In the following case, the plaintiff’s (Food Craft India Private Ltd), ran a food chain by name of ‘Asian Haus’ which dealt in the business of delivering asian food across Delhi and the NCR region of Gurgoan as well. It specializes in gourmet delivery and also the touch of contemporary flavour in the otherwise traditional pan-asian food. They slowly ventured into japanese cuisine naming it ‘Sushi Haus’ and north and south indian cuisines as well naming them ‘Dilli Haus’ and ‘Amma Haus’ respectively. ‘Asian Haus’ has been in use since 2012 and since then the plaintiff have spent a huge amount of money on advertisements and making people aware of the brand. A registration for trademark has been filed with the Registrar in 2013 and the application is still pending. The reputation of the same has been flourishing as it received positive responses from the customers. The plaintiff’s also made domains (www.asianhaus.com) and also extended their business with third party mobile apps such as zomato and swiggy. Since, the plaintiff had had good business, and also because of the tremendous amount of usage of the mark, the same has become exclusive to ‘Asian Haus’. The word ‘Haus’ is a german word and has been used y the plaintiff using his/her imagination and creativity to promote his food chain business in India. The mark since then has garnered a huge amount of goodwill and reputation.
In the meanwhile, the defendants (Urban Palette Restaurants), deceitfully used the plaintiff’s mark ‘Haus’ and started their own food business under the name of ‘Curry Haus’. The plaintiff upon hearing this, filed a suit stating that the defendants were using the mark ‘Haus’ only because the plaintiff’s had garnered a lot of good will and reputation in the food market and the defendants were simply trying to encash or take free ride on the laurels of the plaintiff. However, when the plaintiff’s filed the suit, the defendants countered the suit by saying that the plaintiff’s had been using the word ‘Haus’ under inequitable conduct as he cannot claim monopoly over the word ‘Haus’.
Section 17 of the Trademarks Act, 1999 prohibits parties or any individual trying to register for a trademark to monopolise any generic word. The defendants claim that a suit for passing off on the basis of non-distinctive component of the word ‘Haus’ which is otherwise common to the trade is not maintainable in view of the express prohibition. The defendants also claim that the plaintiff’s hide the fact that the word in question is being used by other proprietors in India and also being used worldwide in countries like USA, UK, Germany, Australia. On these grounds, the defendants submitted that the suit filed by the plaintiff’s should be dismissed.
The plaintiff argued that throughout it’s journey in the food industry, they have gained a huge amount of reputation and good will. The defendants operated under ‘Masala House’ which was the bigger brand. The plaintiff’s argued that if the defendants already had the word house in their mark, the need for them to use the marl ‘Haus’ was absolutely them free riding upon the good will and good reputation that the plaintiff had acquired for themselves through their course of business.
The plaintiff sorted to ask the court for injunction as it stated that in the case of Sunil Mittal v. Darzi on Call and Ishi Khosla v. Anil Agarwal and Anr it is pointed out that where the whole food is the mark of the plaintiff, in that case, in spite of the mark bearing a simple and generic dictionary meaning, it is entitled to be protected by the trademark law.
In Erven Warnink B.V v. Townend and Sons Lord Diplock stated that the essential characteristics of passing off are:
(ii) made by person in the course of trademark
(iii) to prospective customers of his or ultimate consumers of goods and services provided by him
(iv) which is calculated to injure the business or good will of another (which can be foreseen)
(v) causes actual damage to the good will of another trader by whom the action is brought.
All these parameters have been fulfilled by the defendant as there was a misrepresentation on the part of the defendant as they were originally operating under the name ‘Curry House’. Using the mark of the plaintiff (meaning house in German), was evidence enough that the defendants did so to free ride on the reputation of the plaintiff which they acquired through their hardwork. The defendant satisfies the next parameter too as they are also in the same course of trade as the plaintiff which is why consumers can be mislead to believe that ‘Curry Haus’ was another branch opened by the plaintiff selling Indian cuisine throughout Delhi and the NCR region. The third criteria is also met with by the defendants as they did so to attract prospective customers by the services he was providing to them under the mark of the plaintiff. Since, the plaintiff and defendant are in the same business together, it is obvious that if the defendant will use the mark of the plaintiff it will cause injury to the good will of that company. Lastly, by doing so, the plaintiff’s will suffer a loss which will be monetary in nature because of the usage of their mark which would mislead the customers into believing that the defendants is selling product under the reputation of the plaintiff.
Therefore, the court granted interim injunction to the plaintiff’s and refrained the defendants from using the mark ‘Haus’. The court however, reiterated that the defendant’s could continue using ‘Curry House’ which was earlier stated by the plaintiff’s in their arguments but which was however not acceptable by the defendants.
–By Ipshita vedajna,
School of Law, Christ University,