The Bombay High Court (Nagpur Bench) has ruled that the words “BARBECUE” and “BARBEQUE” are phonetically similar, and the respondents’ use of “Barbeque” for their cloud kitchen on Zomato and Swiggy prima facie infringed the appellants’ registered trade mark, device mark, and artistic copyright under Section 29 of the Trade Marks Act, 1999.
Accordingly, the respondents, their partners, assigns, licensees, agents, and all persons claiming through or under them were restrained from using, selling, advertising, circulating, displaying, marketing, or otherwise dealing with the trade mark “BARBECUE/BARBEQUE” or any mark deceptively similar to the label, device, trade mark, artistic work, or copyright of the appellants during the pendency of the suit.
The Court held that the words “BARBECUE” and “BARBEQUE” are phonetically similar, and that the respondents’ use of the phonetically similar word “Barbeque” for an online food supply business in the same trade as the appellants’ restaurant prima facie constituted infringement of the appellants’ artistic copyright, trade mark, and device mark under Section 29 of the Trade Marks Act, 1999.
Applying the anti-dissection rule and the principles laid down in Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai [(2022) 5 SCC 1], the Court reiterated that marks must be compared as a whole and that phonetic similarity, particularly when accompanied by similar representation in the same class of services, is sufficient to amount to infringement. The Court further held that the Trial Court erred in treating the difference in geographical location as decisive, since the test of likelihood of confusion is to be assessed from the perspective of the average consumer, including those ordering through online food delivery platforms.
Accordingly, the Court concluded that the appellants had established all three essential ingredients for grant of a temporary injunction, namely, a prima facie case, balance of convenience in their favour, and the likelihood of irreparable loss and injury to their goodwill and reputation.
A Single Judge Bench of Justice Y.G. Khobragade noted that the appellants had placed on record sales figures of approximately Rs. 39.04 crores over a 26-year period from 1994-95 to 2019-20, and that the respondents had not disputed the appellants’ device/composite mark consisting of the word “Barbecue” in cursive style accompanied by a diamond-shaped device, registered under Classes 42 and 43. The Court observed that the respondents were admittedly using the phonetically similar word “Barbeque” for their online food supply business without approaching the competent authority for any registration of their own.
The Court reviewed the relevant definitions under Section 2 of the Trade Marks Act, 1999, including the meaning of “deceptively similar”, “mark”, and “trade mark”, as well as Section 2(c) of the Copyright Act, 1957 defining “artistic work”. The Court observed that the Trial Court had proceeded principally on the basis of different geographical locations and had failed to appreciate the settled principles governing trade mark infringement and passing off, rendering its findings perverse and unsustainable in law.
Briefly, the appellants, Tervinder Singh Jhans and his proprietary concern and private limited company, have been running a restaurant business under the name and style of “BARBECUE/BARBEQUE” at Sadar, Nagpur, since 1994, claiming over 30 years of continuous use. They hold a copyright registration issued by the Registrar of Copyrights, a trade mark registration under Classes 42 and 43, and MSME/Udyam registration, and claim substantial goodwill and reputation across Nagpur city.
In November 2022, the appellants noticed that the respondents were running a cloud kitchen business under the name “Barbeque Gokulpeth” through online food delivery platforms such as Zomato and Swiggy, using a name and branding that the appellants alleged was phonetically and visually deceptively similar to their own. The appellants issued a legal notice dated 27 December 2022 calling upon the respondents to cease the alleged infringement, and thereafter filed Trade Mark Suit before the Nagpur District Judge, seeking a temporary injunction.
The Trial Court declined the temporary injunction, principally on the ground that the two businesses operated from different geographical locations (Sadar and Gokulpeth) and that the expression “BARBECUE/BARBEQUE” was not exclusively associated with the appellants.
