Some of our readers who have ventured out into Matunga, Bombay might have come across ‘Cafe Madras’, a restaurant serving Udipi Cuisine. Last week the Bombay High Court delivered judgment over a trademark dispute filed by ‘Cafe Madras’ against Lime &Chilli Hospitality Services who have opened up their own Cafe Madras in Bombay.
In an exceedingly well written judgment by Justice G. S. Patel (the judgment is worth a read for the literary flourish in addition to the well reasoned legal arguments), a number of important issues relating to trademarks are discussed.These include a prima facie case of infringement and passing off, including the defendant’s adoption of the mark is bona fide and whether it is likely to dilute the plaintiff’s marks, affect its reputation and good will or both.
On the first issue of infringement, the Court held that the mark has to be viewed in its entirety and to be examined for structural, visual or phonetic similarities. In this case, ‘Cafe Madras’ is the most essential and prominent part of the mark and therefore, the use of the same words would constitute infringement even if there were stylistic variations on how they were written. The test is of the average consumer with average intelligence and imperfect recollection and whether these stylistic variations make a distinction to him/ her. The Court ruled that it would not.
The Defendants contended that the term ‘Cafe Madras’ in relation to S. 17, TM Act had become common to the trade and exclusivity therefore could not be granted with respect of the same to anyone. However, the defendant itself has applied for the registration of a device mark with the words ‘Cafe Madras’ as its most essential and prominent feature. Therefore, the Court applied the principle of approbation and reprobation to reject the defendant’s claim. As Justice G. S. Patel put it, “To say at once that the Plaintiffs’ mark is descriptive and to apply for registration, no matter in what context, of a mark that contains substantially the same matter is, if I might be permitted to paraphrase a cliché, somewhat like carrying idlis to Udipi.” The Defendants also contended that the terms Cafe and Madras taken separately were too generic to be given Trademark protection. However, the Court noted that the issue is whether the terms ‘Cafe Madras’ taken together are unique and distinctive. It took the example of Vithal Bhel Puri and Sardar Pav Bhaji to state that while all these terms by themselves are common place, together they connote a particular brand which is unique and distinctive. It ruled that Cafe Madras was an unique and distinctive brand of the Plaintiffs which has been used by them since the 1950s. (The facts pertaining to this aspect is dealt under the issue of passing off)
The defendant then argued that there are at least 6 restaurants in Bombay itself with the name ‘Cafe Madras’. The Court found fault with this as 3 of the 6 restaurants are outlets of the Plaintiff, one was closed on a decree obtained by the Plaintiff against it, one is a multi cuisine restaurant with insignificant sales and there is no evidence that the sixth one actually exists. The Court stated “It is a litany of names and website addresses derived from a casual saunter through an Internet-based search. There is no statement that this information has been in anyway verified,or even attempted
to be verified. This is a sort of ‘lazy sweep’ , a trawling for data without assessment as to accuracy or validity . This is not what the law expects or demands.” In any event, the factum of existence of another infringer is not an acceptable defense, the Court noted. The Court also rejected the defendant’s arguments that the term ‘Cafe Madras’ was descriptive of the service.
The second issue was relating to passing off and whether the defendants’ use of the term ‘Cafe Madras’ has the likelihood of confusing and deceiving the consumers. In this case, the court noted that actual confusion had already occurred. The Plaintiffs had over the years, acquired considerable goodwill and reputation. They have been often written about, they have been given awards, internationally renowned chef Gordon Ramsay had praised them among many others in the industry. They are an iconic eatery in Bombay. In mid-March, 2014 a rat was found in the food served in the Defendant’s establishment. This incident was reported in several leading newspapers.However, the establishment was referred to only as ‘Cafe Madras’ or ‘Madras Cafe’ and no information was available to distinguish this from the plaintiff’s establishments. The notoriety and disrepute stemming from this incident had directly affected the Plaintiffs, as consumers were confused between the Plaintiff’s and defendant’s establishments. Therefore, the Court accepted the Plaintiff’s claim for passing off.
The Court also recognized that in the internet age, where websites such as Zomato and Burrp are dedicated to the restaurant industry, the reputation and goodwill of the Plaintiff cannot be said to be locally confined. Therefore, the defendant ought to have been aware of the existence of the Plaintiff’s who have been using the mark since the 1950s, for more than half a century.
It stated thus: “plaintiff ’s mark’s reputation, goodwill and prior use may be supplemented with Internet-based material. Where such material exists, a rival user is expected to know of it and a defendant may even be deemed to be aware of it. The burden must then lie on the defendant to show that the rival use of the mark is such as would have no effect on the plaintiff ’s continued use of that mark. The fact that a defendant’s mark or goods or service bearing that mark are not easily traceable on such Internet-based material is not enough to discharge that burden; for , evidently , any person adopts a mark only with a view to foster and build a reputation. In addition, where there
is sufficient globally-accessible Internet material to show damage or to raise a presumption of damage to the plaintiff by the defendant’s use of the mark, the defendant’s burden is that much greater . This is in one sense something very like the ‘butterfly effect’ ( we might call it ‘the Google paradigm’): an adverse event in one place may well have severe consequences to the proprietor of a mark though he is in another place altogether.”
Thus, the Bombay High Court ruled in favour of the plaintiff in both the issues.
Our hat tip to Law Street India for bringing this case to our attention!