D.V.Raghunath Vs. M/S. Hill Top Leisure Services - Court Judgment

Excerpt:

Judgment:

(Circuit Bench at Mumbai)

Hon'ble Shri Z.S.Negi, Chairman:

Through the above application, the applicant has sought to remove the trade mark PURPLE HAZE, under No.1257558 in class 42 registered in the name of the respondent, from the register of trade marks or to rectify the register under section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The applicant has also along with the rectification application filed a miscellaneous application (being M.P. No. 94/2006) for grant of an ad-interim ex-parte order of injunction against the respondent directing them not to establish any new chain of restaurant/hotel/pub/bar/café under the brand name ‘Purple Haze in any part of India or from giving franchise to open restaurant, etc. in favour of any third party/person in any part of India pending disposal of the rectification application.

2. The applicant, a partnership firm registered with the Registrar of Firms, Karnataka, under section 58(1) of the Indian Partnership Act, 1932 on 18.3.1994, is stated to be carrying on the business of running pubs, hotels and other related activities under various business names since 18.3.1994. It is stated that the applicant on 30.7.1998 established a pub under the name and style of ‘PURPLE HAZE, ROCKIN PEOPLE and within a span of one year this brand name went on to become one of the most happening pubs in the cities night life and a well read magazine, India Today in its special edition of September-October, 1999, listed this pub among the top pubs in India. The PURPLE HAZE pubs popularity can be ascertained from the fact that the said magazine has listed it one among the top bars and described it as “the most happening places in the Bangalore pub-scene” and it further went on to write that “Every Evening the management is constrained to turn away 30-40 couples”, which is an example of the popularity of the pub in the city. The applicant stresses the popularity of its pub by referring to write ups in the magazines like ‘INSIDE OUTSIDE and ‘UPPER CREST and some interesting captions to describe about its pub in Indian Express, Times of India and New Indian Express, newspapers. Applicant claims to be investing huge amounts in respect of advertisements in daily newspapers like The Times of India, Indian Express, etc. about its weekend events. In fact, the brand name PURPLE HAZE is a trade mark as of 30.11.1999, registered in the name of the applicant as ‘PURPLE HAZE ROCKIN PEOPLE under No.888925 in class 32. By referring to the write ups in the magazines and captions in the newspapers, the applicant submitted that the brand name PURPLE HAZE, which is having its own goodwill and reputation in the market and the firm being the proprietor of the brand name, is being used by the firm from the year1998.

3. It is further stated that such being the case, through reliable sources it came to their notice that the brand name is in use by the respondent and on search it is confirmed that the respondent has registered the brand name in its favour showing user as 26.12.2003 and it is very clear from the records that the respondent is registered under the Bombay Shops and Establishment for restaurant and eating house and not as a pub or bar. The grounds on which the mark is sought to be removed from the register are, inter alia-

(a) that the applicant are a prior user of the brand name and as such they are having an edge over any other subsequent user;

(b) that, since the brand name ‘PURPLE HAZE is a popular one and there had been many write ups in leading magazines of India, it is easier for the Hilltop Leisures and Purple Haze-Kerela to infringe the same by using the exactly similar name and reregistering with the Trade Marks authority under class 42 only in order to protect its ill intentions of infringement;

(c) that the brand name ‘PURPLE HAZE is already a registered one in class 32 of the Trade Marks Act,1999, hence the applicant is having edge over any other user of the brand name;

(d) that it is evident that the respondent, which are well aware of the popularity of the Purple Haze in Bangalore, with an ill motive to make wrongful gains by confusing the Mumbai customers, who may/are under the impression that it is an extension chain of Bangalores PURPLE HAZE and by using the deceptively similar name the respondent infringed the brand name ‘PURPLE HAZE which is penal offence and liable to strict legal action as per the provisions of law.

