IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 01.08.2011 CORAM THE HON'BLE MRS. JUSTICE R.BANUMATHI and THE HON'BLE MR. JUSTICE B.RAJENDRAN O.S.A.Nos.199 to 201 & 217 to 219 of 2011 O.S.A.Nos.199 to 201 of 2011: Thalappakattu Biriyani and Fast Food temporarily called as "Chennai Rawther Thalappakattu Biriyani" rep by its Partner No.32, Jawaharlalr Nehru Road, Koyambedu Round Tana, Chennai-600 107. ... Appellant Vs. M/s.Thalappakatti Naidu Ananda Vilas Biriyani Hotel, rep by its Partner N.Dhanabalan No.15, East Car Street, Dindigul. .. Respondent O.S.A.Nos.217 to 219 of 2011: M/s.Thalappakatti Naidu Ananda Vilas Biriyani Hotel, rep by its Partner D.Nagasamy No.15, East Car Street, Dindigul. Vs. Thalappakattu Biriyani and Fast Food temporarily called as "Chennai Rawther Thalappakattu Biriyani" rep by its Partner No.32, Jawaharlalr Nehru Road, Koyambedu Round Tana, Chennai-600 107. ... Respondent Original Side Appeal is filed under Order XXXVI Rule 1 of the Original Side Rules read with Clause 15 of the Letters Patent against the common order in O.A.Nos.48 & 49 of 2011 in C.S.No.203 of 2007 and O.A.No.54 of 2011 in C.S.No.32 of 2011. https://hcservices.ecourts.gov.in/hcservices/ For Appellant in : Mr.Arvind P.Datar, OSA 199 to 201/2011 Senior Counsel and Respondent in for OSA 217 to 219/2011 Mr.A.A.Mohan For Respondent in : Mr.R.Muthukumarasamy, OSA 199 to 201/2011 Senior Counsel and Appellant in for OSA 217 to 219/2011 Mr.Jinasenan COMMON JUDGMENT R.BANUMATHI,J Challenge in these appeals is the common order of learned Judge in O.A.Nos.48 and 49 of 2011 in C.S.No.203 of 2007 and O.A.No.54 of 2011 in C.S.No.32 of 2011 restraining the Appellant-Defendant from using the mark "Thalappakattu" or any other mark deceptively similar to Plaintiff's mark "Thalappakatti" in any one of the restaurant opened after 19.11.2008 and that Defendant shall be entitled to use the same only in respect of four shops that were in existence as on the date 19.11.2008. 2. Plaintiff's predecessors late P.Nagasamy Naidu was carrying on business in the name and style of "Thalappakatti Naidu Ananda Vilas Biriyani Stall" and after the demise of P.Nagasamy Naidu, N.Dhanabalan, son of P.Nagasamy Naidu, father of the Plaintiff continued the business in the name of "Thalappakatti Naidu Ananda Vilas Biriyani Hotel" since 1978 and carried on business as Proprietor. The said business was converted into partnership firm in April 2002 by inducting the Plaintiff who is the son of Dhanabalan and grandson of late Thalappakatti P.Nagasamy Naidu as partner. The food preparations made and served in "Thalappakatti Naidu Biriyani Hotel" have acquired enormous popularity throughout Tamil Nadu and other States by virtue of extensive tourist flow through Dindigul Town as it is the transit point for Kodaikanal Hill Resorts and temple town Madurai and business travellers. 3. Case of Plaintiff is that the trade mark and trading style "Thalappakatti Naidu Biriyani Hotel" has acquired the secondary meaning to denote and connote the product of the Plaintiff which assures to the public a unique taste and standard in the food preparations. The name "Thalappakatti" is so popular that it has become the household name throughout Tamil Nadu. Plaintiff has also spent huge amount for propagating the mark "Thalappakatti". Excepting the Plaintiff no one has any right to use the trade mark and trading style. https://hcservices.ecourts.gov.in/hcservices/ 4. Defendant has commenced adopting the identical or deceptively similar trade mark and trading style "Thalappakattu" in respect of their hotel business. In order to deceive the general public and to make them believe the food preparations served at the Defendant place has the connection with Plaintiff's hotel. Defendant's has no manner of right to adopt and use the offending trade mark or trading style "Thalappakattu". In view of the extensive popularity and reputation of the trade mark and trading style "Thalappakatti Naidu Biriyani Hotel", a negligible and irrelevant change in the last letter of the name both in Tamil and English would make no difference and deceive the general public and make them to think and believe that the food served by the Defendant is from the Plaintiff. Therefore, Plaintiff firm had filed C.S.No.203 of 2007 for permanent injunction restraining the Defendant, his men, agents or anyone claiming under them from infringing or passing off the trade mark or trading style "Thalappakatti Naidu Biriyani Hotel". Along with the suit, Plaintiff also filed O.A.Nos.298 and 299 of 2007 seeking for interim injunction. 