Court not inclined to award damages in the suit of infringement of copyright and trademark and passing off in certain cases.


Court :
Delhi High Court

Brief :
The Plaintiff, Oriental Cuisines Private Limited, filed the suit alleging passing off and infringement of its trademark and copyright in the mark “THE NOODLE HOUSE” by the defendant, Star Restaurants Private Limited, seeking a decree of permanent injunction along with damages and costs of the suit. The Plaintiff claims to use the mark from December 2003, for which registration is pending in Class 42 and in respect of a Chinese restaurant. In May 2008, the Plaintiff learnt about the proposed launch of the Defendant's restaurant under the same name as the mark of Plaintiff and offering same cuisine as the Plaintiff. Held, the short duration between the filing of the suit and grant of injunction, in addition to the fact that the plaintiff did not placed anything on record to establish whether the Defendant’s restaurant was launched at all, the Court did not award any damages. Important points: The prior user of trade mark has been held to be sufficient to entitle the aggrieved part to secure an injunction even when in absence of any registered trade mark. The mark and goods being identical, the suit deserves to be decreed in favour of the plaintiff to the extent of grant of permanent injunction.

Citation :
Heinz Italia v. Dabur India Ltd., 2007 (6) SCC 1 Century Traders Vs. Roshan Lal Duggal, AIR 1978 Delhi 250 Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., 2001 (2) SCR 743

CS(OS) 1069/2008 Page 1 of 9

 

* IN THE HIGH COURT OF DELHI AT NEW DELHI 

 

 Judgment reserved on: 17.12.2013 

 

% Judgment delivered on: 10.01.2014 

 

+ CS(OS) 1069/2008 and I.A. No. 8638/2008 

 

 ORIENTAL CUISINES PRIVATE LTD. ..... Plaintiff 

Through: Mr. H.P. Singh & Mr. Navroop Singh, 

Advocates. 

 

 versus 

 

 STAR RESTAURANTS PRIVATE LTD. ..... Defendant 

 Through: 

 

CORAM: 

HON’BLE MR. JUSTICE VIPIN SANGHI 

 

J U D G M E N T 

 

VIPIN SANGHI, J. 

 

1. The Plaintiff, Oriental Cuisines Private Limited, has filed the present 

suit alleging passing off and infringement of its trademark and copyright in 

the mark “THE NOODLE HOUSE” by the defendant, Star Restaurants 

Private Limited, and consequently seeking a decree of permanent injunction 

restraining the defendant, whether acting by itself or through its partners or 

proprietor, its officers, servants, agents and representatives from 

manufacturing and selling and offering for sale or supply, advertising, 

directly or indirectly dealing or rendering services in the hospitality industry 

or other related goods and services under the mark/ name “THE NOODLE 

HOUSE” and/or any other mark confusingly similar thereto, or any imitation CS(OS) 1069/2008 Page 2 of 9

 

or variation thereof, amounting to an infringement and passing-off of the 

plaintiff company’s trademark; using the mark “THE NOODLE HOUSE” 

and/or any deceptively similar name, from in any manner holding out an 

association of its products or business with that of the plaintiff and from 

doing acts as to pass off or likely to pass off the defendant’s goods or 

business as those of the plaintiff. 

2. The plaintiff also prays for a decree of mandatory injunction ordering 

the defendant, its partners or proprietor, their officers, servants, agents, 

representatives, distributors and assigns to hand over all products, packaging 

cartons, unfinished products, bill boards etc bearing the mark “THE 

NOODLE HOUSE” to the plaintiff. In addition, the plaintiff also prays for 

damages and costs of the suit. 

3. The plaintiff is a private limited company incorporated under the 

Indian Companies Act, 1956 on 10.05.1994, having its registered office at 

Chennai. The plaintiff company is in the business of global specialty and 

hospitality management engaged in discovering, developing and 

commercializing food courts and popular food chains and restaurants 

serving a variety of cuisines. The present suit relates to the plaintiff’s rights 

in the trademark “THE NOODLE HOUSE” which was adopted and 

introduced by the plaintiff company in December 2003 in respect of 

restaurants serving Indo-Chinese cuisine. 

4. The defendant is a private limited concern in the business of 

hospitality and restaurant management. The plaintiffs allege that in May 

2008, the plaintiff learnt of the proposed launch of the defendant’s restaurant CS(OS) 1069/2008 Page 3 of 9

 

“THE NOODLE HOUSE” at MGF Mall, Saket, Delhi proposing to offer the 

same cuisine as the plaintiff’s restaurant. In the aforesaid background, the 

plaintiff filed the present suit seeking the reliefs mentioned hereinabove. 

5. Summons were issued in the suit vide order dated 30.05.2008 

returnable on 11.07.2008. As service report was awaited, fresh summons 

were issued vide order dated 11.07.2008 returnable on 12.08.2008 on which 

date summons were again directed to be issued returnable on 12.09.2008. 

