M/S. Shree Santosh Family Dhaba, vs M/S. Santosh Dhaba Exclusive, on 7 November, 2024

[Cites 37, Cited by 0]

Telangana High Court

M/S. Shree Santosh Family Dhaba, vs M/S. Santosh Dhaba Exclusive, on 7 November, 2024

Bench: G.Radha Rani

            THE HON'BLE Dr.JUSTICE G.RADHA RANI

         CIVIL MISCELLANEOUS APPEAL No.463 of 2024

JUDGMENT:

This Civil Miscellaneous Appeal is filed by the appellant - respondent - defendant aggrieved by the order dated 05.07.2024 in I.A No.716 of 2024 in O.S No.151 of 2024 passed by the XI Additional Chief Judge, City Civil Court at Hyderabad.

2. The respondent is the plaintiff. The plaintiff filed the suit against the appellant-defendant for infringement and passing off his registered trade mark "SANTOSH DHABA" and sought for the relief of permanent injunction and to surrender to the plaintiff all the advertisement materials, hoardings, letter heads, visiting cards, office stationary therein of the trade mark SANTOSH or disruptively similar trade mark and to render account of profits made by them by using trade mark SANTOSH. Along with the suit, the plaintiff filed I.A No.716 of 2024 under Order XXXIX Rule 1 and 2 read with Section 151 of CPC to grant ad interim injunction. The appellant - respondent No.1 filed counter to the said application and after hearing both the learned counsel, the trial court passed an order allowing the petition granting interim injunction directing the appellant from restraining the use of the petitioners trade mark SANTOSH DHABA in 2 respect of allied services provided by the plaintiff. Aggrieved by the said order of granting interim injunction, the respondent - defendant preferred this appeal.

3. Heard Sri. G.L.Soni, learned counsel representing Sri N.Vishal, learned counsel for the appellant on record and Sri Ashok Ram Kumar, learned counsel representing Sri Abhishek Agarwal, learned counsel for the respondent on record.

4. Learned counsel for the appellant contended that the appellant was doing the business since 2016 in the name of "SHREE SANTOSH FAMILY DHABA" which was entirely distinct from the respondent - plaintiff's business. There were more than 25 entities with a prefix or suffix to the word SANTOSH in the market by third parties. The word SANTOSH DHABA was not exclusive to the respondent - plaintiff as Santosh being a noun, the respondent - plaintiff could not claim any exclusive right and restrict the usage of the appellant herein. The appellant had registered his business entity by name "M/s. Shree Santosh Family Dhaba" in the year 2018 and obtained registration services from the Labour Department and license from the Government of Telangana under Telangana Shops and Establishment Act, 1988 and was using the mark without any objection or interruption from any corner. The court below 3 failed to consider that the appellant applied for registration with Government of Telangana Commercial Taxes Department to obtain value added registration certificate in the month of June, 2016, in the name and style of "SHREE SANTOSH FAMILY DHABA", upon which the authority concerned had issued the certificate dated 14.06.2016 to the appellant. The business of the appellant in the name and style of 'Shree Santosh Family Dhaba' was entirely different from that of the plaintiff by name M/s. Santosh Dhaba Exclusive. The appellant was a service provider and proprietor of trade mark for restaurant service marked under the name and style of M/s. Shree Santosh Family Dhaba (TM No.3866680) published in Journal No.1918 dated 09/09/2019 throughout India and had a legally vested and propriety right to use the mark for the said service. To avail the benefit of long-lasting reputation of the mark without interference or any indulgence from anyone, a publication was also made by the appellant regarding Trademark in the journal inviting objections from the public at large dated 09.09.2019.

4.1. Learned counsel for the appellant further submitted that the Court below failed to consider that the appellant had applied for the trademark and invited objections from the public at large. The respondent herein had filed their objections before the Trademark Authority in Delhi. The 4 proceedings before the competent authority at Delhi were pending adjudication. The said matter was at the stage of evidence. The appellant had invested all his savings and obtained lease in establishing the restaurant and it was the only source of income to his family and his working staff. The suit was barred as per the limitation Act as the respondent had filed caveat petition in the year of 2017 against SHREE SANTOSH FAMILY DHABA and Shri Mukesh Sankhla before the Additional District Judge, Rangareddy. The suit filed by the respondent was also barred by law as prescribed under the Commercial Courts Act, 2015 as the nature of the dispute was commercial in nature. However, the respondent filed the present suit without taking steps in accordance with Section 12-A of Commercial Courts Act, 2015 which was mandatory to follow pre- litigation-mediation. The respondent failed to disclose urgency in filing the present suit. In the absence of compliance of Section 12-A of Commercial Courts Act, 2015 the present suit was liable to be rejected at the threshold as per the judgment of the High Court of Madras titled as "MicroLab Vs. Mr.A.Santhosh." The court below erroneously marked the documents filed by the respondent, but not marked the documents filed by the appellant and passed a cryptic order without any reasoning, as such, the same was liable to be set aside.

