Westlaw India Delivery Summary

Request made by : NOVUS IP USER

Client ID : inopjin-1
Content Type Legislation
Title : Balkrishna Hatcheries v Nandos International Limited and Another
Delivery selection : Current Document
Number of documents delivered: 1

© 2019 Thomson Reuters South Asia Private Limited

4 June 2007

Balkrishna Hatcheries
v
Nandos International Limited and Another
Case No : Notice of Motion No.3640 of 2006; Notice of Motion No.4044 of 2006; Suit No.2996 of 2006

Bench : D. K. Deshmukh

Citation : 2007 Indlaw MUM 65, 2007 (35) PTC 295

Summary : Trade Mark Act, 1999, ss. 29(1), 29(2)(b), 29(4) - Suit for infringement on the basis of their
registered trade-mark, of which, according to the plaintiffs, word "Nandu's" is an essential feature - Plea that
defendants are using impugned mark "Nando's" in respect of similar goods and/or similar services as that of
the Plaintiffs - Held, Plaintiffs products are uncooked or processed frozen meat products and they have to be
fried or cooked to be eaten; the 1" Defendant's services are of a restaurant (hospitality, cuisine and
entertainment) where customers would choose from a menu and its products are sauces - There is no
similarity or association between the Plaintiffs' products and the first Defendant Restaurant and sale of
sauces - Plaintiff has no business or goodwill or reputation in the business of running restaurant or selling
sauces, no question of passing of by the Defendants of their restaurant business or business of sale of
sauces as that of the Plaintiff can arise - Plaintiff has not made out prima facie case - Order accordingly.

The Order of the Court was as follows :

1. This Notice of Motion is taken out by the Plaintiffs. The Plaintiffs have filed the present suit for
infringement on the basis of their registered trade-mark, of which, according to the plaintiffs, word
"Nandu''s" is an essential feature. The said mark "Nandu''s" is registered in respect of processed and
frozen meat products and the said registration is valid and subsisting.

2. The Plaintiffs'' contention is that the Defendants are using impugned mark "Nando''s" in respect of
similar goods and/or similar services as that of the Plaintiffs. The Plaintiffs in the suit pray for a
permanent injunction restraining the Defendants from in any manner using in relation to any eatable
goods or restaurant or hotelling services or processed and frozen chicken and meat products the
impugned trade-mark "Nando''s" or any other deceptively similar trade-mark so as to infringe the
Plaintiffs'' registered trade-mark "Nandu". A perpetual injunction on the same terms in relation to
passing off is also claimed. By this notice of motion temporary injunction in the similar terms is sought.

3. The Plaintiffs'' Suit is based on the following allegations:

(a) Infringement of the Plaintiffs trade mark, consisting of Nandu''s written in a stylized manner and the
device of a cockerel, both enclosed in a hat shaped outline. The registration is in Part B and in respect of
''Processed or Frozen Meat products'' falling in Class 29 of Schedule IV to the Trade Marks Rules 2002.
The first trade mark was registered on 4th July 1989;
(b) A second trade mark was subsequently adopted by the Plaintiff in 2005 consisting of the word
Nandu''s enclosed within an oval shaped structure in white colour with read outline and a gift tag
structure occupying the centre expression ''Heat n Eat'' depicted in black colour below the oval structure.

(c) It is alleged that both the first trade mark and the second trade mark have acquired distinctiveness in
India and are associated by traders and members of the public exclusively with the Plaintiff. It is alleged
that the Defendants mark ''Nando''s'' is almost identical with and/or deceptively similar to the Plaintiffs
registered trade mark . That by using the mark ''Nando''s'' the Defendants are passing off the
Defendants goods and/or services as the goods and/or services of the Plaintiff or that they are in some
way connected with the Plaintiff.

4. The Plaintiff alleges that:

(i) it carried on poultry business; and

(ii) in course of time, started manufacturing and marketing processed and frozen chicken and meat
products such as chicken kebabs, chicken nuggets, fried chicken, boneless chicken, chicken legs and
other varieties of chicken products as well as meat pies , meat tenderizers;

(iii) it adopted the first trade mark In respect of the said business.

(iv) it has been extensively widening its product line and services by introduction of other food related
products namely curries, biryanis, including vegetarian products in ready to eat form.

(v) The Plaintiffs'' products came to be sold at food service outlets such as fast food counters, highway
eateries and take away counters.

5. The 1st Defendant claims to be a major international chain running fast food outlets and the
restaurant business, it serves Afro Portuguese cuisine and sells sauces under the trade mark Nando''s.
The 1st Defendant has stated to this Hon''ble Court that in future in India it will not sell its sauces other
than at restaurants.

6. Admittedly, (i) the Plaintiffs have not been and are not engaged in the business of restaurants, cafes,
snack bars and/or other heat and eat outlets for sale of food items, beverages and food related products
at all, much less under the trade mark ''Nandu''. The Plaint merely states that the Plaintiffs "plan to
open" such restaurants etc.

(ii) the second trade mark is not registered and was adopted by the Plaintiff only in or about the year
2005.

7. The Plaintiffs have filed an affidavit in support of the motion. A detailed reply has been filed by the
Defendants. The parties have also produced documents in support of their respective cases.
8. I have heard the learned Counsel appearing for both sides in detail, they have taken me through all
the pleadings and documents. They also relied on several authorities in support of their respective
contentions. For the purpose of deciding this Notice of Motion, in my opinion, it can be assumed that the
first Defendant''s mark "Nando''s" is similar to the Plaintiffs'' mark "Nandu''s". The Plaintiffs'' entire case
on infringement is necessarily based on its one registered trade-mark i.e. the first trade-mark which is
registered in Class 29 for "Processed or Frozen Meat Products." Hence as regards infringement any other
business of the Plaintiffs including business in other non-meat food products and in ready to eat form is
not relevant. So far as the aspect of infringement is concerned, the learned Counsel appearing for the
Plaintiffs made three submissions based on the provisions of S. 29(1), 29(2)(b) and 29(4) of the Trade
Mark Act, 1999 (hereinafter referred to as the said Act.)

