CS(OS) No.1122/2008 Page 1 of 29

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ IA No.7040/08 in CS(OS) 1122/2008

Judgment reserved on: 04.05.2009

% Judgment delivered on: 01.07.2009 MOODS HOSPITALITY PVT. LTD. ..... Plaintiff

Through: Mr. Rajiv Nayyar, Senior Advocate with Mr. Ashish Wad, Ms. Suchitra Chatterjee, Mr. Chirag Dave, Mrs. Surbhi Aggarwal and Mr. Sameer Abhyankar, Advocate

versus NESTLE INDIA LTD. ..... Defendant

Through: Mr. Sudhir Chandra, Senior Advocate with Mr. Hemant Singh, Mr. Mamta R. Jha and Mr. Manish Kumar Mishra, Advocates

CORAM: HON'BLE MR. JUSTICE VIPIN SANGHI

1. Whether the Reporters of local papers may be allowed to see the judgment? No

2. To be referred to Reporter or not? Yes

3. Whether the judgment should be reported in the Digest? Yes

VIPIN SANGHI, J.

1. By this order, I propose to dispose off the aforesaid

application filed by the plaintiff under Order 39 Rules 1 & 2 read with

Section 151 CPC seeking ad-interim injunction against the defendant to

restrain the defendant from infringing their registered trademark “Yo!”

per se or in conjunction with any logo/mark/letters, or otherwise

trading under the mark “Yo!” or any other deceptively similar mark

CS(OS) No.1122/2008 Page 2 of 29

thereto or colorable imitation thereof, whether by using the expression

by itself or as a part of any other mark/name in respect of goods

covered by the registrations obtained by the plaintiffs in respect of the

said mark as detailed in the plaint. A further restraint is sought against

the defendants from, in any manner, using the mark “Yo!” per se or in

conjunction with any other logo/mark/letters or any other mark

deceptively similar thereto so as to pass-off or enable or assist others

to pass-off their business and product as those of the plaintiff‟s.

2. The plaintiff claims that it is a private limited company

registered under the Companies Act, 1956. It operates under the

brand name/house mark “Yo! China”. Plaintiff claims to be the first

and largest Chinese food chain in India and it is stated that it is known

for the quality of its products and services by the name “Yo! China”.

The plaintiff‟s restaurants offer fast food services in a child friendly

atmosphere which is widely acclaimed and accepted. The plaintiff

states that it started using “Yo! China” for carrying on its restaurant

business of Chinese food since the very first day when its restaurants

came into existence. The plaintiff company was established in the

year 2002 with the aim to deliver high quality Chinese food in India at

very reasonable prices. The first “Yo! China” restaurant was started in

May, 2003 at a mall in Gurgaon. Since then it has grown into 40

restaurants, which is a mix of company owned and franchise outlets

spread over 15 cities across India. Apart from these restaurants, there

are a number of other kiosks and take away points where the food

products of the plaintiff are sold. The per month average of

CS(OS) No.1122/2008 Page 3 of 29

customers/guests who visit “Yo! China” is stated to be about 5 lakhs.

It is stated that the plaintiff coined expression “Yo! China” in the year

2002 in order to distinguish its business, trade identity and

products/services from others. It is stated that the word “Yo” (without

the exclamation mark) is primarily an American slang used for calling

attention, expressing encouragement or excitement, or a greeting. The

word „Yo‟ is not descriptive of the goods and services of the plaintiff

and thus is arbitrarily applied. Further, it has no direct or remote

reference to the nature or quality of the goods or services being

provided by the plaintiff, thus making it inherently distinctive. It is

stated that the expression “Yo!” (with an exclamation mark) was

coined and adopted by the plaintiff in combination with red and yellow

colours signifying “energy”. When the expression “Yo!” is used with

the word “China”, it portrays American Chinese Food which is specific

and unique to the plaintiff. The plaintiff submits that it has built,

developed and nurtured the trademark “Yo!” and “Yo! China” since the

year 2002 and has made extensive use of the said expression “Yo!”

