Bombay High Court: restaurant in "narrow lane" has international renown

India

In Kamath v Lime & Chilli Hospitality Services (Notice of Motion No 2586/2012 in Suit No 2549 of 2012), a single judge of the Bombay High Court has granted an interim injunction restraining Lime & Chilli Hospitality Services from using the mark CAFÉ MADRAS in respect of its restaurant in the context of an action for infringement and passing off filed by Jagdish Gopal Kamath and others (collectively 'the Kamaths').

The Kamaths’ restaurant

Lime & Chilli’s label

In support of their case, the Kamaths relied on, among other things:

  1. their Indian and international trademark registrations for CAFÉ MADRAS;

  2. the similarity of Lime & Chilli’s mark to their mark; and

  3. the identity of the businesses (restaurants serving South Indian cuisine).

In its defence, Lime & Chilli contended the following, among other things:

  1. No exclusivity could be claimed over the word ‘Madras’ (now known as Chennai, which is a geographical name), especially since the Trademarks Registry had subjected Kamaths’ trademark registration to a disclaimer over that word. Further, there could be no exclusivity on the word 'café', individually or jointly with the word 'Madras'.

  2. The goodwill of the Kamaths’ restaurant business was confined to its area of business (ie, Mumbai), and Lime and Chilli’s restaurant is located in Jalgaon (a district in the State of Maharashtra about 400 kilometres away from Mumbai).

  3. Given that the Kamaths’ marks and Lime & Chilli’s mark were both composite labels/device marks, there was no similarity between them.

In response, the Kamaths contended that these defences were not applicable, as Lime & Chilli had copied the dominant feature of their mark it its entirety and had also applied for registration of the trademark CAFÉ MADRAS. Further, the goodwill of their restaurant business was not confined to Mumbai in view of the various online listings for the restaurant, which were accessible without any geographical limitation.

After hearing the parties, the court rejected Lime & Chilli’s defences and granted an injunction on the basis that:

  1. Lime & Chilli’s adoption of the mark was not in good faith;

  2. The Kamaths reputation and goodwill was not geographically limited; and

  3. As 'Café Madras' was the dominant feature of rival marks, they were deceptively similar and there was confusion and deception among the public.

Interestingly, the court began by describing the location of the Kamaths’ restaurant as follows: “in a narrow lane… stands an unassuming eatery”; however, it went on to hold that it was internationally renowned. Further, while the court accepted various online listings for the Kamaths’ restaurants as proof of its renown, it refused to consider the online listings submitted by Lime & Chilli as proof that other traders used the words 'Café' and 'Madras'.

An interesting aspect which was not considered by the Kamaths was the use of the words 'essence of real udipi kitchen' by Lime & Chilli. Udipi is a city in the Indian State of Karnataka, while Madras is a city in the State of Tamil Nadu. By mentioning Udipi in its label along with Madras, Lime & Chilli was also guilty of using a false trade description, as the cuisines of both cities differ. In addition, it is doubtful that the Kamaths can claim to be known for food originating from Madras, as 'Kamath' is a common surname in the State of Karnataka, but not in the State of Tamil Nadu (where Madras is located). Given that 'Café' and 'Madras' are common words and that the Kamaths are operating their restaurant in a “narrow lane”, it remains to be seen whether this decision will stand the test of time.

Adheesh Nargolkar, Shailendra Bhandare and Arunadhri Iyer, Khaitan & Co, Mumbai

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