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Rainforest Cafe, Inc. Versus Rainforest Cafe and Ors.

2001 (4) TMI 936 - DELHI HIGH COURT

S. No. 72 of 2000 - Dated:- 12-4-2001 - Vikramajit Sen, J. For Appellant: P. Chidambran, Sr. Adv For Respondents: A.M. Singhvi, Sr. Adv. JUDGMENT Vikramajit Sen, 1. This order shall dispose off is No. 341/2000 being the plaintiff's application for the issuance of ex-parte ad interim injunction under Rules 1 and 2 of Order XXXIX and I.A. 342/2000 filed by the plaintiff under Order XXVI Rule 9 and is 2310/2000 which is the corresponding application of the defendants filed under Rule 4 of the s .....

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d Along with it. Mr. Chidambram, learned. Sr. Counsel appearing for the plaintiff has submitted that the plaintiff had already obtained registration for its name and logo in 70 countries world wide and approximately 100 in number are also pending consideration. The plaintiff has 37 restaurants world wide and is planning the opening of further restaurants throughout the globe, and particularly in India. The plaintiff has advertised in the leading and premier magazines and newspapers. He has furth .....

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ant is sated to have opened restaurant 'RAINFOREST CAFE' masquerading as one of the outlets of the plaintiff. The defendant has copied the plaintiff's name, as also tagline, of 'A WILD PLACE TO EAT'. There is a certainty that, because, irreparable injury will be caused to the reputation and goodwill of the plaintiff world wide, and will also have adverse ramification on the impending enquiries for its franchise in New Delhi as well as other parts of the India. I am satisfied .....

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ts, representatives and those acting in concert with them or otherwise are restrained from operating their restaurant business, products and services under or by reference to the trade mark RAINFOREST CAFE and/or the RAINFOREST CAFE logo or any other trade mark and logo as to be likely to deceive or cause confusion and from in any other manner passing off or attempting to pass off or causing, enabling or assisting others to pass off such restaurant business, products and services not being the a .....

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logo, thereby Constituting an infringement of the applicant's valuable copyright in the RAINFOREST CAFE logo as an artistic work. Compliance of Order 39 Rule 3, CPC be made within three days. IA 342/2000 : For the reasons which have prevailed on me for passing the ex-prated interim injunction above, I am satisfied that prayers (a) and (b) of this application ought to be granted. Accordingly, I appoint Mr. Ashok Mittal, Advocate, Chamber No. 346, Lawyers Chambers, High Court of Delhi, New Del .....

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flets, cartons, packing material or any other literature of whatsoever description and nature, bearing the impugned RAINFOREST CAFE mark and logo or any other trade mark/trading style/trade name deceptively similar thereto or reminiscent thereof. The Local Commissioner will submit his report within 5 days. The fee of the Local Commissioner is fixed at ₹ 7,500/- shall be borne by the plaintiff." 2. Mr. Chidambram, learned Senior Counsel for the plaintiff, has submitted that the plainti .....

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, and from Awards it has already bagged. The plaintiff has its own web-site, the domain name having been allotted in 1995. Its shares are quoted and traded on the NASDAQ. The plaintiff has placed documentary evidence on record which sufficiently supports these submissions. Mr. Chidambram, learned Senior Counsel for the plaintiff, has also argued that the plaintiff has received applications for franchises in India and has entered into an agreement with a Malaysian company to open new outlets in v .....

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of 1999 in Suit No. 1680 of 1999 entitled Taco Bell Corporation v. Taco Bell & Anr. Two compilations have been filed by the plaintiff but it would be of little purpose to mention each case cited therein. It has been underscored that the defendants started business as recently as November, 1999 under the name of Rainforest Cafe and has applied for Trade Mark Classes 29 and 30 on 22.7.1999 and 1.8.1999. Mr. Chidambram also submitted that the degree to which name in question was arbitrary coin .....

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ecision in the WHIRLPOOL case was inapplicable for these reasons. The plaintiff had no 'presence' in India - no restaurant, no goodwill, no advertisement, no user of the name and no activity. The plaintiff must prima facie prove that some person was mislead into patronising the defendants mistakenly believing it to be the plaintiff branch, or franchise etc. 4. In cases such as the present all that the Court is required to consider at this stage is whether the plaintiff has succeeded in m .....

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h other, by pointing out the difference between them. The test is not that the two names/logos/scripts should be jurally examined in juxtaposition. It is enough if the two are viewed and then the question is posed, on the mental recollection, whether there is a likelihood of deception or confusion. In my view there is such similarity as would make them indistinguishable. The differences are so carefully created that it is quite evident that the defendants intended only to create a possible defen .....

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ng of geographic knowledge thus inducing the error in the forest-type, but when the minutely close similarity in the logo and script is recalled, the likelihood of an independent inspiration in the name Rainforest, pales to improbability, nay impossibility. The arguments of this genre, do not impress me to recall the injunctions already granted. 5. Let us move on the question of 'transborder' reputation. In the WHIRLPOOL case, the Division Bench of this Court stated as follows: "15. .....

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through advertisements in newspapers, magazines, television, video films, cinema etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot be said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of .....

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product in the market." 6. The Division Bench also quoted from the Seven Up Company v. O.T. Limited & Anr., (1947) 75 CLR 203 ; where the Australian Judge frowned upon as under : "Any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It, Therefore, seizes upon a very small amount (sic) of the foreign mark in Australia to hold that it has become identified with and dis .....

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a product and its trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial." .....

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iness has not been carried on in India, the plaintiff could bank upon transborder reputation, so as to maintain a passing off action in India. The documents filed in this case by the plaintiff prima facie establish that there has been transborder reputation and goodwill in India and the service mark 'Westin' had been advertised in magazines having international circulation including India. In other words the reputation of the plaintiff company was traveling transborder to India as well t .....

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an injunction ought not to issue as the plaintiff had not even applied for registration in the category of "services". In my view since protection has already been extended by Courts not only in respect of goods but also in respect of services, and keeping in perspective the fact that legislative changes are on the anvil, it would be improper for the plaintiff not to be protected. A Division Bench of this Court has broken ground a decade over in Regency Industries Ltd. v. Kedar Builde .....

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