since its inception for almost everything that had anything to do with

their business and products/services. It is further stated that the

expression “Yo!”, because of its inherent distinguishability and

extensive use as indicated herein, has become distinctive of the

plaintiff in the eyes of the consumers as also in the trade, industry and

restaurants of fast food across the country. Further, the use of a

specific colour combination of red and yellow for its packaging

material, advertisements, interiors of its restaurants and kiosks, menu

CS(OS) No.1122/2008 Page 4 of 29

cards, uniform of employees, etc., has also become distinctive of the

plaintiff‟s trademark “Yo! China” and “Yo!”. The plaintiff further states

that in the year 2005-06, the plaintiff company launched an innovative

product called “Yo! on the Go” which was essentially noodles

(chowmein) served in a box with different variants, which the

consumer can pick and move. More recently this product was

renamed “Yo! Box”. The plaintiff specifically had a noodles

(chowmein) product with 4 variants in takeaway and home delivery

packs called “Yo! On the Go” and “Yo! Box”. This product of the

plaintiff serving noodles (chowmein) in take away boxes has been a

great success and was appreciated by customers in all age groups. It

is further stated that the trademark “Yo!” which is also the first mark of

plaintiff‟s trade name/trading style/house mark “Yo! China”, is a

registered trade mark and has been intact with the plaintiff company

and travels with the plaintiff company in all its activities and related

business ventures, e.g. “Yo! Box”, “Yo! On the Go”, “Yo! Dimsum”,

“Yo! Carts” etc. The plaintiff‟s team of personnel deployed in its

restaurants wears a uniform with “Yo! Team” written on the back of

the T-shirts, and a cap with the word “Yo!” in the front. Yo! is also the

most prominent part of the plaintiff‟s advertisements which uses

expressions like, “Fly Yo! Over”, “How Yo!mantic” etc. The plaintiff

submits that its application for registration of “Yo! Dimsum” is pending

with the Registrar of Trademarks. The plaintiff has indicated its sales

figures over a period of 3 years from 2004-05 onwards which shows

substantial revenue growth over this period. The plaintiff states that it

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has incurred considerable expenditure from 2004-05 and 2006-07 on

advertisement and promotion of Trade Marks “Yo!” and “Yo! China”.

As a result of its extensive and continuous use, coupled with

widespread publicity, it is claimed that the Trade Marks “Yo!” and “Yo!

China” have become well known marks within the meaning of Section

2(1) (zg) of the trademarks Act, 1999 (for short `The Act‟). The

plaintiff claims that it has got its marks “Yo!” and “Yo! China”

registered as trademark/services mark under the following classes:

“Trademark Trademark No.

Class Description of Goods/ Services

Registra-tion Date

YO! 1345481 25 Readymade garments, T-Shirts included in class 25

02.06.2007

YO! (Device of

Exclamation mark)

1345478 42 Restaurant included in class 42

30.05.2007

Yo! China (Label)

1194649 30 Coffee, Tee, Cocoa, Sugar, Rice, tapioca, Sago, Coffee substitutes, Flour and preparation made from cereals bread biscuits, Cakes, Pastry and Confectionery, Ice, Honey, Treacle, Yeast, Baking Powder, Salt, Mustard, Pepper, Vinegar, Sauces,

13.08.2005

CS(OS) No.1122/2008 Page 6 of 29

spices, Ice. Yo! China

(Label) 1194647 32 Beer Ale and

Porter, Mineral and Aerated Waters and other non-alcoholic drinks, syrups and preparations for making beverages

25.05.2005

Yo! China (Label)

1194648 29 Meat, Fish, Poultry Extracts, preserved dried and cooked fruits and vegetables, Jellies, Egg, Milk and Dairy Products, Edible Oils and Fats, Preserve, Pickles.

