No Relief Against Use of ‘Anna’ Mark as Goodwill Not Established

In an order dated November 30, 2023, the Bombay High Court refused to grant a temporary injunction restraining the respondent from using the mark “Anna” to operate an eatery serving South Indian food in Pune.[1]

In South India, the word “Anna” refers to an elder brother and is widely adopted by eateries serving South Indian delicacies, including Idlis, Dosas, etc. The appellant, a proprietor of M/s. Shubhashree Hospitality obtained registration for the trademarks “Anna Idli Gruha” and “Anna Idli” in 2011 and 2017, respectively. Last year, the appellant came across a banner announcing the opening of an outlet with the mark “Anna” and promptly filed a civil suit before the District Court in Pune.

During the registration of the trademark “Anna Idli Gruha”, one of the objections raised by the Trademark Registry was that it was identical to earlier trademarks, including the impugned mark of the then owner, Mr Shah. To this, the appellant responded by stating that his mark was not deceptively similar to the marks included in the search report. Since the appellant failed to disclose the same in his plaint, the District Judge rejected the appellant’s application for a temporary injunction earlier this year, applying the doctrine of prosecution history estoppel, deeming the appellant’s action as “willful suppression of material fact”. The said order of the District Judge was challenged in the present appeal.

Though both the marks were registered, the appellant furnished documents (including IT returns, certificate by CA, etc.) to prove that he had been doing business under the trademark “Anna Idli Gruha” since 2011. On the other hand, the respondent’s trademark had been in use only since December 2022 (pursuant to the licence granted to Bamburde Hospitality LLP by the licensor who acquired the right to the “Anna” trademark through an assignment deed). Even with respect to the trademark, “Anna Idli,” which was registered in 2017, it was noted that the same was in use prior to the commencement of business under the respondent’s mark.

As to the doctrine of prosecution history estoppel, the Bombay High Court concurred with the view of the District Judge and opined that the appellant’s representations before the Trademark Registry were made with the knowledge that the respondent intended to use the trademark “Anna” for the same class of goods and services. Hence, the Court held that the appellant couldn’t now be allowed to take a “volte face” and to assert that both the marks were deceptively similar.

Moreover, the Court perused the turnover figures as per the certificate of CA submitted by the appellant. Holding that the said figures were not substantial enough to prove the existence of goodwill or reputation, the Court proceeded to reject the appellant’s contention that the three ingredients of the common law right of passing off – goodwill, misrepresentation, and damage, were made out in the case.

Holding that the appellant was not entitled to a temporary injunction considering that the triple test of the prima-facie case, irreparable loss, and balance of convenience was not established, the Court dismissed the appeal. However, it was made clear that this decision would not have any bearing on the suit currently pending before the District Court.

[1] Shantapa alias Shantesh S. Kalasgond vs. M/s. Anna (AO/915/2023)