Case Note & Summary
The plaintiff, Mehboob Khan, sole proprietor of 'Carter's Blue' restaurant, filed a suit for trade mark infringement and passing off against the defendants, who were using similar names such as 'Mezbaan Carter's Blue', 'The Carter's Blue', and 'Mehboob Carter's Blue' for their restaurants. The plaintiff had registered the mark 'CARTER'S BLUE' in Class 43 (as of 16th June 2011) and Class 42 (as of 18th May 2013). The dispute arose from a Conducting Agreement dated 1st April 2008 between the plaintiff and the original 1st defendant, Firoz Qureshi, which allowed the plaintiff to run a restaurant at premises owned by the defendant. The plaintiff argued that the defendants' use of deceptively similar marks constituted infringement and passing off. The defendants contended that they had a right to use the mark based on the Conducting Agreement and that the plaintiff's registration was invalid. The court, after considering the submissions, found that the plaintiff had made out a strong prima facie case. The Conducting Agreement did not grant any trade mark rights to the defendants. The balance of convenience was in favor of the plaintiff, and irreparable loss would be caused if the injunction was not granted. The court noted that the defendants had changed their names after an interim order, indicating an attempt to circumvent the injunction. The court allowed the notice of motion and granted an injunction restraining the defendants from using the mark 'CARTER'S BLUE' or any deceptively similar mark. The court also directed the defendants to change their restaurant names and remove any signage using the impugned marks within four weeks.
Headnote
A) Trade Marks - Infringement and Passing Off - Registered Proprietor - The plaintiff, registered proprietor of 'CARTER'S BLUE' mark in Classes 43 and 42, sought injunction against defendants using similar marks like 'Mezbaan Carter's Blue', 'The Carter's Blue', and 'Mehboob Carter's Blue' for restaurants. The court held that the plaintiff had made out a strong prima facie case of infringement and passing off, as the defendants' marks were deceptively similar and the Conducting Agreement did not confer any right to use the mark after termination. (Paras 1-22) B) Civil Procedure - Interim Injunction - Balance of Convenience - The court found that the balance of convenience was in favor of the plaintiff, as the defendants' continued use would cause irreparable harm to the plaintiff's goodwill and reputation. The defendants' conduct in changing names after the interim order indicated an attempt to circumvent the injunction. (Paras 23-30) C) Contract Law - Conducting Agreement - Interpretation - The Conducting Agreement dated 1st April 2008 between the plaintiff and the original 1st defendant did not grant any proprietary interest in the trade mark to the defendants. The agreement was for conducting the restaurant business, and the mark remained the plaintiff's property. The defendants' reliance on the agreement to justify use of the mark was rejected. (Paras 3-10)
Issue of Consideration
Whether the plaintiff is entitled to an interim injunction restraining the defendants from using the mark 'CARTER'S BLUE' or any deceptively similar mark in respect of restaurant services, pending the suit.
Final Decision
Notice of Motion allowed. Defendants restrained from using the mark 'CARTER'S BLUE' or any deceptively similar mark. Defendants directed to change their restaurant names and remove signage within four weeks.
Law Points
- Trade mark infringement
- passing off
- interim injunction
- registered proprietor
- conducting agreement
- deceptive similarity
- balance of convenience
- prima facie case
- irreparable loss
