The southern district of Dindigal in Tamil Nadu occupies a special place in the hearts of biryani lovers. In the late 1950s, one Nagasamy Naidu opened a biryani eatery under the name ‘Ananda Vilas Biryani’ in Dindigal. As he always wore a turban (or thalapa in Tamil) to cover his bald head, folks in the town referred to him as ‘Thalappakatti Naidu’. Soon, his savory biryani acquired a wide popularity and ‘Thalappakatti Naidu Biryani’ became synonymous with the eatery. His son and grandson currently operate the eatery under the name ‘Thalapakatti Naidu Ananda Vilas Biryani Hotel’. They had also started operations in Coimbatore, and have maintained a presence in Chennai since 2005. To cash in on their popularity, a Chennai-based restaurant opened outlets under the name ‘Thalappakattu Biryani Corner & Fast Food’. Recently, the Division Bench of the Madras High Court allowed an interim injunction against the Chennai-based restaurant restraining the use of name ‘Thalappakattu’. Last Friday, the IPAB awarded another victory to the original Thalappakatti biryani, dismissing an appeal filed by the Chennai-based restaurant challenging their use, and imposed a fine of Rs. 20,000 and costs.
On September 15, 2005, the Chennai-based restaurant filed a trademark application (Application No. 1385141) for registration of ‘Thalappakattu Biryani Corner & Fast Food’ claiming user date since April 2005. The restaurant currently has 68 outlets in Chennai and has widely used the word ‘Thalappakattu’. Subsequently, the Dindigul-based eatery filed for ‘Thalappa Katti Biryani Hotel’ (Application No.1408388) claiming user since 1957. Both parties filed oppositions against one another’s mark. The Deputy Registrar disposed of the matter on September 20, 2010, ruling in favour of registration of the Dindigul based hotel and denied registration to Chennai restaurant (Appellant) as it is likely to cause confusion. However, the order directed the Respondent to amend the mark to ‘Thalappakatti Naidu Ananda Vilas Biryani Hotels’.
In 2007, the Respondent filed a suit before the Madras High Court seeking a permanent injunction against the Appellant to restrain them from using the word Thalappakattu. The Division Bench on August 01, 2011 upheld the interim injunction granted by a single judge. The High Court found that the adoption of the mark Thalappakattu by the Appellant was dishonest and caused confusion among consumers.
The Appellant argued that the word ‘Thalappakattu’ was adopted out of respect for his ancestor, Mr. Sulaiman who was the Chief of the Horse Regiment during the time of Raja of Sivaganga. As he always wore a turban, their family came to be known as ‘Thalappakattu Rawthers’. The Appellant distinguished their mark with the Respondent’s device mark stating that the latter contained an image of ‘Man with the turban’, while their mark merely has a turban and curve.
The Respondent claimed genuine adoption of the mark and prior and continuous use. The Respondent presented assessment orders of tax departments purported to have been filed by Thalappakatti Naidu Ananda Vilas Biryani hotel (or other similar names). The mark has been advertised in newspapers since 1995 and the restaurant has featured in various magazines. Several reference to Thalappakatti biryani in movies prior to 2005 is a further testament to its popularity. Based on the evidence adduced by both parties, the Deputy Registrar found the Respondent to be ‘prior and genuine adopted and continuous user’ of the mark. The Appellant’s mark is an ‘imitation and was likely to cause confusion’.
IPAB upheld the order of the Deputy Registrar in entirety and stated that the “evidence filed by the Respondent is very strong and we cannot disregard his case that the Thalappakatti had in fact become synonymous with their Biriyani.” It found the appellant’s mark to be a dishonest adoption. It found the words ‘Thalappakattu’ and ‘Thalappakatti’ can be used interchangeably and that consumers would not focus on the last syllable, therefore causing confusion. The Board considered the location of the hotel in Dindigul to be irrelevant in denying registration.
The Board also dismissed a technical objection raised by the Appellant in relation to a TM-16 (correction of clerical errors) application filed by the Respondent. The Appellant averred that the Registrar mechanically allowed the TM-16 and, being aggrieved, no opportunity was given to present their case. The Board found that the amendment merely seeks to change the name of the proprietor and the counsel. The Appeal was dismissed as there were no irregularities.