The Kerala High Court reaffirmed the strong protection accorded to registered and well-known trademarks while dismissing an appeal filed by Taste Box against an interim injunction granted in favour of JSF Holdings Private Limited, proprietor of the mark “LAZZA.” The dispute centred around the Defendant’s use of the mark “HAZZA” for restaurant services and raised questions concerning deceptive similarity, scope of trademark protection across classes, well-known trademarks, and the limits of appellate interference with discretionary interim orders.

Background of the Dispute

The Plaintiff, JSF Holdings Private Limited, instituted a suit before the Additional District Court-II, Ernakulam alleging trademark infringement, passing off, and allied reliefs against the Defendant, Taste Box, for use of the mark “HAZZA” in connection with its restaurant business.

According to the Plaintiff, it forms part of an established business group operating since 1972 in the manufacture and sale of ice creams, frozen desserts, milk products, beverages, and related food products, apart from running restaurants and parlours. The Plaintiff asserted that it owns several trademarks including “LAZZA,” “Uncle John,” “Skei,” and “I & U.”

The mark “LAZZA” has been in continuous use since 1990 and, through extensive sales, advertising, and market presence, acquired considerable goodwill and recognition in South India as well as abroad. It was further asserted that the mark enjoys statutory protection by virtue of its registrations, including under Class 43 relating to restaurant services.

In July 2021, the Plaintiff became aware of the Defendant’s application seeking registration of the mark “HAZZA” in Class 43. The Plaintiff opposed the application before the Trademark Registry, where the proceedings remain pending. Simultaneously, the Defendant commenced operations of a restaurant-cum-bakery business under the mark “HAZZA.”

The Plaintiff alleged that “HAZZA” was deceptively similar to “LAZZA,” differing only by the substitution of the first letter, and that such adoption was calculated to ride upon the goodwill and reputation associated with the Plaintiff’s mark. Along with the suit, the Plaintiff sought an interim injunction restraining the Defendant from using the impugned mark. The District Court allowed the application and granted interim protection in favour of the Plaintiff.

Aggrieved by the said order, the Defendant approached the High Court of Kerala in appeal.

Defendant’s Contentions Before the High Court

The Defendant challenged the injunction primarily on the ground that the District Court had failed to apply settled principles governing trademark infringement and passing off.

The Defendant was using the composite mark “HAZZA Kitchen” in relation to restaurant services falling under Class 43, whereas the Plaintiff’s principal registrations were in Class 30. Thus, the parties were operating in distinct commercial fields, and the Plaintiff was not engaged in ordinary restaurant services.

“HAZZA” was an independently conceived and bona fide mark derived from an Arabic word meaning “delight” or “pleasure,” and was therefore conceptually distinct from “LAZZA.” The rival marks differed visually and structurally and there existed no likelihood of confusion from the standpoint of an average consumer.

A mere registration in Class 43 could not entitle the Plaintiff to monopoly over the entire class, especially when there was no actual use of the mark in relation to restaurant services. The Defendant maintained that use and reputation in the relevant field had to be proved through evidence at trial.

The District Court erred in dissecting the rival marks instead of comparing them as a whole, contrary to the settled principles of anti-dissection and dominant feature analysis. The test of deceptive similarity must be applied from the perspective of a consumer of ordinary intelligence and imperfect recollection.

The Defendant had been operating its restaurant business for several years after making substantial investments, and that the injunction had severely prejudiced its commercial operations. Thus, the balance of convenience lay in favour of the Defendant.

Plaintiff’s Response

The Plaintiff defended the injunction order by contending that appellate courts ought not to interfere with discretionary interim orders unless the same are shown to be arbitrary, capricious, illegal, or perverse.

The registration of the mark “LAZZA” under Class 43 was sufficient to sustain an infringement action and that actual use of the mark in connection with restaurant services was not a prerequisite for enforcing statutory rights.

“LAZZA” is a well-known trademark and the Defendant’s adoption of “HAZZA” was dishonest and intended to exploit the goodwill attached to the Plaintiff’s mark. The rival marks were phonetically, visually, and structurally similar, with the only difference being the replacement of the letter “L” with “H.”

Both parties operated in the broader food and hospitality industry and catered to the same class of consumers. In light of the Plaintiff’s long-standing reputation, extensive promotion, and decades of use, continued use of “HAZZA” was likely to mislead consumers and cause irreparable injury.

Findings of the High Court

The High Court reiterated the settled principle that appellate interference with interim discretionary orders is limited. Unless the trial court’s exercise of discretion is shown to be arbitrary, capricious, or perverse, the appellate court ought not to substitute its own opinion merely because another view is possible.

On the issue of non-use in Class 43, the Court rejected the Defendant’s contention and observed that registration itself confers statutory rights upon the proprietor. The Court held that actual use is not a necessary precondition for maintaining an infringement action.

The Court rejected the argument that “HAZZA,” being an Arabic word, was conceptually distinct from “LAZZA.” Emphasising that the correct test is the overall commercial impression created by the rival marks, the Court found a strong likelihood of confusion arising from their phonetic similarity and near-identical structure. The variation of a single letter was held insufficient to distinguish the marks.

The Court observed that the addition of the word “Kitchen” in smaller font did not materially alter the deceptive similarity between the competing marks.

The High Court further reiterated that proof of actual intention to deceive is unnecessary in trademark infringement and passing off actions. A likelihood of confusion alone is sufficient. Applying the standard of an average consumer with imperfect recollection, the Court held that consumers were likely to associate “HAZZA” with the Plaintiff’s established “LAZZA” brand.

A significant factor influencing the Court’s decision was the Plaintiff’s status as a well-known trademark. The Court held that once a mark is recognised as well-known, protection extends even against use in different lines of business where such use is likely to dilute or exploit the mark’s reputation.

The Court also observed that continued use of the impugned mark during the pendency of the suit could mislead consumers into believing that the Defendant’s restaurant was a sub-brand, affiliate, or extension of the Plaintiff’s business.

On the question of balance of convenience, the Court concluded that the equities favoured the Plaintiff, whose trademark had enjoyed long-standing registration and reputation. The likelihood of irreparable harm and consumer confusion outweighed the commercial inconvenience claimed by the Defendant.

Conclusion

In view of the above findings, the High Court dismissed the appeal and affirmed the interim injunction granted by the District Court restraining the Defendant from using the mark “HAZZA.”

Comment

The decision is significant for reiterating that statutory rights flowing from trademark registration do not depend upon proof of actual use in every category of registration. The judgment reinforces the heightened protection available to well-known trademarks and underscores that minor alterations may still amount to deceptive similarity when the overall commercial impression remains substantially alike.