Choosing the brand name is the most crucial step. As per trademark law, the mark must be distinctive from those of others and should not be generic. The distinctiveness requirement of a trademark has been subject of legal disputes on multiple occasions, especially when manufacturers have sought to use common or generic words in their trademark. But here the question is whether generic or oomo words can be used as a part of the entire mark?
The similar question arose in the above mentioned case.
Brief Facts of the case
The plaintiff i.e. Arun Chopra has initiated a Trademark Infringement suit against the Defendants i.e. Kaka-Da-Dhaba Pvt. Ltd. & Ors. whereby it was alleged by the plaintiff that Defendants were using similar mark as plaintiffs.
Plaintiff contended that-
- They claimed that they already have a registered Trademark of “Kake-Da-Hotel’ and are operating from Connaught Place.
- They also claimed to be a prior user of the mark, as they were using the mark since 1931. They submitted that they first operated the restaurant from Lahore, Pakistan and then the founder of the plaintiff’s mark late Shri Amolak Ram Chopra shifted to Delhi and opened a restaurant in the same name.
- It is further submitted that the mark has attained its certain reputation and goodwill in the market.
- They stated that after several years of use they registered their trademark.
- In rebuttal, Defendants submitted that the mark “kaka-Da-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-Da”. The three outlets were “Kaka-ka-Dhaba”, Kaka-ka-Hotel and Kaka-ka-Garden.
- It was further submitted before the Ld. Single bench court that Defendants had gained reputation in Nashik and the plaintiff had no reputation in Nashik and have no other outlet other than that of Delhi.
- It was alleged that the plaintiff could not claim monopoly in the word “Kaka” as the same is the generic word.
The single judge bench has observed the ex-parte order passed on 10th March, 2014 in the suit whereby Defendants were restrained from using the trademarks Kaka-ka-Dhaba”, Kaka-ka-Hotel and Kaka-ka-Garden or any other mark similar to the plaintiff’s mark.
The court observed that whether any party can have exclusive right over the word “Kaka” and “Kake” or not? These all issues were adjudicated at trial and after considering the evidence.
The interim arrangements arrived by the court are as follows-
- The Defendants were permitted to use the mark “Kaka-Ka-Dhaba”, “Kaka-Ka-Restaurant” and “Kaka-ka-Garden” for three restaurant outlets that were already running in Maharashtra. However they were restrained from using the mark Kaka-ka-hotel and asked to change the name within 30 days.
- No further outlet to be opened during the pendency of the suit by the name Kaka-ka.
- 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.