BETWEEN:

Nanking Chinese Restaurant [Plaintiff]

V.
Hitec Nanking Chinese Restaurant [Defendant]
FACTS:
The plaintiff is a registered partnership firm initially started by the Mr. Liu Chen Jen and his
wife in the year 1957 to run a restaurant business at Parklane in Secunderabad. The business
was commenced in the name and style of ‘Nanking Chinese Restaurant’ serving Chinese
food. And also, it is important to note that the Mr. & Mrs. Liu were instrumental in
introducing the Chinese cuisine to the people of twin cities. During the initial days of the
business people were not familiar with the Chinese cuisine it took some time for the people to
taste the food, but as the time passed people grew fond of plaintiff’s exquisite quality and
taste of the food. Later on the business picked up and plaintiff Restaurant became one of the
most important and only restaurant serving exquisite food in the city. Plaintiff had the license
for the running the said restaurant under the name and style of ‘Nanking Chinese Restaurant’
issued by the GHMC.

The Defendants No. 2 to 4 are running a restaurant in the name of ‘Hitec Nanking Chinese
Restaurant’ i.e., Defendant no.1 in the premises of 4th Floor above Karachi Bakery, SBR CV
Towers, Hitec City Main Road, Hyderabad. The plaintiff’s Restaurant is a well-known and
reputed restaurant in the twin cities. It has won several awards in the category of best Chinese
Cuisine in the twin cities. Various online portals have also rated the plaintiff restaurant is the
best Chinese cuisine restaurant in the Hyderabad. Due to the immense reputation of the
establishment of plaintiff restaurant they had opened two more branches at Vikrampuri in the
year 2012 and another in the year 2010 at Banjara Hills. All the three branches have been
running exceptionally well.

Since the restaurant at Parklane is concerned it is in the rented premises, the landlords had
raised an false plea that the building is not safe for the occupation as it is a old building. So
the corporation started its proceeding and plaintiff after producing the true facts, the business
was again commenced in the September due to these issues business in the year 2014-2015 is
running in losses.

The plaintiff came to learn that the defendant was running the business in the name of ‘Hitec
Nanking Chinese Restaurant’. It is to be noted that the Defendant is using a name deceptively
similar to that of the plaintiff’s Restaurant for the purpose of catering the same Chinese food
as that of plaintiff restaurant. And also, several regular customers started raising enquiries
with the representatives that whether the new branch of plaintiff restaurant is opened at Hitec
City as such. Many emails and phone calls were received by the plaintiff as to the quality,
food served at the defendant’s restaurant.

The main point in filing this is that the defendant is passing of the goods and services under
the name ‘Nanking’ which is deceptively similar to that of plaintiff. As per Section 27 of the
Trade Marks Act, 1999 an action for passing of goods or services as the goods of another
person or services provided by another person or other remedies can be instituted in a court of
law. The cuisine/food provided by the defendant is likely to create/ already created a
confusion in the customers. In fact the logo or the style in which it is written ‘Nanking’ is
deceptively similar to the plaintiff’s restaurant. The style and font in which the defendant’s
name is advertised is also identically similar to the plaintiff restaurant.

It is also evident that the defendant is using the mark and the name ‘Nanking’ which is
identical with and deceptively same to the plaintiff’s trademark ‘Nanking’ in relation to
running a Chinese restaurant providing same food as that of the plaintiff. The similarity
between the trade mark of the plaintiff and nature of business and name adopted by the
defendant is sufficient to give rise to great risk of confusion and would to mislead in the
minds of people to believe that the defendant’s business is that of the plaintiff. Because of
passing of goods by the defendant’s the plaintiffs business has suffered huge losses and lost
reputation in the society and this is filed in order to seek an order of Permanent injunction
restraining the Defendant from using ‘Nanking’ or any other name/trademark which is
deceptively similar to ‘Nanking’ in relation to any hotel, restaurant, café and other similar
services.

DEFENDANT’S VERSION:

The Trademarks Act 1999 seeks to protect a Trade mark only not the name of the
Manufacturer of the goods or the suppliers of services. There is no concept of trade mark for
food item. Suit is based on the name of the plaintiff Restaurant, which is outside the scope
and ambit of a trademark. Hence the suit is not maintainable.