4.2. Learned counsel for the appellant relied upon the judgment of the High Court of Madras in V.Kumar Vs. R.Natarajan on the aspect that the suit was time barred and upon the judgment of the Hon'ble Apex Court in Khatri Hotels Private Limited and another Vs. Union of India and another 1 on the aspect that if a suit is based on multiple causes of action, the period of limitation will begin to run from the date when the right to sue first accrues and successive violation of the right will not give rise to fresh cause of action. He further contended that registration would not confer any exclusive right in the matter wherein only a part of the whole of the trade mark was registered and relied upon the Division Bench judgment of the High Court of Delhi in Vardhman Buildtech Private Limited & Others Vs. Vardhman Properties Limited dated 17.08.2016 reported in Indian Kanoon - http://indiankanoon.org/doc/99657971/.

5. Learned counsel for the respondent - plaintiff, on the other hand, contended that the respondent started his business dating back to the year 1995. The business took a legitimate shape in the year 2001 and got completely organized in the year 2004. As a result of the hard work, devotion and treatment to the dining humanity, the turnover of the business of the respondent - plaintiff had increased substantially. The name of the respondent had become popular and famous amongst the foodies. In order 1 (2011) 9 SCC 126 6 to protect his right, the respondent applied for registration under No. 2391012 in Class - 43 in the year 2012 in respect of services pertaining to providing Food and Drink, Restaurant and Hotel Services. The mark had been registered in favour of the respondent - plaintiff and the registration was valid and subsisting as on date till 06/09/2032. The petitioner had registered the Trademark/Service Mark in the name of "SANTOSH DHABA". By virtue of the said registration, the respondent - plaintiff had exclusive right in the Trademark/Service mark "SANTOSH DHABA" to the exclusion of all others, as guaranteed by the provisions contained in the statute. If anyone else used the same without the express permission of the respondent - plaintiff, the same would amount to infringement and passing off the registered Trade Mark/Service Mark of the respondent - plaintiff. The appellant - defendant had created deceptively similar mark to show that it was associated with the respondent - plaintiff's mark. The appellant

- defendant was using the mark which was substantively identical or deceptively similar to that of the plaintiff's registered trade mark, "SANTOSH DHABA". Both the appellant and the respondent were engaged in the services of providing Food & Drinks. Public were bound to be misled by the use of the identical mark with respect to identical services. The appellant's Restaurant Services were sub-standard in quality and were tarnishing the hard-earned reputation of the respondent - plaintiff. It was 7 causing injury to the business of the respondent - plaintiff. The appellant acts were motivated purely by malafide intention to encroach upon the reputation and goodwill of the respondent - plaintiff. As such, the respondent - plaintiff filed the suit for infringement and passing off. In case of trade mark infringement an injunction must be granted as per the judgments of the Hon'ble Apex Court in Ruston & Hornsby Limited Vs. The Zamindara Engineering Company 2, Laxmikant V. Patel Vs. Chetanbhat Shah and others 3 and Renaissance Hotel Holdings Inc. Vs. B.Vijaya Sai and others 4.

5.1. He further contended that the prior user of a mark would hold a stronger ground, the respondent - plaintiff was a registered trade mark holder and also a prior user and relied upon the judgments of the Hon'ble Apex Court in S.Syed Mohideen Vs. P.Sulochana Bai 5 and Neon Laboratories Limited Vs. Medical Technologies Limited and others 6. 5.2. He further contended that merely adding prefix or suffix was not sufficient to distinguish the mark and relied upon the judgments of the High court of Calcutta in Ganesh Grains Limited and Others. Vs. Shree 2 AIR (1970) SC 1649 3 AIR (2002) SC 275 4 2022(2) ALD 301 5 2015 (3) CCC 1 6 Manu/SC/1192/2015 8 Ganesh Besan Mill and Others 7 and of the judgment of the High Court of Delhi in Make My Trip (India) Private Limited Vs. Make My Travel (India) Private Limited 8 and of the judgment of the Hon'ble Apex Court in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories 9 and of the High Court of Delhi in Subhash Chand Bansal vs. Khadim's and Others 10 and also contended that a Triple Identity Test was propounded for granting of injunction and relied upon the judgments of the Delhi High Court in Ahmed Oomerbhoy & Another Vs. Gautam Tank & Ors 11 and Dr. Reddys Laboratories Limited Vs Fast Cure Pharma 12 and Sporta Technologies Private Limited and Others. Vs. Dreamz11 and Others 13 and Banyan Tree Holdings Limited Vs. Angsana Thai SPA and Others 14.

