Manmohan JUDGMENT
Manmohan, J.
1. LA. 12286/2018 has been filed under Order 39 Rule 4 CPC on behalf of the defendants No. 1 and 2 for vacation of the ex parte ad interim injunction order dated 31st August, 2018 passed by this Court in an application for interim injunction filed by the plaintiffs being LA. 11667/2018. The relevant portion of the ex parte ad interim injunction order dated 31st August, 2018, is reproduced hereinbelow:-
"It is stated that the father of the plaintiffs, late Mr. Amir Chand initially adopted the trademark 'Nizam 's', as Karta of the HUF and got the same registered under Classes 29, 30, 32, 33, 24, 42 and 43 of the Trade Marks Act, 1999. It is stated that upon the demise of late Mr. Amir Chand, the said trademarks devolved upon the plaintiffs by virtue of being male members of the HUF as well the last will and testament of the late Mr. Amir Chand dated 01st March, 2018. It is stated that the plaintiffs have applied for certificates for use in legal proceedings of the trademark 'Nizam V. It is stated that by virtue of extensive and continuous use as well as the high quality taste of the plaintiffs' food items, the trademark 'Nizam V is exclusively associated with the plaintiffs' business and services.
It is stated that the plaintiffs own the website www.nizams.com and have listings on food portals such as Zomato, Swiggy, Trip Advisor, Dine out etc. It is stated that the plaintiffs also have a strong social media presence.
It is the case of the plaintiffs that the annual revenue generated by the plaintiffs in the financial year 2017-2018 was INR 7,83,17,646 and the expenditure incurred on advertising and promotion of their business and services for the same financial year was INR 30,17,500.
Learned counsel for the plaintiffs states that in 1998, on the basis of an oral understanding, the plaintiff no. 1 allowed the defendant nos. 1 to 4 to operate a franchise of Nizam's in Gurgaon. He states that in July, 2016, the plaintiffs terminated the franchise with the defendants due to various reasons including non-adherence to standards and misappropriation of funds and rights.
Learned counsel for the plaintiffs states that in December, 2016 the plaintiffs came across the defendant no. l's trademark application dated 19th February, 2015 for registration of the device mark New Nizam 's Kababs and Biryani' under Class 43 of the Trade Marks Act, 1999 claiming use since 29th July, 2014, when the defendant nos. 1 to 4 were operating the franchise of the plaintiffs. He states that subsequent investigations revealed that after termination of the franchise, the defendant nos. 1 to 4 started operations under the deceptively similar trade name New Nizam 's Kababs and Biryani', in August, 2016 A pictorial representation of the plaintiffs' and defendants' trademarks is reproduced herein below:-
Learned counsel for the plaintiffs states that the plaintiffs' issued a cease and desist letter dated 12th December, 2016 to the defendant nos. 1 to 4 and vide reply dated 29th December, 2016, the defendant nos. 1 to 4 responded refusing to comply with the plaintiffs' demands stating that their mark is different from the plaintiffs'. He states that since the plaintiff no. 1 suffered a severe illness, he could not follow up on the defendant nos. 1 to 4's activities, however on 13th November, 2017, the defendant no. 1 's trademark application was declared abandoned on account of non-prosecution. He states that post recovery of his illness, upon gaining knowledge of the defendant nos. 1 to 4's attempt to revive their trademark application, operation of the website ww.newnizams.com, that they were listed on various online food portals such as Zomato, Swiggy, Food Panda etc. as well social media websites and expansion to more locations in Gurugram, the plaintiff no. 1 issued a fresh cease and desist letter dated 24th April, 2018 to the defendants. He states, till date, no response has been received.
Learned counsel for the plaintiffs states that the mala fide intent of the defendant nos. 1 to 4 is apparent by the manner in which they have given prominence to the word 'Nizam's' in their logo with the words New' and 'Kababs and Biryani' being non-distinctive and being depicted in negligibly small font.
Learned counsel for the plaintiffs states that disgruntled consumer reviews of the defendant nos. 1 to 4's restaurant on food portals due to the sub-standard quality of the defendant's food and services is evidence of the dilution of the plaintiffs' brand. He further states blatant and unrestricted use of an identical trademark belonging to the plaintiffs by the defendant nos. 1 to 4 in relation to its goods and services will inevitably lead to the whittling down and erosion of the uniqueness and exclusivity associated with the plaintiffs' trademark and if the defendant nos. 1 to 4's activities are not curbed, others will be prompted to imitate the plaintiffs' trademark 'Nizam 's' thereby leading to further dilution.
Learned counsel for the plaintiffs further states that the defendant nos. 1 to 4's unauthorised adoption of the trademark 'Nizams' in the name of their restaurant 'New Nizam 's Kababs and Biryani' is bound to cause confusion and deception amongst the public that the defendant nos. 1 to 4 are somehow connected, affiliated or sponsored by the plaintiffs and result in an unjust enrichment to the defendant nos. 1 to 4.