5. Defendant resisted the applications contending that Defendant has established the business and gained extensive popularity among the public in respect of third trade mark "Thalappakattu Biriyani & Fast Food". It is further alleged that the word "Thalappakattu" means turban which is the common name and therefore, Plaintiff cannot claim exclusive right over the name "Thalappakatti". Defendant has further alleged that without choosing to co-operate with the trial, Plaintiff has come out fresh application which is devoid of merits. According to Defendant, Defendant is using entirely different colour combination "yellow" and using the name "Chennai Rawther Thalappakattu Biriyani" with a holy number of Mohamed "786'. Insofar as the registration of trade mark, Defendant has alleged that Plaintiff has managed to collude with the concerned officials of the Trade Mark Registry and has illegally obtained the registration of the trade mark and Defendant has preferred an appeal before the Appellate authority and the same is pending adjudication. 6. After elaborate consideration of the facts and law on 07.11.2007, learned single Judge found that Plaintiff is the prior user who had established the usage of the name "Thalappakatti Naidu Biriyani Hotel" atleast from 1989 although there are overwhelming records to show that Plaintiff and their predecessors have been using the same from 1957. Learned Judge further found that Defendant in the suit had commenced their business only in 2005 and on the basis of the materials produced held that the Plaintiff has proved that they developed the goodwill and reputation and on those findings, learned Judge granted injunction and allowed O.A.Nos.298 and 299 of 2007 in C.S.No.203 of 2007. 7. Alleging that there is disobedience of the order, Plaintiff had filed Contempt Petition in C.P.No.90 of 2008. In the mean while, https://hcservices.ecourts.gov.in/hcservices/ being aggrieved by the grant of injunction, Defendant filed appeals in O.S.A.Nos.223 and 224 of 2008 against the orders passed in O.A.Nos.298 and 299 of 2007. Division Bench after going into merits of the case and on the basis of the suggestion given by the Defendant, disposed of both the appeals [O.S.A.Nos.223 and 224 of 2008] with an observation that Defendant is permitted to change the present name in its name boards, wrappers as well as pamphlets to "Chennai Rawther Thalappakattu Biriyani" purely as an 'interim arrangement' without prejudice to the contention of both the parties in the suit and directed the single Judge to dispose of the suit [C.S.No.203 of 2007) on merits within a period of three months. 8. Case of Plaintiff is that Defendant filed written statement with an enormous delay and that the delay was condoned with the cost of Rs.2000/- on 17.06.2009. After framing of Issues, trial commenced and Plaintiff has alleged that Defendant did not co-operate for early disposal of the suit and P.W.1 continues to be in the box for more than ten months. In the mean time, Defendant is alleged to have expanded its business by opening new branches in Chennai city in various places. The Defendant is also said to have hosted the website titled www.thalappakattu.com in the Internet which according to Plaintiff would amount to clear contempt of the order passed in O.S.A.Nos.223 and 224 of 2008. 9. In the mean while, in order to protect the trade mark and trading style, Plaintiff had applied for registration of the trade mark "Thalappakatti Biriyani Hotel" on 23.12.2005 in Application No.1408388. Defendant has also applied for registration of trade mark "Thalappakattu Biriyani & Fast Food" by its application No.1385141 before the Deputy Registrar of Trade Marks, Government of India, Chennai. After considering the submissions of both sides, the Deputy Registrar of Trade Marks, Government of India, Chennai by its order dated 22.09.2010 has directed registration of the trade mark "Thalappakatti Biriyani Hotel" of the Plaintiff and application for registration of the trade mark by the Defendant was rejected. 10. Based on the subsequent developments that Plaintiff had obtained registration of the trade mark, Plaintiff had filed modification Petition to modify the order passed in O.S.A.Nos.223 and 224 of 2008 restraining the Defendant from using the trade mark "Thalappakattu". Modification Petition came up before the Division Bench on 06.01.2011 and after hearing the arguments, the Division Bench permitted the Plaintiff to withdraw the modification Petition and granted liberty to the Plaintiff to file appropriate application before the single Judge. Stating that Plaintiff has registration of trade mark "Thalappakatti Biriyani Hotel" and that Defendant is infringing its registered trade mark, Plaintiff has filed fresh infringement suit in C.S.No.32 of 2011. In that suit, Plaintiff had also filed application O.A.No.54 of 2011 seeking for temporary injunction restraining the Defendant from in any manner infringing https://hcservices.ecourts.gov.in/hcservices/ the Plaintiff's trade mark and trading style "Thalappakatti Biriyani Hotel". Plaintiff had also filed two applications O.A.Nos.48 and 49 of 2011 in C.S.No.203 of 2007 seeking for injunction restraining the Defendant from using the trade mark "Thalappakatti Biriyani Hotel" by using deceptively similar mark and also from opening any new outlets infringing the trade mark "Thalappakatti Biriyani Hotel" by using the offending trade mark "Thalappakattu" or any other mark which has similar or in any way deceptively similar to the Plaintiff's