5.3. He also contended that in cases of infringement of trade mark, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat the right of grant of injunction and relied upon the judgments of the Hon'ble Apex Court in Ramdev Food Products Private 7 MANU/WB/0179/2021 8 MANU/DE/3392/2019 9 AIR 1965 SC 980 10 MANU/DE/3965/2012 11 2007 SCC OnLine Del 1685 12 MANU/DE/5280/2023 13 2023 DHC 7811 14 2023 DHC 8623 9 Limited Vs. Arvindbhai Rambhai Patel and Others 15 and of the High Court of Delhi in Hindustan Pencils Private Limited Vs. India Stationery Products Company and Others 16 and Bhatia Plastics Vs. Peacock Industries Limited and Others 17 and of the Hon'ble Apex Court in Midas Hygiene Industries Private Limited and Others Vs. Sudhir Bhatia and Others 18.

5.4. He also further contended that infringement of a registered trade mark would give rise to a continuous cause of action. As such, the contention of the learned counsel for the appellant - defendant that the suit was barred by limitation would not hold any merit and relied upon the judgment of the High Court of Delhi in Intel Corporation Vs. Harpreet Singh and others 19. With regard to the contention that the suit ought to have been filed before a Commercial Court, learned counsel for the respondent submitted that there was no provision under Commercial Courts Act which prescribed that all trademark applications had to be filed before the Commercial Court, and in cases where urgent interim relief was required, Section 12-A of the Commercial Courts Act would not come in 15 AIR 2006 SC 3304 16 (1989)ILR 1Delhi115 17 AIR 1995 Delhi 144 18 (2004) 3 SCC 90 19 2018 DHC 968 10 the way and relied upon the judgment of the Hon'ble Apex Court in Yamini Manohar Vs. T.K.D Keerthi 20.

6. As seen from the contentions raised by both the counsel, the grievance of the appellant appears to be mainly that the trial court had not addressed the issues of limitation and of his contention that the suit was barred by law as not filed in accordance with the Commercial Courts Act, 2015 and no steps were taken in accordance with Section 12-A of the Commercial Courts Act, 2015.

7. The contention of the learned counsel for the appellant was that he filed a caveat petition in the year 2017 itself before the Additional District Judge, Rangareddy, but the suit was filed only in the year 2024, as such, the same was barred as per the Limitation Act, 1963, which was opposed by the learned counsel for the respondent and contended that it was a continuous cause of action and as such, there was no limitation to file the suit. The judgments relied by the learned counsel for the appellant on this aspect in V.Kumar Vs. R.Natarajan delivered by the High Court of Madras was pertaining to a suit for declaration, mandatory injunction and recovery of possession. The citation of the Hon'ble Apex Court in Khatri Hotels Private Limited and another Vs. Union of India and another 20 (2024) 5 SCC 815 11 (1 Supra) is also pertaining to a suit seeking the relief of permanent injunction, wherein it was contended that the defendants were threatening the plaintiffs to demolish the premises. Both these cases are not pertaining to the Trade Marks Act.

8. The judgments relied by the learned counsel for the respondent - plaintiff on this aspect in Intel Corporation Vs. Harpreet Singh and others (19 Supra) delivered by the High Court of Delhi is pertaining to the Trade Marks Act, 1999 wherein by placing reliance upon the judgment of the Hon'ble Apex Court in M/s Bengal Waterproof Limited Vs. Bombay Waterproof Manufacturing Company and others 21, it was held that in a suit for infringement of trade mark, the cause of action was a recurring cause of action and the question of limitation would not arise. It was further held that in view of Section 22 of the Limitation Act, the continuing action would give rise to a fresh period of limitation. Every person who passes off the goods as those of another would be committing an act of deceit and wherever and whenever fresh deceitful act is committed, the person deceived would naturally gets a fresh cause of action in his favour. Infringement of a registered trade mark would also be a continuing wrong so long as infringement continues. Therefore, whenever a new infringement had taken place, the cause of action for filing a fresh suit would arise in 21 AIR 1997 SC 1398 12 favour of the plaintiff who is aggrieved by such fresh infringement of trademark or fresh passing off actions alleged against the defendants. As such, this court considers that the contention of the learned counsel for the appellant that the suit was barred by limitation does not hold any merit and the same is liable to be rejected.

