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Date of Decision: 05.12.2013 CS(OS) 1273 of 2009
M/s Sun F & B Business ..... Plaintiff
Through Mr. Amrita Sanghi, Mr. Devendra Singh, Advocates.
Through None
JUDGMENT
1. Arguments have been heard in this suit. The defendant entered appearance and filed the written statement. The issues were framed on 27.08.2010. Thereafter, as none appeared on behalf of the defendants, they were proceeded ex parte vide Order dated 12.09.2012.
2. The plaintiff has filed the present suit seeking a decree for permanent injunction for infringement of Copyright of their marks „Urban Café‟ and „Urban Pind‟.
3. It is the contention of the plaintiff that it is a partnership firm, existing under the Indian laws engaged in the hospitality business. It is the contention of the plaintiff that it runs a well- known, reputed chain of cafe and restaurants and provides services in the name and style of „Urban Pind‟, „Urban Café‟ and „Urban Bar‟. It is the contention of the plaintiff that with its unique style, extensive and continuous use it has 2013:DHC:6292 created a reputation and respect in the hospitality sector in Delhi and entire NCR region. The present case relates to the trade mark and trade name „Urban Pind‟ and „Urban Café‟, in the name and style of which the plaintiff has developed brand image, reputation and goodwill in the market.
4. It is the contention of the plaintiff that the trade mark „Urban Pind‟ is registered in the name of the plaintiff in class 42, vide application NO. 1286264, in the Trade Mark Registry. Further, the plaintiff has applied for the trade mark „Urban Café‟ on 05.02.2009 in class 42, the application of which is still pending and is being used by the plaintiff for the past more than two and a half years.
5. The plaintiff contends that the trade marks „Urban Pind‟ and „Urban Café‟ are unique words, formed with the combination of two words being exclusive, distinctive in its character, style and pattern. The two marks were introduced by the plaintiff in the year 2005. It is the contention of the plaintiff that the plaintiff by prior use and popularity has instant recognition and is associated and entirely connected with the plaintiff only.
6. It is the contention of the plaintiff that the conceptualization, arrangement and combination of phonetic and visually distinctive trade name of the plaintiff is the art work of the plaintiff and the advertising agency of the plaintiff which had helped for making the trademark and trade name popular, for and on behalf of the plaintiff. The plaintiff contends that it is the owner of the Copyright in the said trade name within the meaning of the Section 2 (c) of the Copyright Act, 1957 and is entitled to protection to all rights in the said artistic works.
7. It is the contention of the plaintiff that it has coined the word „Urban Café‟ and „Urban Pind‟, by using the two words, which are not generally available or used in the literal sense. The plaintiff further contends, the coining of the distinctive mark and also its long, extensive and continuous use by the plaintiff has created a brand image of the plaintiff in the market. The plaintiff states that it is also expending huge amounts in popularizing, marketing and advertising the abovementioned trademarks and names. The expenditure incurred by the plaintiff on advertising and marketing is mentioned in para 10 of the plaint.
8. It is the contention of the plaintiff that the defendant is a company engaged in the similar business of hospitality services of bars, restaurants and café as that of the plaintiff. The plaintiff avers that it is a case where the defendant is misusing the trade name of the plaintiff, which has been made popular by the plaintiff and thus attempting to grab the brand name and reputation of the plaintiff.
9. It is the contention of the plaintiff that the defendant earlier was running a restaurant cum café in the trade name „Café Italia‟, serving Italian and Indian food in their restaurants and café. The plaintiff contends that the defendant has very recently changed its name to „Urban Café‟. The plaintiff further contends that the defendant has blatantly copied the trade mark and trade name of the plaintiff by imitating the essential elements of the plaintiff‟s style, format and pattern.
10. The plaintiff avers that a mere look at the conflicting trademark and name clearly shows that the acts of defendants are deliberate, conscious and fraudulent. The plaintiff states that the comparison between the two marks will establish that the essential elements are copied as the first impression of the defendant‟s mark creates the assumption that the defendant is part of the plaintiff‟s business, which it is not.
11. The defendant filed a written statement. In the written statement the defendant has averred that the word „Urban Cafe‟ is widely used name worldwide. It is stated that the defendant decided to use the said word for his venture in India on his return from USA in the year 2002-2003. It is further stated in the written statement that he entered into an MOU with DLF Cybercity Developers Ltd. in 2007 to open an Urban Cafe but on account of delay in receiving clearances he started it in April 2009. Hence, it is stated that the plaintiff is not the inventor of the word „Urban Cafe‟ nor its prior user. It is further stated that the area of operation and business of both the parties is different as defendant has its business spread in Gurgaon and has no concern with the plaintiff carrying on business in Delhi.
