2014 (1) TMI 685 - HC - Companies Law

Trademark infringement - Use of confusingly similar mark - Held that - Lease deed entered into by the plaintiff for acquiring on lease a commercial premises in South Delhi for the purpose of running a branch restaurant under the trademark. The defendant s restaurant is also situated at a mall in South Delhi. Consequently, the use of the impugned mark by the defendant is likely to create confusion and is likely deceive people. There has been no explanation forthcoming from the defendant as to why the impugned mark was adopted by the defendant. It is hard to believe that the defendant which is itself in the business of restaurant and hospitality management, would not have been aware of the plaintiff s trademark and restaurant. It appears that the defendant adopted the impugned mark with malafide intention to free ride on the goodwill of the plaintiff. This act of the defendant is likely to dilute the mark of the plaintiff and lead to loss of goodwill. Furthermore, the plaintiff risks losing reputation if the defendant does not uphold the standard of service as offered by the plaintiff as a consumer is likely to be deceived into believing that the goods offered by the defendant actually belong to the plaintiff. Though the plaintiff needn t prove actual damages suffered by him, it is imperative that the Court while awarding damages considers the averments made in the plaint coupled with an assessment of the extent of damage likely caused or to be caused. The plaintiff avers that it found out about the proposed launch of the defendant s restaurant in May 2008. This Court vide order dated 19.12.2008 granted an exparte injunction in favour of the plaintiff and restrained the defendant from using the mark THE NOODLE HOUSE . Keeping in view the short duration between the filing of the suit and grant of injunction, in addition to the fact that the plaintiff has not placed anything on record to establish whether the defendant s restaurant was launched at all, this Court is not inclined to award damages - Decided in favour of Appellant.

Summary

Issues:
Alleged passing off and infringement of trademark and copyright in the mark "THE NOODLE HOUSE" by the defendant, seeking permanent injunction, mandatory injunction, damages, and costs.

Analysis:
1. The plaintiff, a global specialty and hospitality management company, alleged passing off and infringement of its trademark "THE NOODLE HOUSE" by the defendant, a hospitality and restaurant management business. The plaintiff sought injunctions restraining the defendant from using the mark and damages. The plaintiff established its prior use of the trademark since 2003 and the defendant's identical mark for a similar business, indicating a likelihood of confusion and intention to benefit from the plaintiff's goodwill.

2. The court noted the plaintiff's significant growth and popularity of its trademark, evidenced by sales figures and consistent use since 2003. The plaintiff's mark was associated with Chinese cuisine restaurants, and the defendant's mark, with similar offerings, was likely to cause confusion among consumers. The plaintiff's evidence, including sales invoices and turnover records, supported its claim of prior use and goodwill associated with the mark.

3. Referring to legal precedents, the court highlighted the elements of passing off, emphasizing misrepresentation, potential harm to goodwill, and actual damages. The comparison of the plaintiff's and defendant's marks revealed similarities likely to mislead consumers and damage the plaintiff's reputation. The court found the plaintiff's claims of passing off and infringement valid due to the identical nature of the marks and services offered.

4. Despite the plaintiff's success in proving passing off and infringement, the court declined to award damages due to the short period between filing the suit and obtaining an injunction. The lack of evidence regarding the actual launch of the defendant's restaurant also influenced the decision not to award damages. The court decreed the suit in favor of the plaintiff, granting permanent injunctions and costs but refraining from awarding damages due to insufficient evidence of harm.

In conclusion, the court upheld the plaintiff's claims of passing off and infringement of its trademark "THE NOODLE HOUSE" by the defendant, granting permanent injunctions and costs but refraining from awarding damages due to the lack of conclusive evidence regarding actual harm suffered by the plaintiff.