9. The contention of the learned counsel for the appellant was that the suit ought to have been filed before the Commercial Court and the suit was liable to be rejected at the threshold for not following the procedure prescribed under Section 12-A of Commercial Court Act, 2015 which was mandatory. The jurisdiction of the Commercial Court is based upon the pecuniary value prescribed under it and as it is currently specified as more than Rs. One Crore to consider it as a commercial dispute, all other matters less than that value have to be filed before regular Courts. As such, this Court does not find merit in the said contention.

10. The Hon'ble Apex Court in Yamini Manohar Vs. T.K.D Keerthi (20 Supra) held that Section 12A of the Commercial Courts Act does not contemplate leave of the court, as is clear from the language and words used therein, nor does the provision necessarily require an application seeking exemption. An application seeking wavier on account of urgent interim relief setting out grounds and reasons may allay a challenge and 13 assist the court, but in the absence of any statutory mandate or rules made by the Central Government, an application per se is not a condition under Section 12A of the CC Act; pleadings on record and oral submissions would be sufficient. The words used in Section 12A of the CC Act are - "A suit which does not contemplate any urgent interim relief", wherein the word "contemplate" connotes 'to deliberate' and 'consider'. 10.1. It extracted the judgment of the High Court of Delhi in "Chandra Kishore Chaurasia Vs. R.A. Perfumery Works Private Limited" {2022 SCC OnLine Del 3529} wherein it was held that:

6.(31). First of all, there is no provision under Section 12A of the Commercial Courts Act, 2015 that requires the plaintiff to make any such application in a suit which involves urgent interim reliefs. As stated above, if the suit involves urgent interim relief, Section 12A of the Commercial Courts Act, 2015 is inapplicable and it is not necessary for the plaintiff to enter into a pre-institution mediation.

33. This Court also finds it difficult to accept that a commercial court is required to determine whether the urgent interim reliefs ought to have been claimed in a suit for determining whether the same is hit by the bar of Section 12A(1) of the Commercial Courts Act, 2015. The question whether a plaintiff desires any urgent relief is to be decided solely by the plaintiff while instituting a suit. The court may or may not accede to such a request for an urgent interim relief. But that it not relevant to determine whether the plaintiff was required to exhaust the remedy of pre-institution 14 mediation. The question whether a suit involves any urgent interim relief is not contingent on whether the court accedes to the plaintiff's request for interim relief.

35. This Court is of the view that the question whether a suit involves any urgent interim relief is to be determined solely on the basis of the pleadings and the relief(s) sought by the plaintiff. If a plaintiff seeks any urgent interim relief, the suit cannot be dismissed on the ground that the plaintiff has not exhausted the pre-institution remedy of mediation as contemplated under Section 12A(1) of the Commercial Courts Act, 2015.

10.2. The Hon'ble Apex Court after extracting the same, held that:

"8........The words 'contemplate any urgent interim relief' in Section 12A(1) of the CC Act, with reference to the suit, should be read as conferring power on the court to be satisfied. They suggest that the suit must "contemplate", which means the plaint, documents and facts should show and indicate the need for an urgent interim relief. This is the precise and limited exercise that the commercial courts will undertake, the contours of which have been explained in the earlier paragraph(s). This will be sufficient to keep in check and ensure that the legislative object/intent behind the enactment of section 12A of the CC Act is not defeated."

10.3. Thus, the contention of the learned counsel for the appellant that the suit was barred by limitation or not following the procedure under Section 12-A of Commercial Court Act, 2015 are liable to be rejected. 15

11. The learned counsel for the appellant contended that the trial court had not marked any of the documents filed by the appellant. But it appears that the appellant - defendant had not taken any care to see that the documents filed by them along with the written statement were marked in I.A No.716 of 2024. It was the duty of the counsel to see that the documents relied by them were marked in the I.A and cannot throw the blame on the Court to automatically give a mark to the documents filed by them along with the written statement. When such a care or precaution was not taken by the counsel representing the parties, they could not blame the Court for not marking the documents on their behalf. When the counsel for the plaintiff had taken care to see that the documents filed by them along with the plaint are marked in the I.A., the same care or caution is expected from the learned counsel for the respondent - defendant in the said I.A. There is no reason for the Court not to mark the documents relied by one party, if they were exhibited at the time of arguments in the said I.A.

