Foodlink F and B Holdings Private Limited v. Wow Momo Foods Private Limited

FACTS OF THE CASE      

The parties involved in the current legal action were Foodlink F and B Holdings India Private Limited, the plaintiff, and Wow Momo Foods Private Limited, the defendant. The plaintiff had the registration for "CHINA BISTRO," and the defendant was using the trademark "WOW CHINA BISTRO."

Plaintiff alleged that the defendant had violated the terms of their trademark registration, which has been in class 43 since January 11, 2012, and covers a variety of businesses, including restaurants, bars, snack bars, hotels, cafes, cafeterias, canteens, catering, outdoor catering, food courts, and stalls.

The mark "WOW! CHINA," which is a device mark, was used by the defendant up until 2019. After that, they added the word element "BISTRO" underneath the word "CHINA," creating the mark "WOW! CHINA BISTRO."

 Plaintiff asserted that the Defendant's mark is confusingly similar to theirs due to the addition of the word element "BISTRO" under "CHINA" in the mark. Both marks now read "CHINA BISTRO," with the Defendant's version varying only by the addition of "WOW!" above "CHINA." Plaintiff claimed that even for the average client with a poor recall, this "WOW!" does not sufficiently reduce potential confusion. The disputed mark was not registered with the defendant. Both designations were applied to high-end restaurants serving Chinese food, which are similar services.

ISSUES RAISED

• Whether the marks violate Section 29(2) of the Trade Marks Act by being confusingly similar?
• Is the plaintiff eligible to bring an infringement claim?

 

CONTENTIONS OF THE PLAINTIFF:

• Two ordinary words, though completely lacking in distinctiveness when seen individually may, when combined together, be distinctive.
• Even if individual parts of a composite mark are by themselves not distinctive, the composite mark, which combines the individual non-distinctive parts together, may partake of distinctiveness.

 

• However, in our opinion, the collective mark CHINA BISTRO cannot be deemed to be deficient in distinctiveness when taken as a whole, especially in the absence of any supporting documentation provided by the defendant.

 

CONTENTIONS OF THE DEFENDANT:

• The defendant questioned the Plaintiff's eligibility to allege infringement. As a country name and a common phrase, respectively, "CHINA" and "BISTRO" are non-exclusive and not individually registrable, according to the attorney.
• The defense attorney for the defendant also emphasized the plaintiff's trademark registrations, arguing that on July 18, 2006, the plaintiff obtained initial trademark registration for the device mark that falls under Class 42 and is used for a variety of services, including "restaurant, bar, snack bar, hotels, cafes, cafeterias.
• This registration included a disclaimer stating that, unless expressly stated, exclusive rights were not claimed over the terms "China" and "Bistro."

 

OBSERVATION OF THE COURT

• The court determined that the mark was distinctive and not just a regular word combination. Even if "BISTRO" may be viewed as a synonym for "cafe," the term wasn't frequently used. Contrary to "CHINESE CAFE," the composite "CHINA BISTRO" retained its uniqueness.
• In its decision, the court held that until further orders, the defendant and its representatives may not use 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," with the exception of "WOW CHINA LIVE CHINESE" and "WOW! CHINA".
• The court held that the disclaimer didn't extend to the composite mark "CHINA " The court clarified that under Section 17 of the Trade Marks Act, marks must be compared as wholes. The marks "WOW China Bistro" and "China Bistro" were deemed deceptively similar due to identical textual components and only a prefix difference.