24.08.2005”

3. Plaintiff states that the aforesaid registrations are valid

subsisting and in force. Copies of these registrations have been placed

on record. The plaintiff states that the expression “Yo!” and “Yo!

China” have become distinctive of the plaintiff in the eyes of the

consumers. The mark has acquired a secondary meaning. Thus the

plaintiff has acquired the exclusive right to use the said marks “Yo!”

and “Yo! China”. It is stated that the marks “Yo!” and “Yo! China”

when applied to goods and services and businesses are automatically

taken to be originating from the plaintiff, and that the user of the

expression “Yo!” in some form or the other is associated with the

CS(OS) No.1122/2008 Page 7 of 29

plaintiff.

4. The grievance of the plaintiff against the defendant is that the

defendant company is manufacturing and marketing, inter alia,

noodles (chowmein) under the name and style of “Maggi Cuppa Mania

instant noodles” in two flavours “Masala Yo!” and “Chilly Chow Yo!”. It

is stated that the said products are a direct take on the product of the

plaintiff “Yo! On the Go!”. It is alleged that the defendant has

deliberately, and with intention to gain from the goodwill and

reputation of the plaintiff and also to mislead the customers used the

trademark “Yo!” while mentioning the flavours of the noodles

contained in the said packs as “Masala Yo!” and “Chilly Chow Yo!”.

The case of the plaintiff is that the expression “Yo!” used by the

defendant on its packaging is neither descriptive of the product

contained in the defendant‟s packaging, nor it relates to the quality of

the product at all. The use of the mark “Yo!” on the packaging by the

defendant is solely with the intention of misleading the consumers and

making gains over the goodwill and reputation of the plaintiff‟s

registered trademark “Yo!”. It is stated that the impugned use by the

defendant of the plaintiff‟s registered trademark is a case of

infringement and passing off by the defendant under the Trademarks

Act. The mark “Yo!” adopted by the defendant on their “Maggi Cuppa

Mania” is stated to be visually, phonetically and structurally similar to

the mark of the plaintiff. The plaintiff claims that the use of the said

mark by the defendant would cause confusion and deception amongst

CS(OS) No.1122/2008 Page 8 of 29

the trade and public at large leading them to believe that the goods

and services of the defendant originate from, or have a trade

connection, approval or association with the plaintiff. It is stated that

“Yo!” is the most essential feature of the plaintiff‟s trademark. The use

by the defendant of a mark, which is identical to the plaintiff‟s

trademark amounts to infringement of the said registered trademark.

It is stated that the goods being offered by the defendant with the

infringing mark is almost identical to the goods/services of the plaintiff.

5. The suit and the aforesaid application were taken up for

hearing on the first date i.e. 30.05.2008. The defendant put in

appearance on the same day and, it appears from the order passed on

the said date, the Court heard the parties at some length and passed

an order restraining the defendant from manufacturing, marketing,

selling and advertising its products i.e. instant noodles by using the

mark “Yo!” or any other deceptively similar mark to that of the plaintiff

either independently or in conjunction with any other logo, mark or

letters.

6. The defendant herein preferred an appeal bearing FAO(OS)

No.279/2008, which was disposed off by the Division Bench by order

dated 21.07.2008. The Division Bench set aside the order dated

30.05.2008 and the order dated 09.06.2008 passed by the Vacation

Bench staying the temporary injunction dated 30.05.2008 and

requested this Court to decide the aforesaid application expeditiously.

That is how the matter has been heard and the application is now been

CS(OS) No.1122/2008 Page 9 of 29

taken up for disposal.

