Nagpur: The Nagpur bench of Bombay High Court recently restrained a Gokulpeth-based online food business from using the name “Barbecue/barbecue” during the pendency of a trademark suit, holding that its use was prima facie similar to the branding of a Sadar restaurant that has operated under the name for more than three decades.Justice YG Khobragade, allowing an appeal by the Sadar restaurant operators, set aside an Aug 4 district court order that had refused them interim protection in their trademark suit against the cloud kitchen.The petitioners — Tervinder Jhans, his proprietary concern M/s Barbecue and Barbecue Food Services — claimed they had been running their food and restaurant business under the “Barbecue” brand at Sadar since 1994. They approached the court after discovering in November 2022 that the respondents were operating a food business under the name “barbecue Gokulpeth” through online food-delivery platforms.The petitioners, through senior counsel Mukesh Samarth, Apurv De and Vaishnavi Ramidhani, contended that their branding featured a distinctive cursive representation of “Barbecue”, a diamond-shaped device and a specific colour scheme.As per the petitioners, their sales statements from 1994-95 to 2019-20 showed cumulative turnover of about Rs39.05 crore over 26 years. They argued that the respondents’ use of the similar name and branding was likely to confuse customers and dilute their goodwill and reputation.The respondents contended that the petitioners did not hold an exclusive registration for the standalone word “Barbecue”. They argued that the protection claimed by the petitioners related to a composite/device mark and that the two businesses operated from different locations and had different modes of operation.The judge found that the distinction between ‘barbecue’ and ‘Barbecue’ was insufficient, at the interim stage, to protect the respondents’ use of the name. “‘Barbecue’ and ‘barbecue’ are phonetically similar words,” he held.The HC noted that the petitioners had been operating “Barbecue Sadar, Nagpur” for more than 30 years and had established their branding through the registered device mark, artistic work and commercial material such as delivery bags and bills.Justice Khobragade also noted that the respondents had not approached the competent authority for registration of copyright or trademark in respect of the disputed name.“If the respondents are permitted to continue to carry their business under the phonetic name ‘barbecue’, it will certainly cause irreparable loss and injury to the petitioners’ goodwill and reputation in the market,” he said.The HC found that the district court had primarily relied on the businesses being located in Sadar and Gokulpeth and arrived at the conclusion that “BARBECUE/barbecue” was not exclusively associated with the petitioners. It held that the trial court had failed to properly appreciate the applicable legal principles and material on record, describing its findings as “perverse and unsustainable in law”.
