Delhi High Court - Orders
French Bakery Pvt Ltd vs L Opera Cake And Bake on 19 September, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~23
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 649/2023 & I.As. 18110/2023, 18111/2023, 18112/2023
FRENCH BAKERY PVT LTD. ..... Plaintiff
Through: Mr. Nikhil Kohli, Ms. Ritika Gambhir
Kohli, Mr. Karan Luthra Mr. Kushank
Garg Mr. Peeyush Ranjan, Ms.
Akshaya Ganpath & Ms. Shrishti
Jeswani, Advs. (M: 9764775337)
versus
L OPERA CAKE AND BAKE. .... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 19.09.2023
1. This hearing has been done through hybrid mode. I.A.18112/2023 (for exemption)
2. This is an application filed by the Plaintiff seeking exemption from filing certified/cleared/typed or translated copies of documents. Exemption is allowed, subject to all just exceptions. Accordingly, application is disposed of.
CS (COMM) 649/2023
3. Let the plaint be registered as a suit.
4. Issue summons to the Defendant through all modes upon filing of Process Fee.
5. The summons to the Defendant shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant shall also file an CS(COMM) 649/2023 Page 1 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:20 affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
6. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
7. List before the Joint Registrar for marking of exhibits on 9th November, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
8. List before Court on 20th February, 2024.
I.A. 18110/2023 (u/O XXXIX Rules 1 & 2 CPC)
9. Issue notice.
10. The present suit has been filed by the Plaintiff - French Bakery Pvt. Ltd., which has its registered office in Delhi, seeking protection of its mark 'L'OPÉRA' used in respect of bakery, pastry and other related goods against the Defendant- L'Opera Cake and Bake. The Plaintiff's case is that it adopted the mark in the year 2008 and now owns various registrations for the said mark and device as also the logo in classes 30 & 43. The earliest trademark dates back to 2010. The details of the registrations are set out below:
CS(COMM) 649/2023 Page 2 of 9This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:20 CS(COMM) 649/2023 Page 3 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21
11. The case of the Plaintiff is that it has more than 15 outlets in Delhi NCR region and it does not have any branch outside this region. As per the plaint, the Plaintiff has been awarded with various accolades and prestigious awards, which are set out in paragraph 7 of the plaint. The mark 'L'OPÉRA', according to the Plaintiff, is an invented mark of the Plaintiff and has achieved substantial turnover of Rs.30 crores in the last financial year 2022-23. The Plaintiff also claims to have invested a substantial amount of Rs 75 lakhs in advertisement and promotional activities in the year 2022-23.
12. According to the Plaintiff, the mark 'L'OPÉRA' continues to be a well known mark. The grievance in the present case is that the Defendant operates its business in relation to bakery and cafe under the marks 'L'OPERA', 'L'OPÉRA BOULANGERIE PATISSERIE' 'L'OPERA CAKE & BAKE' and 'OPERA BAKE AND CAKE' in Puducherry. A comparative table of the Defendants and Plaintiffs mark is set out below:
PLAINTIFF'S TRADEMARK DEFENDANT'S TRADEMARK CS(COMM) 649/2023 Page 4 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21
13. The photographs and images of the Defendant's outlet and mark/devices would show that the Defendant is using identical fonts and device marks for identical goods and services. The Plaintiff has issued a legal notice to the Defendant on 31st January, 2022 notifying the Defendant of its rights in the mark 'L'OPÉRA' and devices thereof. In reply, the Defendant, vide its letter dated 9th February, 2022, stated as under:
"In response to your complaint, We, L'Opera Cake & Bake want to state that, we have verified the name availability with "The Office of the Registrar of Firms - Government of India, Puducherry - under the Partnership Act, 1932.
We preferred the name in the advertisements "L'Opera Boulangerie Patisserie" as our town, Pondicherry was a French colony under imperialism.
I am aware 2 companies cannot use the same TradeMark name under similar business category. As you are in this same bakery industry for over a decade, as a sign of goodwill & gesture, we will consult with our advocate team to change our business name. My Primary willingness to accept this I don't want any misrepresentation in the market.
Though my initiation on this process, will incur huge loss and misperception among my customers; still we will look into this issue to resolve it amicably. Annexure I, 11, Ill & IV enclosed for your reference & CS(COMM) 649/2023 Page 5 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21 understanding."
