END TERM PROJECT

Intellectual Property Law

CASE ANALYSIS ON

Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd

Submitted to: Submitted by:

Prof. Ghayur Alam Aparajita Marwah
2017BALLB80

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 TABLE OF CONTENTS

BACKGROUND.........................................................................................................................................3
BENCH.......................................................................................................................................................4
NAME AND CITATION............................................................................................................................4
MATERIAL FACTS...................................................................................................................................5
ISSUES RAISED........................................................................................................................................8
CONTENTIONS.........................................................................................................................................8
PLAINTIFF'S CONTENTIONS.............................................................................................8
DEFENDANTS' CONTENTIONS.........................................................................................9
PROVISIONS AND DOCTRINES INVOKED........................................................................................10
SECTION 30(2)(E)................................................................................................................10
SECTION 124.......................................................................................................................10
LITERATURE CITED..............................................................................................................................12
JUDGEMENT IN PERSONAM AND JUDGEMENT IN REM...............................................................14
COURT'S DECISION...........................................................................................................14
CONCLUSION.........................................................................................................................................16
ACKNOWLEDGEMENTS.......................................................................................................................17

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 BACKGROUND

Trademark disputes are often complex in nature, owing to the nitty-gritties involved. For a brand,
deciding upon trademarks is one of the most important steps they can take. As per the law, in
order to be a valid trademark, the mark has to have distinctive qualities and cannot be generic in
nature. The issue of distinctiveness of trademarks is one which has spawned a lot of debate and
discourse as well as several legal disputes. Even more so, when the trademark contains certain
generic words.
However, the peculiarity in this case arises on account of the fact that the disputed trademark
contained only generic words. The Court considered an application for stay of proceedings under
Section 124 of the Indian Trademarks Act, 1999.
The plaintiff (Arun Chopra) in this case alleged that the defendant (Kaka-Ka Dhaba Pvt Ltd &
ors.) had infringed upon his registered trademark, since they used the phrase ‘Kaka-Ka’for food
outlets in Nashik, Maharashtra.

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 BENCH

Judges:
HON'BLE MR. JUSTICE PRATEEK JALAN

Advocates:
Ms. Shobhana Takiar, on behalf of the Plaintiff.
Mr. Hiren Kamod & Mr. Rahul Vidhani, on behalf of the Defendant

NAME AND CITATION

Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd 2019 (77) PTC 268 (Del)

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 MATERIAL FACTS

The Suit was filed by the plaintiff regarding infringement of registered trademark. They
claimed that they had adopted their trademark ‘Kake Da Hotel’, which operated from Shop No.
74 Municipal Market, Connaught Circus, New Delhi-11000. Their stance in the plaint was that
the name was originally adopted in 1931 (in pre-independent India), Lahore, Pakistan. After
the partition, the founder came to India and opened a restaurant with the same name, in Delhi.
The Plaintiff claimed that the name of their outlet (the trademark) ‘Kake Da Hotel’ had
acquired immense amounts of goodwill and was very well reputed. The trademark was
registered on 14.12.1950, however the usage of the name predated that by two decades,
considering the establishement was operational since 1931. It was also claimed that owing to
the multitude of years of usage, the Plaintiff had also gotten ‘K-D-H Kaku Da Hotel’ as well as
‘K-D-H Kake-Da-Hotel’ registered as trademarks. “The Plaintiff also claims that the
Plaintiff's outlet has received excellent reviews in the print and the electronic media and
the name is associated only  with the Plaintiff's restaurant”.1
The suit was filed on the grounds of trademark infringement by the Defendants, for usage of
the names ‘Kaka-Ka Dhaba’, ‘Kaka-Ka Hotel’, ‘Kaka-Ka Restaurant’ and ‘Kaka-Ka Garden’
for their food outlets in Nashik, Maharashtra. The Plaintiff also showed the Defendant’s
visiting card as well as images of their restaurant and menu, to substantiate their allegations of
trademark infringement.
In response, the Defendants filed their written statement on 13.5.2014. They stated that they
possessed a registered trademark dated 15.5.2006. The Defendants claim that they have been
using the trademark ‘Kaka-Ka Dhaba’ since 14.8.1997, for a food-cart, ever since their
incorporation. They also stated in their written statement that they have been using the
trademark for a restaurant since 1993.2
The Defendants thus claim that these three outlets were started at least 17 years ago and the
expression 'Kaka-Ka' has been used by them for these outlets with different descriptions as
under: -

1
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd CS(COMM) 728/2018.
2
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶3.