4. The respondent, a partnership firm which is the registered proprietor of the trade mark PURPLE HAZE under No. 1257558 in class 42, filed the counter-statement to the rectification application denying the material averments made in the application. Mr. Deshbandhu Khurana, a partner of the respondent, on 8.2.2008 filed reply affidavit to the stay application. The respondent partnership firm is stated to be engaged in the business of running bars, cafes, catering and bouquet services in Mumbai. The respondent states that Mumbai is the commercial and entertainment capital of India which is well known for its entertainment and night life in the country and where especially in the last few years parties and bar activities have increased enormously not only amongst the youngsters but even amongst the rich and famous connected in various fields. In order to take advantage of the time and growing business activities in this field, the respondent decided to open a new lounge and retro bar with attractive, modern, funky and catchy interior and having a fancy name for such bar. Accordingly, the respondent listed certain names, deliberated a lot and ultimately decided to adopt the mark PURPLE HAZE so as to have consonance with the colour of bars interior. This bar is situated at highly up-market, reputed and celebrated area where several celebrities connected with entertainment and other industries are having their residences and thus the respondent commenced their activity of bar under that name from March, 2004 by registering their bar under the Bombay Shop and Establishment Act, 1948.

5. It is stated that the respondent noticed extensive response in the shortest possible time and such response exhibited to the respondent by the media coverage in all the reputed newspapers, web sites and magazines which continue to publish about activities and happenings at PURPLE HAZE and the newspapers of national repute such as MID DAY, BOMBAY TIMES, Pioneers reporting Page 3 happenings published articles and news updates in and about the PURPLE HAZE. Firstly, MIDDAY wrote about the bar with photographs of its unique interiors, its activities, overall capacity, ambience, its food, prices, interview of one of the partners of the respondent and thereafter, series of articles were published by the print media like MID DAY, THE BOMBAY TIMES, THE MAHARASHTRA HERALD, THE AFTERNOON, TODAY- DELHI, MUMBAI NEWSLINE. The most reputed magazines, INDIA TODAY, DEBONER, ELLE, TIME OUT also wrote about PURPLE HAZE. Besides this, it is claimed that there is a wide coverage of talk about respondents PURPLE HAZE by the electronic media [NDTV, SAHARA NATIONAL, ZEE NEWS, CTV (Hindi, Marathi and Gujarati) and DIABOLICAL ON TRENDZ] and these wide media coverage is an evidence of wide spread popularity it has commanded in a short time not only in Mumbai but throughout the country. Some of the most reputed names in the film industry are visiting along with their wives and glorifying the PURPLE HAZE. Due to happening by the celebrities and media coverage, huge reputation is earned and enjoyed by the respondent and the sales of food and beverages of the PURPLE HAZE bar is continuously growing.

6. The respondent claimed that in order to obtain statutory protection, they applied for registration of the trade PURPLE HAZE in class 42 in respect of food and drink services, restaurant, bar services, café, cafeterias, snacks bar, catering and bouquet services; the said application was advertised in the Trade Marks Journal No. 1326 (1) dated 27.12. 2004 and having received no opposition the same was eventually registered in their name. The respondents trade mark is claimed to be the most distinctive trade mark in the related field. The respondent has submitted that they strongly deny that by adopting and using the name PURPE HAZE they have in any way intended to confuse people of Mumbai; the applicant has failed to show any established reputation and goodwill for their pub which can lead to suggest that its use will cause confusion and/or deception and in fact the respondent failed to understand as to how they could confuse people of Mumbai when the applicants Bangalore pub is never found to be extraordinarily famous for any reason whatsoever while the respondents bar PURPE HAZE has been in limelight since its opening not only in Mumbai but whole of the country. It is submitted that the applicant must be aware that the print media of repute while covering report about the respondents PURPLE HAZE also did not find any confusing similarity. Further, it is a common understanding and known fact in India that the whole country follows the Mumbai night life and happenings and not of Bangalore and it is remotely unimaginable that one of the Bangalores pubs names is copied by the Mumbai bar for gaining some advantage over a brand name because of the simple fact that brands of pubs and bars are being famous in Mumbai which is copied by others in other cities. That apart, Mumbai is a capital of entertainment and night life and such bars are the happening point for several national celebrities which are watched and followed by millions in all over the country. Hence, the question of deliberate adoption of name PURPLE HAZE by the respondent is absolutely baseless, misconceived and frivolous.

