Of the several cases of trademark infringement and passing off that are decided by the Courts, some cases are known for clarifying the position of law on an issue and some for addressing issues not previously discussed by the Courts. Not very often do we come across cases that simplify and reemphasize on the basics principles of law; this case is one them. In this case decided by the Bombay High Court, the Court has decided on the issue of unauthorized use of the mark ‘Café Madras’.

The facts of this case are very straightforward. The plaintiff (Kamaths) is the owner of the registered trademark Café Madras in classes 16 and 42 (no exclusivity on the word Madras) and has been using the mark since the 1950s. The defendant started using a deceptively similar mark for restaurants in Jalgaon and Nashik. The plaintiff became aware of the defendant’s activities in 2012 and inspite of all their efforts to stop them from using the mark, the defendants continued to do so. The plaintiff filed a suit for infringement and passing off. The Court passed an order in favour of the plaintiff.

The defendants, mainly relied on the following arguments, however, the Court did not accept any of these arguments.

  • That the mark Café Madras is not capable of registration, as separate words and also as a combination.
  • That since the defendants are in a far-away place, there is no possibility of confusion
  • That their mark is different from that of the plaintiff
  • That the goodwill of the plaintiff is geographically limited
  • That there are several establishments in India by this name and therefore the plaintiff cannot claim monopoly

What I found very interesting was the fact that the Court broke down the issues into several parts and addressed each of them. Some of the highlights are as follows:

Types of marks and their protection

The defendant contended that a word mark gets absolute protection, a device mark is restricted to its artistic depiction and a label or a composite mark gets both. Also, that since the plaintiff’s mark was a device and that particular mark was not being used by the defendant, it was not a case of infringement. The Court in reference to this point stated that what should be considered are the essential and prominent features of the mark by whatever name (label, device, composite, word) it is called.

Protection for marks which contain several parts

The defendant also argued on the basis of Section 17 of the Act, stating that in cases where a mark contains several parts, the exclusive right is for the mark taken as a whole. The Court clarified that the plaintiff is not claiming exclusivity over the words Café and Madras independently. Also, in general, the Court stated that registration of a mark doesn’t give the owner monopoly over individual parts separately and that would be possible only by registration of each of those parts separately.

Importance of conducting a search

The duty of the defendant (or any person) to conduct a market search and also a search in the Trademark Register was stressed on by the Court. Accordingly, if a person files a mark inspite of having knowledge that another similar/identical mark already exists, he puts himself at the risk of an infringement action.

Accessibility of information

The Court recognized the far-reaching impact of the Internet and remarked that in the earlier times, it would have not have been possible for smaller eateries to spread information, however this is no longer true since there are a number of sites that provide information about hotels and eateries and even rank them. This, in my opinion, holds good for all businesses.

Reputation of businesses in the internet age

The Court made a reference to what is known as the ‘butterfly effect’ or the ‘google paradigm’ where an adverse event in one place may well have severe consequences to the proprietor of a mark though he is in another place altogether. The point to be taken into consideration is that use of a mark by a person in a different place is likely to impact the true owner because of his reputation and goodwill, which is not limited to geographic boundaries.

The Judge in this case has factored in key issues that businesses face in the modern times and also made references to the impact of internet on businesses, no matter how big or small. To most of us who are rather cynical about the narrow views of Courts in such cases, it is finally good to see that Courts are taking into consideration the factors that affect businesses in this day and age.

This article has been authored by Nikita, an IP Law practitioner.