SANJHA CHULHA vs SANJHA CHULHA & ORS

Can right be claimed over word marks which have become descriptive in nature?

Hon’ble Delhi High court bench consisting of Justice Vibhu Bakhru And Justice Amit Mahajan have laid down a predominant judgment in the case Sanjha Chulha Vs.  Sanjha Chulha & Ors (FAO (COMM) 128/2022).

Facts

  1. The appellant, Mr Nand Kishore and Mr Suresh Kumar were engaged in a restaurant with the name “Sanjha Chulha”, whereas Respondent(s) were engaged in a restaurant business located in Faridabad, Haryana with a similar name,
  2. The Dispute arose when appellant became aware that a similar restaurant existing in the market  has filed for a trademark registration  as on 23rd March, 2016 , hence they with the virtue of laws, opposed the said application on 5th November, 2017, as they wanted to restrain respondents  from using the mark “SANJHA CHULHA”,
  • The appellant also issued a cease and desist notice to the respondents on 4th April, 2021, as there was no response on the respondent’s end hence appellant filed another legal notice on 25th April, 2022.

INFRINGEMENT SUIT INTIATED

  1. When there was no reply from the respondent’s end, the appellant initiated a suit against Defendant as stated in section 134, Trademark act, 1999,
  2. On 6th June, 2022, the Commercial Court passed an “ex-parte ad-Interim Injunction against the respondent and restrained the respondent from using the mark and name “SANJHA CHULHA” or other deceptively similar trademarks “. The court also appointed a local commissioner to visit the respondent premises and take necessary appropriate actions.

Thereafter the respondent filed an application for getting the aforementioned revered under Order 39 Rule 4 CPC wherein an application can be filed in which an order of injection was passed without giving the other party a chance of being hearing and the statements made by the opposite party are false and misleading[1].

Contentions

The appellant

  • The respondent is engaged in the same line of business ie., restaurant and both the marks are phonetically and visually similar hence it creates a sense of confusion among the consumers ,
  • The appellant also enjoys a colossal reputation as the sales have seen a whopping growth from ₹88,82,640/- to ₹2,65,69,751/- with their constant efforts of establishing their identity through promotional activities.
  • Moreover, the period of five years to grant acquiescence to the respondent have not elapsed hence their claims should be rejected.

The respondent

  • The word “Sanjha Chulha” has a meaning in Punjabi language ie., “a community clay oven” and this also has been telecasted on doordarshan in the year 1990-1991, which makes them a bona-fide user,
  • The sales figure are twenty times more and the distance between the restaurant is quite a lot hence the consumers are not affected by the same,
  • The appellants marks are device marks hence they do not have any exclusive rights over the word “Sanjha Chulha”,
  • The appellant has a period of five years (2017-2022), during this tenure, it did not file any case against the respondents hence the appellant can be stopped from raising any further objection under section 33 of the trademarks act, 1999.

 

The court’s Point of view

  • The composite words “Sanjha Chulha” meant “common clay oven” The words have also acquired a distinctive meaning and now the words are representing a general dhabha, hence the appellant cannot claim exclusive rights over the use of the aforementioned word.
  • The court stated that both the parties are the concurrent users as both of them started trading under the same name, as the appellant got the trademark registered between 1996-1998 and the respondent started using the said name,
  • Upon comparing the sales figures, the court was of the view that it is very difficult to solicit customers as the distance was approximately 20 kms,
  • Hence both the marks are not similar in any manner and the words “Sanjha Chulha” are descriptive in nature,
  • The Hon’ble Delhi high court was of the view that the respondent did not infringe the appellant’s trademark hence the application filed by the respondent was duly allowed.

After the commercial court passed the impugned order, the appellant was aggrieved by the same and hence filed an appeal against the respondents.

Decision

  • There are two issues, first does the appellant have exclusive right and secondly is it the prior user of the trademark,
  • The appellant has been asserting on the fact that it is a prior user and has been using the said mark since 1986 however, no material record was there to support the aforementioned claim, the appellant has filed for trademark applications during different durations in class 29,
  • The appellant will have to establish its usage as just filing an evidence does not guarantee that appellant has prior usage, hence the respondent has been running a restaurant since 24 years , the commercial court has also rightly asserted the same,
  • If a major part of any composite trademark is adopted by any user, then the mark maybe considered to be similar. It is not always implied that in case of a part of composite trademark adopted by other user means that the marks become identical in nature,
  • “Sanjha chulha” has a figurative meaning “Common kitchen” which makes it a descriptive word, which doesn’t necessarily gives them any exclusive rights over the said words hence the appellant will not claim rights of the registration of the trademark,
  • Hence the appeal filed by the appellant is duly dismissed.

 

[1] https://primelegal.in/2022/02/22/an-order-of-injunction-passed-shall-not-be-discharged-after-giving-a-party-an-opportunity-of-being-heard-high-court-of-delhi/