7. The submission of Mr. Sudhir Chandra, learned senior counsel

appearing for the defendant, is that the trademark “Yo” per se is one

of the most common and popular expressions used by the youngsters

worldwide, including in India, as substitute for “Hello”. It is like other

commonly used exclamations such as “Wow”, or “Yeah”, or “Yuppy”

etc. by youngsters in their day to day common parlance to hail, greet

or cheer each other, or anything, or event. According to the Webster‟s

Encyclopedic Unabridged Dictionary the meaning of “Yo” is: “used as

an exclamation to get someone’s attention, express excitement, greet

someone; here; present; used especially in answer to a roll call”. The

mark “Yo!”, therefore, cannot be held to be distinctive mark or allowed

to be monopolized by single trader like the plaintiff to the exclusion of

all others. The defendant has placed on record copy of a newspaper

clipping showing the common use of expression “Yo” and various

examples of common usage of “Yo!” as an exclamation/excitement,

and as a part of the title or heading or a caption.

8. It is claimed by the defendant that “YO” or “YO!” is incapable

of distinguishing goods or services of any one trader from another, or

function as a badge or indication of trade origin or source of any one

particular trader or service provider or manufacturer. Therefore, it

cannot be registered as a trade mark either by itself, or when used in

conjunction with any other mark on account of prohibition envisaged

vide section 9(1)(a) of the Act. It is argued that the registrations

CS(OS) No.1122/2008 Page 10 of 29

obtained by the plaintiff are invalid as generic nature of the “Yo” and

“Yo!” has been overlooked, by the authorities while granting

registration. It is argued that neither the word “Yo!” by itself, nor

“China” was capable of acquiring any distinctiveness and no

proprietory rights can be claimed or granted to the plaintiff therein. It

is stated that the defendant has already filed rectification proceedings

seeking cancellation of the registrations obtained by the plaintiff

before the Intellectual Property Appellate Board on 19.07.2008,

seeking cancellation of the plaintiff‟s trademark “Yo!” and “Yo! China”

registered in class 42, 29 & 30 from the Trademark Register.

9. The defendant submits that “YO” or “YO!” (With or without

exclamation mark) is commonly used by the trade in relation to wide

variety of goods and business, primarily when targeting the youth

segment of consumers at large. It is claimed that the defendant has

used “Masala and Chilly Chow” as flavor descriptor upon the packaging

highlighting the characteristic and quality of the noodles in conjunction

with “Yo!” to attract the segment of youths as targeted consumers.

10. The defendant submits that the mark “YO!” consisting

exclusively of expression of excitement, which is customary in the

current modern language and publicis-juris in its use by the trade as

mark of “brand imagery” targeted to youth, ought to be left open to

trade usage and no hindrance or obstruction should be placed against

it by grant of monopolistic right therein. The Defendant further states

that several High Courts have laid down that “No trade mark shall be

CS(OS) No.1122/2008 Page 11 of 29

allowed to be registered which may hamper or embarrass the trader or

the trade now or in future in respect of the place or country in which it

is proposed to be registered.” It is alleged that the plaintiff‟s trade

mark registrations pertaining to “YO!” and “YO! CHINA” is ex facie

registered in contravention of Section – 9(1) of the Act which envisages

“Absolute Prohibition” for registration of such marks. Therefore, the

plaintiff is not entitled to any right flowing from such registrations

which are in contravention of the very objective of the Act.

11. The defendant further submits that the registrations obtained

by the plaintiff of the trademarks in question are liable to be cancelled

as the mark “Yo!” is a laudatory mark commonly used by the trade,

and thus incapable of acquiring distinctiveness qua the goods or

business of any particular trader or service provider. It is stated that in

the absence of any exclusive use, no amount of user qua any one

trader can lead to appropriation of “YO!” as a trade mark in favour of

the plaintiff. Further the question of the said mark acquiring

distinctiveness and secondary significance qua goods or service of the

plaintiff does not arise since neither the plaintiff has used “YO” or

“YO!” by itself as a trade mark, nor used it in conjunction with any

other mark for sufficiently large and long period to be capable of

acquiring a secondary significance. Considering the fact that the trade

continues to use the said mark so commonly and frequently as a

common laudatory expression, the question of the mark “YO!” having

lost is “primary meaning” and acquired “secondary significance” does

CS(OS) No.1122/2008 Page 12 of 29

not arise. Therefore, the plaintiff has no right to institute the present

suit against the defendant.

