Thursday, 21 November 2013

Khyber restaurant : IPAB Decides in favor of Prior user

Khyber restaurant wins name battle, Surat eatery can’t use its name

 In a victory for the 55-year-old Khyber restaurant at Fort, the Intellectual Property Appellate Board (IPAB), a judicial tribunal which adjudicates patent and trademark-related disputes, has held the Mumbai restaurant to be the rightful owner of the trade name and mark Khyber Restaurant and Khyber.
The same name and mark were being used by a partnership firm running two restaurants in Surat, Gujarat. The IPAB held that the Surat-based firm, the respondent, had obtained registration of this name and mark by 'wrong statement of use.' In other words, it had misguided the Registrar of Trademarks.The Surat-based firm was also not able to substantiate 'commercial use' of the disputed name and mark. "Mere filing of documents such as rent receipts, licenses, tax returns does not prove the commercial use of the trademark since 1975, as claimed by the respondent," observed the IPAB. Further, as the public could be misled by usage of identical names for identical services, the IPAB ordered rectification of the trademark register.
"Owing to strong facts and documentary evidence, we have been able to remove the trademark registered by the other party," states Avesh Kayser, advocate, who represented Khyber, Mumbai.
In August 2009, the applicant, Sudheer Bahl, owner of the Mumbai-based restaurant, learnt of two Surat-based restaurants which were run under the 'name and style' Khyber Restaurant and Khyber. A legal notice resulted in a reply that the Surat-based firm were the registered owners of the disputed name and mark.
In this backdrop, Bahl moved the IPAB, saying that the name and mark used by the Surat restaurants was identical with that of his Mumbai restaurant.
"Extensive promotional activities have always been undertaken for promoting restaurant services under the name and trademark 'Khyber Restaurant' and 'Khyber' - which have come to represent excellence; this name and trade mark is known to lakhs of people across India and is exclusively associated with the applicant alone," submitted Bahl.
Bahl pointed out that his predecessors had, way back in 1964-65, created a unique and distinct style for representing the name and mark 'Khyber', in which copyright subsists. Both the name and mark appear on all cash memos, bills, invoices, promotional materials, brochures, visiting cards, registers, labels etc.
Further, it was pointed out that the trademarks Khyber Restaurant and Khyber were registered for restaurant services in October 2003, claiming use since December 1958.
It was contented that the applicant had acquired valuable proprietary rights in this name and mark and was entitled to its protection. For instance, strong brand equity and brand royalty had resulted in growing revenues; the turnover for the year 2008-09 had crossed Rs. 13 crore. The tiny restaurant of 800 sq ft since 1958 was now a large one of 7,000 sq ft and was the recipient of several awards.
The Surat-based partnership firm responded that they were honest and bona fide users of the name and mark Khyber Restaurant and Khyber since July 1975 and had earned goodwill and reputation. The trademark registered by it was notified by the Registrar in the trade journal in March 2005.
Based on facts, which included that the Surat firm had obtained trademark registration by furnishing wrong statement of use, the IPAB ruled in favour of the Mumbai-based restaurant.

Find the IPAB order here 

and the news here

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