Deciding a trademark is the most crucial step for any brand. As per the trademark law, a mark needs to have distinctive quality and should not be generic. The distinctiveness requirement of a trademark has been a subject of legal disputes on multiple occasions, especially when manufacturers have sought to use common or generic words in their trademarks. But what if a generic word is used as a part of the entire mark?
A similar question arose before the Delhi High Court in recent case of Arun Chopra V. Kaka-Ka Dhaba Pvt Ltd & Ors.
A suit for infringement of registered trademark was preferred by Arun Chopra (hereinafter referred to as “Plaintiff) against Kaka-Ka Dhaba Pvt Ltd & Ors. (hereinafter referred to as “Defendants”) whereby it was alleged by the Plaintiff that the Defendants had committed infringement of its registered Trademark by using the mark ‘Kaka-Ka’ for food outlets in Nashik, Maharashtra.
- It was claimed that it was using the trademark ‘Kake Da Hotel’ and was operating from Shop No. 74 Municipal Market, Connaught Circus, New Delhi-110001.
- It was claimed that the name was adopted in 1931 when the said name was used for a restaurant which was started in Lahore, Pakistan. Further, was submitted that the founder of the Plaintiff, late Shri Amolak Ram Chopra shifted to Delhi and opened a restaurant in the same name.
- It submitted that the name of ‘Kake Da Hotel’ had acquired enormous reputation and goodwill.
- It was stated that the earliest trademark registration dated back to December 14, 1950 and the claim of the user is from 1st June, 1931 in respect of goods falling in class 30.
- It was further contended by the Plaintiff that he had also registered the trademarks ‘K-D-H Kaku-Da-Hotel’ and ‘K-D-H KakeDa-Hotel’ after several years of use.
- It was further submitted that that the Plaintiff’s outlet ‘Kake Da Hotel’ had achieved mammoth goodwill and reputation in the market over the years and the name is associated only with the Plaintiff’s restaurant.
- In rebuttal, it was submitted by the Defendants that the mark ‘Kaka-Ka Dhaba’ was adopted by the Defendants in the year 1997. It was claimed that there were three food outlets which were started seventeen years ago with the names using the expression ‘Kaka-Ka’. The three outlets were Kaka-Ka Dhaba, Kaka-Ka Hotel and Kaka-Ka Garden.
- It was further submitted before the learned Single Judge of the Delhi High court that the Defendants had gained their reputation in Nashik and the Plaintiff’s had no reputation in Nashik and no other outlet other than the one operating in Delhi.
- It was alleged that the Plaintiff could not claim monopoly in the word ‘Kaka’ as the same is a generic word.
- The Single Judge observed the ex-parte order passed on 10th March, 2014 in the suit whereby the Defendants were restrained from suing the trademarks ‘KAKA-KADHABA’, KAKA-KA HOTEL’, ‘KAKA-KA RESTAURANT’ and ‘KAKA-KA GARDEN’ or any other mark which is deceptively similar to the Plaintiff’s mark ‘KAKE-DA-HOTEL’ .
- It was stated by the court that the Plaintiff was using the registered mark ‘Kake-Da-Hotel’ along with K-D-H, whereas the Defendants were using the trademark ‘Kaka-Ka Restaurant’, ‘Kaka-Ka Hotel’, ‘Kaka-Ka Dhaba’ and ‘Kaka-Ka Garden’ but had applied for the registration only for `Kaka-Ka Dhaba’.
- The court considered the usage of respective registered trademarks by either party during which they had gained reputation locally and observed that various issues with regard to whether the word ‘Kaka’ or ‘Kake’ could be monopolised by any party would be adjudicated at trial and after considering the evidence(s).
- The interim arrangement arrived by the Court are as follows:-
- The Defendants were permitted to use the name ‘Kaka-Ka Dhaba’, ‘Kaka-Ka Restaurant’ and ‘ka-Ka Garden’ for the three restaurants/outlets already operating in Nashik, Maharashtra. However, they were prohibited to use the name ‘Kaka-Ka Hotel’ and the name to be changed within 30 days of passing the order.
- No further outlet to be opened by the Defendants with the name ‘Kaka-Ka’, during the pendency of the present suit.
- The company ‘Kaka-Ka Dhaba Pvt. Ltd’ of the Defendants’ to be operated under the same name and the Defendants to maintain complete accounts of all sale of the three outlets operated by them.
Any further order passed for the rendition of accounts /damages, then the individuals under the control and management of the outlets in Nashik should file the quarterly accounts of their outlets at the end of each quarter by the 10th of the next month.