Bombay High Court
Theobroma Foods Private Limited vs Ashok Rayal on 22 August, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
10-IAL-25856-24.doc
Sharayu Khot.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO. 25856 OF 2024
IN
COMMERCIAL IPR SUIT (L) NO. 25819 OF 2024
WITH
LEAVE PETITION (L) NO. 25930 OF 2024
Theobroma Foods Private Limited ...Applicant/
Plaintiff
Versus
Ashok Rayal ...Defendant
----------
Mr. Vinod Bhagat a/w Ms. Prachi Shah, Ms. Aishwarya Lad i/b V.A.
Bhagat for the Plaintiff.
----------
CORAM : R.I. CHAGLA J
DATE : 22 August 2024
ORDER :
1. Mr. Bhagat, learned Counsel appearing for the SHARAYU PANDURANG Applicant/Plaintiff seeks to move for exparte ad-interim relief for the KHOT Digitally signed by SHARAYU reasons set out in paragraph 31 of the Plaint. Those reasons are PANDURANG KHOT Date:
2024.08.22 18:26:36 +0530 sufficient having regard to the material on record and a prima facie case of the Plaintiff having been made out for trade mark 1/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc infringement and for passing off. I am satisfied that the purpose of an injunction and other reliefs will be defeated by any delay in giving notice. The Plaint contains disclosures sufficient to sustain an exparte application..
2. The Suit is for infringement of the Plaintiff's trade mark THEOBROMA and for passing off the Defendant's goods and services as and for those of the Plaintiff. Since there is a pending Petition for leave under Clause XIV of the Letters Patent, Mr. Bhagat restricts his application to the relief in infringement.
3. The Plaintiff is one of India's leading and premier baker and confectioner engaged inter alia in manufacturing, marketing, serving and selling a wide range of cakes, pastries, desserts, confectionery and bakery products, savouries and other like goods through their retail outlets/restaurants, since the last over two decades. Plaintiff also offers hospitality services serving food and beverages and such products as aforementioned at their dine-in and take-away outlets/restaurants/cafés named THEOBROMA.
4. In relation to their aforementioned products and services, the Plaintiff is using the trade mark THEOBROMA continuously since 2/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc October 2004. THEOBROMA is also the name of the Plaintiff's restaurants/cafes and the same occupies the leading feature of the Plaintiff's corporate name. The Plaintiff's first pastry store named THEOBROMA located at the iconic Cusrow Baug, Colaba Causeway was opened in the year 2004. Plaintiff has appended at Exhibit A to the Plaint, colour photographs of the Plaintiff's restaurant in Colaba, Mumbai which depicts the use of the trade mark THEOBROMA. Over the last two decades of continuous use, Plaintiff's business has grown substantially into becoming a pan-India chain of patisseries with outlets in over 30 cities spread across 15 states of India. THEOBROMA restaurants/cafes offer and sell THEOBROMA branded confectionery and bakery products.
5. By virtue of such long and extensive use, the Plaintiff's trade mark THEOBROMA has achieved enormous reputation and a unique goodwill. The said trade mark is renowned amongst Indians, International tourists and its clientele, both domestic and international. The reputation of the trade mark THEOBROMA thus transcends and spreads across territorial borders. The Plaintiff is the registered proprietor of the trade mark THEOBROMA, both word and label, vide registrations the details whereof are mentioned in para 7 3/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc of the Plaint. Copies of its registration certificates and online status pages are appended at Exhibit B to the Plaint. Plaintiff is also the registered proprietor of the copyright in the original artistic work depicted on its THEOBROMA label, the details whereof is mentioned in para 7 of the Plaint and copy of its copyright registration certificate is appended at Exhibit C to the Plaint.
6. The Plaintiff's products are accessed by customers on a pan- India basis through retail chains such as Godrej Nature's Basket and Reliance Fresh, who have foot fall of thousands of customers every single day. The reputation of the Plaintiff is thus not just confined to the bakery and confectionery markets but also to retail chains which make available the Plaintiff's products to their other outlets spread all over India. Numerous newspaper articles, blogs, reviews clearly establish the fact that the Plaintiff is known as THEOBROMA, THEO, THEO'S and THEOS, which trade marks are used through its menu cards by its management and also by its loyal patrons in newspapers, magazines, interviews and other social media platforms by way of articles, write-ups, blogs in newspaper, magazine, social media platforms including food rating apps.