7. It is stated that the applicant being in the pub business since 1998 must be watching and keeping themselves updated with the development in pub and bar business and when so much is written and covered by various local and national print and electronic media about the respondents PURPLE HAZE, the applicant deliberately neglected or ignored it and took no action against the respondent and thus the applicant is liable for acquiescence, delay and latches and the present application is liable to be rejected at the threshold. The respondent has claimed that no appropriate ground as contained in section 57 of the Act is mentioned in the application by the applicant. Placing reliance upon the decision in the case of Kamala Devi vs. Palani Mudaliar and Co., 2004 (29) PTC 589 (IPAB), the respondent has submitted that the application on hand is liable to be rejected in the light of said decision of this Appellate Board. Though not admitted but even if accepted for the sake of argument, the claim of applicants PURPE HAZE ROCKING PUB is operating prior to respondents adoption of PURPLE HAZE, the respondent having regard to the reasons specified and supporting evidence produced by them are entitled for registration as honest concurrent use under section 12 of the Act and the Appellate Board may, for the purpose of maintaining the purity of register, exercise its discretion against the applicant. The respondent has submitted that considering the facts and circumstances of the case, it is just, necessary and proper that this Appellate Board should refuse and reject the application, which will not only be in the interest of the registered owner but also in the interest of public.

8. The rectification application along with the stay application came up before us for hearing on 5.2.2009 when Shri M. Y. Raghvendra, Advocate appeared for the applicant but none appeared for the respondent. When the application for stay came up for hearing on 4.4.2008, none appeared for the respondent despite service of notice for hearing effected on 11.3.2008 on M/s. Aditya and Associates, hence the matter was adjourned with observation that if the respondent fails to appear on the next date of hearing, the matter will be heard ex parte and there will be no further adjournment. The counsel for the applicant was directed to convey the observations of the Appellate Board to the counsel for the respondent, M/s. Aditya and Associates. Notice for hearing for 5.2.2009 has well in advance been received by M/s. Aditya and Associates but the notice for hearing addressed also to the respondent has been received back undelivered with the remark “Left”. Hence, the rectification application and application for stay were heard ex parte. Learned counsel for the applicant argued at length on the lines of the averments made in the application and furnished written arguments of the applicant.

9. Learned counsel for the applicant submitted that the applicants pub got attention, noticed and looked up from every corner of the nation and in a span of one year the brand name went on to become one of the most happening pubs in the cities night life and made its way to be listed as one among the top pubs in India, which is evident from the fact that the top magazine, India Today in its special edition of September - October 1999 under the caption top bars in India at pages 103 - 113 wrote about 13 most happening bars in India and what makes them so. While taking us to the copy of the magazine on record, he submitted that the Purple Haze's popularity can be ascertained with the fact that the magazine has listed one among the top bars and described the Purple Haze as “the most happening place in the Bangalore pub-scene” and it further wrote that “every evening the management is constrained to turn away 30-40 couples" which is the example of the popularity of the pub. Learned counsel went on to submit that again in the year 2000, Indias popular design magazine "Inside Outside" in its March edition, at pages 134 to 139, wrote about Purple Haze describing "Purple Haze in Bangalore, has pulsating, addictive ambience that forces even compulsive pub hoppers to linger over their drinks" along with photographs of the bar and giving inch by inch details of its world class interior design and in July- September edition of the magazine "Upper Crest", at pages 89-90, it described Purple Haze as one of the most happening night spot, penning down that Purple Haze is packed to capacity every night of the week, with or without an event happening" speaks volumes about it and its status. Further, by taking us to document numbers 10 to 12, he submitted that the popularity of Purple Haze in one or the other way went on to be described in daily newspapers as "House of Rock" in the Indian Express, "Zapp your Senses" in Bangalore times edition of Times of India, dated, 28.02.2002 and "For music Junkies only" in City express edition of the Indian Express dated, 16.04.2002. Learned counsel drew our attention to certain photographs of hoardings and also submitted that the MIDDAY, a daily newspaper, launching its daily issue in Bangalore gave an advertisement in almost all roads in Bangalore and it mentioned some of the landmarks which are famous or made Bangalore famous, such as Lalbagh, Hot coffee, etc. it recognized the popularity of Purple Haze and it listed Purple Hazes name along with Lalbagh and Bluetooth technology for which Bangalore is most popular.