Learned counsel for the plaintiffs lastly states the trademark Nizam 's' is an arbitrary mark as it has no meaning or significance in relation to kathi kabab rolls or fast food restaurants and is therefore inherently distinctive.
Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiffs and balance of convenience is also in their favour. Further, irreparable harm or injury would be caused to the plaintiffs if an interim injunction order is not passed.
Consequently, till further orders, the defendants, their directors, proprietors, partners, officers, servants, agents, subsidiaries, holding companies, sister concerns, franchises, family members and all others acting for and on their behalf are restrained from advertising, selling, offering for sale, marketing etc. any product, packaging, menu card and advertising material, labels, stationery articles, website, email addresses or any other documentation using depicting, displaying in any manner whatsoever, the trademark New Nizam 's' or New Nizam 's Kababs and Biryani' or any other mark which is identical or deceptively similar to the plaintiffs' registered trademark Nizam 's'.
The defendant nos. 5 and 6 are directed to lock the domain name www.nizams.com till the disposal of the present suit."
2. Learned counsel for defendants submits that the plaintiff cannot claim exclusivity with regard to the mark Nizam's as the said mark is of historical value. In support of his submission, he relies upon the judgment of this Court in Rhizome Distilleries P. Ltd. & Ors. Vs. Pernod Ricard S.A. France and Ors., FAO (OS) 484/2008, MANU/DE/2742/2009.
3. He also contends that the plaintiffs have concealed the fact that a third party based in Kolkata is a prior user and registrant of the mark Nizam's and has a registration in its name.
4. He states that there are more than six registrations and fifty entities which are using the mark Nizam's and, therefore, the plaintiffs have foregone the right to take action against the defendant. He lastly submits that the present suit is vitiated by delay inasmuch as the defendant had been running its business for more than two and a half years before the injunction order was passed. Consequently, he prays that the ad interim injunction order granted by this Court on 31st August, 2018 be vacated.
5. Per contra, learned counsel for plaintiffs contends that out of six registrations annexed by the defendant with the written statement, four belong to the plaintiffs.
6. He further states that the Kolkata party which has registration of the mark Nizam's has restricted itself to the territory of West Bengal. In support of his contention, he refers to page 18 of reply to I.A. 12286/2018.
7. Having heard learned counsel for the parties, this Court is of the view that defendant No. 1 having applied for registration of the trade mark Nizam's cannot today contend that the word Nizam's is incapable of protection or registration. It is not open to the defendant to approbate or reprobate.
8. It is further settled law that dictionary and historical words are capable of protection. Even though a generic word like ARROW cannot be used as a mark for sale of arrows, yet it can be used as a mark for shirts--for which it would be considered an arbitrary or fanciful mark. Consequently, the word Nizam's is capable of protection.
9. This Court is also of the opinion that no case of concealment is made out inasmuch as the Kolkata party has confined its registration and use of the mark Nizam's to the territory of West Bengal. In any event, the plaintiffs cannot argue the case on behalf of the Kolkata party.
10. This Court is further of the view that the owners of the trade marks are not expected to run after every infringer and thereby remain involved in litigations. If the impugned infringement is too trivial or insignificant and is not capable of harming the plaintiff's business interest, plaintiff may overlook or ignore petty violation till it assumes alarming proportions. [See: Dr. Reddy's Laboratories Ltd. Vs. Reddy Pharmaceuticals Limited, MANU/DE/0658/2004 : 2004 (29) PTC 435 (Del)].
11. The Supreme Court in Midas Hygiene Industries (P) Ltd. & Anr. Vs. Sudhir Bhatia & Ors., MANU/SC/0186/2004 : (2004) 3 SCC 90 has held that in case of infringement of a trade mark, normally an injunction must follow. It was further held that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.
12. Since in the present case, defendant has copied the plaintiffs' registered mark, this Court is of the view that the ex parte injunction order dated 31st August, 2018 needs to be continued till the disposal of the suit.
13. Accordingly, I.A. 12286/2018 filed by the defendant is dismissed and I.A. 11667/2018 filed by the plaintiffs is allowed. Needless to say, the observations made in the present order are prima facie in nature.
I.A. 15044/2018 in CS (COMM.) 1095/2018
14. Keeping in view the averments in the application, defendant is directed to deposit the Court-fees within a period of two weeks.
15. In the event, the Court-fees is not deposited within the stipulated period, counter-claim filed by the defendant shall stand dismissed without any further order.
I.A. 13610/2018 in CS (COMM.) 1095/2018
16. Since the defendant has already filed a compliance affidavit dated 16th October, 2018, no further orders are called for in the present application.
17. Accordingly, it stands disposed of.
CS (COMM.) 1095/2018 & CC (COMM.) 48/2018
18. List the matter before Joint Registrar for admission/denial of documents on 18th March, 2019.
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