CS(OS) 1069/2008 Page 1 of 9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment reserved on: 17.12.2013
% Judgment delivered on: 10.01.2014
+ CS(OS) 1069/2008 and I.A. No. 8638/2008
ORIENTAL CUISINES PRIVATE LTD. ..... Plaintiff
Through: Mr. H.P. Singh & Mr. Navroop Singh,
Advocates.
versus
STAR RESTAURANTS PRIVATE LTD. ..... Defendant
Through:
CORAM:
HON’BLE MR. JUSTICE VIPIN SANGHI
J U D G M E N T
VIPIN SANGHI, J.
1. The Plaintiff, Oriental Cuisines Private Limited, has filed the present
suit alleging passing off and infringement of its trademark and copyright in
the mark “THE NOODLE HOUSE” by the defendant, Star Restaurants
Private Limited, and consequently seeking a decree of permanent injunction
restraining the defendant, whether acting by itself or through its partners or
proprietor, its officers, servants, agents and representatives from
manufacturing and selling and offering for sale or supply, advertising,
directly or indirectly dealing or rendering services in the hospitality industry
or other related goods and services under the mark/ name “THE NOODLE
HOUSE” and/or any other mark confusingly similar thereto, or any imitation CS(OS) 1069/2008 Page 2 of 9
or variation thereof, amounting to an infringement and passing-off of the
plaintiff company’s trademark; using the mark “THE NOODLE HOUSE”
and/or any deceptively similar name, from in any manner holding out an
association of its products or business with that of the plaintiff and from
doing acts as to pass off or likely to pass off the defendant’s goods or
business as those of the plaintiff.
2. The plaintiff also prays for a decree of mandatory injunction ordering
the defendant, its partners or proprietor, their officers, servants, agents,
representatives, distributors and assigns to hand over all products, packaging
cartons, unfinished products, bill boards etc bearing the mark “THE
NOODLE HOUSE” to the plaintiff. In addition, the plaintiff also prays for
damages and costs of the suit.
3. The plaintiff is a private limited company incorporated under the
Indian Companies Act, 1956 on 10.05.1994, having its registered office at
Chennai. The plaintiff company is in the business of global specialty and
hospitality management engaged in discovering, developing and
commercializing food courts and popular food chains and restaurants
serving a variety of cuisines. The present suit relates to the plaintiff’s rights
in the trademark “THE NOODLE HOUSE” which was adopted and
introduced by the plaintiff company in December 2003 in respect of
restaurants serving Indo-Chinese cuisine.
4. The defendant is a private limited concern in the business of
hospitality and restaurant management. The plaintiffs allege that in May
2008, the plaintiff learnt of the proposed launch of the defendant’s restaurant CS(OS) 1069/2008 Page 3 of 9
“THE NOODLE HOUSE” at MGF Mall, Saket, Delhi proposing to offer the
same cuisine as the plaintiff’s restaurant. In the aforesaid background, the
plaintiff filed the present suit seeking the reliefs mentioned hereinabove.
5. Summons were issued in the suit vide order dated 30.05.2008
returnable on 11.07.2008. As service report was awaited, fresh summons
were issued vide order dated 11.07.2008 returnable on 12.08.2008 on which
date summons were again directed to be issued returnable on 12.09.2008.
On 12.09.2008, service report was awaited and the matter was renotified for
19.11.2008. On 19.12.2008, the defendant was proceeded ex parte as despite
being served with ‘Dasti’ summons on 22.10.2008, the defendant failed to
put in an appearance and file its written statement. Order dated 19.12.2008
also allowed the plaintiff’s application under Order 39, Rule 1&2, Civil
Procedure Code (CPC) and restrained the defendant from manufacturing,
selling, offering for sale, advertising or rendering services in hospitality
industry or other related goods and services under the trademark “THE
NOODLE HOUSE” or any mark deceptively similar thereto amounting to
infringement and passing off till the disposal of the suit. On 09.11.2009,
notice was issued on the plaintiff’s application under Order 10, Rule 1 CPC
for impleadment of Jumeirah Group LLC as defendant no.2. This
application was dismissed as withdrawn vide order dated 16.07.2012 in view
of a settlement arrived at in another suit being CS (OS) 1947/2008 between
Jumeirah Group LLC and the plaintiff on 13.07.2012. A copy of the
settlement agreement has been placed on record in these proceedings.
6. The plaintiff tendered its affidavit by way of evidence of Sh. Narendra
Malhotra, Chief Executive Officer of the plaintiff company as PW-1. This CS(OS) 1069/2008 Page 4 of 9
witness proved various documents on 14.03.2013 which are Ex. PW1/1 to
PW1/9. The testimony of the plaintiff’s witness has gone unrebutted and
there is no reason not to accept the same. Some of the exhibited documents,
which are considered relevant, shall be referred to hereinafter.
7. The first submission of learned counsel for the plaintiff is that the
plaintiff company has developed and grown from a small restaurant in 1984
to a premier global specialty and hospitality management company in 1994
guided by Sh. M Mahadevan who has more than twenty years experience in
the food and beverage industry and who was awarded the Best Entrepreneur
Award by the Government of India, Tourism Department in 2001. Learned
counsel submits that the plaintiff company employs more than 5000 people
worldwide and operates in 86 commercial locations worldwide, has 62
affiliates and a world class Culinary Institute in Chennai with total revenue
of Rs.130 million in the year ending 2007.
8. Learned counsel submits that the plaintiff company adopted the
trademark “THE NOODLE HOUSE” in December 2003, which registration
is pending, for restaurants serving Chinese cuisine and since then the
trademark has emerged as the plaintiff company’s most popular chain.