9. Perusal of S. 29(1) of the said Act shows that it is equivalent to S. 29(1) of the 1958 Act. (i) It
enables an action for infringement of a registered mark when a mark which is identical or deceptively
similar thereto is used "in relation to goods or services in respect of which the trade mark is registered
and in such manner as to render the use of the mark likely to be taken as being used as a trade mark."

(ii) Thus the Plaintiff will have to establish under S. 29(1) that identical or deceptively similar mark is
being used by the Defendants in relation to the same goods or services i.e. processed or frozen meat
products.

(iii) It is an admitted position that the Defendants do not sell processed or frozen meat products at all,
much less from their Restaurant. Even the Plaint does not allege this. The 1st Defendant in its Affidavit in
Reply dated 1st March, 2007 has made it clear that the Defendants do not sell processed or frozen meat
products.

(iv) Hence no case of infringement u/s. 29 (1) has been made out by the Plaintiff.

10. S. 29(2) of the Trade Marks Act, 1999 reads as follows:

"(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which because of- (a)its identity with
the registered trade mark and the similarity of the goods or services covered by such registered trade
mark; or (b)its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or (c)its identity with the registered trade mark and the
identity of the goods or services covered by such registered trade mark, is likely to cause confusion on
the part of the public, or which is likely to have an association with the registered trade mark."

11. U/s. 29 (2) (b), the Plaintiff would have to establish:

(a) That the 1st Defendant''s mark "Nando''s" is similar to the Plaintiff''s mark "Nandu''s".

(b) That the 1st Defendant''s service of running restaurants/food outlets and the 1st Defendant''s goods
viz sauces/condiments that are sold, are similar to the goods sold by the Plaintiff under its registered
trade mark for Processed or Frozen Meat
Products.

(c) That such similarity is likely to cause the public to confuse or associate the Defendant''s mark with
that of the Plaintiffs.

12. In the context of provisions of the said Act, the similarity or association that is referred to in S. 29
can only be a similarity between goods and goods or a similarity between services and services and
cannot be similarity between goods on the one hand and services on the other. This is for the following
reasons : -

(i) Under The Trade and Merchandise Marks Act, 1958 a trade mark could not be registered in respect of
services. Any infringement by use of the registered trade mark or a mark deceptively similar to the
registered trade mark had to be in relation to any goods in respect of which the trade mark was
registered and in such manner as to render use of the mark likely to be taken as being used as a trade
mark. S. 29(1) of the 1958 Act corresponds to S. 29(1) of the said Act save and except for the inclusion
of the word "services" u/s. 29(1) of the said Act. The term "goods" was defined u/s. 2(1)(g) of the 1958
Act as meaning any thing which is the subject of trade or manufacturing i.e. clearly excluding services.
The 4th Schedule to the Trade Marks Rules 1959 classifies only goods under 34 different classes. These
classes corresponded to Entries 1 to 34 of the 4th Schedule to the Trade Marks Rules 2002 (the 2002
rules or the new rules). Hence under the 1958 Act there was no question of any infringement in respect
of services.

(ii) As stated in the Objects and Reasons to the Trade Marks Act, 1999 certain far reaching changes were
made to the existing law governing trade marks. One of the major changes was the incorporation of the
provision for registration of trade marks for services, in addition to their registration for goods.

(iii) The scheme and provisions of the Said Act clearly disclose the dichotomy between goods on the one
hand and services on the other. S. 2 (i) (j) defines goods in identical terms to the 1958 Act i.e. as
meaning anything which is the subject of trade or manufacture. However S. 2(1)(z) added a definition of
the term "services" as follows:

(z) "service" means service of any description which is made available to potential users and includes the
provision of services in connection with business of any industrial or commercial matters such as
banking, communication, education, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of news or information and advertising.

(iv) Furthermore S. 2(2) provides that, in this Act unless the context otherwise requires any reference

(a) ......;

(b).....;
(c) to the use of a mark, -

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical
or in any other relation whatsoever, to such goods;

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any
statement about the availability, provision or performance of such services;

The aforesaid provision indicates that the use of the mark in relation to goods is distinct from the use of
the mark in relation to services.

(iii) S. 28(1) of the said Act reads as below :

"Rights conferred by registration - (1) Subject to the other provisions of this Act, the registration of a
trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the
use of the trade mark in relation to the goods or services in respect of which the trade mark is registered
and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act."

S. 28(1) confer upon the registered proprietor a statutory monopoly to use the trade mark in relation to
the goods or services in respect of which the trade mark is registered. This would mean that a trade
mark registered for goods or for any particular goods will confer upon the proprietor a monopoly only in
respect of that class or if the registration is narrow only in respect of the goods for which the registration
is given within a particular class. Similarly, the monopoly over the mark qua services would be restricted
to only those services mentioned in the registration certificate. In the present case, as the Plaintiffs
registration certificate discloses that the first trade mark is only in respect of "processed and frozen meat
products" falling in Class 29 of Schedule IV to the 2002 Rules. The mark confers upon the Plaintiff the
exclusive right to use the trade mark in respect of processed or frozen meat product and qua no other
goods.

(iv) S. 29 (2) must necessarily be interpreted with this in mind otherwise by the method of action for
infringement under S. 29(2), the proprietor would be able to expand its statutory monopoly to a
different class of goods or even to services.

