Court upholds trans-border reputation
In a reaffirmation of the trans-border reputation principle, the Bombay High Court single judge has injuncted a company from using the words “Pizza Hut” as part of its corporate name holding that use of the same was likely to cause confusion and deception.
Pizza Hut International LLC filed a suit to restrain Pizza Hut India Pvt. Ltd. from using their trade mark “PIZZA HUT” or any other mark similar thereto as part of its corporate name or trading style and the mark or its logo in relation to its business. The Plaintiffs sought an interim injunction. The Plaintiffs claimed that their logo consisting of the mark PIZZA HUT with the word HUT written below PIZZA and a hat above covering the words is registered in Class 29 in India subject to disclaimer of the word PIZZA. The Plaintiffs also contended that they had filed applications in Class 30 which had been accepted for advertisement in the Trade Mark Journal and that after the suit had been filed, the same had been registered. The Plaintiffs had also filed an application for registration of the trade mark PIZZA HUT (word per se) in 1996 in Classes 29 and 30 which application was pending.
Plaintiffs claimed that the PIZZA HUT mark and logo were internationally famous and was first used sometime in 1958. The mark and logo were registered or were pending registration in about 120 countries worldwide including countries such as Australia, countries from the Middle East (including UAE and Saudi Arabia), Europe (including France, Germany, Switzerland and Greece), Canada, Singapore, Hong Kong, Japan, Malaysia, Mauritius, New Zealand, Pakistan, Sri Lanka, Thailand, United States of America and United Kingdom.
The court accepted that residents from India have been traveling and continue to do so in large numbers to such countries, thousands of Indians are employed in such countries and that almost all of them would visit India with their families.
The court relied upon the decision in Aktiebolaget Volvo Vs. Volvo Steels Ltd. of the Bombay High Court Division Bench which held that transborder reputation is recognized by Indian Courts and that actual sales in India are not necessary to establish goodwill and reputation in India.
Considering the above the court concluded that the Plaintiffs enjoyed a worldwide reputation including in India.
Also relying upon the decision of Poddar Tyres Ltd. Vs. Bedrock Sales Corporation Ltd., as well as Kirloskar Diesel Recon Ltd. Vs. Kirlosar Proprietory Ltd., both decided by a single judge of the Bombay High Court, the court held that use of another’s trade mark as part of its corporate name or trading style amounts to infringement.
The court also dismissed the argument of the Defendant that mere incorporation of the company without his goods being available in the market amounted to use of the mark.