Karnataka High Court
M/S Adiga Sweets vs M/S Vasudeva Adigas Fast Food Pvt Ltd on 9 November, 2017
Author: Raghvendra S.Chauhan
Bench: Raghvendra S. Chauhan
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IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 9TH DAY OF NOVEMBER 2017
BEFORE
THE HON'BLE MR.JUSTICE RAGHVENDRA S. CHAUHAN
REGULAR FIRST APPEAL No.17/2014
BETWEEN :
M/S. ADIGA SWEETS
NO.1328, 24TH 'A' MAIN,
41ST CROSS, 9TH BLOCK, JAYANAGAR,
BANGALORE-560069,
REPRESENTED BY ITS PROPRIETOR,
SHRI B. S. JANARDHANA ADIGA. ... APPELLANT
(BY Mr. CHAITHANYA HEGDE, ADV. FOR
Mr. SATISHCHANDRA N. D., ADV.)
AND:
M/S. VASUDEVA ADIGAS FAST FOOD PVT. LTD.,
36, 12TH MAIN, 27TH CROSS,
4TH BLOCK, JAYANAGAR,
BANGALORE-560011,
REPRESENTED BY ITS MANAGING DIRECTOR,
MR. K. N. VASUDEVA ADIGA. ... RESPONDENT
(BY Ms. SURABHI SRINIVAS, ADV. FOR
Mr. HARIKRISHNA S. HOLLA, ADV.)
THIS RFA IS FILED UNDER SECTION 96 R/W.
ORDER 41 RULE 1 OF THE CPC., AGAINST THE
JUDGMENT AND DECREE DATED 18.9.2013 PASSED IN
O.S.NO.15369/2005 ON THE FILE OF THE XVIII ADDL.
CITY CIVIL JUDGE, BANGALORE, (CCH 10), PARTLY
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DECREEING THE SUIT FOR PERMANENT INJUNCTION
AND ETC.
THIS RFA HAVING BEEN HEARD AND RESERVED
FOR JUDGMENT ON 02.11.2017, AND COMING ON FOR
PRONOUNCEMENT THIS DAY, THE COURT DELIVERED
THE FOLLOWING:
JUDGMENT
The appellant, M/s. Adiga Sweets, has challenged the legality of the judgment dated 18.09.2013, passed by the XVIII Additional City Civil Judge (CCH No.10), Bengaluru City, whereby the learned judge has decreed the suit for permanent injunction in favour of the respondent-plaintiff, M/s. Vasudeva Adigas Fast Food Pvt. Ltd.
2. Briefly the facts of the case are that, as far back as 1993, the respondent-plaintiff had adopted the trade name "ADIGA'S", for running their Fast Food Joint. In 1994, the trade name was changed to "Adiga's Fast Food". As the years rolled by, the respondent opened their food joints in different parts of Bangalore under different names, such as "Adiga's Delicacy", "Adiga Majestic". In 2007, the respondent adopted the name of "Vasudeva Adiga's Fast Food". During 3 the period of 2003-2007, the respondent applied for registration of trademark of "ADIGA'S" in Class 30, "ADIGA'S" in Class 42, "Vasudeva Adiga's" in Class 42. These different trademarks were duly registered under different Classes.
3. While trying to get the name of "ADIGA'S" and "Vasudeva Adiga's" registered, in 2005, the respondent discovered that the appellant-defendant was selling sweets in the name of "ADIGA'S SWEETS", from a shop situated in Bangalore. Therefore, the respondent filed a civil suit, namely O.S.No.15369/2005, against the appellant-defendant for permanent injunction. In order to establish its case, the respondent examined a single witness and submitted fifteen documents. The appellant, in turn, examined two witnesses and submitted twelve documents. By the impugned order dated 18.09.2013, the learned trial court decreed the suit in favour of the respondent-plaintiff. Hence, this appeal before this court.
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4. Mr. Chaithanya Hegde, the learned counsel for the appellant, has raised the following pleas :-
Firstly, prior to filing the suit on 03.02.2005, the respondent did not have a registered trademark, either as "ADIGA'S", or as "Vasudev Adiga's Fast Food". Therefore, the respondent could not have filed the suit for infringement.
Secondly, according to Mr. K. N. Vasudeva Adiga, (P.W.1), all the food joints are prefixed with the name "Vasudeva". Therefore, the food joints operated by the respondents have earned a goodwill in the market in the name of "Vasudeva Adiga", and not as "ADIGA'S". Therefore, the learned Trial Court is unjustified in concluding that there is a phonetic similarity between the two names.