registered trade mark. 11. Resisting both O.A.Nos.48 and 49 of 2011 filed in C.S.No.203 of 2007 and application in O.A.No.54 of 2011 filed in the infringement suit [C.S.No.32 of 2011], Defendant has filed counter contending that Defendant is the prior user and registration of trade mark will not have any bearing on the Defendant who is continuous user of the name "Chennai Rawther Thalappakattu Biriyani". Defendant further alleged that Plaintiff has no locus standi whatsoever in respect of the trade mark either "Thalappakattu" or "Thalappakatti" as the mark "Thalappakattu" is developed and promoted by Defendant and gained extensive popularity in respect of the trade name "Thalappakattu" and only thereafter, Plaintiff has made an attempt to utilise the goodwill of the trade name "Thalappakatti" and started running their hotel business using the trade name "Thalappakatti". Defendant averred that Plaintiff has submitted their application before the Trade Mark Registry belatedly only after the Defendant submitted their application in September 2005. As against the order of the Deputy Registrar of Trade Marks dated 22.09.2010, Defendant preferred an appeal before the Intellectual Property Appellate Board and the same has been numbered as Application No.OA/58/2010/TM/CH/9532 and is pending adjudication. When that being so, Plaintiff cannot take advantage of the erroneous, illegal and wrong order passed by the Deputy Registrar of Trade Marks granting registration of trade mark infavour of the Plaintiff. 12. Further according to Defendant, the order dated 19.11.2008 passed in O.S.A.Nos.223 and 224 of 2008 is the consent order passed by the Court whereby as interim arrangement, Division Bench has permitted the Defendant to use the name "Chennai Rawther Thalappakattu Biriyani". Defendant alleged that Plaintiff without choosing to co-operate with the trial of the suit in C.S.No.203 of 2007 has come out with fresh applications [O.A.Nos.48 and 49 of 2011] with a malafide intention and there is no bonafide. 13. Insofar as the infringement suit in C.S.No.32 of 2011 and the application in O.A.No.54 of 2011 thereon, Defendant has filed counter stating that Plaintiff has illegally obtained registration of trade mark which is under challenge before the Intellectual Property Appellate Board. Plaintiff has not made out any prima facie case or balance of convenience in his favour. On the other hand, Defendant being the prior user of the name and style "Thalappakattu Biriyani https://hcservices.ecourts.gov.in/hcservices/ Hotel" for several years, any interim order would affect the Defendant's right, trade and business. Defendant had also raised objection as to the maintainability of infringement suit [C.S.No.32 of 2011] filed by the Plaintiff. 14. Learned Judge has heard the applications filed both in the old suit [C.S.No.203 of 2007] and injunction application filed in C.S.No.32 of 2011. Upon consideration of rival contentions, learned Judge held that at the time when the Division Bench has passed the orders on 19.11.2008 [O.S.A.Nos.223 and 224 of 2008] on the consent of both parties, Defendant had only four shops and therefore, the consent given by the Plaintiff and the "interim arrangement" could be taken to be limited only to the circumstances prevailing at that time. Learned Judge further held that in view of the fact that the consent order was purely by way of "interim arrangement" and the same would cover only so far the shops then in existence [4 shops] and it would not go beyond and Defendant cannot seek protection for the outlets started after 19.11.2008. Insofar as the contention with regard to infringement suit [C.S.No.32 of 2011], learned Judge rejected the contention of the Defendant that infringement suit is barred under Or.2, Rule 2 C.P.C. Learned Judge held that Plaintiff is the registered Proprietor of the trade mark and that he was the prior user of the trade mark far ahead in point of time then used by the Defendant, learned Judge held that Plaintiff has established prima facie case. Pointing out that the consent given by the Plaintiff before the Division Bench was purely by way of temporary arrangement which has been misused by the Defendant by opening the outlets. On those findings, learned Judge allowed the applications O.A.Nos.48 and 49 of 2011 in C.S.No.203 of 2007 and granted injunction prohibiting the Defendant from using the name of "Thalappakattu" or any other name deceptively similar to Plaintiff's registered trade mark in the shops/restaurants opened after 19.11.2008. 15. Heard Mr.Arvind P.Datar, learned Senior Counsel appearing for Appellant-Defendant and Mr.R.Muthukumarasamy, learned Senior Counsel appearing for Respondent-Plaintiff. 