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Judgment
S. Usha, J
The application is for rectification of the impugned Trade Mark under No. 1276803 in Class 42 under Sections 47, 57 and 125 of the Trade Marks
Act, 1999. The brief facts of the applicants case are:- that the applicant, includes his predecessors-in-title i.e., the partnership firm Khyber Restaurant
having its partners viz., Ohm Prakash Bahl, the applicant herein and the other partners. The firm commenced its business of running restaurant in the
year 1958 for providing various types of cuisines by using superior quality ingredients and flavours.
The applicant's business is for providing aforesaid variety of cuisines presented and prepared exquisitely and causing the customers to have a royal
and memorable dinning experience which has added much to the goodwill and reputation of the business of the applicant. This is evident from the fact
that at the time of commencement of the business from the same premises it was then 800 sq. feet and has grown to 7000 sq. feet today and
customers in spite of such a seating capacity when arrive without the reservation are asked to wait until the table gets vacant. The location of the said
restaurant of the applicant has added to its popularity by being situated in a commercial hub of Mumbai.
Over the years of popularity and being in the limelight on account of the restaurant being visited by dignitaries and the rich and famous personalities
of not only Mumbai but also those visiting from other parts of India and abroad has caused not only the business under the name of Khyber Restaurant
to become popular and have goodwill, but has also caused the words Khyber Restaurant and Khyber to become synonymous with it, which needless
to state continues as on date.
By virtue of extensive, long and continuous use of the said trade mark Khyber Restaurant and Khyber have become very popular with a substantial
segment of not only customers of the said service but also those connected with the food and hospitality industry in India, who recognize and associate
the said marks Khyber Restaurant and Khyber with the applicant's business.
The applicant's said restaurant is also a ritzy gathering place and has become popular with not only the businessmen but also art lovers, masters and
other members of the public. In due course the applicant has set up party halls under the names/marks Casbar and Yashab and in order to reinvent
itself with the youth of today.
From time immemorial the focus of the said restaurant and the said services are provided under the trade name Khyber Restaurant and Khyber
was to ensure that not only the food and beverages are of superior and excellent quality but also the services are personalized and the presentation of
food is both authentic and exquisite. These ingredients have caused immense goodwill and reputation to accrue to the said restaurant and the said
mark causing it to become akin to and synonymous with the City of Mumbai and the fine dinning, attracting a large number of customers both from
India and abroad.
On 31st March, 1985 a fire broke out at the premises of Khyber Restaurant in the early hours of the day resulting in heavy damage in the
restaurant, but it took nearly 3 years to rebuild, furnish and decorate the restaurant and in or about 1988 as it appears today was inaugurated.
With the passage of time, the constitution of the firm under the name Khyber Restaurant underwent various changes. However, the name, the mark
and the principal place of business of Khyber Restaurant remain the same.
On or about 11.07.1986 under a deed of partnership the applicant became a partner with his father Mr. Om Prakash Bahl and two others i.e., Mr.
Bishamber Nath and Mr. Vipin Nath and by a deed of retirement dated 31.12.1986 the said Mr. Bishamber Nath and Vipin Nath retired from the
partnership firm Khyber Restaurant and the remaining partners i.e., the applicant and his father Mr. Ohm Praksh Bahl continued to carry on the
business Khyber Restaurant. The said partnership continued along with the goodwill and marks until the demise of his father Mr. Ohm Prakash Bahl,
who passed away on 17.11.1995. Hence upon his death, the applicant became entitled to be the sole proprietor of the said business.
The applicant over the years has received several awards for the said services being provided by him under the said marks Khyber Restaurant
and Khyber.
The applicant submits that his predecessors-in-title in or about the year 1964-65 caused to create a unique and distinct style for representing the
word/mark Khyber i.e., the mark Khyber is an artistic work in which copyright subsists. The said name and marks Khyber Restaurant and Khyber
appear together singularly on all cash memos, bills, invoices, promotional materials, brochures, visiting cards, registers, labels etc. Over the decades the
applicant has conducted extensive activities of promoting and advertising the said services under the said trade marks Khyber Restaurant and Khyber.
