JUDGMENT
S.J. Vazifdar, J.
Page 0308
1. This is an action for infringement and passing off. The action for infringement is in respect of the Plaintiff’s registered trademark, consisting of the word “Nandu’s” written in a stylised manner and the device of a cockerel enclosed in a hat shaped outline. The word “Nandu’s” is an essential feature of the trademark.
2. The suit is filed to prevent infringement and passing off by the Defendants by using the mark “Nandos” as a part of their trademark. Defendant No. 1 is a company incorporated under the laws of Ireland. Defendant No. 2, Nando’s Indage Restaurants Private Limited, is a franchisee.
3. The Plaintiffs were formed on 1st July, 1977. One P.S. Nandakumar was the managing partner. Prior thereto, the said Nandakumar was carrying on poultry business in India from 1967, in the firm name and style of Komarla Poultry Farm. The Plaintiff’s case is that the said Nandakumar was popularly known as Nandu not only amongst the members of his family but also by his business associates. Since 1st July, 1977, the Plaintiffs started carrying on business which was referred to as “Nandu’s business” by the traders and members of the public. The business in course of time extended to manufacturing and marketing processed and frozen chicken and meat products such as chicken kebabs, chicken nuggets, fried chicken, boneless chicken, chicken legs and other varieties of chicken products as well as meat pies, meat tenderisers and in respect of the said business, the Plaintiffs adopted the said trademark. The same was registered on 4th July, 1989 under Class 29 to the Schedule to the Trade Marks Rules in respect of processed and frozen meat products falling in Class 29. The registration is valid and subsisting.
4. The Plaintiffs also claimed to have obtained registration of the copyright in respect of the artistic work consisting of the said trademark.
5. The Plaintiffs claimed to have been extensively widening their product line and services by introducing several other food related products viz. Curries, biryanis, and vegetarian products in ready to eat form. The same are sold at food service outlets viz. fast food counters, highway eateries and take-away counters. They are also sold in shops and stores. The Plaintiffs have alleged Page 0309 that they plan to open restaurants, cafes, snack bars and other heat and eat outlets for sale of food items and beverages and food related products under the said trademark “Nandu’s”.
6. The Plaintiffs have also adopted another trademark consisting of the word “Nandu’s” written in a stylised manner enclosed within an oval shaped structure in white colour with red outline and a gift tag structure occupying the centre portion of the label in mustard colour with the expression “Heat ‘n’ Eat” depicted in black colour below the oval structure (Exh. “C”). This trademark was adopted in the year 2005. The word “Nandu’s” is a prominent feature in the said trademark as well. The Plaintiffs also claim to have moved fourteen applications for registration of the trademark consisting of the word “Nandu’s” in respect of goods and services falling in Class 29, 30 and 40. The applications are pending.
7. Since 1988-89, the Plaintiffs have used the first registered trademark on an extensive scale and have also used the trademarks since adoption from time to time.
8. The sales turnover from the year 1988-89 to the year 2005-06 have been furnished at Exh. “F” to plaint. They run into several crores of rupees. It is true that this turnover relates not merely to the packaged food business but also to the Plaintiffs’ poultry business. Similarly, the advertisement expenses stated in Exh. “G” to the plaint, running into a few lakhs of rupees each year from the year 1988-89 to the years 2005-06, also pertain to the Plaintiff’s poultry business. Some of the advertisements have been annexed at Exh. “H-1” to “H-17” of the plaint. The advertisements contain the said trademark in a prominent manner.
9. Mr. Khambatta drew my attention to the fact that the advertisements state that the products are “available at all leading cold storages and departmental stores” to indicate the trade channel. Suffice it to state at this stage that the advertisements refer prominently to the registered trademark as also to the word “Nandu’s” in a prominent manner. These advertisements date back to April, 1991. The newspaper articles also referred to the Plaintiff’s business in respect of the “Heat ‘n’ East” concepts. The invoices also prominently refer to the products as being “Nandu’s” products.
10. The First Defendant made an application for registration of the trademark “Nando’s” in respect of goods falling in Class 29 in the year 2001. It appears that the Plaintiff’s registered trademark was cited as a conflicting mark by the registrar. There is, therefore, no doubt that at least since the year 2001, the Defendants were aware of the Plaintiff’s registered trademark. The First Defendants’ application for registration is pending. In fact, the First Defendant filed a rectification application in the year 2001 for rectification of the Plaintiff’s registered trademark. This application too is pending. The First Defendants have also made an application for registration of the trademark consisting of the word “Nando’s” in respect of services falling in Class 42. The application was advertised in the Trade Marks Journal dated 17th January, 2005 and is pending. The Plaintiff has filed an opposition to the same. Proceedings in respect thereof are also pending.