10. Learned counsel submitted that the applicant has invested huge amounts of money for its advertisements in daily newspapers like Times of India, Indian Express, etc., of not only in Bangalore city edition but also in other cities newspapers editions, about its weekend events and the brand name has its own goodwill and repute in the market right from the year 1998 and the brand name is also registered trade mark PURPLE HAZE ROCKIN PEOPE as of 30.11.1999 in class 32.

11. The next submission made is that the respondent has obtained registration of the brand name "Purple Haze" with the knowledge that there is a registration of name purple Haze (in class 32) and also there exists a pub in such a name in Bangalore which is very popular and reputed. It was submitted that from the Exhibit-A produced by the respondent, it is very clear that the respondent firm is registered under the Bombay Shops and Establishments Act, 1948 for a Restaurant and not as a Pub or Bar as alleged by them and the yearly renewal also clearly show that till the date of this application it is for Restaurant and not for Pub or Bar as they are claiming in their counter-statement and the respondent has not rebutted this with necessary documents which clearly shows that it is illegal Pub or Bar having no authority or sanction by the concerned authority. He pointed out that in the entire counter-statement, the respondent has highlighted only one fact that the Mumai night life is most famous than night life of any other city in India and that Mumbai is copied everywhere and went on to state that Mumbai will not copy any thing from anywhere. It is submitted that the matter under dispute here is not whether Mumbai copies other cities or other cities copies Mumbai, the only question needs to be determined is that whether or not the brand name PUPRLE HAZE is prior adopted and used and made well know throughout India by the applicant and that whether the applicant is entitled to the relief claimed. It is most obviously notable that the applicants pub which has been voted by the top lifestyle magazine before year 2000 itself as one among the top Pubs and Bars is well known among the contemporary business of the similar nature in India. It is also submitted that the present application for cancellation is solely on the ground of its goodwill and reputation and it is an undisputed fact that the applicant is the prior and continuous user of the brand name since form the year 1998 for running a pub/bar and the applicants brand name as a part of intellectual property should be the property of prior user irrespective of the fact that whether it is applied at the earlier or later stage of its use. It is further submitted that, the applicant is a registered trade mark owner under class 32 is also to be considered in determining the rights of prior user against any subsequent user as the same will be known to the respondent, when search is applied before this authority.

12. Learned counsel further submitted that the respondent deliberately fails to highlight the proviso of section 47 of the Act by contending that none of the grounds for rectification under section 57 of the Act are applicable in this matter. The Respondent is put to strict proof with documents and moreover they are now seeking protection under section12 of the Act, which is not at all the case. The respondent is not a honest and concurrent user as claimed by them. It is worth noting that when a pub is voted as one of the top pubs in India by a leading magazine, anyone in the same line of business or intending to start a business in the same line will have a good knowledge of the fact of leading brands or names.

