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Determinative Evidence Needed to Prove Prior Use: The Tussle over “Sanjha Chulha”

LexOrbis India


While deciding prior use disputes, courts in India have relied on substantial evidence by any claimant of such prior use that can prove that they were in fact the first users of a trademark. In practice, definitive and factual evidence by way of registers and records, invoices, etc., is often considered by court to ascertain the claims of prior use. In the recent case of Sanjha Chulha vs. Sanjha Chulha and Ors. (2023) 93 PTC 373, the Delhi High Court was presented with an appeal over a similar dispute involving prior use of the mark “Sanjha Chulha” as used by both the appellant and respondent. The case also involved the question whether the appellant could be granted exclusive rights over a mark claimed to be “descriptive in nature”.

Facts of the Case

The appellant claimed to have been providing food and catering services since 1986-1987 from its different food outlets and restaurants in Delhi under the name “Sanjha Chulha”. The appellant has the mark  registered under Class 29 through application filed in 1997 and claimed to be in use since 1991; mark  registered under Class 29 through application filed in 2001 and claimed to be in since 1987; marks  and  registered under Class 16 through application filed in 2001 and claimed to be in since 1986; and mark  registered under Class 30 through application filed in 2001 claimed to be in since 1986.

The Appellant also gave details of its pending applications - objected device mark  and word mark “SANJHA CHULHA” filed in 2020 and 2021 respectively on “proposed to be used” basis and claiming use since 1986 respectively under Class 43;  word mark "Sanjha Chulha" accepted and advertised under Class 29 (now registered as per the date of writing of the article) and objected under class 30, both filed in 2021 and claimed to be in since 1986.  Other pending application mentioned was for the mark “SANJHA CHULHA” (class 43) filed in 2011 claiming use since 1986 which stands opposed by the Respondent. It was submitted by the Appellant that Respondent has opposed its multiple applications as a counterblast to Appellant’s opposition against Respondent’s application for a similar mark which the Appellant came to know about in October 2017.

It is important to note that the Appellant did not have any registration for the word mark “Sanjha Chulha” in its favour as the pending applications were either objected or opposed.

The appellant also obtained copyright registration in the artistic work of its label with registration no. A-60137/2001, A623555/2002 and A-139603/2021 stating that the packaging/trade dress it uses has a unique design, structure, combination of various colours and features, get up, make up etc. and is an ‘artistic work’ under Section 2(c) of the Copyright Act, 1957.

In February 2004, the respondent had applied for the registration of its device mark  under Class 30, claiming use since April 1992 but the registration obtained lapsed in February 2014. The Appellant filed a rectification petition against this application in August 2018. The respondent also applied for registration of its device mark in March 2016 under Class 30, claiming its use since April 1992, which stands opposed by the Appellant who also sent a cease-and-desist notice to the respondent in April 2021, along with a takedown notice/legal notice in April 2022. The suit was filed by the appellant bearing no. CS COMM 467/2022 against the respondent to seek a permanent injunction claiming infringement and passing off its trademarks.

Issuing an ex-parte ad-interim injunction against the respondent, the Commercial Court barred the restaurant from using the mark and name “Sanjha Chulha” or other deceptively similar marks. Against this, the respondent filed an application for vacation of such injuction under Order XXXIX Rule 4 of the Civil Procedure Code (CPC) on June 6, 2022. In turn, the appellant filed an application under Order XXXIX Rule 2A of the CPC claiming a violation of the ad interim injunction.

The appellant claimed that the respondent’s mark was phonetically and visually identical/similar to its marks, deceiving its customers by causing confusion between the two restaurants. Claiming to be the “prior user” of the marks, it also stated that the trademarks enjoy an “enormous reputation” and have also acquired the status of “well-known trademarks”.

Countering this, the respondent claimed that the words “Sanjha Chulha” were not coined by the appellant, and the literal meaning of the words is “Community Clay Oven” in the Punjabi language. A serial by the said name had also been telecast on the channel Doordarshan in 1990-1991. It also claimed that due to distance between the outlets of the restaurants, they both enjoy a separate customer base. Further, the respondent challenged the “prior use” claim of the appellant and disputed that the appellant’s registered trademarks that are device marks do not confer exclusive rights to it for using the words “Sanjha Chulha”, which are now commonly associated with “dhabas” or local eateries.

It also raised the contention that the appellant did not file any case against it during 2017-2022 which constitutes acquiescence as per Section 33 of the Trade Marks Act, 1999.

Order of the Commercial Court

The Commercial Court primarily held that there was no case of infringement on the part of the respondent against the appellant’s trademark. Therefore, the appellant’s application under Order XXXIX Rules 1 and 2 of the CPC were dismissed and the respondent’s application under Order XXXIX Rule 4 of the CPC was allowed by the court.