11. The First Defendants further made an application for registration of the trademark consisting of the word “Nando’s” in respect of goods falling in Page 0310 Class 30. That application was advertised in the Trade Mark Journal dated 24th February, 2005. The same is also being opposed by the Plaintiffs. This application too is pending.
12. By their Advocate’s letter dated 6th September, 2005 the First Defendants initiated negotiations for a settlement. The details of these negotiations may not be at all relevant. They are, however, relevant to the limited extent that the Defendants were, at all material times, aware of the Plaintiff’s opposition to the use of the word “Nando’s” on the ground that it infringes the Plaintiff’s registered trademark as well as the Plaintiff’s contentions on the basis of passing off. Nor is it necessary for me at this stage to consider whether in fact a letter dated 1st December, 2005 was addressed to the Plaintiffs. The correspondence is also relevant as regards the fact that these negotiations continued till about October 2006.
13. I passed an ad-interim Order dated 18th October, 2006 in terms of prayers (a) and (b) of the Plaintiff’s Notice of Motion, clarifying that the same was only against Defendant No. 2 at that stage and granted liberty to the Plaintiffs to apply for ad-interim reliefs against Defendant No. 1 after service upon them. I further granted Defendant No. 2, four weeks time to change the corporate name and two weeks time to change the name of the restaurant. I clarified that time was granted only to facilitate the change in the corporate name and the name of the restaurant and the mark shall not be used for any other purpose.
14. Defendant No. 2 moved a draft Notice of Motion seeking to vacate the Order dated 18th October, 2006. The learned Judge by an order dated 2nd November, 2006 extended the time granted by the Order dated 18th October, 2006 for changing the name of the restaurant by a further period of three weeks. Both the Notices of Motion have now been moved before me for ad-interim reliefs.
15. The application for interim reliefs is made, inter alia, on the basis of Sections 29(2), 29(4) of the Act and on the basis of passing off. Counsel addressed me at considerable length on all the aspects and cited several judgments in support of their submissions. Although the matter was at the ad-interim stage, I reserved the Order as, on the first issue itself, I was desirous of considering the rival contentions and going through the authorities referred to in the commentaries but not produced before me.
16. The first question that arises is whether the two marks “Nadnu’s” and “Nando’s” are similar or deceptively similar. I have little, if any, hesitation in holding that they are. The only difference between the two marks are the letter “u” in the Plaintiff’s mark and the letter “o” in the Defendant’s mark. Visually, the two marks are not only deceptively similar but virtually identical. Even phonetically, the two marks are similar. The similarity is enhanced taking into consideration the possible pronunciation of the Defendant’s mark in our country. The first part of the Defendant’s mark “Nan” may well be pronounced by the vowel “a” being stretched as “Naan”. It is possible that the first part may not be pronounced with a sharp inflection on the vowel “a”. Added to this, is the fact that the consonant “o” could be slurred over, blurring the distinction between the vowel “u” in the Plaintiff’s mark and the consonant “o” in the Defendant’s mark.
Page 0311
17. It is pertinent to note that in the rectification proceedings, Defendant No. 1 had in fact contended that the two marks were similar.
18. There can be a little doubt that, as far as the packaged food is concerned, the Plaintiffs are entitled to the injunctions sought. Packaged food, if sold by the Defendants would undoubtedly be similar to the goods dealt in by the Plaintiffs. Indeed, I did not understand either of the Counsel for the Defendants to have seriously objected to the same.
19. The only question that really falls for determination at the ad-interim stage is whether the Defendants ought also be restrained from engaging in the restaurant business. In other words, the question that falls for consideration is whether the restaurant business is similar to the business of the Plaintiffs.
20. I must confess that one stage, I was of the opinion that there could be no similarity between the goods dealt in by the Plaintiffs and the restaurant services offered by the Defendants. Upon a consideration of the authorities, I am however of the view that this point requires further consideration at the final hearing of the Notice of Motion and cannot be rejected at the ad-interim stage. I will confine this Order only to a few authorities on this issue. If the Plaintiffs succeed on this point, they will be entitled to the injunction irrespective of whether they succeed on the other grounds.