13. After having heard the counsel, we have to determine whether the applicant is a person aggrieved and has locus to file the present application. Any person may file an opposition but an application for rectification may be filed only by a person aggrieved. The statute provide that an application for removal of a trade mark from the Register of Trade Marks or rectification of Register may be filed by the ‘person aggrieved within the meaning of section 47 or section 57 of the Act. The Appellate Board or the Registrar of Trade Marks, before directing removal of the registered trade mark, must be satisfied that the application is made by the person aggrieved and the onus to prove that the application is by the person aggrieved is on the applicant. The Honble Supreme Court in the case of Hardie Trading Ltd. and Another vs. Addisons Paint and Chemicals Ltd., (2003) 11 Supreme Court Cases 92 has at paragraphs 26and 27 observed as under:-

‘26. Thus before the High Court or the Registrar directs the removal of the registered trade marks they must be satisfied in respect of the following:

(1) that the application is by a "person aggrieved";

(2) that the trade mark has not been used by the proprietor for a

continuous period of at least five years and one month prior to the date of the application;

(3) there were no special circumstances which affected the use of the trade mark during this period by the proprietor.

27. The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special circumstances is on the proprietor of the trade marks. These conditions are not to be cumulatively proved but established seriatim. There is no question of the third condition being established unless the second one has already been proved and there is no question of the second one even being considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant.

The grievance must be substantive grievance; however, a mere fanciful or sentimental grievance does not make a person aggrieved under section 57 of the Act. Where a person shows himself to be a person aggrieved by making necessary statements in the application fore rectification in that behalf, such person would obviously have the locus for the purpose for making an application for rectification. The High Court of Bombay in the case of Netkumar K. Porwal vs. Mohanlal Hargovinddas, AIR 1963 Bom 246 observed as under:-

“The grievance of the applicant a case of rectification must be substantial and a fanciful suggestion of a grievance does not obviously insufficient. A mere sentimental grievance does not make a person aggrieved within the meaning of this section. Where a person shows himself to be a person aggrieved by making necessary statements in the application fore rectification in that behalf, such person would obviously have the locus for the purpose of making an application under section 56 of the Trade and Merchandise Marks Act, 1958, although at the hearing of the application he may not eventually be found to be such person, e.g. by his conduct, as in this case, in withdrawing his opposition to the application for registration of a trade mark and thereby allowing the trade mark to be registered without any objection from him.”

The applicant is required to show the locus standi to be heard and to state or give reasons as to how the applicant is a person aggrieved to seek removal of the trade mark of the registered proprietor from the Register. In the present case, the applicant has neither specifically claimed to its being aggrieved person nor given any reason therefor in the application. The applicant must show that because of existence of the impugned trade mark of the registered proprietor it could not do a thing lawfully which it could otherwise do or must have shown some cogent reason that may be available to it in the present case. Nothing is shown which the applicant could not do because of the impugned mark which it could otherwise do lawfully. Though the present application is filed under section 47/57/125 of the Act, no case of removal of impugned trade mark from the register and imposition of limitations on ground of non-use has been made out by the applicant and as such the grounds specified under section 47 of the Act is not applicable. Since the provisions of section 47 of the Act is not applicable to the present case, there is no question of discharging the onus by the applicant in relation to person aggrieved and non-use of impugned mark not arise [see the conditions mentioned in paragraph 26 of decision of Supreme Court in Hardie Trading Ltd.s case (supra)]. The only provision available to the applicant under which it could claim to be person aggrieved is section 57 of the Act. The applicant has not made any whisper to in the entire application to claim to be the person aggrieved under section 57 of the Act. The respondent has in paragraph 13 of the counter-statement submitted that none of the grounds for rectification under section 57 are applicable in this matter. In view of the above, we are of the opinion that the applicant has failed to show that it is the person aggrieved and has locus for the purpose of filing the present application for rectification. Having formed this opinion, we do not think it is necessary to go into other grounds under which the present rectification application is filed.

14. The result is that the present application, having not filed by the person aggrieved, is dismissed. Since the application is dismissed, the miscellaneous petition for stay does not survive. There is no order as to costs.