(v) The distinction between goods and services is also made clear by the provisions of the 2002 Rules.
Under Rule 22(1) of the 2002 rules, goods and services are to be classified in the manner specified in
Fourth Schedule. The Fourth Schedule contains various classes of goods similar to the Fourth Schedule to
the 1959 Rules (Classes 1-34). Thereafter under a separate heading "SERVICES" follow Classes 35 to 42.
Classes 35 to 42 are exclusively services making it clear that Class 1 to 34 are exclusively goods.
Significantly cl. 42 also includes "Providing of food and drink" which would mean food items listed in
class 29 to 34 do not include any services in respect of food items and drinks. Secondly Class 42 also
contains a residuary class i.e. "services that cannot be classified in other classes". This residuary class
applies only to services and does not extend to goods. This would mean that only goods which fall within
the expressly specified classes in Class 1 to 34 are classifiable. Goods that are otherwise related to
services but are not mentioned in Class 1 to 35 do not receive protection under the said Act. This also
shows that goods and services are treated separately.

(vi) The most significant guide is to be found in S. 2(3) of the said Act which is reproduced below :

"2(3) For the purposes of this Act, goods and services are associated with each other if it is likely that
those goods might be sold or otherwise traded in and those services might be provided by the same
business and so with descriptions of goods and descriptions of services."

Associated Trade Marks are defined u/s. 2(1)(c ) :

"2(1)(c) "Associated trade marks" means trade marks deemed to be, or required to be, registered as
associated trade marks under this Act."

13. U/s. 16 of the said Act, a trade mark can be registered or is deemed to be registered as an
associated trade mark if it satisfies the conditions set out therein which include the requirements that
both the marks must be in the name of the same proprietor and in respect of goods and services which
are associated with those goods. U/s. 44 of the said Act, the associated trade marks are assignable and
transmissible only as a whole and not separately. From the aforesaid provisions it s clear that for goods
and services to be associated with each other and to be registered or to be deemed to be registered the
following requirements are essential:-

(a) The goods which must be sold or traded in and the services to be provided must be by the same
business.

(b) That the trade mark in respect of the associated goods and services must be registered in the name
of the same proprietor.

(c) The use of the trade mark in respect of the same goods or description of goods or the same services
or description of services is identical to that which is registered in the name of the same proprietor; and

(d) the marks are either identical or there is such a close resemblance as is likely to deceive or cause
confusion if used by a person other than the proprietor.

(ii) S. 2 (3) represents the only point of convergence between goods and services in the Said Act. It
represents the legislative intent that goods and services can be said to be associated only if the aforesaid
provisions are satisfied.

(iii) In a American decision Lloyds Food Product Inc. v. Eli''s Inc 987 F 2d 766 the United States Court of
Appeal Federal Circuit decided an infringement action brought by Lloyds Food Products against Eli''s Inc
from using the mark "Lloyds" for restaurant services. The Court of Appeal Federal Circuit held as follows
:-
The marks at issue in the cases relied upon by the board were used in conjunction with the sale of goods
not with the provisions of services. A service mark is different from a mark for goods, especially, in the
manner it is used in commerce. The legally significant use giving rise to rights in a mark for goods is
derived from the placing of the mark in some manner on the goods either directly or on their containers
or packing 15 U.S.C. 1127 (1988) A service mark on the other hand, entails use in conjunction with the
offering and providing of a service. This makes all the more important the use of the mark in Sales or
advertising materials of different descriptions.

(iv)The position under the new Trade Mark Act 1994 in England is somewhat different. The 1994 English
Act also gives protection to trade mark in respect of services. However, the concept of an associated
mark i.e. association between marks concerning goods and services has been deleted and no longer
finds place in the English Trade Marks Act, 1994. The concept of associated marks was a part of the
previous Act viz. The Trade Mark Act 1938. Secondly S. 9(1) of the Trade Marks Act 1994 which
corresponds to S. 28 (1) of the said Act does not describe goods and services separately as does our S.
28(1).

(v) Hence no question can arise under S. 29(2) of the said Act of even undertaking the exercise of
comparing the Plaintiff''s goods in respect of which it has registration i.e. processed and frozen meat
products with 1st Defendant''s service of the restaurant business.

14. Assuming that goods may be considered similar to services the guiding principles and factors that
are relevant in considering whether there is similarity between goods/services are as follows:

(i)The English Trade Marks Act, 1938 contained a phrase "goods of the same description" which was
relevant in deciding application for registration. There is a line of authorities that explain this phrase.

(ii)In the matter of Application by Ladislas Jellinek 1946 (63) RPC 59, Mr. Justice Romer enunciated three
tests that should be employed to determine this question. The case was one of the use of the mark
"Panda" on shoes and on shoe polish. Mr. Justice Romer thought that three considerations were
relevant:-

a) The nature and composition of the goods;

b) The respective use of the goods;

c) The trade channels through which the respective goods are bought and sold.

Upon taking evidence and applying these Tests Mr. Justice Romer held that shoes and shoe polish, were
not goods of the same description.

