The mark “NIZAM” is being used by Mr. Rajesh Chugh (plaintiff in the original suit and Respondent in this Appeal) for his business of selling “Kebabs” and related food products. Mr. Rajesh Chugh claimed that by virtue of extensive and continuous use as well as the high quality taste of food items sold under his brand and trademark 'Nizam's, it is exclusively associated with his business and services.

Respondent’s Registered Mark Appellant’s infringing mark

Chhavi Poplai & Anr v. Rajesh Chugh & Anr, an appeal against the order of a Single judge of the Delhi High Court, is a case of infringement of the mark “NIZAM”.

Mr. Poplai, (the Appellant in this appeal), who was operating a franchise of Mr. Rajesh Chugh’s “NIZAM”, was found to be unauthorisedly using the mark inspite of termination of the arrangement between the parties. Mr. Poplai’s new logo has ‘Nizam’ as its most prominent part, making it deceptively similar to Mr. Rajesh Chugh’s logo. Mr. Poplai was not only using the mark on his website, food aggregating websites such as Swiggy, Zomato, but had also applied for the registration of the device mark 'New Nizam's Kababs and Biryani' claiming use since the time he was operating the franchise of Mr. Rajesh Chugh.

The Single Judge of the High Court held that a prima facie case of infringement and passing off is made out in favour of Mr. Rajesh Chugh.

In the appeal, the Court observed that given that the marks were deceptively similar and that both the parties dealt in same goods, the infringing mark is bound to create confusion in the mind of an average viewer. Mr. Poplai contended that “Nizam” is a generic word and hence, no person can claim a monopolistic right over the same. However, Mr. Poplai had himself applied for the registration of the mark “Nizam”. Hence, he was estopped from claiming that the word “Nizam” was generic. The Court cited Neon Laboratories v. Thermis Medicare Ltd. 2014 (60) PTC 621(Bom) in which it was held that a party cannot take a plea of a mark being common to the trade when the it has itself applied for its registration. “There is a form of estoppel by conduct that applies to such a party. “A man may not ‘approbate’ and ‘reprobate’. He may take inconsistent stands, but not ones that are mutually destructive.”

Mr. Poplai’s next argument was that since Mr. Rajesh Chugh had chosen not to restrain a party in Calcutta from using the mark, it is said to have acquiesced infringement of the same. However, the Court did not find any merit in this argument as it observed that the party in Calcutta had confined its registration and use of the mark ‘Nizam’s to West Bengal. Therefore, the appeal was dismissed and the Order of the learned Single Judge was upheld.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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