Calcutta High Court
R.A.A. Arsalan Enterprise Private ... vs Swiggy Limited & Ors on 5 October, 2024
OCD-3
ORDER SHEET
IN THE HIGH COURT AT CALCUTTA
COMMERCIAL DIVISION
ORIGINAL SIDE
IP-COM/37/2024
IA NO: GA-COM/1/2024
R.A.A. ARSALAN ENTERPRISE PRIVATE LIMITED
VS
SWIGGY LIMITED & ORS.
BEFORE:
The Hon'ble JUSTICE KRISHNA RAO
Date : 5th October, 2024.
Appearance :
Mr. Ranjan Bachawat, Sr. Adv.
Mr. Sayan Roy Chowdhury, Adv.
Mr. M. Mookherjee, Adv.
Mr. K. K. Pandey, Adv.
...for the plaintiff.
The Court: Mr. Ranjan Bachawat, learned Senior Counsel, is appearing for the plaintiff.
The plaintiff has filed the present application praying for interim order.
In the month of October, 2002, the plaintiff has started its first restaurant under the trademark "ARSALAN" in Park Circus, Kolkata. Thereafter, the plaintiff had published advertisement in the several newspapers and accordingly, the plaintiff has received tremendous response from the consuming public who visited the restaurant, as the said restaurant stood as 'one of a kind' Muglai restaurant in Kolkata. 2
The plaintiff at present operates eleven outlets in Kolkata under the trademarks "ARSALAN".
The outlet of the plaintiff was also listed on the popular food ordering and delivering platforms Swiggy and Zomato being defendant Nos. 1 and 2. The plaintiff is extensively conducting its business under the trademarks "ARSALAN" from the said trademarks.
The trademarks of the plaintiff "ARSALAN" is one of the most popular and iconic restaurant chains in the consumer consciousness and acts a symbol of trust and high quality food services over the several years.
For the year 2003-2004 the total turnover of the plaintiff's business is Rs.1,49,13,80,020/-. The plaintiff has also received the numerous awards and accolades as such "The Telegraph Food Guide Award for Excellence, 2017, The Telegraph Good Guide Award for Excellence, 2018, The Times of India, Times Food Night Life Awards, 2018 and other several awards.
To protect its trademark "ARSALAN", the plaintiff has got three trademarks registration under the name and style of "ARSALAN" out of two Device mark and one Word mark.
The defendant Nos. 1 and 2 are the market place e-commerce entitites and popular online food ordering and delivery platforms. The defendant nos.3 to 14 are the different persons or entities using the trademark "ARSALAN" for the same goods and/or services without authorization of the plaintiff. Defendant nos. 3 to 14 are listed on the defendant nos.1 and 2's platforms/websites/mobile applications and infringing upon the rights of the plaintiff's trademark "ARSALAN" by using trade names such as "NEW ARSALAN BIRYANI HOUSE", "A1 ARSALAN 3 BIRYANI", "HAJI ARSALAN BIRYANI", "KOLKATA ARSALAN BIRYANI", "NEW ARSALAN BIRYANI PALACE", "NEW BELA ARSALAN BIRYANI HOUSE", "A1 ARSALAN BIRYANI HOUSE", "NEW ARSALAN BIRYANI".
The defendants are using identical trademark "ARSALAN" along an insignificant prefix and suffix in connection with identical goods or services by the defendant nos.3 to 14 is solely with an idea to cause misrepresentation and confusion amongst the trade and public, by portraying a false association with the plaintiff and passing off the goods or services of the defendant nos. 3 to 14 as that of the plaintiff.
The plaintiff has issued notice to the defendant no. 1 on 7 th October, 2023 and the plaintiff had also sent reminders to the defendant no.1 on 14th October, 2023.
Thereafter, the defendant no.1 had taken down all infringing listings as sought for by the plaintiff. The plaintiff had also issued notice to the defendant no.1 on 7th October, 2023 and the defendant no.2 also took down and/or made the listings inactive on its platform after receipt of the notice of the plaintiff. The plaintiff found that the defendant Nos. 1 and 2 have again relisted and made active, the plaintiff again sent notice for taking down the listing but the defendants failed to do so. In the month of August, 2024, the plaintiff has issued notice to the defendants but the defendants have not taken any steps. Now, the plaintiff has filed the present suit. The plaintiff has prayed for ad interim injunction restraining the defendants from using the trademark of "ARSALAN".
Heard learned counsel for the plaintiff. Perused the materials on record.
4
This Court finds that the plaintiff has obtained three trademarks in the name and style of "ARSALAN", out of which two are Device Mark and one is Word Mark. All trademarks obtained by the plaintiff are still in existence. Initially, when the plaintiff came to know that the defendant nos.1 and 2 are allowing the defendant No. 3 to 14 who associated and connected to each other in the course of trade and are severally and jointly involved in the wrongful and infringing activities. The plaintiff had issued notice and accordingly, on receipt of the notice, the defendant Nos. 1 and 2 delisted the defendants No. 3 to 14. All of a sudden the defendant Nos. 1 and 2 again relisted the defendant Nos. 3 to 14 and made active. The defendants are using the mark "ARSALAN" without authorization of the plaintiff and are listed on the website and mobile application of the defendant Nos. 1 and 2. The defendants are using mark fleet and deceptively and confusingly similar to the plaintiff registered trademark "ARSALAN".
This Court finds that the defendant nos.3 to 14 had copied the plaintiff's mark "ARSALAN" in its entirety as part of the trade name or the restaurant name. The impugned mark or the trade name of the defendant nos. 3 to 4 are visually identical, phonetically, deceptively and confusingly similar to the plaintiff's registered trademark "ARSALAN" for identical or similar goods and services as offered by the plaintiff under the trademark "ARSALAN" which amounts to an infringement of the plaintiff's registered trademark.
This Court finds that use of impugned trade name and trade mark are deceptively similar to the trademark of the plaintiff's "ARSALAN" creating and is likely create confusion and deception in the minds of general public and consumers as they are likely to believe that such restaurants/listings 5 are originating from the plaintiff or have some association with the plaintiff thereby allowing the defendants to pass off their goods and/or services as that of the plaintiff.
Considering the above, this Court finds that the plaintiff made out a prima facie case, balance of convenience and inconvenience in favour of the plaintiff. This Court also finds that if at this stage an ad interim order is not granted, the plaintiff will suffer irreparable loss and injury.
Accordingly, the defendant nos.1 to 14 are restrained from using or advertising, directly or indirectly any mark which includes the words "ARSALAN" for services identical or allied to the services covered by classes 43 of the classification of goods and services for trade mark purposes except the trademark of the plaintiff "ARSALAN".
The defendant nos.1 and 2 are directed to block access to the websites and mobile app of the defendant nos.3 to 14 with regard to selling of products of the plaintiff under the mark "ARSALAN" with suffix or prefix or any word for the said business.
This interim order will continue till 26th November, 2024. The plaintiff is directed to serve the copy of the plaint, application and documents to the defendants immediately and to file affidavit of service by the returnable date.
List this matter on 26th November, 2024.
(KRISHNA RAO, J.) Sbghosh