12. The documents filed by the learned counsel for the respondent - plaintiff would disclose that the plaintiff had registered his trade mark "SANTOSH DHABA" in Class-43 vide Trade Mark Application No.2391012. The registration certificate would disclose the address of the Proprietor of the trade mark as 4-1-364/A & B, Hanuman Tekadi, Abids, 16 Hyderabad-500001 T.S and the date of registration as 06.09.2012 and that it was renewed on 06.09.2022 and the registration was valid up to 06.09.2032. It was also mentioned in it that the said mark was used since 09.05.2004. The description of the goods in class-43 was mentioned as providing Food and Drink, Hotel and Restaurant Services. Thus, it was an undisputed fact that the plaintiff was a registered trade mark holder. The document filed by the appellant - defendant along with the appeal at Page No.186 of appeal book would disclose that the appellant had applied for the Trade Mark SD 100% veg Shree Santosh Family Dhaba in Class-43 vide application No.3866680 on 21.06.2018 and it was specified in the column user detail as 'proposed to be used'. The status of the application is shown as opposed by the present plaintiff. Thus, this document would disclose that the appellants had applied for the Trade Mark by name Shree Santosh Family Dhaba in the same Class-43 pertaining to 'restaurant services' and they had only mentioned that it was proposed to be used but were not using the same and the said application was opposed by the plaintiff herein. Both these documents would disclose that the plaintiff was the prior user of the mark and he was using it since 09.05.2004 and obtained registration in Class-43 for providing food and drink and hotel and restaurant services and the Trade Mark application of the defendant was pending registration and he only mentioned the user details as proposed to be used and was not 17 using the same. The said application by the appellant was also filed on 21.06.2018 subsequent to the plaintiff obtaining a registered trade mark in the year 2012 itself.

13. The effect of registration was provided in Section 27 of the Trade Marks Act, 1999. Section 28 confers rights on the registered trade mark holders, the exclusive right to use of the trade mark in relation to the goods or services in respect of which the trade mark was registered and obtain relief in respect of infringement of the trade mark. As these documents would disclose that the plaintiff was the prior user of the trade mark since the year 2004, he is also entitled to the relief of the common law remedy of "Passing Off". It is also a well recognized principle that passing off right is a broader remedy than that of infringement and registration of the trade mark recognizes the rights which were already pre-existing in common law. The Hon'ble Apex Court in S.Syed Mohideen Vs. P.Sulochana Bai (5 Supra) held that:

"24..........When the plaintiff has proved that the person who gets into the business at the first in point of time acquired the right to use the trade mark, the priority in use of the trade mark by the plaintiff will have to be recognized in law. Accordingly, when the plaintiff has earned the reputation and goodwill in the business in the name and style of 'Iruttukadai Halwa', the defendant cannot simply add the word 18 'Tirunelveli Iruttukadai Halwa', as the same has been used prior in point of time by the plaintiff. Therefore, the Court is of the considered opinion that allowing the defendant to use the trade mark 'Tirunelveli Iruttukadai Halwa' will amount to deceiving the public, hence, no one can be permitted to encroach upon the goodwill and reputation of other party, particularly when a specific mark, though may be a descriptive word, has acquired a subsidiary meaning and is fully admitted by the particular company and when a party who cannot be termed as a honest current user of the mark on the reputation and goodwill of the company, it will constitute invasion of the proprietary right, hence, the same cannot be permitted any longer. In a situation like this, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the prior user, but also to protect the interest of the consumers."

14. In Neon Laboratories Limited Vs. Medical Technologies Limited and others (6 Supra), the Hon'ble Apex Court held that:

"7. Section 34 of the Trade Marks Act, 1999 (the Act) deserves reproduction herein:

34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or 19

(b) to the date of registration of the first-

mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

Whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

This Section palpably holds that a proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This "first user" rule is a seminal part of the Act. While the case of the Plaintiff-Respondents is furthered by the fact that their use commenced prior to that of the Defendant-Appellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its use is prior to the use of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the Defendant- Appellant filed for registration in 1992, six years prior to the commencement of use by the Plaintiff-Respondents. The Defendant-Appellant was, thus, not prevented from restraining the Plaintiff-Respondents' use of the similar mark PROFOL, but the intention of the Section, which is to protect the prior user from the proprietor who is not exercising the user of its mark prima facie appears to be in favour of the Plaintiff- Respondents."

15. In the present case, the plaintiff was the prior user as well as registered trade mark holder. As such, he had a right to prevent use by another party of an identical or similar mark. The appellants failed to show that they were using the mark prior to the year 2004 (as found in Ex.P2), to show that their right over the said trade mark prevailed over the right of the plaintiff being a registered trade mark holder.

