By Deepika Shrivastav and Pallavi Paul
The Hon’ble Delhi High Court, vide its order[1] dated August 03, 2023 has restrained Wow Momo Foods Pvt. Ltd (hereinafter referred to as ‘defendant’) from using the name/mark WOW CHINA BISTRO
as part of its business, citing that the impugned mark is confusingly similar to Food Link F & B Holdings India Private Limited’s (hereinafter referred to as ‘plaintiff’) registered trademark CHINA BISTRO/
.
Brief Facts of the Case
The defendant is an Indo Chinese restaurant which used the mark WOW! CHINA/
as part of its business until 2019, when it incorporated the word ‘BISTRO’ as part of its trade name and further amended its logo to
. The defendant has no valid trademark registration over the mark WOW! CHINA BISTRO/
, however, the plaintiff possesses rights over the mark CHINA BISTRO.
Details of the plaintiff’s trade mark rights is tabulated below:
| S No. | Mark | Class | User Detail |
| 1. | CHINA BISTRO | 43 | December 15, 2003 |
| 2. |  |
43 | December 15, 2003 |
| 3. |  |
42 | December 15, 2003 |
| 4. |  |
43 | April 01, 2015 |
The plaintiff alleged that use of the term ‘BISTRO’ below ‘CHINA’ in the mark
renders the defendant’s mark deceptively similar to its mark, as both the marks are now pronounced as ‘CHINA BISTRO’ and the only distinguishing factor is the added word ‘WOW’ in the defendant’s mark. It is the plaintiff’s claim that the word ‘WOW’ independently cannot mitigate the possibility of confusion arising between the marks when viewed from the perspective of a customer of average intelligence and imperfect recollection.
Furthermore, the likelihood of confusion between the marks is exacerbated by the fact that both the plaintiff and defendant operate in the same business sphere i.e. run upmarket Asian restaurants and are therefore likely to have common trade channels and a shared consumer demographic.
Infringement under Section 29(2) of the Trade Marks Act, 1999
The main issues in the present case are: (i) whether the plaintiff’s and the defendant’s marks are confusingly and deceptively similar to the extent that the same amounts to infringement within the meaning of Section 29(2) of the Act; (ii) Whether the plaintiff is entitled to claim infringement.
- Whether the plaintiff’s and the defendant’s marks are confusingly and deceptively similar to the extent that the same amounts to infringement within the meaning of Section 29(2) of the Trade Marks Act, 1999-
Infringement of registered trademarksA 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—- its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
- its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
- 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.
The defendant argued that both the marks when viewed as a whole are not deceptively similar to each other. However, the Learned Court was of the opinion that infringement of marks should be decided by viewing the marks from the point of view of a common man who is not exceedingly familiar with any of the mark. The Learned Court relied on the decision of the Hon’ble Supreme Court in the cases of Kaviraj Pt. Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories[2] wherein it was decided that when the words constituting the dominant parts of device marks are similar, added visual matter accompanying the words in the device marks would not make any difference to decide infringement of trademarks. The Learned Court also cited the decision of the Apex Court in the matter of K.R. Krishna Chettiar v Shri Ambal & Co[3] where two visually dissimilar marks used for similar services were declared similar as the textual matter in the marks was so phonetically similar to each other that the visual dissimilarity between the marks was held inconsequential.
Applying the same rationale, the Learned Court in the present case observed that the textual elements of the defendant’s mark (WOW! CHINA BISTRO) are so similar to that of the plaintiff’s mark (CHINA BISTRO) with only the addition of the word ‘WOW!’ in the defendant’s mark would not mitigate the possibility of confusion or deception between the two marks.
The Learned Court while reiterating the classical test of initial interest confusion observed that while making a determination about the similarity between marks, the marks have to be analysed from the point of view of a common man who is unaware of the reputation of the marks. The Learned Court while holding that the marks CHINA BISTRO/
and WOW! CHINA BISTRO/
are deceptively similar observed that, the classical test is whether such a consumer, endowed with average intelligence and imperfect recollection, who chances on the plaintiff’s mark at one point of time, and on the defendant’s some time later, is given to wonder whether he has seen the mark, or a mark associated with it, earlier. What is required, for infringement to be said to exist, is “initial interest confusion”. In other words, if the initial interest generated by seeing the defendant’s mark places the consumer in a “state of wonderment”
In this regard, the Learned Court held that the aspect of deceptive similarity of trademarks as per Section 29(2) has been clearly established by the plaintiff.