Thirdly, relying on the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [ AIR 2001 SC 1952] the learned counsel has pleaded that while dealing with a case of passing off, in order to examine the deceptive similarities between the two unregistered trademarks, certain factors have to be kept in mind. Some of the factors 5 which need to be considered is the class of purchasers who are likely to buy the goods, the mode of purchasing the goods, or placing orders for the goods. Since the respondent is running a fast food joint, and the appellant is selling sweets, the purchasers of the goods are different; the mode of purchasing the goods are different. In fact, both the appellant and the respondent are selling different goods altogether. Therefore, there is no possibility of the ordinary consumer getting confused between the unregistered trademark used by the appellant, and the unregistered trademark being used by the respondent. This aspect of the case has escaped the attention of the learned Trial Court. Therefore, the learned Trial Court has erred in concluding that the appellant is indulging in passing off its goods as the goods of the respondent. Hence, the judgment and decree should be set aside by this Court.
5. On the other hand, Ms. Surabhi Srinivas, the learned counsel for the respondent, has raised the following contentions:-
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Firstly, the respondent had commenced his business in fast food in 1993. The respondent has grown in his business from 1993 onwards. Initially, the respondent began its business in the name and style of "ADIGA'S". Although it began with a single fast food restaurant in 1993, as its reputation and goodwill grew in the market, the respondent expanded its business and established various fast food joints in Bengaluru. Some of them are known as "Adiga's Delicacy", and "Adiga Majestic". Therefore, the respondent has been in business of fast food, and even in selling sweets at its restaurants, since 1993. Furthermore, the appellant started its business of selling sweets in 2003-2004. Thus, the respondent is, obviously, the prior user of the unregistered trademark "ADIGA's".
Secondly, the learned counsel for the appellant is unjustified in claiming that the appellant and the respondent deal with different commodities, and even the customers are different. In fact, both the parties deal with food items. According to Mr. Vasudev Adiga (P.W.1), his restaurant does sell sweets. Since both the parties deal with food items, even 7 the customers are common. Therefore, both these factors are in favour of the respondent in a case against passing off.
Lastly, the surname "ADIGA'S" is a very well-known surname in the coastal area of Karnataka. Since the respondent is using the names "ADIGA'S Fast Food", and "Vasudeva Adiga's Fast Food", and since the appellant is using the name "ADIGA'S SWEETS", the ordinary customer, in all probabilities, is likely to conclude that "ADIGA'S SWEETS", are the products of "ADIGA'S Fast Food", or "Vasudeva Adiga's Fast Food". Because of the common use of the name "ADIGA'S", because both the parties deal with food items, the common customer is likely to take the "Adiga Sweets" as product of "ADIGA'S Fast Food", or "Vasudeva Adiga's Fast Food". Therefore, the appellant could successfully pass off its sweets as those manufactured and sold by the respondent. Therefore, the learned Trial Court was justified in granting the decree in favour of the respondent-plaintiff. Hence, the learned counsel has supported the impugned judgment and decree. 8
6. Heard the learned counsel for the parties, and examined the record, and perused the impugned judgment.
7. There are well settled principles of law dealing with infringement and passing off of trademark which need to be followed by the Courts. Since consumer protection is essential for the smooth functioning of the commercial world, and for the society at large, the common law considered 'passing off' as a civil wrong. Under the concept of 'passing off', a person was not permitted to sell his products as the products produced by another person. With the enactment of the Trademark Act, the concept of infringement was introduced. While dealing with both passing off and infringement, the Court has to deal with "the deceptive similarity" between the two trademarks. It is not only that the images are similar, but the phonetic similarity between the words used in the trademarks are also fundamental to see if there is a "deceptive similarity"
between the two trademarks.9
8. In the case of Cadila Healthcare (supra), the Apex Court has enumerated the factors which should be kept in mind while dealing with the case of passing off on the basis of unregistered trademark. The Hon'ble Supreme Court has opined as under :-
" Broadly stated in an action for passing off on the basis of unregistered trademark generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works.
b) The degree of resembleness (sic) between the marks, phonetically similar and hence, similar in idea.
c) The nature of the goods in respect of which they are used as trademarks.