Learned counsel submits that the trademark is a fanciful and invented
combination of words and has come to be associated exclusively with the
plaintiff’s business. Learned counsel submits that the popularity of the
plaintiff’s trademark is evidenced by its net sales under the trademark for the
year 2008, which amounted to Rupees Twenty Million. Learned counsel for
the plaintiff submits that the unique feature about the restaurants under the
trademark “THE NOODLE HOUSE” is that they bear a uniform look from CS(OS) 1069/2008 Page 5 of 9
the exterior and interior and owing to its immense popularity, the plaintiff
company has created a separate link on its website www.orientalgroup.in
dedicated solely to the history of THE NOODLE HOUSE. Learned counsel
submits that in order to encash upon the goodwill of the trademark, the
plaintiff company has taken on lease a shop in SATYAM CINEPLEX,
Nehru Place, Delhi in 2008 to open up a branch of the “THE NOODLE
HOUSE”.
9. Learned counsel submits that the proposed launch of the defendant’s
restaurant under the identical trademark is in a vicinity close by to the
plaintiff’s location and for the same category of products and services as
those of the plaintiff. Learned counsel submits that the use of the trademark
“THE NOODLE HOUSE” by the defendant for identical services is with the
intention to free ride on the plaintiff’s popularity.
10. Learned counsel submits that the mark of the defendant is identical to
that of the plaintiff’s, and is likely to create an impression that the mark of
the defendant is an extension of the plaintiff’s mark or is the outcome of a
joint venture between the plaintiff and defendant. Learned counsel submits
that the same is likely to cause confusion and will result in dilution of the
plaintiff’s mark.
11. Though the registration of the plaintiff’s mark is still pending, the
plaintiff can lay common law claim over its trademark and succeed in a suit
for passing off if the plaintiff can establish prior use of the trademark. In
Heinz Italia v. Dabur India Ltd., 2007 (6) SCC 1, the Court while relying
upon the decision in Century Traders Vs. Roshan Lal Duggal, AIR 1978 CS(OS) 1069/2008 Page 6 of 9
Delhi 250 observed that the prior user of trade mark has been held to be
sufficient to entitle the aggrieved part to secure an injunction even when in
absence of any registered trade mark.
12. The mark “THE NOODLE HOUSE” was adopted by the plaintiff as
far back as in 2003 i.e. significantly prior to the use of the impugned mark
by the defendant. The plaintiff has filed on record an additional
representation made by it before the trademarks office marked as Ex. PW1/2
which records the date of user by the plaintiff as 07.12.2003. The application
further records that the trademark is sought to be registered in Class 42 and
in respect of a Chinese restaurant. The plaintiff has filed on record original
sales invoices issues by several of its restaurants in Chennai under the mark
“THE NOODLE HOUSE” from 2003 onwards. These invoices have been
exhibited as PW 1/6. The plaintiff has also placed on record a copy of its
year wise turnover under the trademark “THE NOODLE HOUSE” from
2003-2007 marked as Ex PW1/5. These exhibited documents are sufficient
to establish that the plaintiff has been continuously using the trademark
since the year 2003 onwards.
13. In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., 2001
(2) SCR 743, in Paragraph 10 the Court observed-
“As per Lord Diplock in Erwen Warnink BV Vs. J Townend &
Sons 1979(2) AER 927, the modern tort of passing off has five
elements i.e. (1) a misrepresentation (2) made by a trader in the
course of trade, (3) to prospective customers of his or ultimate
consumers of goods or services supplied by him, (4) which is
calculated to injure the business or goodwill of another trader
(in the sense that this is a reasonably foreseeable consequence)
and (5) which causes actual damage to a business or goodwill CS(OS) 1069/2008 Page 7 of 9
of the trader by whom the action is brought or (in a quia timet
action) will probably do so.”
14. A perusal of the label mark of the plaintiff and the defendant marked
as Ex. PW 1/2 and PW1/3 leave no room for doubt that the use of the
impugned mark by the defendant is likely to cause confusion and mislead
the public into believing that the services of the defendant are associated
with the plaintiff. The same are as follows:
Mark of the Plaintiff - Mark of the Defendant-
15. The label mark of the plaintiff consists of the words “THE NOODLE
HOUSE”. As already mentioned hereinabove, the plaintiff uses the
aforementioned trademark in respect of restaurants catering to Chinese
cuisine. The impugned mark being used by the defendant contains the
identical words “THE NOODLE HOUSE” alongwith 2 chopsticks with a
string of noodle wrapped around and a bye line which reads “enjoy tasty CS(OS) 1069/2008 Page 8 of 9
tangles”. A perusal of the defendant’s mark makes it clearly discernible that
the defendant intends to use to impugned mark in respect of Chinese cuisine
which is identical to the cuisine being offered by the plaintiff. The mark as
well as goods offered being identical, the same is likely to confuse a
consumer with imperfect memory.
16. Ex PW 1/8 is lease deed dated 20.02.2008 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.
17. In my view, the aforementioned ingredients for passing off as laid
down in Cadila Health Care (supra) stand satisfied in this case. The mark
and goods being identical, the suit deserves to be decreed in favour of the
plaintiff to the extent of grant of Permanent Injunction. CS(OS) 1069/2008 Page 9 of 9
18. As regards the quantum of damages, 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.
19. Accordingly, the suit is decreed in terms of prayers (i) (a) and (i)(b).
The plaintiff is also entitled to costs of the suit.
(VIPIN SANGHI)
JUDGE
JANUARY 10, 2014