12. After completion of pleadings issues were framed on 27.8.2010 which read as under:- “1.Whether the defendant‟s use of the trade mark „Urban Cafe‟ be termed as prior and continuous? OPD
2. Whether the defendant is in different business from the plaintiff, as claimed in written statement? OPD
3. Does the plaintiff establish copyright infringement as claimed, by the defendant? OPP
4. Whether the defendant is passing off the trade name “Urban Cafe” of the plaintiff? OPP
5. Is the plaintiff entitled to the reliefs claimed?”
13. Thereafter the defendant stopped appearing and was proceeded ex parte on 12.09.2012.
14. Mr. Prashant Ojha, Partner of the plaintiff firm has led evidence on behalf of the plaintiff as PW1/A. He has stated that the plaintiff is engaged in the hospitality business since 2005 and runs a well known chain of cafe and restaurants, providing services in the distinctive name and style of „Urban Pind‟, „Urban Cafe‟ and „Urban Bar‟. He states that the mark „Urban Pind‟ is registered and “urban Cafe‟ is pending registration and is being used by the plaintiff for more than two and a half years. The copy of the application for registration of the trade mark „Urban Cafe‟ is proved as Exhibit P/2. It is stated in the evidence that the plaintiff has extensively promoted its trade mark and name, created a brand image in the market. It is stated that the plaintiff is also expending huge amounts, in popularizing, marketing and advertising its trade name through sales promotion, advertisements through the print as well as electronic media. The copy of the said details of expenses is proved and placed on record as Exhibit P/3. He has stated that the plaintiff owns all the rights in the trade mark‟s get up, style, pattern or format and the plaintiff is entitled to protect the same. It is stated in the evidence that the defendants who are also in the hospitality sector is marketing, in an illegal manner with fraudulent intentions, the plaintiff‟s trade mark and name „Urban Cafe‟ for getting the undue advantages of the plaintiff‟s reputation. It is further stated that the overall similarity between the marks of the defendant and the plaintiff is so close that it creates confusion in the minds of the consumer, as the defendant has even copied the manner in which the word „Cafe‟ is written on the plaintiff‟s name i.e. cursive form, on and around the word „Urban‟. The copy of the various advertisements given in print media is proved and is placed as Exhibit P/4. The copy of the photographs showing the use of trade mark „Urban Cafe‟ by the defendants is placed on record as Exhibit P/5. He has stated that in May, 2009, the plaintiff acquired knowledge that the defendant has commenced business in the hospitality sector under the deceptively similar mark „Urban Cafe‟. The plaintiff issued a cease and desist notice to the defendant asking them to stop using the impugned mark on 22.05.2009 the copy of which is proved and placed as Exhibit P/6. It is stated that the defendant has also applied for the registration of the impugned mark. The copy of application for registration of the trade name „Urban Cafe‟ by the defendant is placed on record as Exhibit P/9 to P/13.
15. I will now take up issues No.3 and 4. It is clear that the plaintiff is a prior user of the trademark „Urban Cafe‟. It is stated that the trademark „Urban Cafe” is a registered trademark. The plaintiff has applied for registration of the trademark „Urban Cafe‟ in February, 2009 and has been continuously using the said mark since then. It is clear that the defendant has copied the essential feature of the marks of the plaintiff. On account of prior user by the plaintiff the defendant has blatantly copied the said mark and style of the plaintiff. Accordingly, it is held that there is passing off by the defendant of the trade name „Urban Cafe‟ of the plaintiff. The plaintiff has established infringement of copyright by the defendant.
16. Regarding issues one and two the onus to prove the issue was on defendant. As no evidence has been led by the defendants the issues are decided against the defendants.
17. I will now come to the reliefs. The defendant is not entitled to use the impugned trademark. Though the plaintiff apart from relief of injunction also seeks the relief of rendition of accounts, damages to the tune of Rs.20,05,000/- however, no evidence to this effect has been led nor any argument on this account were made.
18. Accordingly, a decree of permanent injunction is passed in favour of the plaintiff and against the defendant, its agents, etc. from using the trademark „Urban Pind‟ or „Urban Cafe‟ or any other mark deceptively similar to the plaintiff‟s mark „Urban Pind‟ and „Urban Cafe‟ in relation to goods and services including restaurants, canteens, Cafe‟s, Cafeterias etc.
19. The plaintiff shall be entitled to costs. Suit stands disposed of accordingly.