Case: Jagdish G. Kamath and 5 Ors vs Lime and Chilli Hospitality
Jurisdiction: Bombay High Court
Notice of motion no. 2586 of 2012 in Suit no. 2549 of 2012
Judge - Justice G. S. Patel
Decided On: 11th March, 2015
Case Summary: The present suit was filed on 6th December, 2012 by the Plaintiffs against the infringement and passing off of their famous trade mark “Café Madras” by the defendants. The Plaintiffs in this case is the Kamath family, the owners of the famous “Café Madras” situated in Matunga, Bombay established in the year 1951. The restaurant is the modest in its outlook and infrastructure but commands unimpeachable goodwill and reputation. On the other hand, the Defendant is the Lime and Chilli Hospitality who have started a restaurant in Jalgaon with the name “Café Madras” in 2004. The Defendant also opened a second restaurant named “Café Madras” in Nashik in September, 2012. Importantly, a horrific incident happened in the Lime and Chilli Hospitality’s Jalgaon based “Café Madras”, that caused demonstrable damage to the reputation and the goodwill of the Kamath’s mark.
Issues before the court:
- Was the Plaintiff’s registration solely for a “device” mark and if so, could they stopped from claiming exclusivity in the word “Café Madras”?
- Can the Defendant allege that the trade mark “Café Madras” is descriptive and common to trade and the Plaintiff therefore cannot claim exclusivity in it?
- Has passing-off been established?
- Was the Plaintiff’s reputation geographically limited to Bombay?
Judgement by High Court Single Judge: Injunction was granted in favour of the Plaintiff.
Analysis related to issue 1- The Defendant claimed that the Plaintiffs registrations in Classes 16 and 42 are only of a device mark (the words "Cafe Madras” in italics in a device of a rectangular box). Further, the Defendant argued that since the Defendants use is not in Classes 16 or 42, there is no point of infringement.
Firstly, the Defendants’ above claim was factually incorrect as it was established beyond any doubt that the Plaintiffs registration is for the device as well as for the word “Café Madras”. Secondly, the Court held that it is must to be understood that the essential, prominent and leading feature of any mark is its label/name/word. Further, the Court stated that the mark has to be viewed as a whole and should be examined for its structural, visual or phonetic similarities. In this case, there is nothing essential or prominent in that so- called device other than the words “Café Madras”. If the Defendants’ claim was held to be true, then every other label with some different ‘style’ or ‘font’ or placement of ‘words’ may dilute the essence of the registered trademark. Also the Court added that in case of an infringement it is of paramount concern to consider how an average consumer with an average intelligence and imperfect recollection perceives the difference between the two marks. There is a fair chance that an average consumer may get confused by slight stylistic variation in the label. Thus, the Court rejected the Defendants’ claim.
Analysis related to issue 2- The Defendants’ claimed that “Café Madras” is "common to the trade" which means that none can lay any claim to exclusivity in this mark.
The Court applied the Principle of Estoppels and held the Defendant has itself, a mere 13 days after it received a cease and desist notice from the Plaintiffs, applied for the registration of a device mark with the expression “Café Madras” as its leading, prominent and essential feature. The court further stated that it is not possible for the Defendant to say that the Plaintiffs mark is “common to the trade” and simultaneously apply for the registration. This action of the Defendant implies that the word “Café Madras” is not “common to the trade” and is surely capable of exclusivity. Justice Patel quoted the above action of the Defendant as “A man may not blow hot and cold”. Further, the Court also rejected the defendant’s arguments that the term “Café Madras” was descriptive of the service.
Analysis related to issue 3 – Another important issue was relating to passing off and whether the Defendants’ use of the term “Café Madras” has the likelihood of confusing and misguiding the consumers. Further, the Plaintiff highlighted an incidence of “serving a rat in sambar (food)” which took place in March 2014 at the Jalgaon based establishment of the Defendant. This incident was reported heavily in all the leading newspapers such as Maharashtra Times, Samna, Punya Nagari, Dainik Baatmandir, Deshdoot, Divya Marathi and also in at least one Internet edition- Maharashtra Times. However, the establishment was referred to only as “Café Madras” and no more information was available to distinguish the connection of the Plaintiff’s establishments from this incident. This incident has not only confused the consumers but also terribly affected the reputation of the Plaintiff’s establishment.
On this issue, the court clearly held that there was an obvious confusion in the mind of the average consumer as the Plaintiffs “Café Madras” is internationally renowned and had also been recognized by numerous awards in the industry. In addition, the “Café Madras” was also praised by an internationally popular chef Gordon Ramsay. There had been many articles in the magazines and newspapers about this iconic eatery of Mumbai (‘Bombay’ back then) serving Udipi cuisine. The Court undoubtedly recognized the goodwill and reputation of the Plaintiffs iconic eatery and accepted the Plaintiff’s claim for passing off.
Analysis related to issue 4- The Court held that in an era of Internet and Technology, it is inconceivable that the Plaintiffs “Café Madras” is entirely unknown to the Defendant/ anyone outside the city. This is a fallacious statement. The Court also recognized that there are websites such as ZOMATO and BURRP which are dedicated to the restaurant industry. The Court further asserted that conducting a search in the Trademark registry, would have helped the Defendant to know about the Plaintiff’s establishment. The Court also held that the Defendant himself had provided a list of other establishments, which was taken from the internet and 44 of the 51 items were cross-linked by their website addresses to entries and locations at ZOMATO or other like search engines and websites. The Court also added that the Defendant could have easily found out about the reputation of the Plaintiffs’ eatery by performing a GOOGLE search or a general search on any search engine. Thus, there should not be any question of geographical limitation of Plaintiffs’ reputation. Hence, the Court rejected the Defendants’ claim.