Decided - 03-08 -2023
The following article talks about the issues relating to the trademark of the section 29(2) of the Trade Marks Act which was creating confusion amongst the costumers with respect of the trademark. The confusing letter was the word “BISTRO” with both the brand names “CHINA BRISTO” and “WOW CHINA BRISTO” The word bristo was added by WOW CHINA afterword in their trademark. This made confusion and both the brands look similar to each other.
This dispute was addressed in Delhi High Court to which the honorable court gave the judgement that to dissolve the word bistro from WOW CHINA BISTRO till further orders.
BACKGROUND
The parties involving in this legal case are Foodlink F&B holdings India Private Limited (plaintiff) and Wow Momo Foods Private Limited (defendant). The legal case is related to the dispute regarding the intellectual property rights specifically with the trademark infringement.
FACTS OF THE CASE
Foodlink F&B holdings India Private Limited (plaintiff) had a trademark registration for “CHINA BRISTO”. The Wow Momo Foods Private Limited (defendant) was using a trademark named “WOW CHINA BRISTO”
It was alleged by the plaintiff that the defendants has violated the terms of registration. Which is been in class 43 since 11th January 2012. They also carries various food related business
Until 2019 the defendants used a trademark named “WOW !CHINA” but later on they added one more extra element to it, which made them fall in this dispute. They added the word bistro below the word “CHINA”, which made it as “WOW! CHINA BISTRO”
The plaintiff contended that the mark used by the defendants was confusing the because of the addition of the word “bistro” under “CHINA”. The only difference between both the words were the word WOW . According to the plaintiff the word “wow” doesn't reduce the confusion.
ISSUES RAISED
- Whether the marks are deceptively similar under Section 29(2) of the Trade Marks Act?
- Whether the plaintiff is entitled to claim infringement?
The court disagrees with the defendants argument, it says that both the trademarks are very similar to each other. The plaintiffs mark is China Bistro while the defendant is Wow China Bistro. The court things that if an average person without a perfect memory
Could see the trademarks will get confused and think that there is a connection between the 2 brands it is called initial interest confusion which can be considered as an infringement. This matches the provision stated under the trademarks act section 29 (2) about the infringement.
According to the court the plaintiff has a strong case because it makes the trademark similar to the defendant's under subsection 29(2) of trademarks act.
While addressing the second issue the defendant said that the plaintiff does not possess exclusive rights upon the word China and Bistro separately because of which they cannot have exclusive rights on whole phrase China Bistro the main question which arose was whether the plaintiff actually gave up their rights to China and Bistro separately.
The defendant further submitted about the registrations of the plants trademark. Plaintiff has obtained its initial registration number 1470912 on July 18 2006 which was falling under class 42 and included range of services for example restaurant bars snacks bar hotels cafes etc. Under this registration it is clearly indicating that exclusive rights weren't claimed over the words China and Bistro.
Later in the year 2012 on 11th January the plaintiff got its second registration which was linked to the `irst one it covered similar services that relinquished exclusive right over term China
They obtained for 3rd registration which included services related to food drink catering accommodation and many more unlike earlier registration it did not have direct disclaimer however it mentioned being associated with second registration which included the term China Bistro
OBSERVATIONS OF THE COURT
The court observed that the question of trademark was distinctive and not just the combination of two similar words. The word bistro can be referred as a café which is commonly used word. Instead of “Chinese café” the word “China Bistro” had more uniqueness and therefore should be protected by the rule of law.
In addition the court also said that the term WOW CHINA BISTRO should be prohibited to use as their trademark
Furthermore the court also gave the clarifications that the disclaimer did not extend to the composite mark “CHINA” and should be compared as a whole under section 17 of the trademarks act
JUDGEMENT OF THE HIGH COURT
The court made a ruling based on the facts and legal issue presented and held that defendant and its representatives were restrained from using the mark/name or WOW CHINA BISTRO as a trademark, label, device, trading style, trade name, logo, keyword, meta tag, domain name, or in any other manner similar to "CHINA BISTRO," until further orders, except for " " and "WOW! CHINA."
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