Delhi High Court - Orders
Suit Papers) International House Of ... vs Ihop Cake N Bake & Ors on 1 December, 2020
Author: Mukta Gupta
Bench: Mukta Gupta
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 529/2020
I.A.11294/2020 (under Order XXXIX Rule 1 and 2 CPC)
I.A.11295/2020 (exemption from filing original documents)
I.A.11296/2020 (exemption from filing certified copies)
I.A.11297/2020 (exemption from the requirement of apostilled in the
suit papers)
INTERNATIONAL HOUSE OF PANCAKES LLC. ...... Plaintiff
Represented by: Mr.Peeyoosh Kalra, Advocate with
C.A.Brijesh, Shreyosi Pal &
Ms.Sakshi Sharma, Advocates.
versus
IHOP CAKE N BAKE & ORS. ...... Defendant
Represented by: Mr.Suhash Bhutoria, Advocate.
CORAM:
HON'BLE MS. JUSTICE MUKTA GUPTA
ORDER
% 01.12.2020 The hearing has been conducted through video conferencing. I.A.11296/2020 (exemption from filing certified copies)
1. Exemption allowed subject to just exceptions.
2. Application is disposed of.
I.A.11295/2020 (exemption from filing original documents)
1. Exemption allowed subject to just exceptions. Original documents, if any, be filed within 30 days of the resumption of the normal Court functioning.
2. Application is disposed of.
I.A.11297/2020 (exemption from the requirement of apostilled in the Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 529/2020 PageGUPTA MUKTA 1 of 5 Signing Date:01.12.2020 19:03:38 suit papers)
1. By this application, the plaintiff seeks exemption from apostilling the suit papers at the moment. The same be apostilled and the suit papers be filed within 90 days.
2. Application is disposed of.
CS(COMM) 529/2020 I.A. 11294/2020 (under Order XXXIX Rule 1 and 2 CPC)
1. Plaint be registered as a suit.
2. Issue summons in the suit and notice in the application to the defendants.
3. Learned counsel for the defendant Nos. 1, 2 and 3 enters appearance and accepts summons in the suit and notice in the application. He states that the defendant No. 1 is the proprietorship concern of defendant No. 2 Ms.Priya Gupta.
3. Written statements to the suit and reply affidavits to the application along with the affidavits of admission-denial will be filed within thirty days. Replication and rejoinder affidavit along with the affidavit of admission- denial within three weeks thereafter.
4. List the suit and application before the learned Joint Registrar for completion of pleadings and admission-denial of documents on 5th February, 2021.
5. List the suit and application before Court on 13th May, 2021.
6. Case of the plaintiff is that the founders of the plaintiff opened their first restaurant under the name 'International House of Pancakes' in Toluca Lake, a suburb of Los Angeles, United States in 1958. In the year 1973, the acronym 'IHOP' was introduced and since then, the plaintiff's work is being Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 529/2020 PageGUPTA MUKTA 2 of 5 Signing Date:01.12.2020 19:03:38 recognized by the said mark. The first registration of the mark 'IHOP' was granted to the plaintiff in the year 1974, followed by the registration of domain name ihop.com in the year 1997. Till the year 1998, the plaintiff had established more than 800 restaurants world over. In the year 2007, the plaintiff acquired the Applebee's chain of casual dining restaurants and formed DineEquity. Inc., thereby, further expanding its business. In the year 2015, the plaintiff was granted several registrations from the Trademark Registry of the marks 'IHOP'/ / and in India in class 43.
7. According to the plaintiff, for the first time, the plaintiff opened its restaurant in India under the name IHOP in the year 2017 at Gurgaon, Delhi NCR and thereafter, has opened more restaurants in various prestigious Malls of Delhi. The plaintiff plans to expand further its business by opening more restaurants in various cities of India and in other countries. In the plaint, the plaintiff has given its global sales figures and advertising expenses. According to the plaintiff, in India, the plaintiff generated a sale of INR 7 Crores in the first year of its establishment.
8. Grievance of the plaintiff in the present suit is against the use of the mark 'IHOP' which is identical to the plaintiff's registered mark, by the defendants. The defendants filed two applications for registration of the marks 'IHOP', which were advertised in class 30 and 35 by the Trademarks Registry in June, 2017. The defendants also filed an application for the logo in class 30. The plaintiff filed its notice of opposition, to which, counter statement was filed by the defendants, however, the said Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 529/2020 PageGUPTA MUKTA 3 of 5 Signing Date:01.12.2020 19:03:38 counter statement filed by the defendants before the Trademarks Registry was absolutely blank except for the start and the end duly signed. Despite the Trademarks Registry having granted 30 days' time to the defendants to rectify the error, the same was not rectified. Hence, as on today, the defendants have no registration of the mark 'IHOP'. On enquiry, it was revealed that the defendants were operating one restaurant in Bhilwara, Rajasthan. The plaintiff on subsequent enquiry also found that the defendants' Facebook page reflects usage of variants of the logos 'IHOP' as / / / / .
9. Plaintiff thereafter also tried to amicably resolve the matter and a letter in this regard was addressed to the defendants. However, as there was no response from the defendants, plaintiff filed the present suit.
10. Learned counsel for the defendants who enters appearance states that the plaintiff was aware of the fact that the defendants were not running restaurants but a Cake and Bakery items shop and have been independently using the mark 'IHOP' even before the plaintiff came into India. This fact is refuted by learned counsel for the plaintiff who has placed on record photographs to show that the defendant is in fact running a restaurant.
11. As noted above, the registration of the marks in favour of the defendants has already been declined by the Trademarks Registry. Further, the manner in which, the defendant is using the mark 'IHOP', the same is deceptively similar to the plaintiff's registered trademarks and the plaintiff being also the prior user of the mark 'IHOP', globally having attained a reputation worldwide is required to be protected.
Signature Not Verified Digitally Signed By:JUSTICECS(COMM) 529/2020 PageGUPTA MUKTA 4 of 5 Signing Date:01.12.2020 19:03:38
12. Considering the averments in the plaint as also the documents filed therewith, this Court finds that the plaintiff has made out a prima facie case in its favour and in case no ad-interim injunction is granted, the plaintiff would suffer an irreparable loss. The balance of convenience also lies in favour of the plaintiff and against the defendants. Consequently, an ad- interim injunction is granted in favour of the plaintiff and against the defendants in terms of prayer (a) in para 40 of IA 11294/2020 till the next date of hearing before this Court.
13. Compliance under Order XXXIX Rule 3 CPC be done within one week.
14. Copy of the order be uploaded on the website of this Court.
MUKTA GUPTA, J.
DECEMBER 01, 2020 akb Signature Not Verified Digitally Signed By:JUSTICE CS(COMM) 529/2020 PageGUPTA MUKTA 5 of 5 Signing Date:01.12.2020 19:03:38