14. On being queried on jurisdiction, ld. Counsel for the Plaintiff submits that since it has its registered office in Delhi, under Section 134 of the Trademarks Act, this Court has jurisdiction. Ld. counsel for the Plaintiff submits that the Plaintiff does not have any branch in Puducherry. He, thus, relies upon the decision of ld. Division Bench in Ultra Homes Construction Pvt. Ltd. V. Purushottam Kumar Chaubey, 227 (2016) DLT 320 (DB .
15. The Court has perused the record and heard ld. Counsel for the Plaintiff.
16. The correspondence between the parties would show that the Defendant acceded to the Plaintiff's notice and agreed to change the name, to avoid any confusion in the market. However, the Plaintiff thereafter realized that the Defendant had yet not changed the name and issued a further notice on 7th March, 2022. The said notice went unreplied.
17. The Defendant also uses the domain name 'https://lopera-bake- cake.business.site/', which is a sub-domain. The Defendant is also present on various food delivery listings such as Zomato, and also promotes itself on its Instagram handles. A perusal of the usage of the Defendant would show that the Defendant has not merely copied the mark, but even the writing style, colour scheme, colour combination, layout, placement, arrangement of the mark and device as well. The Defendants have blatantly copied the Plaintiff's 'L'OPÉRA' mark and device.
18. The Plaintiff owns statutory rights in the said mark owing to its trademark registrations in classes 30 and 43. The use of the said mark would also cause passing off, inasmuch as anyone, who is aware of the Plaintiff, would presume the Defendant's outlet as another franchisee outlet of the Plaintiff itself.
CS(COMM) 649/2023 Page 6 of 9This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21
19. In Laxmikant V. Patel v. Chetanbhat Shah & Ors., MANU/SC/0763/2001 , the Supreme Court categorically observed that in cases where passing off is made out, the Court ought to grant an immediate ex-parte injunction and also appoint Local Commissioners to ensure that the infringing products are not permitted to be sold. The relevant extract of the order is set out below:
"14. [.....Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary....]"
17. We are conscious of the law that this Court would not ordinarily interfere with the exercise of discretion in the matter of grant of temporary injunction by the High Court and the Trial Court and substitute its own discretion therefore except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the order of the Court under scrutiny ignores the settled principles of law regulating grant or refusal of interlocutory injunction. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion [(see Wander Ltd. v. Ant ox India P. Ltd. MANU/SC/0595/1990 and N.R. Dongre v. Whirlpool Corporation and Anr.: MANU/SC/1223/1996 :
(1996)5SCC714 . However, the present one is a case falling within the well accepted exceptions. Neither the Trial Court nor the High Court have kept in view and CS(COMM) 649/2023 Page 7 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21 applied their mind to the relevant settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. 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 latter stage. The discretion exercised by the Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it becomes obligatory on the part of this Court to interfere."
20. Thus, in terms of the judgement extracted above as also the decision in Laxmikant Patel (supra) it is clear that in cases relating to trade mark violations and passing off, if the evidence establishes a prima facie case, even at the ex-parte stage, injunction ought to be granted.
21. Thus, a case for grant of ex-parte injunction has been made out, especially because the Defendant having agreed to change, has yet not changed the name/mark. Accordingly, the Defendant and anyone else acting on its behalf shall stand restrained from using the mark 'L'OPÉRA', device marks, logo or any other mark, which is similar to the Plaintiff's mark/s as set out above in respect of bakery, patisserie, bread, pastries, restaurants, eating outlets and other cognate/allied goods and services.
22. The said injunction shall come into effect from 1st January, 2024. The Defendant shall ensure that it does not use the mark or name, post the said date. The injunction is being made operational from a future date, and the Defendant is being given time to change, considering its stand in the reply to CS(COMM) 649/2023 Page 8 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21 the legal notice.
23. Compliance under Order XXXIX Rule 3 CPC be made within one week.
24. The additional documents, which are stated to have been filed yesterday, be brought on record.
25. Reply to the application be filed within four weeks from the service of the present order along with the paper book.
26. List the application before the Court on the date fixed above. I.A.18111/2023 (for Local Commissioner)
27. Ld. counsel for the Plaintiff submits that at this stage, he does not press this application for appointment of the Local Commissioner.
28. Accordingly, the application is disposed of as not pressed.
PRATHIBA M. SINGH, J.
SEPTEMBER 19, 2023/dk/ks CS(COMM) 649/2023 Page 9 of 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/09/2023 at 22:25:21