On 12.09.2008, service report was awaited and the matter was renotified for 

19.11.2008. On 19.12.2008, the defendant was proceeded ex parte as despite 

being served with ‘Dasti’ summons on 22.10.2008, the defendant failed to 

put in an appearance and file its written statement. Order dated 19.12.2008 

also allowed the plaintiff’s application under Order 39, Rule 1&2, Civil 

Procedure Code (CPC) and restrained the defendant from manufacturing, 

selling, offering for sale, advertising or rendering services in hospitality 

industry or other related goods and services under the trademark “THE 

NOODLE HOUSE” or any mark deceptively similar thereto amounting to 

infringement and passing off till the disposal of the suit. On 09.11.2009, 

notice was issued on the plaintiff’s application under Order 10, Rule 1 CPC 

for impleadment of Jumeirah Group LLC as defendant no.2. This 

application was dismissed as withdrawn vide order dated 16.07.2012 in view 

of a settlement arrived at in another suit being CS (OS) 1947/2008 between 

Jumeirah Group LLC and the plaintiff on 13.07.2012. A copy of the 

settlement agreement has been placed on record in these proceedings. 

6. The plaintiff tendered its affidavit by way of evidence of Sh. Narendra 

Malhotra, Chief Executive Officer of the plaintiff company as PW-1. This CS(OS) 1069/2008 Page 4 of 9

 

witness proved various documents on 14.03.2013 which are Ex. PW1/1 to 

PW1/9. The testimony of the plaintiff’s witness has gone unrebutted and 

there is no reason not to accept the same. Some of the exhibited documents, 

which are considered relevant, shall be referred to hereinafter. 

7. The first submission of learned counsel for the plaintiff is that the 

plaintiff company has developed and grown from a small restaurant in 1984 

to a premier global specialty and hospitality management company in 1994 

guided by Sh. M Mahadevan who has more than twenty years experience in 

the food and beverage industry and who was awarded the Best Entrepreneur 

Award by the Government of India, Tourism Department in 2001. Learned 

counsel submits that the plaintiff company employs more than 5000 people 

worldwide and operates in 86 commercial locations worldwide, has 62 

affiliates and a world class Culinary Institute in Chennai with total revenue 

of Rs.130 million in the year ending 2007. 

8. Learned counsel submits that the plaintiff company adopted the 

trademark “THE NOODLE HOUSE” in December 2003, which registration 

is pending, for restaurants serving Chinese cuisine and since then the 

trademark has emerged as the plaintiff company’s most popular chain. 

Learned counsel submits that the trademark is a fanciful and invented 

combination of words and has come to be associated exclusively with the 

plaintiff’s business. Learned counsel submits that the popularity of the 

plaintiff’s trademark is evidenced by its net sales under the trademark for the 

year 2008, which amounted to Rupees Twenty Million. Learned counsel for 

the plaintiff submits that the unique feature about the restaurants under the 

trademark “THE NOODLE HOUSE” is that they bear a uniform look from CS(OS) 1069/2008 Page 5 of 9

 

the exterior and interior and owing to its immense popularity, the plaintiff 

company has created a separate link on its website www.orientalgroup.in 

dedicated solely to the history of THE NOODLE HOUSE. Learned counsel 

submits that in order to encash upon the goodwill of the trademark, the 

plaintiff company has taken on lease a shop in SATYAM CINEPLEX, 

Nehru Place, Delhi in 2008 to open up a branch of the “THE NOODLE 

HOUSE”. 

9. Learned counsel submits that the proposed launch of the defendant’s 

restaurant under the identical trademark is in a vicinity close by to the 

plaintiff’s location and for the same category of products and services as 

those of the plaintiff. Learned counsel submits that the use of the trademark 

“THE NOODLE HOUSE” by the defendant for identical services is with the 

intention to free ride on the plaintiff’s popularity. 

10. Learned counsel submits that the mark of the defendant is identical to 

that of the plaintiff’s, and is likely to create an impression that the mark of 

the defendant is an extension of the plaintiff’s mark or is the outcome of a 

joint venture between the plaintiff and defendant. Learned counsel submits 

that the same is likely to cause confusion and will result in dilution of the 

plaintiff’s mark. 

11. Though the registration of the plaintiff’s mark is still pending, the 

plaintiff can lay common law claim over its trademark and succeed in a suit 

for passing off if the plaintiff can establish prior use of the trademark. In 

Heinz Italia v. Dabur India Ltd., 2007 (6) SCC 1, the Court while relying 

upon the decision in Century Traders Vs. Roshan Lal Duggal, AIR 1978 CS(OS) 1069/2008 Page 6 of 9

 

Delhi 250 observed that the prior user of trade mark has been held to be 

sufficient to entitle the aggrieved part to secure an injunction even when in 

absence of any registered trade mark. 