d) The similarity in the nature, character and performance of the goods of the rival traders.10
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
9. There have been plenty of studies in the United States of America where the psychological impact of confusion in trademarks have been studied. For, as Justice Felix Frankfurter observed in Mishawaka Rubber and Woolen Mfg. Co. v SS. Kresge Co. [316 US 203] "the protection to trademark is the law's recognition of the psychological functions of the symbols". Mr. Jacob Jacoby in 11 his article, "The Psychological Foundations of Trademark Law: Secondary Meaning, Generism, Fame, Confusion, Dilution." states that "The brand names serve as information 'chunks'. They represent core nodes in the memory around which other 'associated information is connected and organized'. Given, only a familiar brand name, a host of relevant and important information can be efficiently called into consciousness." The brand names serve as the 'information chunks' "enabling the consumer to efficiently organize, store, and retrieve information from the memory. Indeed, when consumers engage in pre-purchase decision making, brand name information turns out to be the most frequently accessed type of information." According to the author, "incoming information is interpreted in terms of prior knowledge. Moreover, the process of retrieving information stored in memory to interpret new stimuli is not done with conscious deliberateness, but unconsciously and virtually instantaneously, generally within the first two hundred milliseconds after apprehending the incoming information." The author concludes that "In sum, we do not need to pay 12 attention to every single aspect of an external object (i.e. product, advertisement or store) before using what we have in our memory to interpret and identify that object. Instead, in interpreting the outside world, we generally rely in a process called 'pattern recognition'. When sufficient number of features represented in the incoming information match the pattern of features of a pre-existing cognitive network, we tend to fill in the details and interpret the object as an exemplar of that network. The greater the similarity between the pattern of information extracted from the outside object and the pattern of information stored in a cognitive network, the greater the likelihood that one will be confused into thinking that the latter is an exemplar of the former." [The Trademark Reporter, Vol. 91 No. 5 September-October, 2000].
10. This scientific data should be kept in mind by the Courts while dealing with cases of passing off.
11. Undoubtedly, the surname "Adiga" is a well-known name in the southern coastal part of Karnataka. Admittedly, the respondent had opened its restaurant in the 13 name and style of ADIGA'S in 1993. The respondent had expanded its business of fast food restaurant with efflux of time. It had built a goodwill in the market for its food products. According to Mr. Vasudeve Adiga (P. W. 1), the restaurants were also selling sweets.
12. Moreover, the appellant was also using the name "ADIGA'S" suffixed with the word "SWEET". Admittedly, both the respondent and the appellant are dealing with food items. Therefore, the learned counsel for the appellant is unjustified in claiming that both the parties are dealing with different commodities altogether. Thus, an average customer is most likely to confuse between Vasudeve Adiga's Fast Food and ADIGA'S SWEET. This confusion is likely to occur due to the use of the common name ADIGA'S. Keeping in mind the scientific research, mentioned above, that a customer keeps a brand name in his mind and takes an unconscious decision within split-seconds, the likelihood of confusion is most possible.
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13. Further, the phonetic similarity between the common name "ADIGA'S" has to be considered as a major factor while dealing with a case of passing off. Thus, considering the fact that both the parties are dealing with food items, considering the fact that the respondent has earned a goodwill in the market for its food items, considering the fact that the appellant entered the marked much after the respondent, considering the common customers both the parties would have shared, considering the use of common name "ADIGA'S " in the name of both the businesses, the learned Judge was justified in concluding that the consumer is most likely to confuse the sweets made and marketed by the appellant as the goods of the respondent. Thus, the appellant is passing off his goods as that of the respondent.
14. In the case of Adiga's Abhiruchi & Others v. Adiga's Fast Food [2007 (35) PTC 548 (Karn.)] this court had dealt with similar issue. Even in the said case, the Adiga's Fast Food, the respondent in the present case, had filed a case of infringement and passing off against the 15 Adiga's Abhiruchi. The question raised before this court was whether the use of the name Adiga's as a suffix or prefix would prevent a person from claiming that dissimilarity exists between the names or not? This Court was of the opinion that any suffix or prefix to the name "Adiga" would not prevent the person from bringing an action against another person for infringement or passing off. Even if the name Adiga's were suffixed or prefixed with other name, still it would be a case of infringement and/or passing off. The same principle is applicable to the present case.
15. For the reasons stated above, this appeal is devoid of any merit. It is, hereby, dismissed.
Sd/-
JUDGE Np/-