(iii) In J Lyons & Loy Application 1959 RPC 120, the Court of Appeal was considering the trade mark
"Hostess" in its use upon jellies and Ice cream. In this connection Lord Justice Evershed held as follows:-
".........But however, that may be and in cases of this kind I venture to doubt whether the question of
onus should be given quite the same strict significance as in a pleading in a Common Law action" the
problem, upon all the evidence before us, may now be shortly stated thus: Are jellies, or jelly tablets,
goods of the same description as ice cream? If they are then the question at once claims an answer.
What is the description? What form of but without also comprehending categories of other goods which
might fairly in common sense be said not to be of the same description as either"

The answer to the question propounded by Mr. Levy was, "sweets", using that word as signifying the
sweet course in a menu, dessert in French, rather than sweetmeats that is, chocolates and the like what,
according to Mr. Levy, is known as in popular modern jargon as after. My difficulty about this simple
solution lies in the fact that it would apparently comprehend an extremely wide variety of foodstuffs,
ranging from fruit salad to a steamed suet pudding; and I am not satisfied, or my part, that, whatever
may be said of jellies a suet pudding could, by any sensible standard (other than its use as a sweet
course) be regarded as goods of the same description as ice cream. A solution may, however, be
provided by limiting the class of sweets somewhat thus a light sweet course or refreshment also
commonly provided at buffets, garden parties, and similar festivities .

To all these cases the oft-quoted proposition that each was decided on its own particular facts is, to my
mind, peculiarly applicable. In all cases of this kind regard will be had to such matters as the nature and
composition of the goods, to their respective uses and functions, and to the trade channels through
which respectively they are marketed or sold; and in different cases one of these characteristics may
have greater significance or emphasis than the others. The matter falls to be judged, as Lindley, L.J.
observed in the case already quoted, in a business sense; and this is to my mind made clear which the
problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered
proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as
an indication of by considering the legislative background against he trade source or origin of the goods,
and the restriction contemplated by sec. 26 is an incident of the general legislative purpose. The
question whether the goods are or not goods of the same description must therefore (I think) be one to
be answered in the context of that purpose; and having regard to that context, the cases cited, and
particularly McDowell''s case and the Australian Wine case, lend some support to the view that the
phrase "goods of the same description" ought not to be given too restrictive a construction not, at all
events, so as to be limited to goods substantially analogous in kind, or commonly used as mere
substitutes or alternatives the one for the other.

Lord Justice Romer applied the three tests laid down by him in Jellinek to hold that Jellies and Ice Cream
were goods of the same description.

Lord Justice Ormerod held as follows :-

Mr. Aldous submitted that the goods could not be regarded as of the same nature. They were made from
different ingredients and by different processes of manufacture. So far as user was concerned he did, I
think, agree that they might and frequently were used for the same purpose, that is for the "sweet" or
"desert" course of a dinner, but said that the variety of foodstuffs that could be so used was so wide that
such a user could not be regarded as conclusive. Equally with regard to the use of the same trade
channels for marketing the goods it was conceded that although jelly tablets would generally be found in
a grocer''s shop and ice cream would more commonly be sold by a confectioner, yet from time to time
both would be sold by a grocer or a confectioner. But again so many other foodstuffs are sold by grocers
and confectioners that such a description in itself would clearly be much too wide. This case appears to
be very much on the border-line. It is not easy to find a description which can be applied both to table
jellies and ice cream which would not at the same time apply to other foodstuffs which on common sense
or business principles could not be regarded as of the same description. For decision on the matter. But
the Assistant Comptroller and the learned Judge both appear to have been of the opinion, without so
finding in terms, that the goods are of the same description, and if it were necessary to decide the
question now I should myself, I have had some difficulty in coming t a not feel justified in differing from
their opinions. Perhaps the answer is to be found in the words of the Judge when he says "Both jellies
and ice cream in the prepared for table form are well known as alternative confections for a dessert
course to observe a common use". A hostess wishing to have a cold confection for the desert or sweet
course might well consider the alternatives of ice cream and table jelly.

(iv)Daiquiri Rum TRADE MARK 1969 RPC 600. The test laid down in Jellinek & Lyons were applied Lord
Wilberforce held as follows :-

"The expression "goods of the same description" is used elsewhere in the Trade Marks Act, 1938, in
particular ss. 12 and 26, and no reason appears why it should not bear the same meaning throughout.
The words are not perhaps self-explanatory. Taken by themselves, they would suggest that it is
necessary to search for a description, by species, genus or wider category which would include all the
goods in question. Taken in relation to the Act of 1938, they might suggest a grouping by reference to
the classification of goods for trade mark purposes contained in the Third or Fourth Schedules to the
Trade Marks Rules. But reference to the classification shows at once that this cannot be the basis of
"description" for there are many cases where a single class contains goods of different descriptions while
goods which one would think were of the same description may be found in different classes. Nor, on the
more general test, is it sufficient to find a single trade description covering each of the goods in question.
Thus, in Lyons and Co. Ltd. Application 1959 RPC 120, "sweets" though covering ice-cream and jellies
was thought to be too wide a description to be suitable.

Lord Wilberforce accepted the test to be a business and practical test ".....test of sameness in description
has rightly been taken to be a business and practical test, and would accept the utility for most purposes
of the matters stated as relevant by Romer, J. in Jelinek''s Application (1946) 63 R.P.C.

(v) The leading case of British Sugar Plc V. James Robertson & Sons Ltd. 1996 RPC 281 identified certain
essential factors whilst considering a provision identical to our s. 29(2) viz s. 10(2) of the Trade Marks
Act 1994 in the U.K. He also held that the tests for similarity were the same as used to decide whether
goods were of the same description, Justice Jacob held as follows:

" think the sort of considerations the court must have in mind are similar to those arising under the old
Act in relation to goods of the same description. I do not say this because I believe there is any intention
to take over that conception directly There plainly is hot. But the purpose of the conception in the old Act
was to prevent marks from conflicting not only for their respective actual goods in the Directive and Ad is
to provide protection and separation for a similar sort of penumbra. Thus think the following factors must
be relevant in considering whether there is or is no similarity:

(a)The respective uses of the respective goods or services:

(b)The respective users of the respective goods or services;

(c)The physical nature of the goods or acts of service;

(d)The respective trade channels through which the goods or services reach the market; - 29 -

(e)In the case of self-serve consumer items, where in practice they are respectively found or likely to be
found in supermarkets and in particular whether they are. or are likely to be, found on the same or
different shelves;

(f)The extent to which the respective goods or services are competitive. This inquiry may take into
account how those in trade classify goods, for instance whether market research companies, who of
course act for industry, put the goods or services in the same or different sectors.