The applicant has spent large amount of money for the same. The huge appreciation of good quality services and food has led to a generation of
tremendous mouth to mouth publicity with respect to the applicant restaurant and the said service offered under the name and marks Khyber
Restaurant and Khyber. Owing to the excellence of the said business offered and rendered under the name and marks, Khyber Restaurant and
Khyber seem to have come to be exclusively associated with the applicant alone. The marks have acquired factual distinctiveness, secondary
significance and exclusive association with the applicant and the said business and services offered by the applicant on account of extensive use and
thereof for over several decades. The mark Khyber Restaurant and Khyber have come to be associated and exclusively identified with the applicants
alone. The applicants have built up a very strong brand equity and brand loyalty in the name and the said mark Khyber Restaurant and Khyber
amongst the members of the trade and public. In the year 2008-2009 the applicant has generated annual turnover to the tune of Rs. 13,14,50,700/-
(Rupees thirteen crore fourteen lakhs fifty thousand and seven hundred only). It is submitted that the name and the mark have been exposed to lakhs
of people all over the country. The exclusive business of the applicant carried on by the applicant is apparent and obvious from the growing annual
revenue generated by the applicant.
The applicant is the registered proprietor of the mark Khyber Restaurant and Khyber in class 42 under No. 1247599 for restaurant services. The
application for registration of the said trade mark was filed on 16.10.2003 claiming user since December, 1958 and thereafter the mark was advertised
in the Trade Marks Journal on 15.12.2005. The said mark was registered without any Opposition.
The applicant is also a registered proprietor of the marks
(a) ""Khyber"" under No. 1164939 as of 7.1.2003 in Class 33 in respect of wine, sprits and liquors;
(b) Khyber under 1164938 as of 7.1.2003 in Class 32 in respect of beer, ale and porter, miner and aerated waters and other non-alcoholic drinks,
syrups and other preparations for making beverages; and
(c) Khyber under No. 1164938 as of 7.1.2003 in Class 16 in respect of advertising and promotional material, printed matter such as pamphlets, leaflets,
brochures, stationery, visiting cards, bills vouchers, maps, charts, registers, graphic pictures and reproductions and labels.
The applicant is the proprietor of the name and the said mark Khyber Restaurant and Khyber under the common law by virtue of its prior
adoption, open and continuous use for more than half a centaury in relation to the restaurant business and providing of food, drinks beverages, catering
services etc. The applicant has acquired valuable proprietary rights therein and therefore is entitled to protection thereof. The applicants' trade mark
Khyber Restaurant has become unique mark. The same have come to symbolize, excellence in quality of food and restaurant services of providing
food and drinks. A large number of people are aware of the applicant's said restaurant bearing the name Khyber Restaurant and Khyber and solely
associate the said trade marks with the applicant and the business carried on by the applicant.
In or about August, 2009 the applicant learnt that the restaurant was being run under the name and style Khyber Restaurant and Khyber at Ring
Road, Surat, Gujarat and also at other place Gotawali, Surat, Gujarat. As the name contains the essential feature, the word, expression and marks
Khyber and Khyber Restaurant which is identical with the applicant name and mark. The applicant through his advocates caused legal Notice to
Cease and desist on 25.8.2009. The said legal notice was acknowledged and a reply dated 4.09.2009 was also issued stating that they are the
registered proprietors of the trade mark Khyber Restaurant and Khyber under registration No. 1276803 in Class 42. Since the applicant was unaware
and the registered proprietor in his letter dated 4.9.2009 did not mention the connection between the restaurants under the impugned mark to be that of
the registered proprietors, the applicant learnt that after the receipt of the reply of the registered proprietors dated 26.5.2010.
The registered proprietor with a view to exploit the presence of the applicant and use of the said mark adopted identical mark. The registered
proprietor has acquired the said registration of an identical trade mark in respect of the restaurant providing foods and drinks claiming the use thereof
since 11.7.1975 which claim is wrong and denied as from the information and inquiries made by the applicant it is revealed that the use of the
impugned mark by the registered proprietor is not as per the date of the use claimed in their application for impugned trade mark and hence the same
is false and the registration thus was secured by playing fraud and misguiding the Registrar of trade marks and thus the same is liable to be removed
from the register of Trade Marks.
The applicant is the registered proprietor of the trade mark Khyber Restaurant and Khyber under No. 1276803 in Class 42 in respect of providing
foods and drinks.
As a bona fide prior adopter and prior proprietor of the said mark viz., Khyber Restaurant and Khyber the applicant is aggrieved, since the
impugned trade mark is identical to the applicant's well known trade mark. The impugned trade mark is identical to the said Khyber Restaurant and
Khyber phonetically, structurally and visually to the graphical representation of the mark Khyber Restaurant and Khyber. The graphical representation
of the mark in which copyright subsists is distinctive. On account of the rival marks being identical use of impugned mark of the registered proprietor
is bound to deceive and cause confusion in the course of trade.
