Arun Chopra v KaKa-Ka Dhaba Pvt. Ltd. and Ors. (Delhi High Court, 2018)- Case analysis - Synopsis
Lakshay Parmar 6 Jan 2020

Case analysis- Arun Chopra v KaKa-Ka Dhaba Pvt. Ltd. and Ors. (Delhi High Court, 2018)

Plaintiff:  Was originally from Lahore(now Pakistan) and now is based in Delhi.

Defendant: Is based in Delhi.

 

Core issue- The essence of a trademark lies in its distinctiveness, the distinct requirement of a trademark has been a subject of legal disputes on multiple occasions, specially in cases where the company/manufacturers have used a generic name in the mark.

The main question was can a generic name be used as a part of entire mark.

 

Facts- Arun Chopra (hereinafter referred to as "Plaintiff") preferred a lawsuit for infringement of the registered trademark against Kaka-Ka Dhaba Pvt Ltd & Ors. (hereinafter referred to as' Defendants') by which the Plaintiff charged that the Defendants had committed a violation of their registered trademark by using the' Kaka-Ka' name for food outlets in Nashik, Maharashtra.

 

Contentions by the plaintiff-

1.       It was alleged that the name was adopted in 1931 when a restaurant started in Lahore, Pakistan, used the said name. Moreover, the plaintiff's father, late Shri Amolak Ram Chopra, was reported to have moved to Delhi and opened a restaurant in the same name.

2.       It argued that the' Kake Da Hotel ' brand had earned considerable prestige and goodwill.

3.       The complainant further argued that after several years of use he had also registered the trademarks ' K-D-H Kaku-Da-Hotel' and' K-D-H KakeDa-Hotel.'

4.       It was further argued that over the years the distributor of the Plaintiff ' Kake Da Hotel ' has gained mammoth goodwill and prestige on the market, and the brand is synonymous only with the restaurant of the Plaintiff.

 

Contentions made by the defendant-

1.       In rebuttal, the Defendants submitted that the Defendants adopted the' Kaka-Ka Dhaba ' mark in 1997. Three food outlets were believed to have been started seventeen years ago with the names using the phrase' Kaka-Ka.' Kaka-Ka Dhaba, Kaka-Ka Hotel and Kaka-Ka Garden have been the three outlets.

2.       It was further submitted that the Defendants had gained their credibility in Nashik before the Delhi High Court's educated Single Judge, and the Plaintiff's had no reputation in Nashik and no other platform than the one existing in Delhi.

3.       It was argued that in the word' Kaka' the plaintiff could not claim ownership as the same is a generic word.

 

Observations made by the court-

·         The court stated that the plaintiff was using “Kake-da Hotel” along with “KDH” , whereas defendants were using the mark “Kaka-Ka Restaurant”,  “Kaka-Ka Hotel”, “Kaka-Ka Dhaba” but had only applied for the registration of “Kaka-Ka Dhaba”.

·         Court observed with the regard to whether the word “kaka” can be monopolized by either of the two parties, be decided in a trial

Based on the above observations the Delhi high court gave an interim arrangement-

·         Defendants were permitted to use the name “Kaka-Ka Dhaba”, “Kaka-Ka Restaurant” and “Kaka-Ka garden” for 3 outlets already operating in Nashik.

·         It also prohibited to use the name “Kaka-Ka Hotel” and that name be changed within 30 days from the passing of the order.

·         No further outlets be opened with the name “Kaka-Ka” during the pendency of the suit.

 

It is always recommended while choosing a mark which will eventually be registered as trademark should have a distinctive quality from the others and should lack the generic principle. In the 2013 case of M/S three N Product Pvt Ltd v M/S Kairali Exports and Anr. The Delhi High Court noted that protection of a generic wordmark requires a greater degree of proof and a lot more effort from the person claiming the rights.

 

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