Court holds owner of Trademarks are not expected to pursue every Infringer
Nizam, the title of ruler of Hyderabad in 18th century is known to Delhites as a restaurant chain that sells kebab rolls. The restaurant chain NIZAM’S is seeking to restrain its former franchisee from using the mark ‘New Nizam’s Kababs and Biryani’. The Plaintiffs, Rajesh Chugh and ors (Rajesh) filed suit against the Defendants, Chhavi Poplai and ors (Chhavi) alleging trademark infringement, passing off, etc. The Court after considering the facts of the case and pleadings granted an injunction restraining Chhavi from using the mark ‘NIZAM’ is which is challenged by way of this application.
Rajesh in the suit contends:
- The mark NIZAM’S was first adopted by their father and after his demise devolved upon them as male members of Hindu Undivided Family (HUF). The mark ‘NIZAM’ is registered in classes 29, 30, 32, 33, 24, 42 and 43. On account of extensive and continuous use and high quality taste the trademark ‘NIZAM’ is exclusively associated with them.
- They own the website www.nizams.com and are listed on food portals such as Zomato, Swiggy, Trip Advisor, Dine out, etc, and have strong social media presence as well. Sales and promotional figures have been filed to support their contentions.
- In the year 1998, based on an oral understanding Rajesh allowed Chhavi to operate a franchise of NIZAM’S in Gurgaon. However, this was terminated in the year 2016, owing to Chhavi’s non-adherence to standards and misappropriation of funds and rights among other reasons.
- In December 2016, Rajesh came across Chhavi’s trademark application for registration of the device mark ‘New Nizam’s Kababs and Biryani’ in Class 43 claiming use since July 29, 2014, while the latter was operating as a franchisee. Further enquiries revealed that subsequent to the termination of the franchise Chhavi started operations under a deceptively similar trade name ‘New Nizam ‘s Kababs and Biryani’.
- The initial cease and desist letter in December 2016 was resisted by Chhavi. In between Rajesh’s illness prevented him from following upon the matter. Chhavi’s trademark application was abandoned for non-prosecution in November, 2017. However, Chhavi continued expansion of their business activities and as they failed to respond to Rajesh’s second warning letter in April, 2018, suit was filed.
- The trademark NIZAM’S is an arbitrary mark as it has no meaning or significance in relation to kathi kabab rolls or fast food restaurants and therefore, inherently distinctive. Chhavi’s mala fide intent is evident from the manner of representation of the word NIZAM’S in their logo with the words ‘New’ ‘Kebabs’ and ‘Biryani’ being non-distinctive and in small font. Chhavi’s use of the mark in relation to their business will lead to confusion and unjust enrichment.
The court being convinced with the aforesaid contentions granted injunction restraining Chhavi from using the trademark/name “New Nizam’s” or New Nizam’s Kababs and Biryani’ or any other mark identical or deceptively similar to NIZAM’S.
Chhavi in the application to set aside the injunction states:
- Rajesh cannot claim exclusivity with regard to the mark NIZAM’S as it is a historical name.
- There is concealment of facts as a third party based in Kolkata is a prior user and registrant of the mark NIZAM’S.
- There are more than six registrations and fifty entities using the mark NIZAM’S and therefore no action will lie against Chhavi. Further, there is delay in filing the suit.
Rajesh in the counter affidavit states:
Out of the six registrations referred to by Chhavi four belong to Rajesh. Moreover, the Kolkata party’s registration is restricted to the territory of West Bengal.
The court after considering the pleadings, documents and arguments held:
- The contention that the mark ‘NIZAM’ is incapable of protection has to fail as Chhavi themselves has applied for registration. Moreover, it is settled law that dictionary and historical words are capable of registration.
- There is no concealment of facts as the Kolkata party has confined its registration and use of the mark NIZAM’S to the territory of West Bengal. Further, Rajesh is not expected to argue the case on behalf of the Kolkata party.
- Moreover, owners of trademarks are not expected to run after every infringer and remain involved in litigations and may overlook or ignore petty violation till it assumes alarming proportions.
In light of the above as it is evident that Chhavi has copied the registered trademark of Rajesh the court confirmed the injunction till disposal of the suit.