The registration of the impugned mark should therefore be removed on the following grounds:
(a) The impugned mark which comprises of the same artistic work, adopted and used by the applicant has been subsequently adopted and allegedly
used and is devoid of any distinctive character nor is it adopted to or capable of distinctive service of the registered proprietor from that of the
applicant. The impugned mark which is devoid of distinctive character should be removed as it is contrary under 9(1)(a) read with Section 57(1) and
(2) of the Act;
(b) Due to facts and circumstance stated above, the impugned mark is of such nature as to deceive the public and cause confusion. Therefore the
impugned mark is in contravention of Section 9(2)(a) of the Act;
(c) The impugned mark is identical to the applicant's prior and well known mark, the use of which shall deceive the public and cause confusion. The
registration should be removed under Section 11(1)(b) of the Act.;
(d) The use of the impugned mark would be liable to be prevented under law of passing off, the registration should be removed under Section 11(3)(a)
of the Act;
(e) The applicant's trade mark Khyber is well known mark and the registered proprietor should not have adopted the impugned mark which ought to
be removed under Section 11(10) of the Act;
(f) The applicant being the registered proprietor, prior adopter and user of the trade mark Khyber Restaurant and Khyber and therefore the registered
proprietor cannot claim proprietorship and therefore the registration is in contravention of provisions of Section 18(1) of the Act.;
(g) The registered proprietor cannot claim any refuge under Section 12 of the Act as the applicants are prior user and also registered proprietor of the
trade mark;
(h) The mark ought to be removed as registered proprietors have obtained registration by suppression of material facts before the Registrar at the time
of filing the application;
(i) The impugned trade mark is not valid and therefore liable to be removed from the register. The adoption and use of the impugned trade mark is
dishonest, which is evident from the adoption and use the identical trade mark which was already in use as on the date of application for registration of
the impugned trade mark;
(j) The registration is obtained by playing fraud and by concealment of material facts; For these reasons, the entry in the register in respect of the
impugned trade mark under No. 1276807 in class 42 be removed from the register.
The respondent herein filed counter statement denying the various averments made in the application for rectification. The respondent states that
the application is based on misconception of law and facts and is illegal and required to be rejected. The application is mala fide and constitutes abuse
of legal fact and deserves to be rejected.
The respondents are running business and providing services under name and style of Khyber Restaurant and Khyber. The respondent started the
business under the name and style of Khyber Restaurant and Khyber in the year 1975. The respondents have applied under Bombay Shops &
Establishments Act before the Municipal Corporation for establishment registration certificate and the same was issued on 11.7.1975.
The respondent conceived and adopted the trade mark Khyber Restaurant and Khyber and is running business from 11.07.1975 continuously,
openly and honestly. The respondent's business has become very popular among the public and trade and has thus earned goodwill and reputation in
the trade.
The Surat City is known at international level in Diamond and Textile Industries. There are about 125 textiles markets, the main textile markets are
known as Surat Textiles and besides there are several other markets. All the people who have transactions in the textiles market are aware of the
respondent's restaurant since the year 1975. The respondents are also the members of several other Gujarat Hotel and Restaurant Association. The
growth, the goodwill and the reputation of the respondent business are increasing day by day.
The respondents are the honest and bona fide user of the trade mark and thus goodwill and reputation earned are value of the business. The rest
of the averments were denied.
We heard Mr. Avesh Kayser, the learned counsel for the applicant and Mr. Akshay A. Vakil, the learned counsel for the first respondent.
The learned counsel for the applicant submitted that the impugned application for registration was filed on 05.04.2004 claiming user since
11.07.1975. The mark was registered as on 17.12.2005. The impugned trade mark is Khyber restaurant written in a stylish manner.
The applicants have been using the trade marks since the year 1958 and registered as proprietors of the trade mark Khyber restaurant. The
learned counsel relied on a few advertisement cuttings of the year 1958. The firm Khyber restaurant was registered with the Registrar of Firms as
early as 1962. Exhibit -I is the certificate issued by the Chartered Accountant regarding the turnover of the firm. Exhibit F3 is the advertisement
expenses.
Exhibit-EE filed along with the reply to the counter statement is the fire accident report.