Applying the aforesaid tests Justice Jacob held that the toffee spread being sold by James Robertson and
Sons was not similar to the dessert sauces and syrups for which British Sugar had the registered trade
mark "Treat"

(vii)In Baywatch Production Co. Inc. V. The Home Video Channel reported in [1997] FSR 22 it has been
held :

(a)If there is no similarity of goods or services then the question of whether there is likelihood of
confusion because of that similarity does not arise;

(b)It is not sufficient if one mark merely leads to a likelihood of recall of the other mark (relying on
Wagamama Ltd. V City Centre Restaurant Pic (1995) FSR 713.

(viii) Kerly''s Law of Trade Mark & Trade Names (14th Edition) introduces a further character viz the
distinctive character and strength of the earlier trade mark. Relying on the decision of the European
Court of justice in Canon V MQM (1999) RPC117, Kerly observes (in Para 9-051).

The Court held that the distinctive character of a trade mark, and in particular its reputation, must be
taken into account when determining whether the similarity between the goods or services covered by
the two marks is sufficient to give rise to the likelihood of confusion. In so finding the Court was clearly
following the decision in Sabel that the likelihood of confusion must be assessed globally taking into
account all relevant matters.
(ix) The Plaintiffs cited Corn Product Refining Company Vs. Shangrila Food Products Ltd. 1959 Indlaw SC
211. At para 19 the Supreme Court referred to the Jellinek case. At paras 20 and 21 the Supreme Court
then referred to the evidence in the form of Affidavits, to hold that it has been established that there was
a trade connection between glucose and biscuits and that there was likelihood of confusion or deception
arising from such trade connection. In the present case no such trade connection has been pleaded,
much less been established, between processed and frozen meat products on the one hand and
Restaurant services and sale of foods sauces ( in Super markets etc.) on the other hand.

(i) The Plaintiff has relied upon Mc Carthy on Trademarks and Unfair Competition 4th Edition Volume IV
at paragraphs 24:25 and certain American decisions to argue that there is a per se similarity or
likelihood of confusion between restaurant services and food products.

(a) What is apparent from the decision cited by Plaintiff as also from certain other decisions relied upon
by the 1st Defendant, is that there is no per se rule of such similarity between restaurant services and
food products. Each case has to be determine d on its facts.

(b) Moreover, the decisions cited by the Plaintiff [save and except one or two decisions of the Registrar of
Trade Marks USA are all cases concerning goods/services being compared to goods/services.

(ii)In Giant Food Inc and Nations Food Service Inc., the applicant for registration (Nations Food Services
Inc) was admittedly in the business of food product such as hamburger, sandwiches etc. and restaurant
services. The Opposer Giant Foodnc. was in also both food products as well as the business of catering
Services. These catering services were distinct from the two restaurants initially operated by the
Opposer and later closed by it. Giant Food is therefore distinguishable because

(a)This is a case between goods and services of the Applicant on the one hand and goods and service of
the Opposer on the other hand. It is not a case of goods v/s services.

(b) Secondly, as set out at page 6 of the report, the American Court relied on other cases that indicated
that the services performed by the two parties were not totally unrelated and that super market service
of food items were related to catering and restaurant services.

(c)Thirdly, the Court also noted and relied on the strength and fame of the Opposer''s mark and the
considerable exposure it enjoyed through the media to hold that the evidence showed that the
Opposer''s mark is well known in its area of operation and that consumers associate the marks GIANT
and GIANT FOOD with Opposer''s business activities. The Court held that Oppser''s marks have acquired
considerable fame, which weighs in its favour in determining likelihood of confusion.

All the aforesaid factors are absent in the present case :

(a) The present case is one of alleged similarity between the Plaintiff''s goods and the Defendants
services;
(b) There is no evidence to show any trade relationship between restaurant services and the sale of
processed or frozen meat products.

(iii) Re: H .J. Seiler Co. 289 F.2(d) 674.

This case is also distinguishable since the case itself refer to two factors :-

(a) Firstly, the applicant for registration H J Seiler Co. was not only in the catering business but also in
the business of selling food products . The Opposer was in the business of sale of food product hence
there was some apprehension of similarity between foods and goods in this case.

(b) Secondly the Court relied on marketing practices of today.

(iv) The 1st Defendant sited two American Judgments on American law advanced by the Plaintiffs. Viz.:-

(a)Lloyds food product Inc. Vs. Eli''s Inc 987 F 2(d) 766. This was a case of food products sold by the
Appellants and restaurant services offered by the Respondents. There was evidence in the form of
Affidavit recording trade practices. It was held that there was no per se rule about confusion where
similar marks are used in connection with restaurants services and food products. The Court further held
that a party must show something more than that similar or even identical marks are used for food
products and for restaurant services.

The decision in Jacobs Vs. International Multifoods Corp. 668 F 2d 1234 (1982) was relied on.

The Court held that "The evidence in the record however only suggests a general similarity between the
type of food packaged by Lloyds Foods and some of the items available on the menu in Eli''s restaurant."

It was held that this was not sufficient to establish confusion.