12. The defendant points out that the word “CHINA” in the trade

mark “YO! CHINA” has already been disclaimed by the Registrar while

granting registration of “YO! CHINA”. The word “YO!” is common to

the trade and is of non-distinctive character. Thus, no exclusive right

can be granted for non-distinctive mark “YO!” in favour of the plaintiff,

in contravention of Section 17(2)(b) of the Act.

13. The defendant refutes that the plaintiff has ever used “YO!”

by itself as a brand. Accordingly it is contended by the defendant that

“YO!” is not a mark having inherent distinctiveness capable of

distinguishing goods or services of any one trader, or function as a

badge or indication of trade origin or source of any one particular

goods or service provider, manufacturer or trader. The mark “YO!” per

se does not mean any brand of any particular manufacturer, proprietor

or trader. On the other hand, it is a most commonly used

expression/exclamation predominantly by the youth of the country and

no monopoly can be conferred or claimed in such

expression/exclamation by any user. No malafide also can be conferred

or attributed to anyone using the said expression/exclamation to

identify its goods or services with the younger segments of MAGGI

consumers.

14. The defendant further submits that considering that the trade

mark used by the plaintiff consists of conjunctive use of “YO!” and

CS(OS) No.1122/2008 Page 13 of 29

“CHINA”, both individually being incapable of being distinctive or

acquiring distinctiveness, no exclusive right can be claimed by the

plaintiff in respect of either of the two marks individually. The trade

mark used by the plaintiff is “YO! CHINA”. “CHINA” has already been

disclaimed by the Registrar while granting registration of “YO! CHINA”.

“YO!” is common to the trade and of non-distinctive character. The

impugned registration confers an exclusive right in respect of such

non-distinctive mark such as “YO!” in favour of the plaintiff, which is in

contravention with the provision of Section 17(2)(b) of the Act, and is

therefore, ex facie invalid registration.

15. Counsel for the defendant submits that there is no

infringement whatsoever of the impugned trade mark registrations as

alleged. The defendant is not using “YO!” as trade mark which is the

condition precedent to constitute infringement under the provisions of

Section 29 of the Act. He states that the goods of the defendant in

issue in present proceedings are noodles. These goods have been sold

in the market since 1974 under the trade mark “MAGGI” which is a

household name in India and several other countries. “MAGGI” by

itself is a brand which enjoys a turnover of over Rs.493 crores. The

trade mark “MAGGI” is the brand which identifies the packaged

noodles. The said mark has even been appearing on the packaged

noodles since 1974 and have remained unchanged and continue to

appear on the packaging prominently. Accordingly, it is forcefully

asserted that it is wholly misconceived on the part of the plaintiff to

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allege that the defendant is using “YO!” as a trade mark and the plea

of infringement made by the plaintiff is liable to be rejected on this

ground alone.

16. The defendant states that in order to indicate the flavor of

noodles and to relate it to the youngsters, MASALA and CHILLY CHOW

is used as “flavor descriptor” upon the packaging highlighting the

characteristic and quality of the noodles in conjunction with “YO!” to

attract the segment of youth as targeted consumers. It is asserted

that the use of word MASALA YO! as flavour descriptor is a bona fide

use and cannot be objected. The bonfide of use of “Masala Yo!” by the

defendant is established from the fact that MAGGI CUPPA MANIA insta

noodles is a cupped packaged noodles which is instant noodles and

targeted to the youth market who would find it a useful companion on

a trip, tour, picnic, college and school outings etc. The purpose and

objective of the packaged instant noodles and its targeted consumers

which predominately comprise of the youth segment, justifies the use

of expression of excitement YO! in conjunction with the flavor

descriptor “Masala” or “Chilly Chow” by the defendant in respect of

instant noodles marketed under the well known and extensively

reputed household brand “Maggi” in India.

