Karnataka HC Upholds Temporary Injunction Granted To ‘Hotel Special’ Restraining Passing Off By Deceptively Similar Trade Mark ‘SVT Hotel Special’ For Selling Asafoetida

The plaintiff, S.V.T Products, challenged an interim restraint order under Order XXXIX Rules 1 and 2 of the CPC. The plaintiff claimed that the defendant, S.S Pandian and Sons, infringed their registered trademark ‘Hotel Special’ by using a deceptively similar mark ‘SVT Hotel Special’ for selling asafoetida.

A Single Bench of Justice Anant Ramanath Hegde observed, “Merely because asafoetida is sold in large jars by itself cannot mean that the expression speaks about intended use without any distinctiveness. Whether the expression “HOTEL SPECIAL” found on the plaintiff’s asafoetida tin, meant only use by hoteliers in the estimation of the public as alleged by the defendant is a matter of evidence. Thus, in view of the presumption relating to its prima facie validity, and absence of any materials to show that the registration of the trade mark is ex-facie untenable, this Court at this juncture cannot accept the contention that the trade mark “HOTEL SPECIAL” only speaks about the intended purpose without any distinctive character.”

Sr. Advocate Jayakumar S Patil represented the appellant, while Advocate Sivaraman Vaidyanathan appeared for the respondent.

The plaintiff argued that they had been marketing asafoetida under their trademark since 1957 and that the trademark had acquired goodwill and reputation. They alleged that the defendant used a confusingly similar mark concerning asafoetida to confuse customers and damage their business. The defendant argued that their mark was generic and descriptive in nature indicating the intended purpose of the product.

The trial court granted a temporary injunction in favour of the plaintiff, restraining the defendant from using the disputed trademark. The appellant challenged this decision, arguing that the expression ‘SVT Hotel Special’ was generic and use of such marks was permissible under Section 17 of the Trade Marks Act, 1999.

The High Court clarified that despite the defendant's use of the symbol "®" on their product, implying registration of the trademark 'SVT Hotel Special,' no such registration existed. Moreover, as the defendant continued to assert their right to utilize the trade name 'SVT Hotel Special' and market asafoetida with a mark resembling the registered trademark, the circumstances warranted granting the application to restrain passing off.

“The word “HOTEL” is non-distinctive. The word “SPECIAL” may also appear to be generic. However, the registration is granted in favour of the plaintiff. Now the Court is concerned with the expression “HOTEL SPECIAL”. It is quite possible that the use of the said words “HOTEL” and “SPECIAL in combination, as “HOTEL SPECIAL” while marketing a product namely asafoetida which is essentially a taste and flavoring product, may sound distinctiveness of the product in estimation of a normal consumer.” the Court remarked.

Accordingly, the High Court dismissed the petition.

Cause Title: S.V.T Products v. S.S Pandian and Sons

Appearance:

Appellant: Sr. Advocate Jayakumar S Patil; Advocate Priya

Respondent: Advocate Sivaraman Vaidyanathan

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