7. Plaintiff has been bestowed with numerous awards for the 4/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc outstanding quality of food products and the gracious, mannerly and courteous services rendered by it. A list of few such awards are enumerated in para 10 of the Plaint and photographs thereof are appended at Exhibit D to the Plaint. THEOBROMA has thus gained tremendous popularity amongst the members of the trade and public and has acquired a secondary meaning and significance associated with the Plaintiff exclusively and none else. The trade mark THEOBROMA is thus distinctive of the Plaintiff's services and products. Plaintiff has furnished a statement duly certified by its Chartered Accountant of the revenues generated and the amounts spent towards advertisement and publicity, a copy whereof is appended at Exhibit E to the Plaint. The Plaintiff has also furnished copies of few sample sales bills evidencing use of the trade mark THEOBROMA in respect of its aforementioned goods and services.
8. The popularity of the Plaintiff is evident from its fan following on popular social networking websites like Facebook where Plaintiff's THEOBROMA has over 39,000 followers, on Instagram where it has 1,35,000 followers of various age groups who view, access and respond from not only different cities of India but across the world. Plaintiff's reputation can further be gauged and is demonstrated from 5/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc leading online food and dining review portal, Zomato wherein users have consistently provided great reviews of the Plaintiff's services and products. Screenshots taken from the Plaintiff's social media accounts are appended at Exhibit G to the Plaint. According to the Plaintiff its trade mark THEOBROMA is distinctive of the services rendered and the products manufactured and sold by the Plaintiff. According to the Plaintiff, in the confectionery, bakery, food and hospitality business, the trade mark THEOBROMA is firmly etched in the minds of the customers, the people in the trade, the public and the general masses as a Well Known trade mark. Plaintiff has diligently taken necessary action and has filed opposition proceedings and civil suit against violators of its rights. Plaintiff has appended at Exhibits H and I to the Plaint, a list of its oppositions and copy of a Court order respectively.
9. According to the Plaintiff, in and around the first week of February 2024, the Plaintiff came across the Defendant marketing and selling its confectionery and bakery products using the name CAKE THEODROMA, online using the Zomato food delivery portal and offline through its retail outlet/restaurant located at Kapashera in New Delhi being deceptively similar to the Plaintiff's trade mark THEOBROMA. Such use was being undertaken by the Defendant for 6/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc identical description of goods and services, viz. cakes and pastries sold from a retail outlet/restaurant. Screenshots taken from the Defendant's listing on Zomato revealing the use of the impugned mark CAKE THEODROMA are appended at Exhibit J to the Plaint. The Defendant has copied the Plaintiff's trade mark for identical goods and services and such use is undertaken in bad faith. From an internet search the Plaintiff learnt of the Defendant's GST registration number and a search conducted on the Government of India website, www.gst.gov.in, has revealed the name and constitution of the Defendant, printouts whereof are appended at Exhibit K to the Plaint.
10. Upon learning of the misuse undertaken by the Defendant, the Plaintiff issued a cease and desist notice calling upon the Defendant from discontinuing all use of the impugned mark CAKE THEODROMA including removing the use thereof from all online platforms. Plaintiff has appended at Exhibit L to the Plaint, a copy of its cease and desist notice, to which the Defendant has not replied nor responded. Finding the Defendant to be listed on the Zomato food delivery app, the Plaintiff has filed a complaint calling upon Zomato to delist CAKE THEODROMA from its food delivery app. The 7/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc Plaintiff has appended at Exhibit M to the Plaint, copy of the complaint lodged with the Zomato. However vide its letter dated 05.03.2024, Plaintiff has received a response expressing Zomato's inability to take down the Defendant's listing from their food delivery app. Copy of the response received by the Plaintiff from Zomato is appended at Exhibit N to the Plaint.
