Can the disclaimer of individual words while seeking registration preclude the proprietor from claiming exclusivity over a composite mark containing the said words? This is one of the issues in the instant dispute before the Delhi High Court between two entities running restaurants offering Indo Chinese cuisine. The court concluded the only consequence of such disclaimer, in my opinion, is that the plaintiff would not be able to urge infringement of a mark of another person solely because the said mark uses the word “CHINA” or the said mark uses the word “BISTRO”. However, that would not inhibit the plaintiff from alleging infringement of the mark of another person on the ground that it is deceptively similar to the composite mark CHINA BISTRO when seen as a whole.

Background

The Plaintiff, Foodlink F and B Holdings India Private Limited (Foodlink) filed the suit against the Defendant, Wow Momo Foods Private Limited (Momo Foods) alleging trademark infringement, passing off, etc,. Foodlink seeks to restrain Momo Foods from using the mark ‘China Bistro’ in relation to their business. This note discusses the contentions raised by the parties and the order passed by the Court while deciding the injunction application.

Foodlink in the suit states:

1. In the course of their business, they use the mark which is registered in class 43. They have several registrations for the mark ‘China Bistro’ both as a device and as a word mark since 2003.
2. Momo Foods was using the mark for their restaurant busness, however, from 2019, they added the word ‘Bistro’ below the word ‘China’ which now reads
3. Foodlink alleges that addition of the word ‘Bistro’ to China by Momo Foods makes it deceptively similar to their registered mark . The word ‘Wow’ will not avoid confusion as the parties are dealing in a identical line of business,, i.e., restaurants offering Chinese – or Indo Chinese – cuisine.
4. Thus, use of the mark amounts to trademark infringement and passing off.

Momo Foods counters the injunction application on the following:

1. The marks compared as a whole are not similar.
2. Foodlink while securing registration of the mark ‘China Bistro’, had disclaimed exclusivity both for the word ‘China’ as well as for the word ‘Bistro’.
3. ‘China’ is the name of a country and ‘Bistro’ is commonly used in relation to restaurants and cafes. Having disclaimed exclusivity both in respect of ‘China’ and ‘Bistro’, Foodlink cannot now claim exclusivity for the composite mark ‘China Bistro’.

The Court after considering the rival pleadings, arguments and case laws held:

• Admittedly China Bistro forms the essential part in the rival marks and It is a settled proposition of law that when the words consisting of the dominant parts of the device marks are similar, the added visual matter accompanying the words in the device marks would not make any difference to the aspect of infringement.
• In the instant case the chances of the customer doubting whether the two outlets have a connection or association are apparent. This will suffice to satisfy the indicia of infringement.
• With regard to Foodlinks disclaiming exclusivity over the words China and Bistro the Court made the following observations. Foodlink’s registration for the mark in class 42 in 2006 contains a disclaimer ‘no exclusive right over the word China and Bistro’. Subsequent registration for also included disclaimer in relation to ‘China’ but not ‘Bistro’ and they seek association with the earlier marks. Thus, Momo Foods argue that the aforesaid disclaimer applies to registrations for and CHINA BISTRO as well. This argument ought not to succeed as it is not supported by any provision by which, by mere association of a later trademark with an earlier trademark in the certificate of registration, a disclaimer in the earlier trademark would apply to the later trademark as well.
• The disclaimer in the earlier trademarks does not have significance in the instant case as the registration for and CHINA BISTRO in class 43 obtained in the year 2017 and 2022 respectively does not contain any such disclaimer. Thus, Foodlink is not precluded from alleging infringement of the mark of another person on the ground that it is deceptively similar to the composite mark ‘China Bistro’ seen as a whole. In other words, disclaiming exclusivity in respect of the individual parts of a mark would not ipso facto result in disclaiming exclusivity over the composite mark as a whole.
• The contention that Foodlink cannot claim exclusivity as ‘China’ is a geographical area and ‘Bistro’ is commonly used expression for restaurants, ought to fail. Two ordinary words, though lacking in distinctiveness when looked at individually may, when combined, be distinctive as in the instant case.
• The composite mark ‘China Bistro’ cannot be said to be lacking in distinctiveness, when seen as a whole, in the absence of any evidence to that effect led by Momo Foods. The rival marks and are deceptively similar, as the textual components which constitute their essential and distinctive features, are in fact, identical, the only difference being the prefix ‘WOW!’ in Momo Foods’ mark.

In light of the above the Court injuncted Momo Foods from using the mark/name or ‘Wow China Bistro’ as a trademark, label, trading style, or in any other manner, mark which is identical or deceptively similar to Foodlink’s mark ‘China Bistro’ till further orders.