16. Section 29 of Trade Marks Act, 1999 pertains to infringement of registered trademarks and it reads as follows:

29. Infringement of registered trademarks.--

"(1). A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2).A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--

(a) is identical with or similar to the registered trade mark;

and 21

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or 22

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

17. As seen from Class - (3) of Section 29 there is a shall presumption and the court shall presume that the infringement of registered trade mark is likely to cause confusion on the part of the public.

18. Learned counsel for the appellant contended that the respondent - plaintiff had registered the trade mark as SANTOSH DHABA but the appellant was conducting business in the name of SHREE SANTOSH FAMILY DHABA, both are entirely different and no exclusive right would confer on the respondent - plaintiff in so far as part of the mark.

19. But Section 29 (5) specifies that even if only a part of the trade name or name of the business concern or part of the name was used by others also, it would amount to infringement.

20. The contention of the learned counsel for the appellant was that the words "SANTOSH" and "DHABA" were commonly used words and they could not be appropriated by the respondents and relied upon the judgment of the Division Bench of the Delhi High Court in Vardhman Buildtech 23 Private Limited & Others Vs. Vardhman Properties Limited wherein it was held that:

"10. The learned counsel for the respondent, as pointed out above, sought to take the benefit of Section 29(9) of the said Act. That provision stipulates that where distinctive elements' of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and the reference in Section 29 to the use of a mark is to be construed accordingly. First of all, the stress in the said provision is on the words 'distinctive elements'. Neither is 'VARDHMAN' nor the word 'PLAZAS' a distinctive element of the trade mark. The word 'VARDHMAN' has not been registered as a trade mark nor could it be because it is commonly used and, as pointed out above, is the name of Lord Mahavir. Secondly, the word 'PLAZAS' is also commonly used and cannot be appropriated by the respondent. Therefore, the distinctive elements are neither the word 'VARDHMAN' nor the word 'PLAZAS'. But, the two words taken together - 'VARDHMAN PLAZAS' - is a distinctive element of the label/mark. Thus, if the appellants were to use words 'VARDHMAN' and 'PLAZAS' in conjunction, then the respondent may have had a right to restrain them from using the same. We are, therefore, of the view that Section 29(9) of the said Act also does not come in aid of the respondent.

11. The decision of the Supreme Court in Ramdev Food Products Pvt. Ltd (supra) was in respect of the Trade Marks Act, 1958 and not in respect of the Trade Marks Act, 1999. This is the most important distinguishing feature apart from others which we need not refer to. Insofar as the decision of the Division Bench in United Biotech Pvt. Ltd (supra) is concerned, in that case, the registered trademark was 'ORZID' and the infringing word was 'FORZID'. Clearly that was a case which would fall under Section 29 as amounting to infringement of the registered trade mark 'ORZID'. Although, in that case also the mark which was registered was not a word mark but a label/mark which contained only the word 'ORZID'. Here, the words contained in the label/mark are 'VARDHMAN PLAZAS' and not just 'VARDHMAN'. Therefore, in our view, the decision in United Biotech Pvt. Ltd (supra) does not aid the arguments advanced by the learned counsel for the respondent."

21. But, in the present case both the words "SANTOSH" and "DHABA" which were registered by the respondent - plaintiff were used by the appellant and he only added the word "FAMILY" in between and "SHREE" in the beginning.

22. The High court of Calcutta in Ganesh Grains Limited and Others Vs. Shree Ganesh Besan Mill and Others. (7 Supra) held that:

"20. It has been judicially recognized that, user of a suffix or a prefix to the registered mark is of no consequence so far as an action on account of infringement or passing off is concerned. The suffix or the prefix have to be of a sufficient distinguishing feature and quality so as to distinguish the words used from the registered mark. In the facts of the present case, prima facie it cannot be said that, the user of the word "Shree" as a prefix to the registered word "Ganesh" distinguishes the product of the defendant's mark particularly when the parties are into the same class of business."

23. In Make My Trip (India) Private Limited Vs. Make My Travel (India) Private Limited (8 Supra) the Delhi High Court held that:

"15. Concededly, the nature of goods/services in respect of which the two trademarks have been used is also common, inasmuch as both the Plaintiff and Defendant are in the business of online travel booking services. The target audience likely to use the services of the parties is also the same.

