A vivid description compounded with a detailed judgment of the Bombay High Court has meant that a couple of restaurants “infringing and making false representation” of Mumbai’s iconic Café Madras can no longer go on with it.
The HC has, however, stayed its order for three weeks for the defendants to appeal against it.
The issue arose after the Kamaths – proprietors of the Matunga-based restaurant – claimed to be the registered proprietors of the marks ‘Café Madras’ since 2005 and blamed a couple of Jalgaon and Nashik based namesakes for bringing them disrepute.
While the Kamaths say they have “generated considerable goodwill and a high reputation”, the defendants argued ‘Café Madras’ is incapable of registration and several other establishments across India with the same name. The defendants said neither ‘Café nor ‘Madras’ could be registered, and therefore, the combination could not also be registered.
Their reputation was damaged when a rat was found in the food served by the latter, claimed the plaintiffs.
Justice Gautam Patel’s nuanced description of the famous eatery reads, “In a narrow lane, one of three that branches off to the east from the roundabout at Maheshwari Udyan in Mumbai’s central area of Matunga, there stands an unassuming eatery. A few steps lead into it. The space is not large: a few tables at the entry level with the proprietor at a high seat at the counter to the right of the entrance,” says Justice Patel.
Justice Patel observed may adopt a phrase or an expression that contains multiple words, each of which is on its own commonplace and incapable of registration, yet when used together acquire distinctiveness.
The court said someone might use the title for a year or for several decades and is known by that expression, locally and, perhaps, even in wider corners. “Is he to be told by an imitator that all those years count for nothing? That a reputation carefully nurtured and built up is nothing more than dust? That a registration obtained and as yet unchallenged is merely a whisper in the wind? I do not believe that is either the intent or the purpose of this branch of the law,” said Justice Patel
Illustrating the major cities have their landmark eateries, and each with a unique name, he said some are Koshy’s in Bangalore, Flurrys in Kolkata, Gulati in New Delhi. The judge observed that a city like Mumbai had its own “street food” culture and over the years vendor and purveyors of this kind of food had acquired a reputation, goodwill and distinctiveness.
“Bhel-puri and pav-bhaji are among Mumbai’s street food staples; yet Vithal Bhel Puri and Sardar Pav Bhaji are unique and distinctive, and there are not two such each. They each connote a single purveyor and none other. It also matters not that Vithal and Sardar are in themselves nouns and incapable of registration,” Justice Patel observed.
He said it was worth recalling some of the material cited by the Kamaths in support of their claim to having acquired a considerable reputation. The court observed were several articles in popular magazines of a wide public circulation. “These are not merely guides to eateries in the city, though there are those too. There are in addition write ups extolling the quality of the food and the service at the Kamaths’ Café Madras eatery in Matunga. There are awards,” said the court.
There are laudatory comments on television and in the media, said the court. The court explained there was one international encomium, and it was from an “internationally renowned” master chef, Gordon Ramsay. “This is a tribute not in the context of western cuisine but a decidedly uncompromising local cuisine that claims to have remained true to its roots,” said the court.
The plaintiff’s mark’s reputation, goodwill and prior use may be supplemented with Internet-based material, said the judge. He said where such material exists, a rival user is expected to know of it and a defendant may even be deemed to be aware of it. “The burden must then lie on the defendant to show that the rival use of the mark is such as would have no effect on the plaintiff’s continued use of that mark,” the HC said.
“In addition, where there is sufficient globally-accessible Internet material to show damage or to raise a presumption of damage to the plaintiff by the defendant’s use of the mark, the defendant’s burden is that much greater. This is in one sense something very like the ‘butterfly effect’ (we might call it ‘the Google paradigm’,” said the court and held the two restaurants responsible for infringement and false representation.