The court also stated that the composite words “Sanjha Chulha” were “in vogue since immemorial”, and accepted the respondent’s argument that the words are a part of the common vocabulary. Holding the composite words to be descriptive in nature, the court rejected the appellant’s exclusive claim over the words.

In this view, the Commercial Court stated that:

The words “Sanjha Chulha” have “acquired figurative meaning as the place having common kitchen and that place is every dhaba or a restaurant and not necessarily the dhaba of the plaintiff or of the defendant. Those words now represent a general dhaba”.

The court also held that while the appellant failed to produce any material evidence to prove its prior usage of the trademark since 1986 as claimed, the respondent successfully proved that it was using the trade name since 1996-1998. However, since the appellant also registered the trade name during this period, it was concluded that both the parts were concurrent users of the trade name “Sanjha Chulha”.

The sales figures of both parties were also taken into consideration, and it was found that the respondent had sales 33 times higher than the appellant in the year 2020-2021. The Commercial Court also relied on the fact that the distance between the two restaurants was unlikely to cause any confusion among customers and the respondent could not solicit the appellant’s customers due to the 20-kilometer distance between the two outlets. Therefore, the Commercial Court held that the device marks of the parties were neither identical nor similar to each other. It also found that the words “Sanjha Chulha” were descriptive in nature, and the appellant could not be granted exclusive rights to use such a mark.

Legal Questions Considered by the Delhi High Court

The appellant filed the instant appeal before the Delhi High Court against the Commercial Court’s decision. While deciding the matter, the Delhi HC considered two legal questions:

  1. Whether the appellant had exclusive rights over the registered device marks to prohibit the respondent from using the words “Sanjha Chulha”?
  2. Whether there is a case of prior use regarding the appellant’s trademarks?

In this first instance, the court relied on the Commercial Court’s findings that the words “Sanjha Chulha” had acquired a figurative meaning of a “common kitchen, and the words literally translated to “common clay oven” in the Punjabi language. Due to this, the term was held to be descriptive in nature, and therefore, the appellant could not claim exclusive rights to use the said words solely on the grounds of the registration of its device trademarks.

The court further observed that the appellant did not have exclusive rights over the words “Sanjha Chulha” since registration of a composite mark did not grant it exclusive rights for any part of the trademark. The marks were determined not to be deceptively similar to each other, and the Delhi High Court upheld the Commercial Court’s order.

In the second instance, the court reiterated the Commercial Court’s findings that the appellant could not produce sufficient evidence to prove that it was running its restaurant since 1986 under the trade name in question.

The court could not ascertain the date on which the appellant adopted the trademark due to inconsistent user claims and observed that the mere fact that the appellant has registered the marks in its name and claimed their usage from a prior date is not sufficient evidence to establish “prior use”.

While dismissing the appeal of the appellant, the Delhi High Court observed that it is not always the case that the use of a prominent part of the registered trademark by another user, either on a standalone basis or as a part of the composite mark causes deceptive similarity between the two marks.

In Conclusion

The case highlights an important aspect of the trademarks law that prevents exclusivity over any descriptive words or marks. This decision of the Delhi HC has pressed upon the need for qualitative and determinative evidence of use to prove prior use as the court took into consideration the evidence that could prove prior use of the mark instead of merely relying on the user claims in the registrations obtained.

About The Authors

Manisha Singh

Ms. Manisha Singh, the Founder and Managing Partner at LexOrbis is known to be one of the most reputed lawyers in the Intellectual Property domain, with a decorated career of over 25 years. She has served as a vital advisor to corporations and research organizations in handling intellectual property matters and developing strong IP portfolios. She is ceaselessly engaged in endeavours to strengthen India’s IP protection and enforcement system to align it with international standards and work closely with industry associations and the government.

Ms. Singh has served as the leading counsel for a client base in over 138 countries in their IP management and litigation matters. She is identified by her clients as a seasoned and reliable counsel for the prosecution and enforcement of all forms of IP rights, and planning and management of global patents, trademarks, and designs portfolios. She has also led numerous negotiations deals on behalf of her clients for both IP and non-IP litigation and dispute resolution.

Shivi Gupta

Shivi Gupta is an experienced professional in the field of legal research and marketing. She has worked with various startups and LegalTech organisations in the past, and is currently working as an Assistant Manager at LexOrbis. She holds a comprehensive understanding of the legal industry, and possesses relevant skills for conducting extensive research and collaborating with lawyers, law firms, and other legal professionals.

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