17. Counsel for the defendant states that the plea of infringement

is also liable to be rejected as the manner of use of the trade mark

“YO!” by the defendant has a statutory protection and the same does

not constitute infringement. He states that the use of the mark

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MASALA YO! and CHILLY CHOW YO! can in no way be treated as “trade

mark”. YO! means exclamation with excitement. He further argues

that the right of exclusive use of a registered proprietor conferred by

the Act is limited by the legislature so as not to affect the rights of

members of trade to use the registered trade mark in relation to goods

or service to indicate kind, quality, value or other characteristic of

goods and services and such use does not amount to infringement of

the right of a registered proprietor. The cumulative reading of the

provisions of section 2(1)(zb), Section 29(1) and section 30(2)(a) of The

Trade Marks Act, 1999 establishes that an infringement of a registered

trade mark is only affected when the registered trade mark is used as

a trade mark by the defendant.

18. The defendant further submits that the manner of use of the

expression “MASALA YO!” and CHILLY CHOW YO!” by the defendant

upon the MAGGI CUPPA MANIA instant noodles packaging clearly

establishes that –

i) The brands/trademarks under which the instant noodles of the

defendant are marked are MAGGI and CUPPA MANIA;

ii) The defendant used MASALA and CHILLY CHOW as “flavor

descriptor” upon the packaging highlighting the characteristic

and quality of the noodles in conjunction with “YO!” (Which

means exclamation with excitement) to attract the segment of

youth as targeted consumers.

19. The defendant submits that notwithstanding that „YO!” may

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be a registered trade mark by itself or in conjunction with the other

marks, cannot be a ground to interfere with and injunct permitted use

thereof by the statute. Such use is not a “trade mark usage”. Such

use therefore does not amount to infringement of a trademark “YO!”.

20. The defendant states that the suit is misconceived and no

injunction is liable to be issued against the defendant since there is no

likelihood of confusion or deception between the competing products

merely on account of use of the mark “YO!” by the defendant. It is

further stated that there are no similarities between the distinguishing

features of competing products including their trade marks, their

packagings and the goods in question and as such there can‟t be any

likelihood of confusion or deception by the use of the mark “YO!” in

conjunction with “MASALA” and “CHILLY CHOW” notwithstanding the

fact that the instant noodles of the defendant are marketed under its

well known, internationally reputed and household brand MAGGI which

is being used in India since 1974 and is a leading brand in the

packaged noodles segment having 91% market share. It is asserted

that there is no similarity whatsoever, between the trade mark “Yo!

China” of the plaintiff and the trade mark “Maggi” used by the

defendant. It is also stated that even there is no similarity whatsoever

between the manner of use of the expression/exclamation “Yo!”. The

term “Yo!” is not used as a brand by the defendant. There is no

prominent usage of product descriptor “Masala Yo!” by the defendant.

The trade mark and get up of the packaging of their product is

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distinctive by itself and distinguishes packaged noodles manufactured

and marketed by them. The defendant states that it has always

packaged “Maggi” culinary products in packaging having distinctive

colour combination of red and yellow since 1974. Thus the question of

any passing of arising as alleged by the plaintiff cannot arise.

21. The defendant states that the test of deceptive similarity as

laid down by the Supreme Court in the case of Ruston & Hornby AIR

1970 SC 1649 is that in case the trademarks are not identical, the test

of deceptive similarity in case of passing off and infringement is the

same. Reference is made to the decision of the Supreme Court in

Durga Dutt Vs. Navratna reported in AIR 1965 SC 980 to show that

notwithstanding, the use of the mark, there is no passing of if

defendant can establish that there are sufficient added matters to

distinguish the defendant‟s product from that of the plaintiff. It is

stressed that a combined reading of the ratio of the above two

decisions clearly establishes that claim of infringement is not

maintainable as alleged by the plaintiff against the defendant. It is

further stated that MAGGI is a well know brand in India since 1974

having immense reputation and goodwill and there can‟t be any

confusion or deception if the product is bearing the trade mark MAGGI.

