The Delhi High Court, in the case of Gupta and Gupta Private Limited v. Khan Chacha Hyderabadi Biryani and Ors., CS(COMM) Number 62 of 2023 decided on 06.02.2023, passed an ex-parte interim injunction order against 24 entities from using “Khan Chacha” trademark and also directed their delisting from the platforms of food delivery companies namely, Zomato and Swiggy.
Gupta and Gupta Private Limited, (hereinafter referred to as “the Plaintiff”) has been using the “Khan Chacha” trademark continuously since 1972 for various food items as well as for providing restaurant services which are enlisted on various websites providing online catering services.
The Plaintiff in the present case has alleged that Khan Chacha Hyderabadi Biryani and 23 other entities. (hereinafter referred to as “the Defendants”) are providing services similar to those provided by the Plaintiff using marks/names which include the appellation “KHAN CHACHA” without any authority, under Class 29 and 43 of the classification of goods and services for the purpose of trademark.
The Plaintiff has alleged that the usage of “KHAN CHACHA” by the Defendants infringes the Plaintiff’s registered trademarks. Furthermore, the Plaintiff also brought it to the notice of the High Court of Delhi (hereinafter referred to as the “High Court”) that an unnamed Defendant No. 27, referred to as “John Doe” in the present suit, may also be engaged in a similar infringing activity.
Thus, in the light of the above-mentioned circumstances, the Plaintiff filed an Application under Order 39 Rule 1 and 2 of Civil Procedure Code, 1908 (“CPC”) seeking interlocutory injunctive reliefs against the Defendants.
ISSUES BEFORE THE HIGH COURT
CONTENTIONS OF THE PLAINTIFF
The Plaintiff submitted that the Plaintiff has a prima facie case of infringement as the Plaintiff holds trademark registrations under Class 29 and 43 since 23.10.2009. Additionally, the Plaintiff asserted that the Plaintiff has been a user of the mark since 01.04.1972 and has been using the “KHAN CHACHA” trademark continuously since 1972 for food items, as well as for providing other restaurant services which are listed on several websites and online platforms pertaining to online catering services.
The Plaintiff further asserted that the mark “KHAN CHACHA” is inventive and arbitrary with respect to the nature of services for which the mark is listed and in respect of the services it is used for.
Lastly, the Plaintiff contended that the usage of word mark “KHAN CHACHA” by any other entities for similar services would clearly infringe upon the Plaintiff’s registered mark within the meaning of Section 29(1) of the Trademarks Act, 1999 (hereinafter referred to as “the Act”).
DECISION AND FINDINGS
The High Court observed that the Plaintiff has made out a prima facie case of infringement, in as much as the wordmark “KHAN CHACHA” has been registered in the Plaintiff’s favour both in Class 29 as well as in Class 43, with prior use claim since 1972. Usage of the “KHAN CHACHA” mark, by any other entities for similar services, would, therefore, clearly infringe the Plaintiff’s registered mark under Section 29(1) of the Act.
The High Court has placed reliance on the case of Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia, (2004) 3 SCC 90 in which it was stated that the law on the subject of injunction pertaining to trademark or copyright is well settled. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.
The High Court further observed that the grant of injunction also becomes necessary if prima facie it appears that the adoption of the impugned mark was dishonest. In the backdrop of the same, the High Court placed reliance on Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, wherein it was clearly held that refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the Plaintiff would not be capable of being undone at a later stage. Taking into accounts of all the facts, the High Court was of the opinion that an injunction is necessary to follow.
The High Court granted an ad interim injunctive relief in favor of the Plaintiff and directed the Defendants 1 to 24 to restrain from using or advertising, directly or indirectly, any mark which includes the words “KHAN CHACHA”, for services identical or allied to the services covered by Classes 29 and 43 of the classification of goods and services for the purpose of trademark. Furthermore, the High Court directed Zomato and Swiggy to block access to the websites and mobile applications of the Defendants 1 to 24.
The High Court rightly granted an ex parte injunction in favor of the Plaintiff as the unsolicited and unauthorized usage of the trademark “KHAN CHACHA” would cause irreparable harm to the business and reputation of the Plaintiff. In cases wherein the alleged infringement is of a prior used mark which has a substantial reputation in the relevant market, it is of utmost importance to uphold the goodwill of the proprietor and the brand.
Unauthorized use of trademarks without the consent and knowledge of the lawful proprietor often leads to passing off substandard goods and services behind the veil of quality goods and services promised to be provided by the said well-known brand. Such infringement often leads to loss in the business and attracts negative impressions from the customers. Therefore, restraining the Defendants herein from using or advertising the mark and blocking the access of their respective websites and mobile applications till the final decision is a reasonable and judicious step taken by the High Court.
– Team AMLEGALS assisted by Ms. Juhi Bansal (Intern)
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