Two entities engaged in restaurant services vie for their rights before the Madras High Court. The Plaintiff, Paulsons Beauty and Fashion Private Limited, filed the suit against the Defendant, Sulthana Restaurant, alleging trademark infringement, passing off etc,.

The Plaintiff seeks to restrain the Defendant from using the name Sulthana in relation to their business. This note discusses the contentions raised by the parties in the injunction application and the order passed by the Court.

Plaintiff in the injunction application contends:

1. They are the registered proprietor of the trademark ‘Sulthan’s Biriyani’ which is registered since July 2019.
2. They are aggrieved by the Defendant’s use of the name ‘Sulthana Restaurant’ which is deceptively similar to their registered mark ‘Sulthan’s Biriyani’
3. As they are the prior user and registered proprietor of the mark ‘Sulthan’s Biriyani’, the Defendant’s use of the mark ‘Sulthana Resturant’ which they commenced in March 2023 amounts to trademark infringement and passing off.
4. As the Defendant failed to comply with the Plaintiff’s cease and desist letter, the suit was filed.

The Defendant counters the injunction on the following:

1. The suit for infringement and passing off is not maintainable as the Plaintiff has made false and incorrect statements before the Court.
2. The Defendant is a seller of juices, tea, shawarma, biriyani, burgers, etc. at a small restaurant/eatery, whereas the Plaintiff deals in vegetarian and non-vegetarian food in spacious and well-furnished areas having a different ambience. Thus, the customers of the parties are entirely different.
3. There cannot be any trademark for the name ‘Sulthana’ as it is a universal common name. The Defendant is using the name ‘Sulthana’ which is a female royal title and the feminine form of the word ‘Sulthan’.
4. The Plaintiff’s mark ‘Sulthan’s Biriyani’ has no similarity with the Defendant’s name ‘Sulthana Restaurant’ and the manner of representation is also different.
5. The Plaintiff’s registration is restricted to the state of Tamil Nadu whereas the Defendant is carrying on business in Karaikal outside the state of Tamil Nadu. Thus, the Plaintiff is precluded from claiming exclusive right for the usage of the trademark in other places outside the state of Tamil Nadu.

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

• Admittedly, the Plaintiff’s registration for the mark ‘Sulthan’s Biriyani’ on the basis of the certificate is restricted only to the state of Tamil Nadu. As per Section 28(2) of the Trademarks Act the exclusive right to use the trademark shall be subject to any condition and limitation to which the registration is subjected to.
• The Legal Usage Certificate relied on by the Plaintiff restricts exclusive right available to the trademark ‘Sulthan’s Biriyani’ only to the state of Tamil Nadu.
• In the instant case the Defendant is using the name ‘Sulthana Restaurant’ which is not deceptively similar to the Plaintiff’s registered mark ‘Sulthan’s Biriyani’
• ‘Sulthan’ is a male name, whereas ‘Sulthana’ is a female name and both are common universal names. There is no chance for confusion as ‘Sulthan’s Biriyani’ is entirely different from ‘Sulthana Restaurant’
• The Plaintiff is running a chain of restaurants in the name of ‘Sulthan’s BiriyanI’, whereas the Defendant is having a small restaurant in Karaikal outside the state of Tamil Nadu and that too in a different name. The Plaintiff cannot seek exclusive usage for an injunction to restrain the Defendant from using the name ‘Sulthana’ for its restaurant business.
• Even though the trademark ‘Sulthan’s Biriyani’ may have acquired distinctiveness, that cannot guarantee exclusive rights over the name ‘Sulthan’ and ‘Sulthana’ as they are universal common names.

In light of the above findings, the court held that the Plaintiff has failed to make out a prima facie case and balance of convenience is also not in their favour and accordingly dismissed the injunction application.

Our comment

The above case highlights the challenges of enforcing common names/terms even though the same may have acquired distinctiveness over the years. While descriptive or common words help provide quick recollection in the consumer minds, however, such trademarks are not strong enough to steer away other similar marks from the marketplace. Therefore, if businesses are looking at long term viability of their brands, it is recommended that they use distinctive marks that are coined by them.