16. The Supreme Court in several decisions has laid down the test which is to be applied while evaluating the question regarding the infringement. In the case of F. Hoffman La Roche v. Geofferey Manners reported in (1969) 2 SCC 716, the Apex Court held that true test is whether the 25 totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. In the said case, while deciding the question of infringement relating to trademark "PROTOVIT" and "DROPOVIT", it was held that marks have to be compared from the point of view of a person of imperfect recollection and meticulous comparison of both the words side by side is not to be made, but the marks are to be compared as a whole looking at the first impression created in the minds of the consumer. The Court has to lay stress on the common features rather than on the differences in essential features. In the case of Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. 2001 PTC 541 (SC), the Supreme Court was deliberating on the question of infringement in relation to two brand names "FALCITAB" and "FALCIGO". Referring to its earlier judgment in Amritdhara Pharmacy v. Satyadev Gupta AIR 1963 SC 449, the Court held that for deceptive resemblance, two important questions that need to be kept in mind are i) who are the persons that the resemblance must be likely to deceive or confuse and ii) what rules of comparison are to be adopted in judging whether such resemblance exists. It was further held that confusion is perhaps an appropriate description of the state of mind of a consumer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether the impression is not due to imperfect recollection."

24. In the present case also both the appellant and the respondent are in the same class of business of restaurant services. The nature of the services is common and it is likely to cause deception or confusion in the minds of the consumers.

25. In Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories (9 Supra), the Hon'ble Apex Court held that:

"28.The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufacture of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide s. 21 of the Act). The use by the defendant of the 27 trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered. trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the .conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."

26. In the present case also the essential features of the trade mark of the respondent - plaintiff "SANTOSH" and "DHABA" have been obtained by the appellants - defendants by conducting business in the name of "SHREE SANTOSH FAMILY DHABA" which creates confusion in the minds of the consumers that both originate from a common trade, which would amount to colourable imitation, as it is deceptively similar to that of the registered trade mark of the respondent - plaintiff. 28

27. In Subhash Chand Bansal vs. Khadim's and Others (10 Supra) the Delhi High Court held that:

"17. Mere use of the prefix KHADIM'S, would not take the case out of the purview of Section 29 of the Trade Marks Act irrespective of whether the word KHADIM'S is bigger, equal or smaller than the word KHAZANA. There is a strong possibility of customers findings the shoes and boots etc. being sold under the trademark KHADIM‟S KHAZANA in the stores of defendant no.2 and confusing the same with the trademark of the plaintiff on account of use of the word KHAZANA in the trademark of the defendants. Moreover, a customer of average intelligence may presume that it is the product of the plaintiff which is being sold in the stores of the defendants and that is why the word KHAZANA is written on the product and/or its packaging or the customers may presume that there is some kind of trade connection between the plaintiff and defendant no.2 and that is why the word KHAZANA is being used as a part of the trademark of the defendants, in respect of identical products."

28. Thus, adding prefix or suffix to the mark used by the plaintiff is not sufficient to distinguish the mark of the appellant - defendant.

29. In Ahmed Oomerbhoy & Another Vs. Gautam Tank & Others (11 Supra), the Hon'ble Apex Court had explained the triple identity test for grant of injunction as follows:

"29.The mark used by the defendants is similar, the goods are the same and the area of trade is also common. If these three factors are same or quite similar, then the second manufacturer should not be allowed to sell its product under the same name. This principle which is also termed as triple identity principle has been invoked in a number of cases. A Single Judge of this Court in Lal Sons Machines v. Sachar E & M Stores 1986, Rajdhani Law Reporter, 165 29 had held that in case of triple identity where the mark used by defendant is the same, the goods are the same and also the trade area it is the duty of the Court to protect the registered trademark. Another Single Judge of Calcutta High Court in Kalyani Breweries Ltd v. Khoday Brewing and Distilleries Industries Ltd. had invoked the triple identity rule. It was explained that where after marks were identified, the goods were identified and the areas over which the goods are going to be sold are identified, a second manufacturer cannot be allowed to sell its product under the same trade name. Comparison of two marks, prima facie, show that the essential features of the trademark of the plaintiffs have been adopted by the defendant nos. 1 & 2. In these circumstances the minor differences in the getup, packaging and other writings on the goods or on the packets in which the goods are sold by the defendants indicating clearly the different trade origin different from the registered proprietor of the mark of the plaintiff would not be very material. The added matter, prima facie, will not be sufficient to avoid any confusion or deception.