12. The mark “THE NOODLE HOUSE” was adopted by the plaintiff as 

far back as in 2003 i.e. significantly prior to the use of the impugned mark 

by the defendant. The plaintiff has filed on record an additional 

representation made by it before the trademarks office marked as Ex. PW1/2 

which records the date of user by the plaintiff as 07.12.2003. The application 

further records that the trademark is sought to be registered in Class 42 and 

in respect of a Chinese restaurant. The plaintiff has filed on record original 

sales invoices issues by several of its restaurants in Chennai under the mark 

“THE NOODLE HOUSE” from 2003 onwards. These invoices have been 

exhibited as PW 1/6. The plaintiff has also placed on record a copy of its 

year wise turnover under the trademark “THE NOODLE HOUSE” from 

2003-2007 marked as Ex PW1/5. These exhibited documents are sufficient 

to establish that the plaintiff has been continuously using the trademark 

since the year 2003 onwards. 

13. In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., 2001 

(2) SCR 743, in Paragraph 10 the Court observed- 

“As per Lord Diplock in Erwen Warnink BV Vs. J Townend & 

Sons 1979(2) AER 927, the modern tort of passing off has five 

elements i.e. (1) a misrepresentation (2) made by a trader in the 

course of trade, (3) to prospective customers of his or ultimate 

consumers of goods or services supplied by him, (4) which is 

calculated to injure the business or goodwill of another trader 

(in the sense that this is a reasonably foreseeable consequence) 

and (5) which causes actual damage to a business or goodwill CS(OS) 1069/2008 Page 7 of 9

 

of the trader by whom the action is brought or (in a quia timet 

action) will probably do so.” 

14. A perusal of the label mark of the plaintiff and the defendant marked 

as Ex. PW 1/2 and PW1/3 leave no room for doubt that the use of the 

impugned mark by the defendant is likely to cause confusion and mislead 

the public into believing that the services of the defendant are associated 

with the plaintiff. The same are as follows: 

 Mark of the Plaintiff - Mark of the Defendant- 

 

 

15. The label mark of the plaintiff consists of the words “THE NOODLE 

HOUSE”. As already mentioned hereinabove, the plaintiff uses the 

aforementioned trademark in respect of restaurants catering to Chinese 

cuisine. The impugned mark being used by the defendant contains the 

identical words “THE NOODLE HOUSE” alongwith 2 chopsticks with a 

string of noodle wrapped around and a bye line which reads “enjoy tasty CS(OS) 1069/2008 Page 8 of 9

 

tangles”. A perusal of the defendant’s mark makes it clearly discernible that 

the defendant intends to use to impugned mark in respect of Chinese cuisine 

which is identical to the cuisine being offered by the plaintiff. The mark as 

well as goods offered being identical, the same is likely to confuse a 

consumer with imperfect memory. 

16. Ex PW 1/8 is lease deed dated 20.02.2008 entered into by the plaintiff 

for acquiring on lease a commercial premises in South Delhi for the purpose 

of running a branch restaurant under the trademark. The defendant’s 

restaurant is also situated at a mall in South Delhi. Consequently, the use of 

the impugned mark by the defendant is likely to create confusion and is 

likely deceive people. There has been no explanation forthcoming from the 

defendant as to why the impugned mark was adopted by the defendant. It is 

hard to believe that the defendant – which is itself in the business of 

restaurant and hospitality management, would not have been aware of the 

plaintiff’s trademark and restaurant. It appears that the defendant adopted 

the impugned mark with malafide intention to free ride on the goodwill of 

the plaintiff. This act of the defendant is likely to dilute the mark of the 

plaintiff and lead to loss of goodwill. Furthermore, the plaintiff risks losing 

reputation if the defendant does not uphold the standard of service as offered 

by the plaintiff as a consumer is likely to be deceived into believing that the 

goods offered by the defendant actually belong to the plaintiff. 

17. In my view, the aforementioned ingredients for passing off as laid 

down in Cadila Health Care (supra) stand satisfied in this case. The mark 

and goods being identical, the suit deserves to be decreed in favour of the 

plaintiff to the extent of grant of Permanent Injunction. CS(OS) 1069/2008 Page 9 of 9

 

18. As regards the quantum of damages, though the plaintiff needn’t 

prove actual damages suffered by him, it is imperative that the Court while 

awarding damages considers the averments made in the plaint coupled with 

an assessment of the extent of damage likely caused or to be caused. The 

plaintiff avers that it found out about the proposed launch of the defendant’s 

restaurant in May 2008. This Court vide order dated 19.12.2008 granted an 

exparte injunction in favour of the plaintiff and restrained the defendant 

from using the mark “THE NOODLE HOUSE”. Keeping in view the short 

duration between the filing of the suit and grant of injunction, in addition to 

the fact that the plaintiff has not placed anything on record to establish 

whether the defendant’s restaurant was launched at all, this Court is not 

inclined to award damages. 

19. Accordingly, the suit is decreed in terms of prayers (i) (a) and (i)(b). 

The plaintiff is also entitled to costs of the suit. 

 

 

 (VIPIN SANGHI) 

 JUDGE 

JANUARY 10, 2014 

 

Novice Attorney
on 16 January 2014
Published in Intellectual Property Rights
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