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 1) Kaka-Ka Dhaba- 8/9 Pragati Market, Opp. Lekha Nagar, Mumbai Agra Road, Nashik -
422009
2) Kaka-Ka Hotel- Opp. Bhosala Military School, Gangapur Road, Nashik
3) Kaka-Ka Garden- Dindori Road, Pokhar Colony, Panchavati, Nashik – 422009

They had thus invoked the exemption provided in Section 30(2)(e) of the Act.

There was reply filed by the plaintiff in July, 2014 which refuted the Defendant’s submission
of absence of similarities between the Plaintiff’s registered trademarks and those of the
Defendants. In the present application, dated 2.12.2016, it has been stated by the plaintiff that
he has applied for cancellation of the registration of the defendants' mark before Intellectual
Property Appellate Board ("IPAB") in December 2016 and pursuant to that, the plaintiff seeks
staying of proceedings that were commenced under Section 124 of the Act.
There was an an ex-parte ad-interim order of injunction against the use of the impugned marks
was passed on 10.03.2014. The plaintiff's application under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure, 1908 (hereinafter referred to as "the CPC") (IA No. 4382/2014) and
the defendants' application under Order XXXIX Rule 4 of the CPC (IA No. 9392/2014) were
disposed of by a judgment dated 28.11.2018 in the following terms3:-
“11. It is not seriously in dispute that the defendants have been using the expression ‗Kaka-ka'
since at least 15 years in the city of Nashik. They were earlier running four outlets but
presently three outlets are operational. They have several employees and have gained
reputation locally. The Plaintiff has gained immense reputation in Delhi and the reputation
may be spilled over in various parts of the country, but they have only one outlet. Various
issues are to be adjudicated which would need evidence including as to whether the
names/marks as also whether there is any likelihood of confusion owning to prior use of its
name. On the balance, the following interim arrangement would serves the ends of justice. (1)
The Defendants are permitted to use the name ‘Kaka-ka' Dhaba’. ‘Kaka-ka Restaurant’ and
‘Kaka-ka Garden’ for the three restaurants/outlets already operating in Nashik, Maharashtra.
However, they will not use the name ‘Kaka-ka Hotel’.

3
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd CS(COMM) 728/2018.

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(2) The Defendants shall not open any further outlet with the name ‘Kaka-ka’, during the
pendency of the present suit.
(3) The Defendants shall maintain complete accounts of all sales which they are conducting in
their three restaurants/outlets. The company ‘Kaka-ka Dhaba’ Pvt. Ltd. shall continue to
operate under the said name. However, no fresh company/firm or any other entity shall be
commenced by the name ‘Kaka-ka’.
(4) All the outlets running in Nashik, Maharashtra are stated to be under the control and
management of Mr.Jugesh Chaddha and Mr.Mahesh Chaddha Defendant No.2 and Defendant
No.6 respectively. Both the said individuals shall file their undertakings before this Court that
if any order is passed for damagaes/rendition of accounts, they shall be abide by the same and
they shall file the quarterly accounts of their outlets at the end of each quarter by the 10th of
the next month. (5) The Defendants shall change the name ‘Kaka-Ka Hotel’ within 30 days.”
The Plaintiff had appealed the judgement which was dismissed by the Division Bench on
19.12.2018.

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 ISSUES RAISED

The questions considered by the Court were:

1) Whether the registration of the mark " " under application number 1451242 in favour of
the defendant no.1 is invalid and liable to be rectified? OPP"
2) issue as to the validity of the defendant's mark

CONTENTIONS

Plaintiff's Contentions

The Plaintiff claimed that it had been using the trademark ‘'Kake Da Hotel’ for a very long
amount of time and had been operating from their shop in New Delhi. The name was originally
adopted in 1931, and was used for a restaurant in Lahore. However, after the partition, the
founders had relocated to India and started a restaurant with the same name, which is now the
‘Kake Da Hotel’ in New Delhi. It was stated that the earliest trademark registration dated back to
December 14, 1950 and the claim of the user is from 1st June, 1931 in respect of goods falling in
class 30.There was immense amounts of repute and goodwill attached to the name, which made
the trademark valuable to the Plaintiff. This was to such extent that the Plaintiff, in subsequent
years of business, had also registered ‘K-D-H Kaku-Da Hotel’ and ‘K-D-H Kake-Da Hotel’.4

