- Apprentice Lawyer
- Legal Jobs
The Delhi High Court has given a prima facie view that there could be no monopoly over the use of the terms ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ as the same are generic in nature.
The interim order was passed by a Single Judge Bench of Justice Prathiba M Singh in a suit by one Praveen Kumar Jain, owner of a food outlet in Delhi’s Paharganj, seeking a permanent injunction to restrain another food outlet in the area from infringing its trademark, copyright passing off, rendition of accounts etc.
The trademarks over which the Plaintiff sought injunction were ‘CHUR CHUR NAAN’, ‘AMRITSARI CHUR CHUR NAAN’ and ‘PAHARGANJ KE MASHOOR AMRITSARI NAAN’.
The Plaintiff submitted that two of these marks, namely CHUR CHUR NAAN and AMRITSARI CHUR CHUR NAAN were even registered.
It was thus argued that the Plaintiff enjoyed exclusive rights under Sections 28 and 29 of the Trade Marks Act, 1999. It was further submitted that since the Defendants themselves had applied for the registration of the mark ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN’, they were estopped from claiming that the expression ‘CHUR CHUR NAAN’ was generic and descriptive.
The Plaintiff also claimed that he enjoyed an enormous reputation and was also covered on television channels. He was therefore entitled to an injunction owing to the extensive goodwill which it enjoyed.
The Defendants, on the other hand, argued that the trademarks of the Plaintiff were liable to be rectified as they lacked basic distinctiveness. It was submitted that there were a large number of outlets which used the name CHUR CHUR NAAN. Further, since the mark ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN’ was completely descriptive, no monopoly could be granted to such descriptive/generic expressions.
After hearing the parties, the Court stated that although there was no doubt that the Plaintiff had registrations for the marks, it would not confer exclusive rights as per Section 28 of the Act.
“The rights of a registered trademark holder are not absolute inasmuch as both Section 28 & 29 are subject to the exceptions carved out to infringement of registered trademarks.“
Thus, under section 35 of the Act if there was a bona fide description of the character or the quality of the goods or services, there could not be an infringement of a registered trademark, the court added.
Coming to the marks under scrutiny, the Court observed that expressions such as NAAN, CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN were similar to expressions such as Amritsari Kulcha, Malabar Parantha, Hyderabadi Biryani, Mangalore idli, etc. and other food products which were used in common parlance by the general public.
It further added that ‘CHUR CHUR’ was used in normal conversational language and there could not be any monopoly in respect of it. It also recorded that the registration of Plaintiff’s marks would not in any manner prevent the bonafide description of the character of the naan.
“The word ‘CHUR CHUR‟ merely means `crushed’ and `Chur Chur Naan’ means `Crushed Naan’ and nothing more. It is incapable of acquiring trademark signification. ‘CHUR CHUR‟ is a terminology which is used in normal conversational language and there cannot be any monopoly in respect of an expression such as ‘CHUR CHUR’.
The Plaintiff has obtained registration of the marks ‘CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN’, but the same would not in any manner prevent the bonafide description of the character of the naan which is crushed i.e. ‘CHUR CHUR NAAN’.”
The Court further recorded that the Defendants had been able to show, at least at the prima facie stage that various third parties were using ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ with various prefixes and suffixes.
It also recorded that the Defendants had shown that it was a common practice in the trade for food outlets to use names such ‘Chandni Chowk Ke Mashoor’, ‘Dilli Ke Mashoor’, ‘Delhi Walo Ki Mashoor’ etc.,
It thus concluded that there could not be any monopoly on the terms as the same were generic.
It nonetheless clarified that the order was prima facie in nature and was not an expression on the merits of the suit.
For the time being, in order to avoid any consumer deception and confusion, the Court has asked the Defendants to distinguish themselves from the Plaintiff’s outlet. They can, however, use the marks ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’.
Accordingly, the Defendants have agreed to change the name of their outlets to ‘PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN and ‘PAHARGANJ SETH KE MASHOOR AMRITSARI NAAN’.
“The entire name shall be used in the same font, colour and in the same style without giving any undue prominence to ‘CHUR CHUR NAAN’ or ‘AMRITSARI CHUR CHUR NAAN’. The Defendant Nos. 1 and 2 are permitted 30 days time to change over to the new names.”, the Court has directed.
The Court has also directed online food delivery app, Swiggy to file an affidavit listing the names of the outlets listed on their platform which use ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’.
The Plaintiff was represented by Advocates SK Bansal, Vinay Kumar Shukla and Kapil Kumar.
The Defendants were represented by Advocates Mandeep Kalra, Srijan Uppal, Nishant Shankar, Nikhil Jain and Isha Khurana.
The matter would be heard next on September 11.