurant at the same premises, changing the name decor, Cuisine etc. of the
restaurant to take advantage of the novelty factor, looking wherefor the
patrons throng a new restaurant.
38. For all the aforesaid reasons I am of the view that the plaintiff has
been unable to establish a prima facie case for grant of interim relief.
39. In the facts aforesaid, the balance of convenience is also not in favour
CS(COMM) No.1433/2016 Page 17 of 18
of the plaintiff and is rather in favour of the defendants. The loss to the
defendants from the grant of interim injunction would certainly be
incalculable in the event of the plaintiff being ultimately not found to be
entitled to the relief, while the loss which the plaintiff will suffer from non-
grant of injunction if ultimately is to succeed in the suit can always be
compensated.
40. IA No. 13020/2016 is accordingly dismissed.
RAJIV SAHAI ENDLAW, J.
MARCH 15, 2017 bs/pp (Corrected and released on 26th April, 2017).
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