The Plaintiff’s counsel submitted that owing to the defendant’s use of Section 30(2)(e) as a
defence, the Plaintiff invoked Section 124. It was contended that their plea of invalidity of
registration of the defendants’ mark was one which was tenable on a prima facie basis. The
Supreme Case of Patel Field Marshal Agencies and Ors. vs. P. M. Diesels Ltd. and Ors. (2018)
2 SCC 112, and the Delhi High Court Case of Abbott Healthcare Pvt. Ltd. vs. Raj Kumar Prasad

4
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶8.

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and Ors. 249 (2018) DLT 220 were cited. It was hence submitted that the application to the
IPAB had been sent and it was underway, which is why the Plaintiff sought a stay of this suit
until the disposal of those proceedings.5
The Case of Abbott Healthcare was also used to substantiate the point that application, during
the pendency of the suit, filed by the plaintiff for rectification of the defendant’s mark does not
bar an application under Section 124 of the Act.

Defendants’ Contentions

The Defendants submitted that the mark ‘Kaka-Ka Dhaba’’ was taken up by them in 1997. They
claimed that they had three food outlets which had these names using the phrase ‘Kaka-Ka’ for
the past seventeen years. These were Kaka-Ka Dhaba, Kaka-Ka Hotel and Kaka-Ka Garden.
They also submitted that they had built their reputation in Nashik, and the Plaintiff had no other
outlet other than the one operating in Delhi. They contested that the word ‘Kaka’ is a generic
word, which is why the Plaintiff cannot claim monopoly over it.

The Defendant’s Counsel stated that Section 124 was could come into play only in limited
circumstances, for a post-suit rectification. There were 2 conditions: when (i) the pleadings
disclose a challenge to the validity of a registered trademark, and (ii) that plea is found to be
prima facie tenable. It was contested that the Plaintiff’s case fulfilled neither of these. It was also
submitted that application was not maintainable as the plaintiff has applied to the IPAB without
any finding by this Court regarding the existence or prima facie tenability of its plea of invalidity
of the defendants' trademark.6

5
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶8.
6
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶9.

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 PROVISIONS AND DOCTRINES INVOKED

The Trade Marks Act, 1999

Section 30(2)(e)
“30. Limits on effect of registered trade mark. -
(2) A registered trade mark is not infringed where -
(e) the use of a registered trade mark, being one of two or more trade marks registered under
this Act which are identical or nearly resemble each other, in exercise of the right to the use of
that trade mark given by registration under this Act.”7

Section 124
“124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.
—

(1) Where in any suit for infringement of a trade mark--

(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and
the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court
trying the suit (hereinafter referred to as the court), shall,--

(i) if any proceedings for rectification of the register in relation to the plaintiff's
or defendant's trade mark are pending before the Registrar or the Appellate
Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea
regarding the invalidity of the registration of the plaintiff's or defendant's trade
mark is prima facie tenable, raise an issue regarding the same and adjourn the
case for a period of three months from the date of the framing of the issue in
order to enable the party concerned to apply to the Appellate Board for
rectification of the register. (2) If the party concerned proves to the court that he
has made any such application as is referred to in clause (b)

7
The Trademarks Act. 30(2)(e).

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 (ii) of sub-section (1) within the time specified therein or within such extended
time as the court may for sufficient cause allow, the trial of the suit shall stand
stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such
extended time as the court may allow, the issue as to the validity of the registration of the trade
mark concerned shall be deemed to have been abandoned and the court shall proceed with the
suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-
section (2) shall be binding upon the parties and the court shall dispose of the suit conformably
to such order in so far as it relates to the issue as to the validity of the registration of the trade
mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude
the court from making any interlocutory order (including any order granting an injunction
directing account to be kept, appointing a receiver or attaching any property), during the period
of the stay of the suit.” 8

