Bombay High Court Declines To Restrain Use Of 'ANNA' Trademark, Cites Plaintiff's Stand Of Dissimilarity During Registration Stage

The Bombay High Court recently declined to temporarily restrain a Pune restaurant from using the trademark 'ANNA' in an infringement suit, upon finding that during the registration stage, the plaintiff had told the Trademarks Registry that there was no similarity between his mark 'ANNA IDLI GRUHA' and the defendant's mark 'ANNA. 

In dismissing the plaintiff's plea for a temporary injunction restraining the defendant from using his mark 'ANNA,' a single bench of Justice Sandeep V Marne held that the principle of 'prosecution history estoppel' would apply in this case.

The doctrine of prosecution history estoppel, which is traditionally associated with patent infringement actions is increasingly being applied in trademark infringement cases and aims to prevent a party from claiming advantages associated with a right consciously waived in previous proceedings.

It was observed that after having declared during registration, that there was no similarity between his mark and the defendant's mark, the Plaintiff could not turn around at the present stage and contend that the two marks were deceptively similar.

“I am of the view that the stand taken by a party in proceedings for registration of a Mark cannot be ignored in each and every proceeding filed for infringement or passing off. In the present case, the doctrine of prosecution history estoppel would fully apply where Plaintiff has twice made a representation before the Trademark Registry that there is no resemblance between his and the Defendant's Marks. He took that stand with full knowledge that Defendant was intending to use the Mark 'ANNA' for same class of goods and services”, the court held.

Brief Facts

The court was seized of an appeal by the plaintiff against an order of the District Judge, Pune, refusing to grant an interim injunction in his favour in a suit for trademark infringement and passing off against the defendant.

The plaintiff, Shantapa alias Shantesh S Kalasgond, had filed an infringement suit against M/s. Anna for their usage of the tradename 'ANNA,' on the ground that both were used for eateries, specializing in South Indian delicacies.

It was submitted that the Plaintiff owned the registered trademarks for 'ANNA IDLI GRUHA' and 'ANNA IDLI,' while the defendant was the proprietor of the registered trademark 'ANNA'.

The cause of action arose when the Plaintiff noticed the Defendant's intention to start a similar business in Pune using the mark 'ANNA.'

Plaintiff, being a prior user of the mark, argued that an order of injunction ought to be passed against the Defendant restraining them from using the mark 'ANNA' for operating a restaurant in Pune.

It was submitted by the Plaintiff that he had established a wide network of outlets under his tradename across various cities, including Bijapur, Solapur, Pune, Nagpur, etc. 

Plaintiff accordingly filed an infringement suit and an interim application seeking a temporary injunction to restrain the Defendant from using the mark 'ANNA'. The application claimed that the Defendant's mark was deceptively similar to the plaintiff's registered trademarks.

Upon perusal, the District Judge rejected the Plaintiff's interim application, citing his failure to disclose his stand taken during the trademark registration stage.

It was submitted that the district judge's rejection was based on the principle of estoppel, since the Plaintiff had made earlier representations to the Trademark Registry, asserting dissimilarity between the two marks at the time of registration. Hence the present appeal.

Proceedings before the High Court

During the present proceedings, the plaintiff argued that the doctrine of prosecution history estoppel was not applicable in the present case and the defences taken by a party at the time of registration of the trademark could not be the sole reason for determining the correctness of a claim for passing off.

The court referred to the cases of Raman Kwatra v. KEI Industries Limited (2023), PhonePe Private Limited v. Resilient Innovations Private Limited (2023), Mankind Pharma Ltd. v. Chandra Mani Tiwari (2018), which have consistently held that a party's stand during registration proceedings would continue to influence its subsequent legal proceedings.

The court held that the authorities cited by the plaintiff were based on different facts and were not supportive of an absolute proposition that in every case, the past stands taken by a Plaintiff during registration proceedings must be ignored in subsequent suits for passing off.

The court further noted that the District Judge had refused a temporary injunction primarily due to the Plaintiff's willful suppression of material facts and misrepresentation during the registration process.

The court said that even if the concept of prosecution history estoppel were to be foregone, even then, the Plaintiffs had failed to show a prima facie case based on other factors.

It opined that based on Plaintiff's business's low turnover and the lack of expenditure on advertising, it was difficult to believe that the Plaintiff had earned any noteworthy reputation or goodwill in Pune, such that his patrons would walk into the eatery of Defendant believing it to be of the Plaintiff.

The court thus concluded that the Plaintiff had failed to establish a prima facie case for the grant of a temporary injunction.

It held that the Plaintiff's conduct of suppression of material facts, and its failure to prove the triple tests of prima facie case, irreparable loss, and balance of convenience had led to the dismissal of the present appeal.

Advocates Hiren Kamod, Anees Patel, Prem Khular, Harsh Joshi i/by. Ajinkya Jaibhave represented the Appellant-Plaintiff.

Advocates Aditya Soni, Rama Somani, Kalyan D. Landge i/by. Chetan Alai, represented the Respondent-Defendant.

Case no. – Appeal From Order No. 915 of 2023

Case Title – Shantapa alias Shantesh S. Kalasgond v. M/s. Anna