Defendants say that the ‘Nanking’ is the name of a city/town in east china and was the capital
of Republic of China for some time. Thus, it is a noun and hence it cannot be claimed as an
intellectual property of any body. The name of the Plaintiff restaurant is ‘Nanking Chinese
Restaurant’ which does not admit of any intellectual property being possessed or acquired by
the plaintiff. They also say that in the state of Telangana and Andhra Pradesh many of the
Business ventures are in the name of Sri Venkateshwara and such a name of business will not
amount to a trademark of the goods or services provided by such an entity. Simply to say that
when the name of a business concern is a noun/nae of the city/river etc. no question of
acquisition of any intellectual property right would arise. They also state that in competitive
world, two Chinese restaurants are supposed to exist with competition and name of the
restaurant has no role to play to withstand in the competition. The quality of the restaurant
will not go with the name of the restaurant it depends on various factors namely the chef and
other staff who get indulged in the kitchen of the restaurant. Thus, no reputation or goodwill
can be claimed on the basis of the name of the restaurant.

So as to say that the plaintiff has no exclusive right to name its restaurant as Nanking Chinese
Restaurant since the word Nanking is not an invention of the plaintiff and in fact Nanking is
the name which is the former capital of Republic of China.

The Defendants is a partnership firm in the name of ‘M/S Hitec Nanking’, it is further said
that there is no possibility of confusion by the customers. The plaintiff is not having any
copyrights registration and trademark registration with regard to the font style and logo of the
‘Nanking’ and defendant had applied for the trademark registration which is under the
process. Since the plaintiff has no exclusive right over the name and the confusion in the
public is not there because these two are established at two different places and entirely
different.

ISSUES:

1. Whether the Acts of Defendants by using words ‘Nanking Chinese Restaurant’ in

their name ‘Hitec Nanking Chinese Restaurant’ will amount to passing of goods under
section 27 of Trademarks Act, 1999 or not?
2. Whether the name of the plaintiff restaurant is covered under the scope and ambit of a
trade mark or not?

Provisions of Law:

Trademarks Act 1999:

Section 2 (zb) "trade mark" means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from those of others
and may include shape of goods, their packaging and combination of colours; and

Section 2 (zg) "well-known trade mark", in relation to any goods or services, means a mark
which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or services would
be likely to be taken as indicating a connection in the course of trade or rendering of services
between those goods or services and a person using the mark in relation to the first-
mentioned goods or services.

Section 2 (h) "deceptively similar"-A mark shall be deemed to be deceptively similar to

another mark if it so nearly resembles that other mark as to be likely to deceive or cause
confusion;

Section 27 (2) Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person or as services
provided by another person, or the remedies in respect thereof.

Reasoning:

1. It will amount to passing of goods by the defendants towards the plaintiff’s goods and
services because in present case the defendants restaurant’s name is in the same style
and font as it is that of the plaintiff Restaurant which creates an confusion in the
public and which is deceptively similar prima facie as that can be seen from the
documents No.23 & 24 produced by the plaintiff. So, in order to substantiate this Lord
Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc. enumerated three
elements for a successful passing off action: (1) Goodwill owned by a trader, (2)
Misrepresentation and (3) Damage to goodwill. And also, it can be seen that in the
present case both the parties are in the same business i.e., in running Chinese
restaurant with Chinese cuisine or food, which is definitely gone make a confusion
inn the minds of people.
2. The defendant’s contention is that the plaintiff’s name does not come under the ambit
of the trade mark Act and their name is not protected. But the main aim and objective
of the act is to protect the trade marks which means as it is defined under section 2 zb
a trade mark is an representation of the goods either in the graphical manner or the
shape and it identifies and distinguishes the goods and services provided that of
 another. Trade mark provides a clarity to the public that by seeing the name of that
brand they can identify and recognize as they know the quality provide by them. Even
though it is not registered under trade mark act if it is in the prior use of that name
then the later cannot be taken advantage of the process of registration.