21. Both, Dr. Tulzapurkar and Mr. Khambatta relied upon the commentary in Kerly’s Law on Trade Marks and Trade Names (12th Edition). The commentary on this issue refers, inter alia, to the judgment in the case of British Sugar Plc v. James Robertson & Sons Ltd. [1996] R.P.C. 281 (at page 296). A few essential factors were listed whilst considering an identical provision viz. Section 10(2) of the Trade Marks Act, 1994 in U.K. as follows:
I think the sort of considerations the Court must have in mind are similar to those arising under the old Act in relation to goods of the same description. I do not say this because I believe there is any intention to take over that conception directly. There plainly is not. But the purpose of the conception in the old Act was to prevent marks from conflicting not only for their respective actual goods in the Directive and Act is to provide protection and separation for a similar sort of pernumbra. Thus, I think the following factors must be relevant in considering whether there is or is no similarity:
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts or service;
(d) The respective trade channels through which the goods or services reach the market;
(e) In the case of selfserve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, Page 0312 who of course act for industry, put the goods or services in the same or different sectors. Further at page 294 Jacob J. observes: The Sub-section does not merely ask “will there be confusion?: it asks “is there similarity of goods?”, if so, “is there a likelihood of confusion?” The point is important. For if one elides the two questions there a “strong” mark would get protection for a greater range of goods than a “weak” mark. For instance “Kodak” for socks or bicycles might well cause confusion, yet these goods are plainly dissimilar from films or cameras. I think the question of similarity of goods is wholly independent of the particular mark the subject of registration or the Defendant’s sign.
22. In Kerly’s Law of Trade Marks and Trade Names (14th Edition) one of the tests to be applied is stated to be whether the goods or services are so commonly dealt with by the same trader with his customers, knowing his mark in connection with one set and seeing it used in relation to the other, would be likely to suppose that it was so used also to indicate that they were his. It is also observed that as between the goods on the one hand and services on the other, the question is whether or not they are associated and, this would be so, if it is likely that those goods might be otherwise traded in and, those services might be provided by the same business and, if so, with descriptions of goods and descriptions of services. In the present matter, the tests require to be applied to the Plaintiff’s products/goods/services with a restaurant business.
23. Dr. Tulzapurkar relied upon the following observations from the commentary in McCarthy on Trademarks and Unfair Competition (2006 Edition) Vo.IV. Paragraph 24:25 under the caption – “Goods in conflict with services”: – “For example, likely confusion has often been found in cases involving food services, such as restaurant services, on the one hand, and food products on the other.” The judgment in Giant Food, Inc. v. Nation’s Foodservice, Inc. referred to in the commentary was not produced before me. Indeed, Mr. Khambatta submitted that the reference to the judgment in McCarthy is limited, as a result where of, it was impossible to infer anything from the same. As the judgment appeared to be important on the issue, I obtained a copy of the same.
24. Based on the judgment in Giant Food Inc., the least that must be said is that the Plaintiff’s contention cannot be rejected at the ad-interim stage. The point certainly requires consideration not merely as a question of law but even as a question of fact.
25. The judgment considered an Appeal from the decision of the Trademark Trial and Appeal Board (TTAB). The Respondents sought to register the mark “GIANT HAMBURGERS” and design for hamburger and hot dog sandwiches, milk shakes for consumption on or off premises and restaurant services. The Appellant opposed the registration on the ground of likelihood of confusion between their marks and the Respondent’s marks on the ground of prior user. The Appellant’s marks of which prior user was claimed, were “GIANT FOOD, SUPER GIANT, GIANT FOOD and Design, and GIANT and Design” for, inter alia, retail grocery and supermarket services and private label foods. It is no doubt to be noted that the Appellant had used its marks for a variety of Page 0313 activities including for retail grocery, supermarket, general merchandising store services, restaurant, grocery supermarket, delicatessen, bakery, general merchandising etc. It is, for the present purpose, however, important to note that the Appellant had operated two restaurants in 1960s but these were later closed and that, at the time of judgment, it operated no restaurant and a task force recommended that no such operations should commence. In other words, the restaurant services were certainly not one of the Appellant’s activities. The United States Court of appeals for the Federal Circuit, held as under:
Another factor to consider under Du Pont is the similarity or dissimilarity and nature of the goods and services on which the marks are used. The TTAB found that the services performed by the two parties were not totally unrelated, and it noted that other cases had held, that supermarket services or food items were related to cafeteria or restaurant services.
