In the streets of Delhi that are brimming with diverse street food vendors from chandni chowk to jama masjid, from chole bhature to gol gappas. One of the famous eateries claims Intellectual Property Rights infringement of the city’s favorite ‘Chur Chur Naan’. The Delhi High Court tries the question as to whether the phrase ‘Chur Chur Naan’ can be protected under the Intellectual Property Rights regime.
• The present case has been filed by Mr. Praveen Kumar Jain (hereinafter referred to as “the Plaintiff), against Mr. Rajan Seth & Ors. (hereinafter referred to as “the Defendant), in the High Court of Delhi (hereinafter referred to as “the Court”).
• The present case involves two outlets based in Paharganj which sell Naan and other food items. The Plaintiff claims exclusive rights in the expression `Chur Chur Naan’ against the Defendant who uses a similar expression for its outlet. The question is whether there can be any monopoly in the expression ‘CHUR CHUR NAAN’ or ‘AMRITSARI CHUR CHUR NAAN’.
• The Plaintiff has filed the present suit for permanent injunction restraining infringement of trade mark, copyright passing off, rendition of accounts etc. The trademarks over which the Plaintiff seeks injunction are ‘CHUR CHUR NAAN’, ‘AMRITSARI CHUR CHUR NAAN’ and ‘PAHARGANJ KE MASHOOR AMRITSARI NAAN’.
CONTENTIONS OF THE PLAINTIFF
• The Plaintiff contended that it has applied for/ obtained registration of various trademarks including ‘CHUR CHUR NAAN’ and derivatives thereof. Two marks applied for by the Plaintiff namely ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ are registered.
• The Plaintiff further contended that the trademarks of the Plaintiff being registered, the Plaintiff enjoys exclusive rights under Sections 28 and 29 of the Trade Marks Act, 1999 (‘Act’).
• The Plaintiff while relying upon several judgments namely in Automatic Electric Limited v. R.K. Dhawan & Anr. 77(1999) DLT 292 (hereinafter referred to as, “Automatic Electric”) and The Indian Hotels Company Ltd and Ors. v. Jiva Institute of Vedic Science and Culture 2008 (37) PTC 468 (Del) (hereinafter referred to as, “Jiva Institute”), contended that since Defendants themselves having applied for the registration of the mark ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN‟, they are estopped from claiming that the expression ‘CHUR CHUR NAAN‟ is generic and descriptive.
• Plaintiff contended that it enjoys enormous reputation and this is evident from the fact that the Plaintiff has been covered on television channels as Paharganj Ke Mashoor Chur Chur Naan and the said fact shows that the Plaintiff is entitled to an injunction owing to the extensive goodwill which it enjoys.
• The Plaintiff further submitted that various marks such as ‘EENADU’ and ‘PAKWAN’ which are also descriptive have already been protected by Courts.
• In lieu of the above the Plaintiff sought an injunction against the Defendant Nos.1 and 2 from using the name ‘PAHARGANJ KE CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’
CONTENTIONS OF THE DEFENDANT
• The Defendant submited that there are a large number of outlets which use the name ‘CHUR CHUR NAAN‟. It was further submitted that the trademarks of the Plaintiff are liable to be rectified as they lack basic distinctiveness.
• The Defendant also contended that ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN‟ is completely descriptive, no monopoly can be granted to such descriptive/generic expressions.
• The Court while recognizing that the Plaintiff did have registration for the mark ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ and in lieu of the same enjoys protection under Section 28 of the Trademark Act, however these rights are subject to some exceptions carved out in the Act. . Under section 35 of the Act if there is bona fide description of the character or the quality of the goods or services, there cannot be infringement of a registered trademark. Section 35 reads as under: -
“35. Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.”
• The Court also opined that the expressions such as ‘CHUR CHUR NAAN’ cannot obtain monopoly and stated, “Expressions such as ‘NAAN, CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN’ are similar to expressions such as Amritsari Kulcha, Malabar Parantha, Hyderabadi Biryani, Kashmiri Dum Aloo, Chettinad Chicken, Murthal ke Paranthe, Mangalore idli, etc., and such other food products which are used in common parlance by the general public. The word ‘CHUR CHUR’ merely means `crushed’ and `Chur Chur Naan’ means `Crushed Naan’ and nothing more. It is incapable of acquiring trade mark signification. ‘CHUR CHUR’ is a terminology which is used in normal conversational language and there cannot be any monopoly in respect of an expression such as „CHUR CHUR’.”
• The Court recognized the fact that various third party websites such as zomato.com, justdial.com, eattreat.in, that various third parties are using ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ with various prefixes and suffixes. The Defendants have also shown on record that it is the common practice in the trade for food outlets to use names such ‘Chandni Chowk Ke Mashoor, Dilli Ke Mashoor, Delhi Walo Ki Mashoor’ etc., The same are very common to the trade and are used by a large number of parties as is evident from the entries from third party websites which are placed on record. Thus, there cannot be any monopoly on the terms ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN as the same are generic.
• The question pertaining to the judgement cited by the Plaintiff, was answered by the Court by saying that the same could be easily differentiated on the basis of the facts of both the cases, and said, “In sofar as the judgements in Jiva Institute (supra) and Automatic Electric (supra) are concerned, the same are distinguishable on facts.. Moreover, both in Jiva Institute (supra) and Automatic Electric (supra) the argument of the Defendants therein was that the marks were descriptive. In the present case, the issue is that the expressions are completely generic. If registrations are wrongly granted or applied for in respect of completely generic expressions, the Court cannot ignore the generic nature of the marks and confer monopoly on the same in favour of any party.” Hence it was held the support of the above mentioned cases could not be taken in the present case and the ‘CHUR CHUR NAAN’ being a generic term cannot be granted protection.
• The Court also noted that most of the entities are distinguishing themselves from each other by using prefixes which are distinctive in nature for example „Sanjay Chur Chur Naan, Vijay Chur Chur Naan, N.S. Chur Chur Naan, Chawla de Mashoor Chur Chur Naan‟ etc. In view of the same Court directed the Defendants to distinguish their marks from that of the Plaintiff that was ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN’ in order to avoid consumer deception or confusion.
In light of the discussion above we can conclude that various descriptive terms such as ‘CHUR CHUR NAAN’ which essentially describe the nature of the product and other food item names that are widely used by various eateries throughout the country cannot enjoy a monopoly regarding the same. However the names should be distinct to the extent that a consumer can differentiate between different vendors, so as to not case customer deception and confusion.