- Whether the plaintiff is entitled to claim infringement?
With regards to the plaintiff’s entitlement to a claim of infringement, the defendant argued that the plaintiff cannot claim exclusivity over the composite mark ‘CHINA BISTRO’, since it comprises of non-distinctive words ‘China’ (country name) and ‘Bistro’ (common term used for café/restaurant) which being bereft of any distinctive character are not liable to be registered individually.To support its claim, the defendant highlighted the plaintiff’s trademark registrations for the trademarks
and
which were granted registration with a disclaimer that the plaintiff shall have no exclusive rights over the words ‘Bistro’ and ‘China’.
Furthermore, although no disclaimers were mentioned on the plaintiff’s latter registrations for the trademarks
and CHINA BISTRO, the registrations were associated with the plaintiff’s prior registered marks. The declaration of association contained in the plaintiff’s prior registered marks became mutatis mutandis applicable to the latter marks as well.The plaintiff contested the claims of the defendant by citing Section 44 of the Act[4] which clearly indicates that the sole purpose of associating trademarks is joint transmission and not separate use. Further, all trademarks should be treated as separate trademarks even if they are associated trademarks.
Findings of the Court
- Disclaimers on marks shall not prohibit the plaintiff to allege infringement
The Learned Court observed that ordinary words which do not possess any distinctiveness intrinsically, can become distinctive when combined together and seen as a whole. Further, the Court observed that even if all the marks applied for registration by the plaintiff contained ‘disclaimers on the words ‘China’ and ‘Bistro’ individually’, that shall not disentitle the plaintiff from claiming exclusivity in the composite mark ‘CHINA BISTRO’ and consequently alleging infringement by any third party’s mark on the ground of deceptive similarity. - Defendant’s onus to prove Plaintiff’s mark lacks distinctiveness
The Learned Court also observed that when a mark is registered, at a prima facie stage, the plaintiff is entitled to the benefit of Section 31(1) of the Act[5], which states that the original registration of the trade mark and of all subsequent assignments and transmissions shall be evidence of the validity thereof. Therefore, a presumption of validity is created at the time of the registration of the mark and it shall be the onus of the defendant to prove that the plaintiff’s mark lacks distinctiveness. In the present case, the defendant should establish that the mark ‘CHINA BISTRO’ lacks distinctiveness, so that the plaintiff cannot claim exclusivity over the said mark which the defendant could not establish herein. - Marks should be compared as whole
The Learned Court finally examined the issue of distinctiveness between the disputed marks as per the provisions of Section 17 of the Act[6] which states that ‘When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole’. While alluding to the well-settled principle of comparing marks as a whole, the Learned Court observed that it is not permissible to dissect the individual rival marks while examining the issue of infringement. Applying the above principle, the Learned Court held that they are prima facie convinced that the plaintiff’s mark&
and defendant’s mark 
which comprise of identical textual components ‘CHINA BISTRO’ (with difference of only the word ‘WOW’) which constitute the essential features of the disputed marks, when compared wholly, are indeed deceptively similar.After considering the above-mentioned factors, the Learned Court was of the opinion that the plaintiff has established a prima facie case of infringement and granted an injunction order in its favor in accordance with the principle laid down by the Hon’ble Supreme Court in the case of Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia[7].
Author’s Comments:
The judgment re-examines the well-settled principles of Initial interest confusion and the Rule of anti-dissection while making a determination of whether adoption of the term ‘CHINA BISTRO’ by the defendant as part of its mark WOW! CHINA BISTRO/
amounts to infringement of the plaintiff’s mark CHINA BISTRO/
.
However, the judgement is silent on the aspect of how determination of dominant feature of mark is to be made i.e., will initial interest confusion be only applicable test or other factors will find applicability as well.
[1] CS(COMM) 848/2022
[2] AIR 1965 SC 980
[3] AIR 1970 SC 146
[4] Assignability and transmissibility of associated trade marks
[5] Registration to be prima facie evidence of validity
[6] Effect of registration of parts of a mark
[7] (2004) 3 SCC 90