Analysis of the case:

Since in the present case the plaintiff’s restaurant name is not registered it cannot be said that
plaintiff name can not be protected. In the cases of unregistered trademarks, the plaintiff can
claim the passing of goods by the defendants. In a suit for passing off, a mark claiming prior
use is given the benefit over a later user or prior registrant due to former’s earlier existence in
the market. This principle has been upheld in various cases of passing off. In the case of
Consolidated Foods Corporation v. Brandon and Co., Private Ltd AIR 1965 Bom 35, it was
observed that in para 27 of the judgement “Priority in adoption and use of a trade mark is
superior to priority in registration”.

In Honda Motors Co. Ltd V Charanjit Singh & Others the facts are such, Plaintiff was using
trademark "HONDA" in respect of automobiles and power equipment’s. Defendants started
using the mark "HONDA" for its pressure cookers. Plaintiff bought an action against the
defendants for passing of the business of the plaintiff. It was held that the use of the mark
"Honda" by the defendants couldn't be said to be an honest adoption. Its usage by the
defendant is likely to cause confusion in the minds of the public. The application of the
plaintiff was allowed.

A test was laid in Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. 2001(PTC) 300 SC,
laid down the test of passing off and observed that a passing off action depends upon the
principle that nobody has a right to represent his goods as the goods of some body. In other
words, a man is not to sell his goods or services under the pretence that they are those of
another person. In this particular case, the parties to the case were the successors of the
Cadila group. The dispute arose on the issue of selling of a medicine by the defendant under
the name ‘Falcitab’ which was similar to the name of a medicine which was being
manufactured by the plaintiff under the name ‘Falcigo’. Both the drugs were used to cure the
same disease and hence, the contention was that the defendant's brand name is creating
confusion between the consumers. Injunction was demanded by the plaintiff. As a defence,
the defendant claimed that the prefix "Falci" has been derived from the name of the disease,
i.e., Falcipharam malaria. The court observed that because of the diversified population of the
country and varying infrastructure of the medical profession due to language, urban-rural
divides, etc. and with the probabilities of medical negligence, it is important that confusion of
marks should be strictly prevented in pharmaceuticals and drugs. The Court, thereby, held
that being medical products more precaution and care must be taken and the names of the
brand, therefore, being phonetically similar shall amount to being deceptively similar.

Further in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960
SC 142, it was observed that the principle of similarity could not to be very rigidly applied
and that if it could be prima facie shown that there was a dishonest intention on the part of the
defendant in passing off goods, an injunction should ordinarily follow and the mere delay in
bringing the matter to Court was not a ground to defeat the case of the plaintiff.

In the case of M/S Mahashian Di Hatti ltd. Vs. MR. Raj Niwas, Proprietor of MHS Masalay.
The plaintiff company engaged in the business of manufacturing and selling spices and
condiments, which are being sold under its registered logo comprising MDH within three
hexagon device on red colour background)and is registered since 31st may 1991 The
defendant has been using the logo MHS within hexagon device with red colour background
on the carton is alleged to be similar to those being used by the plaintiff company. It was held
that there was striking resemblance between the two logos. There is every possibility of
deception and confusion being caused in the mind of the prospective buyer of the plaintiff’s
products. The plaintiff company has accordingly sought an injunction restraining the
defendant from using the infringing logo MHS or any other trademark identical with or
deceptive similar to plaintiff‘s registered trademark MDH logo. The plaintiff was also
awarded punitive damages amounting to Rs. 1 Lakh against the defendant.

Conclusion:

In the light of the above discussed facts, issues, case laws and the essential requirements it is
most humbly submitted that as all the essential requirements required in deciding up the case.
It is clear that we can come to the conclusion that the logo and name that is being used by the
defendant is deceptive and there is a probable chance that the customers can get confused
between both the restaurants. It is common for a prudent person to think that it is a branch of
the original Nanking Chinese Restaurant as it states its name as Hitec Nanking Chinese
restaurant and Hitec is an area of Hyderabad. So, there are probable chances for a prudent
person to think that it is a branch of the original restaurant. And it is also evident from the
reviews given by various customers regarding the quality of the food served by the defendant.
There is a loss of his reputation. So, we can say that the defendant is liable to pay
compensation for the damages caused and also a mandatory injunction to be served to the
defendant refraining him from using the similar name. Therefore, it is most humbly prayed to
the Honourable court that the defendants are to be held liable for the infringement of the
Trade Mark and are liable to make good the loss.