China Bistro clarifies principles of trademark similarity and disclaimers

In Foodlink F And B Holdings India Pvt Ltd v WOW Momo Foods Pvt Ltd (Case No 848/2022, 3 August 2023), the Delhi High Court has restrained fast food chain Wow Momo Foods Pvt Ltd, the defendant, from using the mark WOW! CHINA BISTRO and granted an interim injunction in favour of Foodlink, the plaintiff. The disputed trademarks are illustrated below.

Case details

Until 2019 the defendant had been using the mark WOW! CHINA DESI CHINESE for restaurant services, whereafter, it changed its mark to WOW! CHINA BISTRO. The plaintiff claimed that the defendant’s addition of the word ‘bistro’ created a mark that was deceptively similar to its own registered mark CHINA BISTRO with device in Class 43, which it was using with respect to restaurants offering Chinese/Indo-Chinese cuisine.

The defendant argued that when compared in their entirety the rival marks were not similar. Further, the plaintiff could not claim exclusivity over ‘China’, as is it the name of a country, nor ‘bistro’, a commonly used expression for restaurants and cafes – especially since it had disclaimed exclusive rights to both words in its initial registrations.

The primary issues to be decided by the court were:

• whether the marks were deceptively similar so as to result in infringement; and
• whether the plaintiff was entitled to make a claim of infringement.

On infringement

Based on established precedent, the court remarked that where the words consisting of the dominant parts of the device marks are similar, visual matter accompanying the words would not impact a finding of infringement. Further, the resemblance between the two marks must be considered with reference to the ear as well as the eye (KR Krishna Chettiar v Shri Kaviraj, AIR 1970 SC 146).

In this case the words ‘China’ and ‘bistro’ in the case of the plaintiff’s mark, and ‘wow’, ‘China’ and ‘bistro’, in the case of the defendant’s mark, both constitute their essential feature. Applying the principles set out above, the court showed no hesitation in holding that there was a likelihood that a consumer of average intelligence and imperfect recollection might wonder whether the two marks belonged to the same entity. This led to a prima facie finding of infringement.

On the plaintiff’s entitlement to plead infringement

The first registration (1470912) obtained by the plaintiff for the mark CHINA BISTRO disclaimed exclusive rights over the words ‘China’ and ‘bistro’. The second, associated with the first, disclaimed rights over ‘bistro’. Further, all four of its registrations were linked by association.

The defendant reasoned that, since the plaintiff had disclaimed exclusivity with regard to ‘China’ and ‘bistro’, it could not now claim exclusivity for the composite mark CHINA BISTRO. The disclaimers with respect to the earlier marks became applicable to the later marks as well.

Decisions

The court disagreed. The only purpose of associating trademarks is so that they are assignable and transmissible as a whole, not separately. Barring this consideration, all trademarks, even if associated with each other, are to be treated as separate. There was no express statutory provision to imply that a disclaimer issued with regard to one mark was applicable to all associated marks. Had this been the case, the certificate of registration of the later marks would have expressly included appropriate disclaimers.

Even if previous disclaimers were applicable, they would bar an infringement action claiming exclusivity over the terms ‘China’ or ‘bistro’ individually, but not based on proprietary rights over the composite mark CHINA BISTRO. That is because disclaiming exclusivity in respect of the individual parts of a mark does not result in disclaiming exclusivity over the composite mark as a whole.

Regarding the defendant’s argument that neither ‘China’ nor ‘bistro’ were individually registrable as a mark, the court held that two ordinary words, though completely lacking in distinctiveness when seen individually may, when combined together, be distinctive.

The rival marks were therefore held to be deceptively similar, as their textual components, which constituted their essential and distinctive features, were deceptively alike. The only additional text in the defendant’s mark was the word ‘wow’, which was laudatory and of no aid to its case.

Thus, the court injuncted the defendant from using the mark WOW! CHINA BISTRO and its stylised version. However, it was clarified that the defendant would be entitled to use the mark WOW! CHINA or

The end of the road?

The defendant appealed but the appellate court’s verdict was the same. This decision stands out for its clear reasoning based on tested principles of jurisprudence in a dispute involving trademarks that comprise ordinary words. The main suit is ongoing and it remains to be seen whether the defendant will appeal the findings of the appellate court to the Supreme Court.