Exhibit - E is the letter dated 17.10.2002 written by a customer stating that he is regular customer of the applicants restaurant and that how good
the food tasted and also about the price. He had also enclosed the bill dated 13.5.1964. This letter was recognized by his daughter and an affidavit was
filed to that effect. There were various other letters from various customers.
The applicant submitted that the respondents have given contradictory statement about their use. In the counter statement in one place they claim
we use since February, 1995 and in another since July, 1995. They are not clear as to the date of use. Exhibits 9 to 31 filed along with the counter
statement, the Registration of Firm is dated 16.02.1995.
Mr. Vinod Kumar joined the respondents firm as partner only on 16.11.1982 then how could he has been the artist who drew and designed the
stylish letters of the mark ""Kyber"" in the year 1975. The copyright certificate mentions the date of publication as 1975. The adoption is dishonest.
There is no evidence to prove user since 1975. The applicants are the prior user of the trade mark ""Kyber"".
The respondents have filed a TM-16 request for restricting their sale only to Surat City alone, on 23.05.2005, subsequent to the date of Trade
Mark Journal publication i.e., 30.03.2005. For this reason alone, the mark has to be remanded back for fresh advertisement.
The learned counsel then relied on a few judgments:--
(i) In A. Habeebur Rahman Sons v. K. Rajener, Trading as K. Rajender & Sons. 2009 (40) PTC 314 (IPAB)) -Mere existence of the mark on the
register cannot be proof of use of the mark.
(ii) In Sakthi Traders v. Sakthi Sugars & Another 2004 (29) PTC 273 (IPAB)) - Assessment orders having no reference to the trade mark and will
not be of any reference to use of the mark.
(iii) In Sir Shadi Lal Enterprises Ltd. v. Kesar Enterprises Limited 1998 PTC (18) 309(Del)) - Even if the mark is used in a limited place, if the use is
continuous then it proves the applicants use.
(iv) In Kaira District Co-operatiave Milk Producers Union Ltd. v. Bharat Confectionery Works (Regd) PTC (Suppl.) (1) 615 (Delhi)) - If the adoption
is not honest or if there is no reason/explanation for adoption then the mark ought not to continue.
The respondents in reply submitted that they filed the application in the year 2004 claiming user since 1975. They had been using since 1975 and
therefore entitled for the benefit under Section 12 of the Act.
The judgments relied on by the applicants are not relevant to his case on hand.
We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.
The applicants have filed this application for removal of the trade mark Khyber restaurant. The applicants have been using the trade mark since
the year 1958 whereas the respondents have been using the trade mark since the year 1975. The marks are identical for identical services. In such
circumstances, the real test would be to see if the applicants would be injured by the presence of the impugned trade mark. When the marks are
identical for identical goods the public may be misled to think that the respondents' goods are that of the applicants. We also are of the view that both
the applicants are carrying on business in a place which is in the close area. The applicants will be injured or will suffer loss and thus have filed their
application for rectification. The applicants therefore being aggrieved have the locus standi to file this application for rectification.
The mark was advertised on 30.03.2005 and the respondents on 24.05.2005 filed a request on TM-16 for recording their statement as to restricting
their sales to the City of Surat. This TM-16 which was before the Registrar has not been considered by the authorities before issuing the certificate. If
this was and have been considered, the trade mark ought to have been re-advertised.
The other issue would be use of the impugned trade mark. The respondents claim user since 11.07.1975. The respondents have filed various
documents the rental receipt, registration certificate of establishment, licence to open a public restaurant, certificate issued by the Registrar of Firms
dated 14.06.2011, Southern Gujarat Hotel & Restaurant Tourist Guide dated Nil, Attendance Register of Employees, Medical Certificate of
Employees, Self assessment tax, Sales tax returns etc., Mere filing of these documents does not prove the commercial use of the trade mark
impugned herein. There is no evidence in the invoice/bill to prove the use since 11.07.1975 as claimed in the impugned application for registration.
We have held in various matters that if the applicant i.e. the respondent had obtained registration by wrong statement of use, the mark should go
out of the register. In the instant case, the respondents have failed to prove their use since 11.07.1975 and therefore the mark is liable to be rectified.
The respondents have no reason for their adoption. When the adoption is not honest then any amount of user if any does not entitle the respondent
to have the benefit of Section 12 of the Act. When there is no proof of the use, the ground of concurrent use also fails. Consequently, we are of the
view, that the application is liable to be allowed and accordingly the same is allowed with costs of Rs. 5000/- (Rupees five thousand only).