The core questions considered by the court were:
- Whether the words ‘Café’ and ‘Madras’ taken separately were too generic to be granted trade mark protection;
- Whether the impact of registration of the mark “Café Madras” with a disclaimer of the word ‘Madras’ was sufficient to make out a case for trade mark infringement;
- Whether nature and extent of goodwill and reputation of “Café Madras” was sufficient to succeed in a passing off claim.
The Kamath family (“Kamath”) who established the eatery in 1940 and used the trade mark “Café Madras” since 1951 has brought this action against use of an almost identical mark by Lime & Chilli Hospitality Services (“L&C”) for running a restaurant serving similar South Indian cuisine. A cease and desist notice was sent to L&C in early 2012 to stop using the mark “Café Madras” for similar services. As L&C did not comply with the notice and in fact opened another restaurant in Nasik (during the course of negotiations), a suit for trade mark infringement and passing off was filed by Kamath in Mumbai High Court in December 2012 along with an application for interim injunction.
Kamath raised the following contentions in support of his case:
- That they have established enormous reputation and goodwill in its mark “Café Madras”. It is well known for South Indian cuisine due to its uninterrupted and extensive use since 1951.
- The trade mark “Café Madras” also stands registered since 2005 in class 16 and 42 in India and 27 other jurisdictions abroad including European Union.
- “Café Madras” has excelled in South Indian eateries and has received several awards and accolades.
- L&C’s use of the mark “Café Madras” on device of banana leaf is nearly identical and thereby causing confusion and/or deception in minds of consumers and general public.
L&C contested the claims and responded by making the following submissions:
- The marks ‘Café’ (generic term for eatery) and ‘Madras’ (geographical significance) are individually incapable of registration under the Trade Marks Act.
- That there are several entities using the mark “Café Madras” or identical marks and therefore no monopoly can be claimed on the said mark or the individual components of the said mark.
- The reputation or goodwill, if any of the business “Café Madras” is limited to Mumbai while the place of business of L&C is Jalgaon and Nasik (both outside Mumbai) and therefore, there are no possibilities of confusion or dilution.
- “Café Madras” is far from attaining secondary meaning being a descriptive mark.
Considering the submissions addressed by both parties the Judge observed that Kamath had made out a prima facie case in its favour. The court accepted the documents filed by Kamath which unambiguously substantiated the fact that they had been using the mark “Café Madras” for several decades. The court observed that apart from acquiring extensive goodwill and reputation, Kamath had also acquired substantial distinctiveness among its customers and general public.
Holding that the adoption of “Café Madras” by L&C was dishonest the court reiterated the settled principle of law that on comparison of both marks one must look at both marks as a whole and the dissimilarities if any on account of addition of one leaf or two would not make much difference and such subsequent use by L&C was mala fide.
The Judge further observed that at the interim stage there was lack of sufficient material on record to arrive at a conclusion that the mark “Café Madras” is common to trade. The Judge opined that since the registration of the mark “Café Madras” had remained unchallenged and the mark had been used in an unobstructed manner, the plea of L&C that the mark is descriptive and common to trade cannot be accepted.
Concluding the case by granting an interim injunction in favour of Kamath the Judge held that L&C had failed to establish their claim of bona fide concurrent user of the mark “Café Madras”. On the other hand, the allegation of Kamath claiming damage caused by L&C’s use was established and no longer considered only a possibility