8
The Trademarks Act. 124.

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 LITERATURE CITED

The following judgements were mentioned and discussed before the Court:
The Plaintiff relied on the Supreme Case of Patel Field Marshal Agencies and Ors. vs. P. M.
Diesels Ltd. and Ors. (2018) 2 SCC 112, and the Delhi High Court Case of Abbott Healthcare
Pvt. Ltd. vs. Raj Kumar Prasad and Ors. 249 (2018) DLT 220 to substantiate their point that the
plea filed by them, regarding the invalidity of registration of the defendants' mark was one which
was tenable on a prima facie basis.
The Court also referred to the judgement in Marshal Agencies and Ors. vs. P. M. Diesels Ltd.
and Ors. (2018) 2 SCC 112 to interpret the section 124. The relevant paragraphs were
reproduced by the Court as follows:
“31. Rather, from the résumé of the provisions of the 1958 Act made above, it becomes clear
that all questions with regard to the validity of a trade mark is required to be decided by the
Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999
Act and not by the civil court. The civil court, in fact, is not empowered by the Act to decide the
said question. Furthermore, the Act mandates that the decisions rendered by the prescribed
statutory authority [Registrar/High Court (now IPAB)] will bind the civil court. At the same
time, the Act (both old and new) goes on to provide a different procedure to govern the exercise
of the same jurisdiction in two different situations. In a case where the issue of invalidity is
raised or arises independent of a suit, the prescribed statutory authority will be the sole
authority to deal with the matter. However, in a situation where a suit is pending (whether
instituted before or after the filing of a rectification application) the exercise of jurisdiction by
the prescribed statutory authority is contingent on a finding of the civil court as regards the
prima facie tenability of the plea of invalidity.
32. Conversely, in a situation where the civil court does not find a triable issue on the plea of
invalidity the remedy of an aggrieved party would not be to move under Sections 46/56 of the
1958 Act but to challenge the order of the civil court in appeal. This would be necessary to avoid
multiple proceedings on the same issue and resultant conflict of decisions.
xxxx xxxx xxxx
34. The intention of the legislature is clear. All issues relating to and connected with the validity
of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the

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parties have not approached the civil court, Sections 46 and 56 provide an independent statutory
right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil
court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be
decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however
come into seisin of the matter only if the civil court is satisfied that an issue with regard to
invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter
will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil
court. If despite the order of the civil court the parties do not approach the Tribunal for
rectification, the plea with regard to rectification will no longer survive.
xxxx xxxx xxxx
41. Section 111 of the 1958 Act, and the corresponding Section 124 of the 1999 Act, nowhere
contemplates grant of permission by the civil court to move the High Court or the IPAB, as may
be, for rectification. The true purport and effect of Sections 111/124 (of the old and new Act) has
been dealt with in detail and would not require any further discussion or enumeration. The
requirement of satisfaction of the civil court regarding the existence of a prima facie case of
invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in
the statutory authority to deal with the issue of invalidity by no means, tantamount to permission
or leave of the civil court, as has been contended. It is a basic requirement to further the cause
of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised
in the suit.”
It was noted that in the case of Patel Field Marshal, the Supreme Court expressly stated that
when a suit is pending, IPAB’s jurisdiction would be dependent on the finding of a civil court
with respect to the prima facie tenability of the plea of invalidity, whether instituted before or
after the filing of a cancellation. Thus, the party alleging invalidity is bound to approach this
Court after the institution of cancellation proceedings; however, the IPAB’s jurisdiction to
proceed would depend on the Court’s findings. It was also noted that where the civil court does
not find a triable issue on the plea of invalidity, the only remedy of an aggrieved party would be
to challenge that order in appeal. This would be necessary to avoid multiple proceedings and
conflict of decisions.9

9
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶12.

