Delhi High Court - Orders
Rajesh Chugh Karta, Amir Chand And Sons ... vs Mr. Nazim Khan Proprietor/Partner ... on 26 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 326/2022 & I.A. 13029/2023
RAJESH CHUGH KARTA, AMIR CHAND AND SONS (HUF) &
ANR. ..... Plaintiff
Through: Mr. Nishchal Anand, Ms. Tanvi
Jain and Mr. Vaibhav Jairath,
Advocates.
versus
MR. NAZIM KHAN PROPRIETOR/PARTNER NAZIM S KATHI
ROLL & ORS. ..... Defendants
Through: Mr. Shivam Bajaj, Advocate with Ms.
Mitali Takkar, Ms. Akansha, Mr.
Akash Tandon and Mr. Sumit Yadav,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 26.02.2024 I.A. 7780/2022 (application under Order XXXIX Rule 1 & 2 read with Section 151 of Code of Civil Procedure, 1908 on behalf of the Plaintiffs seeking ex-parte ad-interim injunction against the Defendants) Brief Background
1. Plaintiff Nos. 1 (Rajesh Chugh) & 2 (Sumeet Chugh), Karta and Coparcener of Amir Chand & Sons (HUF) respectively, manage and operate the chain of restaurants trading under the name M/s Nizam's Kathi Kabab. Plaintiffs are also registered owners of the trademark "NIZAM'S" and other formative mark(s).
CS(COMM) 326/2022 Page 1 of 5This 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 29/02/2024 at 21:31:35
2. Plaintiffs contend that they have been providing restaurant services under the trademark Nizam's since 1978, and that they have garnered significant goodwill with generations of customers who associate the Plaintiff's brand Nizam's with high quality kebabs, kathi rolls and other food items, not only in Delhi NCR but across India. Plaintiffs has received several awards, such as Trip Advisor Certificate of Excellence, Delhi Government Shresth Vyapari Award, Burrp! Awards, Connoisseur's Guide to Eating Out (Zomato), etc. Plaintiffs have made considerable investment towards promotion and advertisement of their goods and services under the trademark "NIZAM'S".
3. The adoption of the trademark/trade name "NIZAM'S" is arbitrary as it has no significance in relation to a restaurant, kebabs, kathi rolls, and/or other food items. Plaintiffs have obtained registrations of the trademark "NIZAM'S" in various classes from the Trademarks Registry, which are mentioned in the plaint.
4. These trademarks were initially held in the name of late Mr. Amir Chand, and upon his demise, they were vested with the Plaintiffs (surviving male members of the HUF) by virtue of Mr. Chand's Will dated 01st March, 2000. Plaintiffs have successfully protected their trademarks before this Court1 as well as the trademarks registry, and secured injunction against various defendants, restraining them from infringing upon Plaintiffs' registered trademarks.
5. Defendant No. 1 (Mr. Nazim Khan) in the sole proprietor of an entity with the trade name "NAZIM'S/ NAZIM'S KATHI ROLL". They are operating restaurants under the aforesaid name at various premises in Delhi CS(COMM) 326/2022 Page 2 of 5 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 29/02/2024 at 21:31:35 NCR as well as Uttarakhand. Defendant No. 1 has also applied for registration of device mark under TM application no. 2094410 under Class 43 ("Impugned Mark"), in relation to services for provision of food, drinks, kathi rolls, temporary accommodation and all goods included in the class. Defendant No. 1 claims continuous use of the Impugned Trademark since the year 2002 in his written statement, and 2010 in the application for the Impugned Mark before the registry.
6. Plaintiffs have filed a Notice of Opposition dated 26th April, 2012 against the Impugned Mark before the Trademark Registry. The said opposition is currently pending adjudication.
7. Court has heard counsel on interims reliefs sought in the application. Plaintiffs allege that the Defendant No. 1's trademark "NAZIM'S/ NAZIM'S KATHI ROLL is deceptively similar to their trademark, and is thus infringing upon their registered marks, and also amounts to passing off. Defendant No. 1 on the other hand, argues that his adoption is bonafide and is protected under Section 35 of the Trademarks Act, 1999 ("Act") as he is using his name in relation to his business.
8. During the course of the hearing, Defendant No. 1's counsel, on instructions, and without prejudice to his rights and contentions, has proposed a solution to resolve the interim application. He submits that, during the pendency of the present suit, Defendant No. 1 shall use his surname "KHAN" along with the impugned trademark "NAZIM". He 1 See, for example: CS(COMM) 1072/2018 (Delhi High Court).
CS(COMM) 326/2022 Page 3 of 5This 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 29/02/2024 at 21:31:36 further undertakes that he will not use the word "NAZIM'S" exclusively in respect of their business activities, and only use the entire name "NAZIM KHAN" in relation to Defendant No. 1's business activities.
9. Plaintiffs' counsel, without prejudice to his rights and contentions in the main suit and for the purpose of interim resolution, is agreeable to the said proposition. Considering the aforesaid, and in order to avoid confusion and deception, the Defendant No. 1's proposed interim arrangement can be accepted till the pendency of the suit. Accordingly, the present application is disposed of with the consent of counsel for parties, with the following directions: -
a. Defendant No. 1 shall not use the mark "NAZIM'S"
exclusively in respect of its business activity during the pendency of the present suit.
b. Defendant No. 1 is permitted to use the entire name "NAZIM KHAN/NAZIM KHAN KATHI ROLLS/NAZIM KHAN'S KATHI ROLLS" or any variant thereof which includes "NAZIM KHAN" (in the same order) during the pendency of the present suit.
c. Both words "NAZIM" as well as "KHAN" shall be used in the same font size, and the word "NAZIM" shall be displayed in equal prominence as "KHAN".
10. In light of the above, present application is disposed of.
11. The Defendants shall, within a period of three months from today, carry out the necessary changes online as well as at the physical locations.
CS(COMM) 326/2022 & I.A. 13029/2023 CS(COMM) 326/2022 Page 4 of 5 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 29/02/2024 at 21:31:36
12. The parties are referred to Delhi High Court Mediation and Conciliation Centre where they shall appear on 29th February, 2024 in the post-lunch session.
13. List before the Joint Registrar on 23rd April, 2024.
SANJEEV NARULA, J FEBRUARY 26, 2024/sapna CS(COMM) 326/2022 Page 5 of 5 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 29/02/2024 at 21:31:36