Use of spouse name not a valid defense in trademark infringement claim
Does using the spouse’s name entitle one to seek protection from a trademark infringement claim? The issue arose before the Madras High Court between two entities dealing in restaurants providing vegetarian cuisine.
The Plaintiff, Sangeetha Caterers and Consultants LLP (SCC), filed the suit against the Defendant, New Sangeetha Restaurant (NSR), alleging trademark infringement, passing off and rendition of accounts, etc., Further to restrain the latter from using the mark Sangeetha/New Sangeetha concerning their business.
SCC in the suit states:
- They are a limited liability partnership and the registered Proprietor of the marks, namely, ‘Sangeetha with Veena Mark’, ‘SVR Sangeetha’, ‘SVR Sangeetha Veg Restaurant’, and ‘Sangeetha Veg Restaurant with Veena Mark’ in Class-42.
- They have been running restaurants under the above names. They are pioneers in the food and beverages industry, have acquired a reputation over the years, and have spent enormous amounts of money to promote their business and trademarks.
- In the year 2006, they came to know about NSR running a restaurant under the name ‘New Sangeetha Restaurant’. SCC immediately addressed a warning letter in response to which NSR stated that they are not aware of the trademark rights of SCC and have no intention to violate such rights.
- After that, in 2013, SCC came to know about the continuing infringing activities of NSR and addressed a further letter. To the said letter, NSR responded that Sangeetha is a common name and, thus, refused to comply with the requisitions.
- Adopting a similar trademark by NSR concerning identical services will confuse the customers. Adding the word ‘New’ is hardly a distinguishing element, and their activities amount to trademark infringement and passing off.
NSR, in the written statement, contends:
- ‘Sangeetha’ is a common Sanskrit name that denotes ‘Gift of God/Melodious Music.’
- SCC failed to initiate any action after addressing the warning letter in 2006 when it first noticed NSR’s use of the disputed mark. There is acquiescence, and on account of the delay, they have lost their right to file the suit.
- Sangeetha is the name of the Proprietor’s wife, and thus, adoption is bonafide.
The case proceeded to trial, and the parties examined a witness from either side and marked documents to substantiate their case.
The Court, after considering and analyzing the pleadings, documents, and case laws relied on by the parties, held as follows:
- The contention that there is acquiescence and delay in filing the suit will not succeed. It needs to be noted that NSR, in response to the warning letter in the year 2006, had stated that they were unaware of the SCC’s trademark rights and have no intention to violate such rights and would change the name. Moreover, it is the name of his spouse, and out of love and affection, he adopted the name. Any person seeing NSR’s reply would believe that they have initiated action and changed its name in line with the requisitions of SCC. However, as NSR started running a restaurant named ‘New Sangeetha Restaurant’ in 2013, SCC sent a further cease & desist letter and filed the suit. Thus, there is no delay and acquiescence.
- NSR seeks protection under Section 35 of the Trademarks Act, contending that ‘Sangeetha’ is the name of the Proprietor’s wife and has been running the restaurant in the said name and is thus a bona fide user of the mark. This argument ought to fail.
- Section 35 of the Trademarks Act affords protection only in the following instances, i.e., the use is of (a) his name; (b) his place of business; (c) name of his predecessors in business; (d) name of the place of business of his predecessors; and (e) any bona fide description of the character of quality of goods or services. Thus, the protection available under bona fide use is restricted to the above and not to the names of the spouses of the person who adopts the trademark.
- Admittedly, SCC is the Registered Proprietor of the trademarks, namely, ‘Sangeetha with Veena Mark,’ ‘SVR Sangeetha,’ ‘SVR Sangeetha Veg Restaurant,’ and ‘Sangeetha Veg Restaurant with Veena Mark.’ In contrast, NSR uses ‘New Sangeetha Restaurant’, the only difference being the word ‘New.’ The marks compared as a whole are deceptively similar to confuse the customers more as the parties deal in an identical line of business. In this regard, it has also to be noted that NSR’s application for registration of the mark ‘New Sangeetha Restaurant’ was refused by the Trademark Registry based on earlier registered trademarks in the name of SCC. Thus, the continued use of the mark/name ‘New Sangeetha Restaurant’ would amount to trademark infringement and passing off.
Given the above findings, the High Court decreed the suit permanently restraining NSR from using the mark ‘New Sangeetha Restaurant’ or any other mark deceptively similar to SCC’s registered trademarks.