Trademark

Blue Frog v Blu Frog: Piggybacking on Reputation


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We bring to you a tidbit that will interest regular visitors of the Blue Frog restaurant in Mumbai. The Bombay High Court recently passed an interim order in Frog Company Pvt. Ltd v. Blu Frog Kitchen & Lounge restraining a little known Belgaum based restaurant named “Blu Frog” from infringing on the trademark of the well known Mumbai restaurant, “Blue Frog”.

Interestingly despite the order, Blu Frog’s Facebook page continues to be active.

Justice Patel while ruling in favour of the Mumbai based Blue Frog, held that Blue Frog’s goodwill and reputation is not limited to Mumbai or its immediately surrounding regions alone. The combination of the two words is unique to Blue Frog and only removing the letter ‘e’ is not enough to prove distinctiveness. The “Blu Frog” mark is phonetically, structurally and visually indistinguishable from the “Blue Frog” mark.

It was held that people visiting the defendant, “Blu Frog’s” establishment may be deceived into believing that it is a franchise of the plaintiff’s “Blue Frog”. Justice Patel held, “I do not see why the Defendants should be permitted to piggyback the Plaintiff’s success by this illicit use of, what is for all intent and purposes, the Plaintiff’s mark.”

The case has been listed for hearing and final disposal for the week of July 25, 2016. Many thanks to Rahul Dhote for referring us to this order.

While the case by itself has no new legal point to offer, I thought it might be interesting to recap similar cases in the past where well-known and popular restaurants have had to file trademark disputes in India.

We had earlier blogged here about Burger King’s successful trademark disputes in India. Burger King had filed a number of trademark cases against smaller restaurants who were using deceptively similar marks such as “Mr. Singh Burger King”, “King Burgerz” and “Burger Place” Read this article in the Economic Times for an update. You can find all the orders passed by the Delhi High Court here. Prominent restaurants, Karim’s in New Delhi and Café Madras in Mumbai and Royal Orchid Hotels have also in the past found themselves at the center of trademark disputes in India. We had earlier blogged here about the clothing giant Zara’s run in with Zara Tapas Bar in India. The court applied the concept of trans-border reputation in favour of the clothing brand while holding that, “The mark ZARA (word) is being used prominently with very small words “TAPAS BAR” which indicates the Defendants‟ intention to ride on the Plaintiff‟s reputation as ZARA was a well known mark even in the year 2003 having its presence in over 44 countries and annual turnover of 3 million Euros.”

A slightly different approach was taken by the IPAB in Royal Orchid Hotels Limited v. Kamat Hotel (India) Limited where it was held that there was no likelihood of confusion between the marks, “Royal Orchid Hotels Limited” and “Orchid”. It was held, “we are of the opinion that the “Royal Orchid Hotels Private Limited” and the “Orchid” cannot be confused. Further the respondent’s Orchid label is with the depiction of flower. The class of customers is of the high income group and there is no likelihood of confusion especially in the instant case where the mark relates to service. Even if the mark related to goods bought off the shelf, we doubt if, the word “Orchid” and the “Royal Orchid” will cause confusion.

A few years ago, Hilton International lost the exclusive right to use its registered marks in India against a local player, “Hiltone” who was able to prove that it had been using the “Hiltone” mark in India since 1973. We had blogged about this dispute here.

Read this article for more about international trademark disputes in the hospitality industry. In the article, Michael McCue argues that international trademark disputes in the hospitality industry expose the inherent conflict between the territoriality principle and the well-known famous marks doctrine. Mention is also made of ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007), ITC in which the owners of the Bukhara restaurant in India, sued Punchgini, the owners of the Bukhara Grill in New York, for trademark infringement in which the US courts refused to recognise the well known marks doctrine. For more on the difference in approaches between US and Indian courts on the concept of “transborder reputation” read one of our earlier posts here.

And for some more international flavor read here about how McDonalds in 2009 was unable to protect the “Mc” prefix in its name and lost a case against an Indian restaurant in Malaysia named “McCurry”.

Do let me know if any of you have come across any other significant trademark disputes relating to restaurants in India. I’ll leave you with the images, below of the Blue Frog and Blu Frog marks for you to judge the extent of similarity for yourselves.

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Images from here, here, here

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