Praveen Kumar Jain (Plaintiff) is the owner of various trademarks including ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ and is selling Naan and related food items in Paharganj, Delhi. Plaintiff enjoys exclusive right under Section 28 and 29 of the Trade Mark Act, 1999 (‘Act’) therefore Plaintiff is claiming exclusive rights in the expression `Chur Chur Naan’ against the Rajan Seth (defendant) who uses a similar expression for its outlet.
The questions before the court is whether there can be any monopoly in the expression ‘CHUR CHUR NAAN” or “AMRITSARI CHUR CHUR NAAN”.
It is claimed by the Defendant that ‘CHUR CHUR NAAN’ is nothing but a descriptive word and lack distinctiveness to be provided protection under Trademarks Act. Further, Defendants showed at least at the prima facie stage, entries on various third party websites such as zomato.com, justdial.com, eattreat.in, that various third parties are using ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN‟ with various prefixes and suffixes. Further Defendants added that that it is the common practice in the trade for food outlets to use names such “Chandni Chowk Ke Mashoor, Dilli Ke Mashoor, Delhi Walo Ki Mashoor” etc., The same are very common to the trade and are used by a large number of parties as is evident from the entries from third party websites which are placed on record. Thus, there cannot be any monopoly on the terms ‘CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN as the same are generic.
Hence, after listening to both the parties HC concluded
“ There is no doubt that the Plaintiff does have registrations for the marks ‘CHUR CHUR NAAN‟ and “AMRITSARI CHUR CHUR NAAN‟. The registrations thus confer exclusive rights as per Section 28 of the Act. However, the rights of a registered trademark holder are not absolute inasmuch as both Section 28 & 29 are subject to the exceptions carved out to infringement of registered trademarks. Under section 35 of the Act (Refer to Section 35 at the end of the brief) if there is bona fide description of the character or the quality of the goods or services, there cannot be infringement of a registered trademark.”
Further HC stated that,
“Expressions such as ‘NAAN, CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN” are similar to expressions such as Amritsari Kulcha, Malabar Parantha, Hyderabadi Biryani, Kashmiri Dum Aloo, Chettinad Chicken, Murthal ke Paranthe, Mangalore idli, etc., and such other food products which are used in common parlance by the general public. The word ‘CHUR CHUR‟ merely means `crushed’ and `Chur Chur Naan’ means `Crushed Naan’ and nothing more. It is incapable of acquiring trade mark signification. ‘CHUR CHUR‟ is a terminology which is used in normal conversational language and there cannot be any monopoly in respect of an expression such as “CHUR CHUR‟. The Plaintiff has obtained registration of the marks ‘CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN’, but the same would not in any manner prevent the bonafide description of the character of the naan which is crushed i.e. ‘CHUR CHUR NAAN’.
In addition, HC mentioned that incase the registrations are wrongly granted or applied for in respect of completely generic expressions, the Court cannot ignore the generic nature of the marks and confer monopoly on the same in favour of any party. In the present case the issue is that the expression are completely generic.
Delhi High Court held that it cannot ignore the generic nature of the marks and confer monopoly on the same in favour of any party. However, in order to avoid confusion Defendants agreed to change its name of their outlets to ‘PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN’ and ‘PAHARGANJ SETH KE MASHOOR AMRTISARI NAAN’ while ensuring that entire name shall be used in the same font, colour and in the same style without giving any undue prominence to ‘CHUR CHUR NAAN’ or ‘AMRITSARI CHUR CHUR NAAN’ in 30 days.
Section 35 of The Trade Marks Act, 1999 :
35. Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.