11. In the last week of February 2024, Plaintiff got a trap order placed on the Zomato food delivery app for purchase of a cake from the Defendant and received an invoice mentioning its restaurant name to be CAKE THEODROMA. A copy of the Defendant's invoice is appended at Exhibit O to the Plaint. A visit undertaken by the Plaintiff's representative has revealed the Defendant to be conducting its nefarious activities from a very small room/unit which bears the name board of Joshi Pastry Shope. Photograph of the Defendant's retail outlet/restaurant is appended at Exhibit P to the Plaint. It is therefore the grievance of the Plaintiff that the Defendant is using the impugned deceptively similar mark CAKE THEODROMA online on the internet using the Zomato food delivery app as well as offline in relation to its goods/invoices and as the name of its retail outlet/restaurant thereby infringing upon the Plaintiff's trade mark 8/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc and passing off the Defendant's services and goods.
12. Around June 2024, the Plaintiff came across a review posted about the Defendant by a dissatisfied customer referring to the poor quality of cake offered by the Defendant whom she mistook to be the Plaintiff and the cake to be that of THEOBROMA. Printout of the review posted on the Defendant's Zomato page is appended at Exhibit Q to the Plaint. While checking for the reviews received about the Defendant's goods and services, the Plaintiff has learnt that the same are mostly negative. Screenshots of few such reviews posted by dissatisfied customers on the Defendant's Zomato page are appended at Exhibit R to the Plaint. In the last week of July 2024, the Plaintiff has come across on the Zomato food delivery app, three listings of the Defendant's restaurants located at Delhi using the impugned deceptively similar mark and name CAKE THEODROM. Trap purchases were effected, which has revealed that the Defendant has commenced using the impugned name and mark CAKE THEODROM. Copies of such invoices issued by the Defendant which evidences use of the restaurant/outlet name as CAKE THEODROM are appended at Exhibit S to the Plaint.
9/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 :::
10-IAL-25856-24.doc
13. Mr. Bhagat, Ld. Counsel appearing for the Plaintiff has submitted that the Defendant has used the impugned marks CAKE THEODROMA and CAKE THEODROM in respect of its cakes and pastries and as the name of its restaurant selling such goods. He submits that the word CAKE appearing in the prefix to the Defendant's impugned mark is descriptive of the goods viz. cakes and pastries. He further submits that the only feature in the impugned marks are the words THEODROMA and/or THEODROM being deceptively similar to the Plaintiff's trade mark THEOBROMA. He submits that the Defendant appears to have copied the Plaintiff's trade mark by merely replacing the fifth alphabet 'B' of THEOBROMA with the alphabet 'D' to make up for the impugned marks CAKE THEODROMA and CAKE THEODROM. Such use is undertaken by the Defendant for identical description of goods and services and as the name of the restaurant rendering hospitality services. He further submits that THEOBROMA is an established brand in the hospitality industry offering confectionery, bakery products, desserts and savouries whereas the Defendant is only a recent entrant who has knowingly adopted the impugned marks CAKE THEODROMA and CAKE THEODROM with the intention of usurping upon the Plaintiff's rights by encashing upon its unique and unparalleled goodwill and 10/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc reputation. He further submits that the Plaintiff's THEOBROMA is a unique and unconventional trade mark and such use thereof or of a mark deceptively similar thereto including the use of CAKE THEODROMA and CAKE THEODROM by the Defendant is completely dishonest. He has taken me through the reviews received on the Zomato food delivery portal which reveals actual instances of confusion and deception taking place in the minds of the unwary purchasers who are being deceived by the use of the Defendant's impugned marks in respect of same description of goods and services and as the name of their restaurant. He submits that the negative reviews received from dissatisfied customers of the Defendant's goods has the result of tarnishing, diminishing and demeaning the Plaintiff's goodwill and reputation beyond repair.
14. Given the peculiar facts of the present case where the Defendant, despite being put to notice, has chosen not to respond and has continued to fraudulently use the impugned deceptively similar marks with impunity and in blatant disregard of the Plaintiff's rights in its distinctive trade mark THEOBROMA, the Ld. Counsel for the Plaintiff presses for ad-interim reliefs to be granted in favour of the Plaintiff without notice to the Defendant. He submits that such an 11/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc order is necessitated on account of the actual instances of confusion and deception reported in the course of the business coupled with the poor quality of products manufactured and sold by the Defendant using the impugned marks CAKE THEODROMA and CAKE THEODROM, which has the effect of tarnishing beyond repair the Plaintiff's goodwill and reputation earned over the last two decades through sheer dint of hard work, labour and toil. He further submits that there is no delay, least of all an inordinate one, on the part of the Plaintiff in coming before this Hon'ble Court. The Defendant has, after being put to notice of the Plaintiff's rights, knowingly and mischievously adopted the impugned deceptively similar mark CAKE THEODROM. He submits that delay is even otherwise no ground for refusing ad-interim relief in a case for infringement of the Plaintiff's trade mark especially when the adoption of the impugned marks is dishonest and is tainted. I am in agreement with the submissions made by the Ld. Counsel appearing for the Plaintiff.