See, e.g., In Re: H.J. Seiler Co., 48 C.C.P.A. 1001, 289 F.2d 674 (CCPA 1961), In re Pick-N-Pay Supermarkets, Inc., 185 USPQ 172 (TTAB 1974). The record shows that there are certain items sold by both parties under their respective marks. For example, both sell hot dogs and bakery goods in their establishments. Opposer sells sandwiches and prepared foods in its delicatessen Section, while Applicant sells hamburgers. Opposer sells meats and condiments that can be used in hamburgers and hot dogs, while Applicant uses similar items in preparing its hamburger and hot dog sandwiches. While we recognize that the average consumer makes a distinction between fast-food restaurants and supermarkets, we are satisfied that, if the marks themselves are confusingly similar, customers of the fast-food restaurant would be likely to believe that opposer owned, sponsored, or supplied that business In Re: H.J. Seiler, supra.
26. In In Re H.J. Seiler Co., referred to in Giant Food Inc., the United States Court of Customs and Patent Appeals, held:
[1] The Appellant’s contention here is that the catering food service is so distinct from selling specific food products that there is no likelihood of the purchasing public’s confusing its mark with that of the registrant. We cannot agree with this contention. The marketing practices of today are such that a customer who attends a banquet which he knows is catered by the Appellant would, when he encounters a food product in the grocery store under an almost identical mark, naturally assumes that it came from the catering firm. The fact that catering firms do market food can hardly be disputed by this Appellant in view of its solicitation, on menus used by it in its catering business, of customers for the retail sale of its food products, and the difference between a service for the catering of food and the actual sale of food is a rather fine legal distinction not likely to be drawn by laymen. It is, of course, possible that purchasers of the smoked meats would not be likely to call upon the smoked meat manufacturer for catering service. However, if customers of the catering service believe that the smoked meat in the grocery store comes from the caterer, it is not necessary that they also believe that the smoked meat manufacturer is the caterer. Either supposition creates confusion as to source or origin.
Page 0314
27. It is not unknown that well established restaurants sell food and cooking ingredients in packaged form at various outlets. I cannot rule out the possibility of the customers of the restaurants presuming that packaged foods in such outlets bearing similar marks originate from the restaurant. Whether the case vice-versa would also arise, would depend upon the facts and circumstances of each case including the strength of the marks. Considering the long usage of the mark and the sales of the products, I cannot rule out at this stage the possibility of confusion. Suffice it to state that this aspect in fact satisfies more than just one of the tests enumerated in British Sugar Plc (supra) and the further commentary in Kerly.
28. It is also pertinent to note that Defendant No. 1 in their affidavit filed in the rectification proceedings have relied upon not merely their reputation in the goods sold by them but also in the restaurant services rendered by them. If there was no connection between the Defendants, restaurant services and the Plaintiff’s goods, the least that must be said is that the Defendants must explain their reliance upon their reputation in their restaurant services in the rectification proceedings.
29. The balance of convenience tilts in favour of the Plaintiffs. Their reputation, if any, in India can only be on the basis of a trans border reputation. It is not clear when it arose in India. Although, considering the number of restaurants, it may be possible to argue, prima facie that it now exists in India. The Plaintiff’s reputation however have been in existence long before the Defendant’s reputation could have arisen in India. If the injunction is refused, it would do the Plaintiffs irreversible harm if they were to ultimately succeed at the hearing of the Notice of Motion. On the other hand, if the injunction is granted, the Defendants would not suffer such irreversible harm. The parties have been litigating before the Trade Marks authorities for the past few years including in respect of the First Defendant’s registration under Class 42.
30. I must however state not as a matter of form but as a matter of substance, that this order is based only on a prima facie view realising that the matter certainly requires consideration at the hearing of the Notice of Motion.
31. This is a fit case for expediting the hearing of the Notice of Motion. The questions of law which fall for consideration are important and are likely to arise in future.
32. In the circumstances, the ad-Interim Order dated 18th October, 2006 is confirmed as against both the Defendants. However, the time for Defendant No. 2 to change the corporate name and the name of the restaurant is extended upto 10th April, 2007.
33. The Notice of Motion to be on board for final hearing on the first week of March, 2007.
34. Application for stay rejected.