(b) Amstar Corporation Vs. Domino''s Pizza Inc. 615 F 2d 252 1980. United Court of Appeal, 5t Circuit.
(i) Amstar had a registered trade mark for sugar and condiments. Amstar filed an infringement action
against Domino''s Pizza Inc which ran fast food Pizza delivery outlets. (ii) The Court of Appeal reversed
the District Court and held that there was no likelihood of confusion and hence no infringement. In so
holding, the Court of Appeal held that "the rights granted to the owner of a registered trade mark is a
monopoly and should not be extended unless the owner is clearly entitled thereto." (iii) The Court of
Appeal considered the similarity of the products, identity of the retail outlets and purchasers and identity
of the advertising media utililized. (iv) The Court of Appeal held that "However, we fail to see any great
similarity between the respective party''s wares. About the only thing they have in common are that they
are edible." The latter sentence was a quote from another judgment. This has significance in the present
case, where the Plaintiff relies upon the description "Food items" to contend similarity between
processed and frozen meat product sold by the plaintiff and the restaurant services and sale of sauces by
the Defendants.
15. (i) The Plaintiff in arguments has relied upon a Affidavit dated 21st July, 2005 filed on behalf of the
1st Defendant in certain proceedings filed by the 1st Defendant for rectification by deletion of the
Plaintiff''s said registered Trade Mark in respect of processed and food meat products.

(ii) It is clear from the Statement of Case filed by the 1st Defendant in the Rectification proceedings that
these proceedings were filed to expunge from the Register of Trade Marks the Plaintiffs registration
under Class 29. The application was necessitated because the Registrar cited the Plaintiff''s registered
trade mark "Nandus" (having specification for processed and frozen meat products) as a conflicting mark
when the 1st Defendant applied for registration of its trade mark "Nandos" on 13th December 1996, also
in class 29. The 1st Defendant''s application was for goods in Class 29 and Plaintiff''s mark was
registered for goods in a narrower category but also under Class 29. It is in this context that any
averments in the Affidavit must necessarily be seen.

(ii)The averments made in the rectification proceedings did not and were not intended to suggest that
use of the mark "Nando''s" particularly in the context of Restaurants and food outlets and in relation to
services would have any deceptive similarity or cause confusion in the minds of the public and people in
trade who may be aware of the use of the word ''Nandu''s in relation to processed and frozen meat
products of the Plaintiffs.

(iii) It is also to be noted that at the time it was not possible to apply for registration of marks in respect
of services. Hence the 1st Defendant''s Application could never have been in respect of restaurant
services. The right to apply for service marks came only in 2002 as set out above. In fact the 1st
Defendant applied for registration of the service mark "Nandos" in class 42 and this was advertised on
17th January 2005. The Plaintiff applied for the service mark a "Nandus" in Class 42 only on 13th May
2005 i.e. after the 1st Defendant''s application in Class 42.

(iv) The paragraphs relied on by the Plaintiff in the 1st Defendant''s said Affidavit dated 21st July, 2005
are paragraphs 17, 18, 21(d) (f) and (g). A reading of all these paragraphs bears out the aforesaid i.e.
that these concern an application for registration of a mark for goods.

16. In so far as pleadings are concerned in the plaint, the Plaintiff has not even pleaded that the
objective tests/ factors laid down in Jellinek, J.Lyons, Daiquiri Rum, British Sugar, and Eagle Potteries are
satisfied in the present case. No such factual foundation is laid n the Plaint.

. It is thus clear that the Plaintiff has not even attempted to establish that there is any similarity
or association between its goods and the Defendant''s services.

16. In fact no similarity or association can be found if objective tests are applied. Plaintiffs goods are
not similar to or associated with the Defendants services and sale of sauces. Applying the
aforesaid tests and factors, the goods of the Plaintiff (processed or frozen meat products) and
the 1st Defendant''s services/goods (restaurants/food outlets and sale of sauces) cannot be
said to be similar or associated because :
(i) Respective uses of the goods/services The Plaintiffs products are bought for cooking at
home; the 1st Defendant''s services are those of hospitality, entertainment and social
interaction apart from the specialized Afro-Portuguese Cuisine at a restaurant. The Plaintiffs
advertisements are clearly for frozen goods. On the other hand the Defendants Menus are the
antithesis of that. The Menus say "Freshest (never frozen)".

(ii) Respective Users of the goods/services.

The Plaintiffs products are bought by shoppers for groceries/foods to be consumed at home;
the 1st Defendant''s services are enjoyed by those who wish to go outside their homes and to
socialize and enjoy the ambience of a specialized restaurant (usually of a higher middle or
upper income bracket),

(iii) Physical Nature of the goods/services.

The Plaintiffs products are uncooked or processed frozen meat products and they have to be fried or
cooked to be eaten; the 1" Defendant''s services are of a restaurant (hospitality, cuisine and
entertainment) where customers would choose from a menu and its products are sauces (e.g. Peri-Peri
sauce), The entire get up of the Defendants services indicates their Afro Portuguese background.

(iv) Trade channels through which goods/services reach the market.

The Plaintiffs products are sold at cold storages, wholesale distributors and supermarkets. They have to
be fried or cooked to be eaten; the 1st Defendant''s food is served at its restaurants and is chosen from
a menu (only the 1st Defendant''s sauces are sold at supermarkets). Moreover restaurants in the normal
course, do not sell or serve frozen or processed meat products. The 1st defendant has stated that the
sale of Sauces shall be only at the restaurant.

(v) Where goods likely to be found in supermarkets.

The Plaintiffs products would be found at cold storages or at the frozen foods, meats counters at
supermarkets; the 1st Defendant''s food would not be found at supermarkets.

(vi) Extent to which the goods/services are competitive.

The Plaintiffs frozen and processed meat products do not compete with the 1st Defendant''s
restaurants/food outlets nor with the 1" Defendant''s sauces. The Plaintiffs advertisements disclose its
food products are to be heated and consumed at home.) whereas the Defendant services are the
antithesis of that as a restaurant is where you go because you don''t want to eat at home.

