In this blog post, we dive into a recent intellectual property dispute that highlights the significance of protecting one’s trademarks and the consequences of infringing upon well-established marks. The case involves the plaintiff, owner of the well-known “SADDA PIND FLAVOURS. CELEBRATIONS. CULTURE” and “SADDA PIND Jewel of Punjab” marks associated with a popular Cultural Living Museum in Punjab, and the defendant, who operates a restaurant in Rajasthan. After the defendant ignored a cease and desist notice, the plaintiff filed suit in the Delhi High Court, alleging trademark infringement and passing off. The court’s analysis and judgment provide important insights into the importance of safeguarding one’s brand identity and the perils of attempting to capitalize on another’s goodwill.
Facts:
The plaintiff is the rightful owner of the device marks “SADDA PIND FLAVOURS. CELEBRATIONS. CULTURE” and “SADDA PIND Jewel of Punjab” which are well-known marks with respect to the plaintiff’s “Cultural Living Museum” a popular tourist spot in Punjab. The device marks are also registered under the Copyrights Act as original artistic works. The defendant runs a restaurant in Rajasthan and has been using the device marks “SADDA PIND” and “SADDA PIND HOTEL” which are identical to those of the plaintiff’s marks. As a first recourse, the plaintiff issued a cease and desist notice directing the defendant to discontinue the use of the marks. However, there was no positive reply from the defendant; hence, the plaintiff filed the present suit before the Delhi High Court, alleging infringement and passing off.
Contentions of the Parties:
The plaintiff claims that it has gained a significant amount of goodwill in its word and device marks in a short period of time. They also provided evidence of their annual turnover of ₹ 13.82 crores in 2021-22, and investment of ₹ 26,69,000/- in advertising and promotion during the same year. The plaintiff also argued that they have a vast social media presence which further adds to their reputation and goodwill. They also have registered the logo as an original artistic work under the Copyrights Act 1957. Therefore, the plaintiff argues that they possess legal rights to prevent infringement or passing off their marks under common law and statute.
The defendant contested the suit and argued that the similarity of mark was purely coincidental. It was further argued that the defendant filed an application to register the mark “5ADDA P1ND,” and not the plaintiff’s mark “SADDA PIND”. However, while the application was pending, the defendant stated that they changed their restaurant name to “The Punjab Village” and defendant’s mark no longer infringes the plaintiff.
Analysis and Judgment:
The court was dismayed that the defendant contested the allegation of trademark infringement despite the apparent similarity between the plaintiff’s registered and the defendant’s marks. This, in the court’s opinion, led to a waste of valuable court time and forced the plaintiff to go through unnecessary litigation. The court also opined that the defendant’s contention that they were not using the mark SADDA PIND but were using 5ADDA P1ND, was a weak argument. In the court’s opinion, the defendant, in fact, was using the mark SADDA PIND as the numeral 5 was written in a way that resembled the letter S.
Even after the defendant filed an affidavit stating that the name of their restaurant was changed to “The Punjab Village,” the court noted that the defendant intentionally adopted the infringing logo to ride on the goodwill of the plaintiff. This behavior of the defendant in the opinion of the court cannot be excused easily.
The court ordered a permanent injunction restraining the defendant from using the marks of the plaintiff and also ordered the defendant to remove from all its sites and listings all physical as well as virtual references to the plaintiff’s marks. The defendant was held liable to pay punitive costs of ₹ 2,00,000/-, payable by way of a crossed cheque/demand draft in favor of an NGO.
Sources:
https://www.livelaw.in/news-updates/delhi-high-court-restaurant-sadda-pind-mark-226034 and https://www.livelaw.in/pdf_upload/chs10042023sc6732022115522-467727.pdf
Image Source:
Image by timolina on Freepik
Authored by: Ipshita Bhattacharyya (Associate BananaIP Counsels) and Shuchita S (Intern)
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