In a trademark infringement and passing-off suit filed by M/S. Cothas Coffee Co. (“Cothas Coffee”) against M/S. Cotha Associates and others (collectively “the Defendants”), the XVIII Additional City Civil Court, Bengaluru, ruled in favor of Cothas Coffee, granting a permanent injunction restraining the Defendants from using the name “COTHA” in connection with their coffee business.
Cothas Coffee, a partnership firm, claimed that the Defendants, former partners of the firm, violated a retirement deed executed on December 23, 2013. Under this deed, the Defendants had relinquished all rights, interests, and goodwill associated with the firm’s trademark “COTHAS COFFEE” in return for a settlement of ₹11.74 crore. Despite this agreement, the Defendants established a new firm, M/S. Cotha Associates, and sought to use the trademark “COTHA,” phonetically and visually similar to “COTHAS COFFEE,” for their coffee business.
The Plaintiff alleged that this conduct infringed their registered trademark and caused potential consumer confusion. Evidence submitted included trademark certificates, financial records demonstrating the Plaintiff’s substantial goodwill, and opposition filings against the Defendants’ trademark applications. The Defendants argued that “COTHA” was a family name and claimed protection under Section 35 of the Trade Marks Act, 1999, which allows bona fide use of personal or business names.
The Court found that the Defendants failed to prove the bona fide use of “COTHA” as their family name, as required under Section 35. It emphasized that adopting a deceptively similar mark constituted infringement, as the Defendants had agreed not to engage in competing coffee businesses or use the trademark “COTHAS COFFEE” post-retirement. The Court also noted that the Defendants’ trademark applications for “COTHA” had been abandoned following opposition by the Plaintiff.
In its judgment, the Court granted a permanent injunction preventing the Defendants from using “COTHA” or any deceptively similar marks in connection with coffee-related goods or services. The relief sought to restrict the Defendants from running competing businesses until December 23, 2016, was deemed infructuous due to the lapse of the agreed period.
Citation: M/S. Cothas Coffee Co. v. M/S. Cotha Associates, O.S.No.5165/2015 (XVIII Add’l City Civil Ct., Bengaluru, Oct. 1, 2024). Available at: https://indiankanoon.org/doc/61392709/
Authored by Gaurav Mishra, BananaIP Counsels
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