(vii) Whether goods/services ''traded/provided by the same business.

It is, therefore, apparent that there is no similarity or association between the Plaintiffs'' products and
the first Defendant Restaurant and sale of sauces.

17. S. 29(4) of the Trade Marks Act, 1999 reads as follows:

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use. uses in the course of trade, a mark which-

a. is identical with or similar to the registered trade mark; and

b. is used in relation to goods or services which are not similar to those for which the trade mark is
registered; and

c. the registered trade mark has a reputation in India and the use of the mark without due cause takes
unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark .

18. Thus, a registered trade mark is infringed even if the mark is used in relation to goods or
services which are not similar, to those for which the trade mark is registered provided:

(i) the marks are identical or similar; and

(ii) the registered trade mark has a reputation in India;

(iii) the registered trade marks has a distinctive character or repute; and

(iv) the use of the mark without due cause takes unfair advantage of or is detrimental to the
distinctive character or repute of the registered trade mark.

19. There is no pleading in the Plaint that would meet the requirement of S. 29 (4). The only allegation
is that the Defendants started using the mark "Nandos" even though they knew that the Plaintiffs mark
"Nandus" was registered and with notice of the existence of the Plaintiffs mark. This alone cannot
amount to use of the mark without due cause or use that takes unfair advantage of or is detrimental to
the alleged distinctive character or repute of the Plaintiffs registered mark "Nandu''s".

20. (i) The Plaintiff claims that since 1988-99 the Plaintiff has used the first trade mark on an extensive
scale.

(ii)In paragraph 13 and 14 of the Plaint, the Plaintiff claims to have used the first trade mark in relation
to a large turnover and to have spent a considerable amount by way of publicity expenses for
popularizing the said trade marks. In fact these statements are now admittedly incorrect.
(iii)The Ist Defendant, in its Affidavit in Reply dated 1st March, 2007 states that the figures mentioned in
the Plaint were incorrect and relied upon a certificate issued by the Plaintiff''s Chartered accountant in
the rectification proceeding between the parties. The certificate proved that the figures mentioned in the
Plaint were very substantially higher than what was the actual turnover as well as the actual publicity
expenses incurred by the Plaintiff in respect of its food division. The Plaintiff, in its Affidavit in Rejoinder
dated 23rd March, 2007 admitted that the figures which were quoted in the said certificate were of the
''package food business" as a separate business division and the figures shown in the Plaint are for the
''packaged food division'' as well as for the ''other poultry business''. The CA''s certificate shows only the
following turnover for the years 2002-03 (Rs. 672, 720), 200 -04 (Rs. 611, 843) and 2004-05 (Rs. 126,
954). - the turnover for 2004-05 is Rs. 126, 954/- for the entire foods division. The advertising expenses
shown in the CA''s certificate are also minuscule.

(iv) There is no evidence that the trademark "Nandu''s"EURO was used by the Plaintiff for its poultry
business.

(v) Moreover, the turnover and advertisement figures in the Plaint are not certified by an Auditor.

(vi)The Plaintiffs alleged reputation based on its second trade mark (for Heat n Eat packaged food other
than processed meat products) is only from 2005. Hence the turnover and advertisement figures prior to
2004 -2005 do not include sales/advertising in respect of the second trademark. The advertisements at
Ex. H-l 1 to H-14 are all given in the latter half of the year 2005.

(vii) Significantly, the Plaintiff does not claim any reputation in the restaurants/food outlets/cafes/bars
nor in sales of sauces, since it has not even commenced such business. It merely alleges that it "plans"
to go into the restaurant business, it does not even allege such plans for sauces.

21. On the contrary (i) Defendant No. 1 forms part of a group of companies which use the trade mark
''Nando V (from 1987-88) in relation to fast food outlets and a chain of restaurants (serving chicken as
well as non-chicken and vegetarian cuisine) and also to sell/market a range of food sauces of all kinds
intended for use in relation to a variety of foods, dips, deserts, frozen yogurts, ice creams, marinades,
salad dressings in more than 30 countries world wide. These countries include countries such as the
United Kingdom, United States of America, Australia, Canada, South Africa, Pakistan, Malaysia, Sri
Lanka, Saudi Arabia and New Zealand.

(ii) The service mark and trade mark Nando''s is registered in more than 100 countries. Applications filed
for registration are pending in more man 20 countries. A list of the service mark and trade mark
registrations and application for "Nando''s" in various countries all over the world are produced at Exhibit
''2'' of the Affidavit in Reply of Defendant No.1.

(iii) The Defendants have opened a restaurant in the jurisdiction of this Court since December 2005 and
the Defendants have publicized the restaurant from September 2005. The Defendants have produced
advertisements popularizing the Defendants'' restaurant in various newspapers in Mumbai, since
September 2005.
22. Nothing has been disclosed by the Plaintiff to establish that the use of the Defendants'' trade mark
(Nando''s) in India, is without due cause or can be said to take unfair advantage of the distinctive
character or repute of the registered trade mark (Nandu''s) of the Plaintiff. It is incredible to suggest that
the 1st Defendant with its vast reputation would want to take any advantage (much less unfair
advantage) of the alleged repute of the Plaintiffs registered trade mark (Processed and Frozen meat
products) and for that purpose open the restaurant.

23. The learned Counsel for the Plaintiffs relies on the following judgments:

i.Bal Pharma Ltd. V. Centaur Laboratories Pvt. Ltd. 2001 Indlaw MUM 598.