16. Learned Senior Counsel Mr.Arvind P.Datar has raised the contention mainly interalia focussing on the following:- ●Because order dated 19.11.2008 was passed by the Division Bench and the single Judge could not have gone into merits of the matter; ●Impugned order is contrary to the statutory provisions of Trade Marks Act; ●Irregularities in Plaintiff's obtaining registration of the trade mark. ●In the infringement suit, there was no consideration of deceptive similarity or identical features and other principles for grant of injunction. https://hcservices.ecourts.gov.in/hcservices/ 17. Mr.R.Muthukumarasamy, learned Senior Counsel appearing for Respondent-Plaintiff would contend that the mark "Thalappakatti" being predominant part of the trade mark and use of the essential part or predominant part of trade mark is an act of infringement. It was further submitted that when the Division Bench passed an order in O.S.A.Nos.223 & 224 of 2008 dated 19.11.2008, only four shops were in existence and the order of Division Bench could utmost extend only to the said four shops in existence on 19.11.2008 and the learned Judge rightly granted injunction restraining the Defendant from in any manner using the infringing mark "Thalappakattu" or any other name deceptively similar. 18. Order of Division Bench – In O.A.Nos.298 and 299 of 2007 in C.S.No.203 of 2007, learned Judge granted temporary injunction on the ground that Plaintiff is the prior user of the trade mark and trading style on the finding that Plaintiff had established their long prior use of the trade mark with the result, the product in which they deal with viz., "Biriyani" prepared and served by the Plaintiff had acquired a great reputation in the market. Such a finding is very clear that the importance as to the word "Thalappakatti" refers to the owner who was wearing turban even 50 years ago and an article was published even in the year 1996 regarding the same. According to Plaintiff, they are the long prior user of the trade name inasmuch as they commenced the business from 1990 onwards and even much earlier from 1952 much prior to the commencement of the business by the Defendant. Learned Judge considered that at that point of time, the ultimate test as to who is the first user in the market. Ultimately, it was concluded that the Plaintiff had established that they are in the field long before the Defendant established their business. The Plaintiff also established that they acquired reputation in the market and therefore, a prima facie case was found in their favour and the application for injunction was allowed by the learned single Judge. 19. Learned Senior Counsel for Appellant contended that the order of single Judge in O.A.Nos.298 and 299 of 2007 in C.S.No.203 of 2007 came to be challenged in O.S.A.Nos.223 and 224 of 2008. Learned Senior Counsel would contend that without going into the merits of the case and on the basis of the suggestion made by the learned Senior Counsel for Defendant, Division Bench disposed of the appeals with an observation permitting the Defendant to change their present name in its name boards, wrappers as well as pamphlet to "Chennai Rawther Thalappakattu Biriyani" as an 'interim arrangement'. Since the controversy revolves upon the order of Division Bench, we may usefully refer to the relevant portion of the order of Division Bench which reads as under:- "3. In the course of the hearing, it was suggested by us that any decision on the relative merits of the contentions of either party is likely to prejudice the https://hcservices.ecourts.gov.in/hcservices/ contention of other party in dispute and therefore, it would be more appropriate to make the interim arrangement without prejudice to the right of both the parties. Accordingly, it has been suggested by the learned senior counsel for the appellant that as an interim measure, the appellant shall use the expression "Chennai Rawther Thalappakattu Biriyani" in the place of the present name and all such letters will be of equal prominence. 4. The learned senior counsel for the respondent stated that this order should only be considered as an interim arrangement and without prejudice to the contentions which have been raised by the respondent/plaintiff in the suit. 5. Accordingly, instead of going into the merits of the contention of either of the parties, we dispose of the appeals with an observation that the appellant will be permitted to change the present name in its name boards, wrappers as well as pamphlet as mentioned below in English and in Tamil and such letters will be of equal prominence:- "CHENNAI RAWTHER Thalappakattu BIRIYANI" @brd;id uht[j;jh; jyg;ghfl;L gphpahzp@ 6. It is made clear that this is purely an interim arrangement without prejudice to the contention of both the parties in the suit as well as before the trade mark Registry. The appellant is directed to effect necessary changes in the name in the Board, wrappers, pamphlets etc., on or before the 3nd of this month. 7. Keeping in view the urgency expressed and the nature of dispute involved in the case, we request the learned single Judge to dispose of the suit on merits, as expeditiously as possible, preferably within a period of three months." 