India: Jurisdiction not considered by Delhi High Court while Granting Injunction?

On July 10, 2017, in the case of Impresario Entertainment & Hospitality Pvt. Ltd. v M/S Urban Masala LLP, Hon’ble Mr. Justice Manmohan of the High Court of Delhi passed an interim injunction in favour of Impresario Entertainment and Hospitality Pvt. Ltd. (hereinafter referred to as the Plaintiff) restraining M/s. Urban Masala LLP (hereinafter referred to as the Defendant) from manufacturing, selling, marketing, advertising, and/or offering its services or permitting third parties to manufacture, market, advertise or use the trade mark SOCIAL, SOCIIAL.

Background of the case-

The Plaintiff is the owner of 17 cafes/ restaurants under the trademark “SOCIAL”, and has claimed that the said trade mark was adopted in 2012. The Plaintiffs claimed that the nomenclature of their restaurants involves a simple process of adding the name of the location of the restaurant before the trade mark “SOCIAL”, for instance, Hauz Khaz Social, Church Street Social and Odean Social. The trademark “SOCIAL” has been registered in classes 9, 25, 30, 32, 33, 42 and 43

In May, 2017, the Plaintiff became aware that the Defendant had engaged in the similar trade and business as that of the Plaintiff, and was operating a multi cuisine restaurant under the trademark SOCIAL DISTRICT in Hyderabad. The Plaintiff also informed the Hon’ble Court that it had sent a cease and desist notice to the Defendant, to which the Defendant had replied stating the word “SOCIAL” is generic and no one can claim exclusive right over the same. Aggrieved by this unauthorized use of its registered trade mark, the Plaintiff filed the present suit bearing no. CS (COMM) 447/2017.

Contentions of the Plaintiff

• That the Defendant not only copied the trade mark but also the entire model of the Plaintiff’s restaurant which includes selected items from its menu.
• That the Defendant had been advertising its restaurant under the name “SOCIAL DISTRICT” on social networking sites such as Zomato, Dineout and Facebook where it has received sub-standard reviews and ratings which has adversely affected the goodwill of the Plaintiff’s high quality restaurants. This contention was supported by one review on Zomato which depicted customers mistaking the Defendant’s “SOCIAL DISTRICT” restaurant as one of the outlets for Plaintiff’s “SOCIAL” restaurants.
• That the Plaintiff is the prior adopter and user of the trade mark SOCIAL and its variant and use of plaintiff’s trade mark SOCIAL for identical trade and services by the Defendant constitutes infringement as well as passing off.

Observations of the Court

• “Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiff and balance of convenience is also in its favour. Further, irreparable harm or injury would be caused to the plaintiff if an interim injunction order is not passed.”
• “This Court is prima facie of the opinion that the word ‘Social’ is arbitrary and fanciful with regard to restaurants. For instance, Arrow is a generic word with regard to bows and arrows but is arbitrary and fanciful with regard to shoes and shirts.”

Conclusion:

Though this may seem like a run of the mill injunction granted in a trade mark infringement matter, there is one aspect which calls for the reader’s attention. It appears that the Hon’ble Delhi High Court did not analyze whether the present suit was filed under Section 134 of the Trade Marks Act, 1999, or Section 20 of the Civil Procedure Code, 1908. It is pertinent to note that the Plaintiff has its registered offices in Mumbai, the Defendant resides and carries on business in Hyderabad, and the cause of action (infringement of the Plaintiff’s trade mark) also occurred in Hyderabad.

In this regard it is pertinent to point out the Hon’ble Delhi High Court’s judgment in the case titled Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey and Ors. [2016 (65) PTC 469 (Del)], wherein the Hon’ble Division Bench had given a tabular representation of how jurisdiction of a Court can be decided in trademark/copyright infringement cases. The said table is reproduced hereinbelow:

The third column as seen above can confer jurisdiction to a Court under Section 20, CPC, whereas the fourth column shows where jurisdiction shall lie when a case is to be filed under Section 134 of the Trade Marks Act, 1999. The said judgment seems to be directly in contradiction to the Hon’ble Division Bench’s judgment as mentioned above. Therefore, it shall be interesting to see where the said Suit shall proceed from hereon, and what submissions the Defendants shall make before the Hon’ble Delhi High Court.