30. In Dr. Reddys Laboratories Limited Vs. Fast Cure Pharma (12 Supra), the High Court of Delhi applied this triple identity test and held that:

"12. The plaintiff's mark RAZO, which is an inventive and arbitrary manner of denoting the Active Pharmaceutical Ingredient in the product rabeprazole, has been wholly copied by the defendant in the impugned RAZOFAST mark. The trade dress of the defendant is also similar to that of plaintiff. The products of the defendant and the plaintiff are the same, namely, rabeprazole. They are also available at the same retail outlets and cater to the same class of consumers. The triple identity test, of deceptive similarity of marks, identity of goods and availability through the same sources and catering to the same consumer base also stands satisfied in the present case."

31. In the present case also both the appellant and respondent were catering to the same consumer base and their names and services are similar.

32. This triple identity test is used by various High Courts in almost all the cases. The High Court of Delhi in Sporta Technologies Private Limited and Others. Vs. Dreamz11 and Others (13 Supra) also applied this test and held that:

"25.The case also calls for invocation of the triple identity test, as the marks are deceptively similar, the client/customer base to which they cater is the same and both the marks are provided on internet websites so that they are available through the same source. This is additionally a ground for the court to return a finding of infringement."

33. In Banyan Tree Holdings Limited Vs. Angsana Thai SPA and Others (14 Supra) the Delhi High Court also applied the triple identity test to consider that the mark/name and services are identical.

34. As per the judgments of the Hon'ble Apex Court in Ruston & Hornsby Limited Vs. The Zamindara Engineering Company (2 Supra), the respondents trade mark is deceptively similar to that of the appellant, the fact that the work "INDIA" is added to respondent trade mark is of no consequence and the appellant is entitled to succeed in its action for 31 infringement of trade mark and further held that the appellant was entitled to an injunction restraining the respondent and his agents from selling or advertising under the name "RUSTAM" or "RUSTAM INDIA".

35. In Laxmikant V.Patel Vs. Chetanbhat Shah and others (3 Supra) the Hon'ble Apex Court held that:

"Even in the case of a passing off, once a case of passing off was made out, the practice was generally to grant a prompt exparte injunction followed by appointment of local commissioner if necessary.

"17.......A refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff as would not be capable of being undone at a later stage.........".

36. In Renaissance Hotel Holdings Inc. Vs. B.Vijaya Sai and others (4 Supra) the Hon'ble Apex Court held that:

"65. The emphasis has been placed by the High Court on the observations of this Court in the case of Midas Hygiene Industries (P) Limited (supra) to the effect that the grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. The High Court has relied upon the said observations to reverse the order of injunction on the ground that there is no dishonesty in the respondents-defendants' adoption of the mark and therefore, they cannot be said to have infringed the trade mark. In our considered view, the aforesaid observations are made out of context. In the said case, the suit was filed for passing off or for infringement of the copyright. In the said case, the Single Judge of the High Court had granted injunction in favour of the plaintiff from manufacturing, marketing, distributing or selling insecticides, pesticides as well as insect repellent under the name 'LAXMAN REKHA'. The Division Bench had 32 vacated the injunction on the ground that there was delay and laches. This Court found that at least from 1991, the plaintiff was using the mark 'LAXMAN REKHA' and the plaintiff was having a copyright in the marks 'KRAZY LINES' and 'LAXMAN REKHA' with effect from 19th November 1991. It was also found that the respondent worked with the plaintiff prior to launching his business. In the said case, this Court observed that the grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. However, the said judgment cannot be used as a ratio for the proposition that, if the plaintiff fails to prove that the defendant's use was dishonest, an injunction cannot be granted. On the contrary, the High Court has failed to take into consideration the observations made in the very same paragraph to the effect that in cases of infringement, either of a trade mark or copyright, normally an injunction must follow."

37. Thus grant of injunction is necessary when there is a prima facie case in favour of the plaintiff and in cases of infringement of a trade mark normally an injunction must follow.

38. As the respondent - plaintiff is the prior user of the mark as well as the registered trade mark holder, the grant of injunction by the trial court is not illegal. The balance of convenience also lies in granting the injunction to the respondent - plaintiff and this Court does not find any necessity to interfere with the order of the trial court in granting interim injunction to the respondent - plaintiff. As the caveat filed by the respondent - plaintiff is not brought to the notice of this court, the stay granted by this court need to be vacated.

39. In the result, the Civil Miscellaneous Appeal is dismissed confirming the orders of the learned XI Additional Chief Judge, City Civil Court at Hyderabad in I.A No.716 of 2024 in O.S No.151 of 2024 dated 05.07.2024 vacating the interim stay granted by this court on 12.09.2024. There shall be no order as to costs.

Pending miscellaneous applications, if any, shall stand closed.

_____________________ Dr. G. RADHA RANI, J Date: 07.11.2024 dsv

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Telangana High Court