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 JUDGEMENT IN PERSONAM AND JUDGEMENT IN REM

Court's Decision

The Court decided to analyse the case in context of the former ruling of staying the suit pending
adjudication of the rectification application by the IPAB. In order to decide whether the facts of
the dispute were sufficient to support a plea of invalidity and that any such plea is prima facie
tenable, the Court wanted to consider a holistic view of the suit.
The fact that Plaintiff has only pled the issue of registration of defendant’s mark in their written
statement is noteworthy. The plaintiff alleged that the marks used by the defendant were
deceptively similar and would cause confusion, it was noted that the replication had expressly
stated only about the mala fide intention of the defendant and the similarity of the marks. There
was no express plea with regard to the invalidity of the mark or the entry having been made in
the register without having sufficient cause however. Which is why it is of utmost importance to
ensure that the court bases its decision on a holistic reading of the pleadings, and not solely based
on the plaintiff’s assertion of a plea. This is particularly important because a finding against the
party claiming cancellation of a registered trademark (in this case, the plaintiff) would render the
plea abandoned for all time.10
With respect to the cases relied on by the Plaintiff, the court stated that the judgement in Patel
Field Marshal only meant that the civil court would have no jurisdiction to decide this plea and,
in the face of such a finding, neither would the IPAB. With regards to the judgement of Abbott
Healthcare, it was noticed that the replication was filed much before that judgement was
pronounced. Which is why the Court took the view that the pleading is sufficient to support the
present application of the plaintiff.

With regards to the Defendant’s stance on maintainability of application depending on proper

procedure, which would be to ask the Court to render findings on the pleading and tenability
prior to filing of a rectification application, the Court declined. It was stated that the reversal of
the order would render the application moot. The Court cited the case of Patel Field Marshal to
support its view.

10
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶17.

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“In my view, the statutory scheme, as explained by the Supreme Court in Patel Field Marshal
(supra), cannot be restricted or rendered ineffective even if it has such a consequence. That said,
Mr. Kamod's apprehension would apply if at all, only to cases where Section 124 is invoked
pursuant to a defence being asserted under Section 30  (2)(e) of the Act, and the plaintiff
pleading invalidity of the defendant's registered mark. The same would not be the case where the
defendant does not have a registered mark at all, and/or in any event does not plead invalidity of
the plaintiff's registered mark. In fact, the present case itself is an example of a situation where
the defendants do not plead invalidity of the plaintiff's mark. I therefore do not consider this
submission to be of such significance as to require a restricted approach to construction of the
pleadings.”11
The Court also chose to decide the case based on a holistic view of the pleadings. Due
consideration was paid to the similarity between the Plaintiff’s registered trademark and ‘Kaka-
Ka’ used by Defendant. Since the test was a prima facie test, it was satisfied by the interim order
of 28.11.2018 which acknowledged the issue of likelihood of confusion that would require
adjudication at the trial. The injunction affirmed the same:“The injunction against the
defendants from opening any further outlet with the name "KAKA-KA" during the pendency of
the suit, which has been affirmed by the Division Bench after noticing the registration obtained
by the defendant no.1, also indicates the prima facie tenability of the plaintiff's plea.”12

Finally, the Court observed that since the issues have not yet been framed in the suit, at this
stage, it would be appropriate to frame only the issue necessary for disposal of the present
application. Consequently, the Court framed the following issue: Whether the registration of the
mark “ka ka-ka (device)” in favour of the defendant is invalid and liable to be rectified? Thus,
the Court allowed the plaintiff’s application and ordered the suit to be stayed until disposal of the
plaintiff’s cancellation petition by the IPAB.13

11
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶20.
12
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶15, ¶22.
13
Arun Chopra v. Kaka-Ka Dhaba Pvt Ltd [2019] PTC (Del) 77 (High Court of Delhi), p.268, ¶24.

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 CONCLUSION

While the Court allowed the plaintiff’s application and ordered the suit to be stayed until
disposal of the plaintiff’s cancellation petition by the IPAB, a very important point comes to
light. The hyper technical and textbook based theoretical approach may not be the best for
complex disputes, since it doesn’t meet the ends of justice. This is even more apparent due to the
fact that facts and circumstances of this case call for an opportunity for a party to present its
counter view. Specifically, for the party to apply for the invalidity of its adversary’s registration.
 

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 ACKNOWLEDGEMENTS

I would like to express my heartfelt gratitude to my teacher,

Prof. Ghayur Alam
who gave me the golden opportunity to do this enriching project on this case study which has
helped me enhance my knowledge exponentially about the concept; understand the scope in
totem; learn the applicable laws and correlate the present state of affairs worldwide as well in
our country.
His helpful insights in this subject have guided me to make this project.

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