20. It is pertinent to note that though the Defendant took the matter on appeal before the Division Bench, the Division Bench did not set aside the findings rendered by the learned single Judge which is one of the vital factors to be taken into consideration. The Division Bench only stated that taking into consideration the concession given by the learned Senior Counsel for Defendant, as an 'interim arrangement', without prejudice to the contention of the parties, the Defendant shall use the word "Chennai Rawther Thalappakattu Biriyani". 21. The argument of learned Senior Counsel for Defendant that the Division Bench order empowered them to open new outlets under the name and style of "Chennai Rawther Thalappakattu Biriyani" cannot be sustained as the order of Division Bench was not one on merits, the Division Bench has not passed a considered order and it was only, as an "interim arrangement" based on the consent given by the counsel for the Plaintiff. Further, it was clearly stated that such an https://hcservices.ecourts.gov.in/hcservices/ "interim arrangement" will continue till the disposal of the suit and the suit was also directed to be disposed of within a period of three months. Under no stretch of imagination, it can be stated that the order of Division Bench would empower the Defendant to start new outlets in the name and style of "Chennai Rawther Thalappakattu Biriyani". In fact, in paras (6) and (7) of the order of Division Bench, it was clearly indicated that it was only an "interim arrangement" between the parties till the disposal of the suit. 22. Contention of Appellant is that "interim arrangement" does not in any manner prohibit the Appellant from opening further restaurants or restricts opening of the stores and while so, the learned Judge erred in saying that the order of Division Bench could be taken to be limited only to four shops then existing. It was further contended that the Division Bench permitted to change the name as "Chennai Rawther Thalappakattu Biriyani" and the learned Judge failed to appreciate that all such new outlets opened by the Appellant are in strict accordance of the order of Division Bench passed by consent and on the agreement and suggestion of the Respondent and therefore, use of the name "Thalappakattu" amounting to honest concurrent use and the learned Judge erred in over looking the obvious facts. 23. By a careful reading of the above order of Division Bench, the order discloses that "interim arrangement" was in pursuance of the suggestion made by the Court itself. Before the Division Bench, learned Senior Counsel for Plaintiff has submitted that any such "interim arrangement" is without prejudice to the contention of both the parties in the suit as well as before the Trade Mark Registry. In our considered view, the consent given by the learned counsel for Plaintiff could only be in the then prevailing situation; prevailing situation being that the Appellant was running only four shops. After the order of Division Bench [19.11.2008], the Appellant had opened nine more outlets/shops. 24. Though the Appellant claims that at the time of Division Bench passing the order on 19.11.2008, he had 13 outlets, the same was not pleaded in the counter filed by the Appellant in O.A.Nos.298 and 299 of 2007 in C.S.No.203 of 2007. In fact in Para (7) of the grounds of appeal in O.S.A.Nos.223 and 224 of 2008, the Appellant himself has stated as " ... that the Appellant has a tremendous business and started four outlets at Chennai." When the matter was heard and when that was the pleading and facts before the Division Bench in O.S.A.Nos.223 & 224 of 2008, learned Senior Counsel for Plaintiff could not have given consent for more than four outlets of the Appellant then in existence. Under no stretch of imagination, it can be contended that Plaintiff gave consent for innumerable outlets to be opened by the Appellant. https://hcservices.ecourts.gov.in/hcservices/ 25. We are of the view that the 'interim arrangement' was only with a view to ensure that running of the business of the Appellant in the then existing shops may not suffer. As rightly held by the learned Judge that the order of Division Bench [19.11.2008] could be limited only to the circumstance prevailing at that time i.e., four shops then in existence on 19.11.2008. 26. Whether the impugned order of learned single Judge amounts to varying/modifying the order of Division Bench - Mr.Arvind P.Datar, learned Senior Counsel for Appellant contended that the Division Bench permitted the Appellant to use the name "Chennai Rawther Thalappakattu Biriyani". Leaned Senior Counsel would further contend that the learned single Judge could not have gone into the matter and the order of learned Judge amounts to varying/modifying the order of Division Bench. The learned Senior Counsel for Appellant submitted that a paradoxical situation has arisen whereby the Division Bench has not restricted the user of the mark "Thalappakattu" for four shops and in variation of the same order, the learned single Judge restricts use of the name "Chennai Rawther Thalappakattu Biriyani" only for four shops. It was therefore mainly contended that the learned single Judge was not right in interpreting the order of Division