This decision throws no light on S. 29 (4) and its ingredients. This case only holds that a Defendant who
is aware of the prior registration of a mark in favor of the Plaintiff cannot complain of delay in the
Plaintiff filing an action.

ii.Ayushakti Ayurved Pvt Limited. V. Hindustan Lever Ltd 2003 Indlaw MUM 905. Again this case is silent
on S. 29 (4) and its ingredients. Here it was held that the Plaintiff came to Court on a false case because
it did not disclose that it had taken search and had known of the Defendant''s prior registration.

24. In the present case it is to be found that the mark (Nando''s) is used in relation to goods or
services (restaurants) which are not similar to those for which the trade mark (Nandu''s) is
registered (processed or frozen meat products) and the registered trade mark (Nandu''s) has
no distinctive reputation in India (even in respect of processed or frozen meat products) and
the use of the mark (Nando''s) is not without due cause, or does not take unfair advantage or
is not detrimental to the alleged distinctive character or repute of the registered trade mark
(Nandu''s).

25. The Plaintiffs contend that the Defendants are passing off their goods/services as and for that of or
in some way connected with the Plaintiffs'' goods i.e. processed and frozen meat products and ready to
eat products and alleged services. 26. The principles relating to passing off have been crystallized by the
Hon''ble Supreme Court of India in the case of Satyam Info way Ltd. V. Sifynet Solutions Pvt.Ltd reported
in 2004 Indlaw SC 1061. This case summarizes the well settled principle that to establish the tort of
passing off, three elements are essential:

(a) The Defendant must have sold goods or offered its services in a manner which has deceived or would
be likely to deceive the public into thinking that the Defendant''s goods and services are of the Plaintiffs;

(b) Misrepresentation by the Defendant to the public and a likelihood of confusion in the minds of the
public (i.e. actual or potential customers or users) that the goods/services offered by the Defendant are
the goods/services of the Plaintiff; and

(c) the loss or likelihood of loss to the Plaintiff.

In the present case since the Plaintiff has no business or goodwill or reputation in the business
of running restaurant or selling sauces, no question of passing of by the Defendants of their
restaurant business or business of sale of sauces as that of the Plaintiff can arise.

28. The 1st Defendants had already commenced advertising their restaurants in India and the 2nd
Defendant had also opened a restaurant in Mumbai in December 2005. The 1st Defendant has a direct
reputation in India from at least December, 2005.

29. In marketing, promoting and providing its services, the Defendants place enormous emphasis on the
Afro-Portuguese heritage underlying the Nando''s brand and concept, in its restaurant art work, menus,
country websites, pamphlets, advertisements, etc. Photographs highlighting the Afro-Portuguese
heritage in its restaurants and advertisements is produced by the 1st Defendants.

30. On the other hand the Plaintiff has no reputation in India in restaurants/food outlets business or in
the sale of sauces. Since admittedly it has not commenced either business, hence even without looking
to the 1st Defendants trans border reputation, in India the 1st Defendant has a reputation in
restaurants/ food outlets/ sale of sauces prior to the Plaintiff.

31. It is submitted by the defendants that the Plaintiff is not entitled to any equitable reliefs including the
injunctions prayed for since the Plaintiff has approached this Hon''ble Court on a false case and with
unclean hands. As observed above, the Plaintiff has falsely suggested in Paragraph 13 of the Plaint that
the figures of turnover stated in Exhibit "F" of the Plaint and advertising expenditure figures referred in
paragraph 14 of the Plaint read with Exhibit G of the Plaint are those pertaining to use of the first
trademark viz. for sale of its frozen and processed meat products. It was only after the Defendants
brought to the attention the fact that these figures included (in most part) figures for the Plaintiffs
poultry business (sale of one day old chicks) that the Plaintiff admitted this position.

32. I, thus, find that the plaintiff has not made out prima facie case. Moreover the balance of
convenience is also in favour of the Defendants:

(i) The Plaintiff has not even commenced any restaurant/food outset business;

(ii) The Plaintiff had knowledge of the Indian operations of the 1st Defendant since at least 2003.

(iii) The Defendants restaurant at Malad was opened and has been operating since December, 2005;

(iv) The two alleged letters relied upon by the Plaintiff to show confusion apart from being disputed, both
emanate from Bangalore. There is no real evidence of confusion.
 (v) On the other hand no prejudice will be caused to the Plaintiff if the injunction is refused.

Taking overall view of the matter, in my opinion, the plaintiff is not entitled to any interim relief. The
notice of motion is disposed of.

At this stage, a request is made on behalf of the plaintiffs that the ad-interim order presently operating
should continue to operate for a period of four weeks from today. The request is opposed on behalf of
the defendants. According to the defendants, their restaurant in Bombay is already running with the
name ''Nandos''. The second restaurant is also started but they are not using the name. It is submitted
that if the ad-interim order is not continued, the defendants would be entitled to name the second
restaurant and any other restaurant as ''Nandos''. It is submitted that the defendants would not claim
any equity before the Appeal Court on the basis that their second and subsequent restaurants are
running with the name ''Nandos''. In my opinion, in view of the statement made by the defendants and
in view of the fact that I have found that the plaintiffs have not been able to make out a prima facie
case, it would not be appropriate to continue the ad-interim order. One more aspect that is to be noted is
that I have recorded a statement made on behalf of the defendants that they will sell only sauces and
that too only from their restaurant. The request is therefore rejected.

© 2015 Thomson Reuters South Asia Private Limited

This database contains editorial enhancements that are not a part of the original material. The database may also have mistakes or omissions. Users are
requested to verify the contents with the relevant original text(s) such as, the certified copy of the judgment, Government Gazettes, etc. Thomson Reuters bears
no liability whatsoever for the adequacy, accuracy, satisfactory quality or suitability of the content.