IMPRESARIO ENTERTAINMENT & HOSPITALITY PVT LTD v. MECH MOCHA GAME STUDIOS PVT LTD

1. Plaintiff has filed the present suit for permanent and mandatory injunction against infringement of rights in the trademark „MOCHA‟.

2. As per the plaint, the Plaintiff Company is an existing company under the Companies Act, 1956, and is engaged in providing restaurant services, including but not limited to conducting and managing restaurants and coffee shops; operating restaurants and coffee shops; providing expertise relating to provision of food and drink, particularly coffee and coffee related products and setting up of coffee shops/restaurants. The trademark MOCHA was adopted by the plaintiff in the year 2001 and since then the same is being used continuously and extensively by the plaintiff as part of their domain name and trading name.

3. It has been averred in the plaint that the plaintiff at present has set up and is managing and operating thirteen „MOCHA‟ restaurants and coffee 2016:DHC:6801 shops all over the country. Besides the aforesaid, the plaintiff has granted franchise/license for consideration, to 13 exclusive franchisees all over the country. The plaintiff‟s MOCHA Coffee Bar has also received the Times Food Awards for the best coffee bar in various cities in the country every year continuously from the year 2004 till 2012.

4. It has next been averred in the plaint that in India, the Plaintiff is the registered proprietor of the trademark MOCHA and its variants with the earliest registration since the year 2001, details of which are mentioned hereunder: TradeMark Reg. No. Goods & Class Status MOCHA 1126376 Internet software (portal for information on coffee) in class 9 Registered w.e.f. 14.08.2002 MOCHA 1005909 Coffee, tea, cocoa, sugar, rice tapioca, sago, coffee substitutes, flour and preparation make from cereals, bread, biscuits, cakes pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices, ice & food products in class 30 26.04.2001 MOCHA 1281592 Coffee, tea, Registered w.e.f. coffees and conversations cocoa, sugar rice tapioca, sago, coffee substitutes, flour and preparation make from cereals, bread, biscuits, cakes pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, (condiments) spices and ice in class 30 29.04.2004 MOCHA coffees and conversations 1281593 Providing of food and drink, other services tube rendered in the restaurant in class 42 29.04.2004 MOCHA SOCIAL 2382256 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; adhesives for stationery or household purposes; artistic 21.08.2012 materials; paint brushes; typewriters and office requisites (except furniture) instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers type; printing blocks in class 16 MOCHA SOCIAL 2382251 Personal and social services rendered to meet the needs of individuals, consultancy services related to social planning in class 45 21.08.2012 By virtue of the registrations, the plaintiff claims exclusive right to use the trade mark MOCHA in respect of the goods for which it is registered.

5. Plaint also discloses that the plaintiff apart from the above registered trademarks also owns and uses variants of its registered trade mark MOCHA, being MOCHA, ARTHOUSE, MOCHA MOJO, MOCHA COFFEES AND CONVERSATIONS and MOCHA BAKERY”.

6. It has also been averred in the plaint that the plaintiff learnt in the month of March, 2015 that the defendant was operating a video game parlour using the trademark MECH MOCHA. It has next been averred in the plaint that the registration of domain containing the mark “MOCHA” by the defendant violates the common law as well as statutory rights of the plaintiff Company and on a bare perusal of the impugned website confusion is inevitable as to their origin because the domain name used by the defendant is identical to the marks of the plaintiff Company. It has also been averred that the malafide intentions of defendant is evident from its act of getting the domain names registered with the plaintiff Company‟s registered and well-known mark which clearly establishes that the defendant got the impugned domain names registered keeping in mind the reputation of the Plaintiff Company in an attempt to confuse the general public at large into believing that it is connected with the plaintiff company in some manner, which led to the filing of the present suit.

7. During the pendency of the matter, the CEO of the defendant Ms. Arpita Kapoor has filed an affidavit in the form of an undertaking to the Court. The relevant part of the undertaking reads as under:- “That I undertake to this Hon’ble Court that the defendant, its directors, employees, agents, distributors, franchisees, representatives and assigns will: (i). Never use our trademark “MECH MOCHA” in any business connected with the food and beverages industry. (ii). Not diversify into any business activity connected with the food and beverages industry, under the trademark “MECH MOCHA” and (iii). Not apply for the registration of the trademark “MECH MOCHA” before any statutory authority in respect of services related to provision of food and beverages.”

8. The learned counsel for the plaintiff on instructions submits that the undertaking in the form of an affidavit may be accepted by the Court and the suit may be disposed of based on the undertaking.

9. I have heard the learned counsel for the parties. Taking into considerations the submissions made, the affidavit in the form of undertaking of Ms. Arpita Kapoor is accepted by the Court. Ms. Arpita Kapoor shall be bound by the terms of the undertaking.

10. The defendant has agreed that the defendant will not use the trademark MECH MOCHA or any other deceptively similar name in any business in relation to the food and beverages industry, as agreed.

11. The present suit is accordingly disposed of. The defendant shall be bound by the statement made in the Court.

12. The suit is disposed of. G.S.SISTANI, J. SEPTEMBER 29, 2016 P