15. From the documents filed, I am convinced that the Plaintiff's trade mark THEOBROMA is distinctive, popular and a well known trade mark, having garnered enormous goodwill and reputation when used in respect of confectionery and bakery products, 12/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc hospitality services and as the name of restaurants and cafés identified and associated with the Plaintiff.
16. Having considered the averments made in the Plaint as well as the Interim Application and the submissions of Mr. Bhagat, Ld. Counsel appearing for the Plaintiff, in my view, a prima facie case has been made out by the Applicant/Plaintiff for grant of ad-interim relief. From the record it appears that the Defendant is using deceptively similar marks CAKE THEODROMA and CAKE THEODROM for identical description of services and products to those of the Plaintiff. Such impugned marks are also being used as the name of the Defendant's restaurant. In my view, the Defendant appears to have indeed copied the Plaintiff's trade mark by merely replacing the fifth alphabet 'B' of THEOBROMA with the alphabet 'D' to make up for the impugned mark CAKE THEODROMA and by deleting the last alphabet 'A' to make up its impugned mark CAKE THEODROM; this after being put to notice by the Plaintiff and moreso when the first feature in the impugned marks describes the nature of the Defendant's goods. There can be no justification in the use of the impugned marks by the Defendant. The adoption thereof appears to be in bad faith and the use thereof is clearly tainted. 13/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 :::
10-IAL-25856-24.doc
17. The overall similarity of the mark of the Plaintiff and Defendant would thus lead to prima facie view that the impugned marks used by the Defendant are that of the Plaintiff and the Defendant is not specifically permitted/authorised to use the same. The test to be applied is that of a man of imperfect recollection. The impugned marks have the proficiency to deceive the consumer into believing that the impugned marks, the goods, services and the business rendered thereunder are all associated or affiliated with the Plaintiff.
18. In the aforementioned circumstances, I am satisfied that a strong prima facie case is made out by the Plaintiff for grant of ad- interim reliefs. The balance of convenience is also in favour of Plaintiff. In view thereof, Plaintiff will suffer irreparable loss if ad- interim relief is not granted in its favour.
19. In these circumstances and for the present, I am inclined to grant ad-interim order in terms of prayer clause (a) of the Interim Application which reads thus :-
(a) that pending the hearing and final disposal of the suit, the 14/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 ::: 10-IAL-25856-24.doc Defendants by themselves, their proprietor, servants, operators, conductors, agents, franchisees, successors and assignees and all those connected with them in their business be restrained by an order and temporary injunction of this Hon'ble Court from manufacturing, selling, offering for sale, rendering, conducting and/or using (whether online or offline) in any manner whatsoever in relation to their cakes, pastries, desserts, confectionery and bakery products and as the name of their restaurant selling/serving the aforementioned goods and offering such other like hospitality services, the impugned marks and restaurant names CAKE THEODROMA and CAKE THEODROM or any mark or name identical with and/or deceptively similar to the Plaintiff's trade mark and restaurant name THEOBROMA, so as to infringe upon the Plaintiff's said trade mark registered under Nos. 2291827 and 3505159 both in class 43; 1315545, 1520677, 2291825, 2301544 and 4944187 all in class 30;
2291824 and 3503835 both in class 29; 2291826 in class 35; 2291823 and 3503834 both in class 16; 3506090 in class 21; 3506091 in class 25 and 3503836 in class 32; 3506089 in class 33;
20. Notice of this order shall be served upon the Defendant forthwith and affidavit of service shall be filed to that effect on or before the next date.
21. Place the above Interim Application along with the Leave Petition for further consideration on 5th September 2024.
[R.I. CHAGLA J.] 15/15 ::: Uploaded on - 22/08/2024 ::: Downloaded on - 23/08/2024 11:36:38 :::