The defendant submits that even if product description “Masala Yo!” is

to be compared for purposes of deceptive similarity, it should be

compared with the trade mark YO! CHINA which alone is registered for

goods. When compared together, “Masala Yo!” and “Yo! China”,

CS(OS) No.1122/2008 Page 18 of 29

cannot be held to be deceptively similar by any stretch of imagination.

22. The defendant argues that the mark “Yo!” registered in favour

of the plaintiff is not for any goods but for restaurant service in class

42 and a trade mark registered for service cannot be infringed by its

use in relation to goods. It is pointed out that there is a vast

distinction between the service mark and trade mark used in relation

to goods. It is stressed that “Yo!” per se is not distinctive of plaintiff.

There is no material produced by the plaintiff of “Yo!” per se and by

“Yo!” itself is distinctive of the restaurant business of the plaintiff. It is

stated that the plaintiff has always been using the service mark “Yo!

China” and such usage cannot confer a monopoly. Moreover YO! is

also used extensively in respect of variety of services and merchandise

by the trade and no one can claim proprietary right or monopoly in

respect of such mark.

23. Mr. Chandra, learned counsel appearing for the defendant,

has argued that the rights conferred by registration of a trademark

under Section 28 of the Act are subject to the other provisions of the

Act and also subject to the conditions that the trademark as registered

is valid. He refers to Section 17, which provides “when a trademark

consists of various matters, its registration shall confer on the

proprietor exclusive right to the use of the trade mark taken as a

whole”. He submits that though the plaintiff claims registration over

the mark “Yo!”, it has actually never used the said mark and the mark

being used as “Yo! China”. Therefore, the mere use of the expression

CS(OS) No.1122/2008 Page 19 of 29

“Yo!” in a descriptive way and not a trademark by the defendant, the

right of the plaintiff, assailing the trademark “Yo! China” to be

popularly registered, does not constitute infringement. He further

argues by reference to section 17(2) that the marks “Yo!” and “Yo!

China” of the plaintiff contain matters which are non-distinctive in

character and, therefore, the registration of these marks does not

confer any exclusive right on the plaintiff in the matter forming only a

part of the whole of the trademark so registered i.e. expression “Yo!”.

It is argued that the defendant admittedly is using the mark “Yo!” in

descriptive sense in conjunction with “Masala” and “Chilly Chow”. He

submits that since the registrations obtained by the plaintiff of the

mark in question itself is invalid, the plaintiff cannot see an injunction

founded upon such registration. He has specifically referred to the

documents showing the dictionary meaning of the expression “Yo” and

the way the various usages of the “Yo” with or without the exclamation

mark throughout the world. He argues that the expression “Yo!” could

not have been registered as a trademark by virtue of Section 9(1)(c),

which prohibits the registration of trademarks consisting exclusively of

marks or indications which have become customary in the current

language. He submits that the presumption in favour of a registered

trademark is rebuttable presumption. In support of this submission, he

relies on the decisions in N.R. Dongre & Ors. V. Whirlpool

Corporation & Ors. AIR 1995 Delhi 300. He also refers to the

meaning assigned to the word “Yo” in Wikipedia, which, inter alia,

describes the usage of “Yo” as an exclamation at the end of the

CS(OS) No.1122/2008 Page 20 of 29

sentence, either to direct focus onto a particular individual or group as

in “That girl is really hot, yo” or to strengthen meaning to a particular

point, “This hot dog is good, yo!”.

24. To meet the plaintiff‟s case, founded upon a passing of action,

Mr. Chandra submits that on comparison of the defendant‟s product

with the use of the mark “Yo!” and “Yo! China” by the plaintiff, it

cannot be said that the defendant is trying to pass off its product as

that of the plaintiff.

25. The registration obtained by the plaintiff in class 42 is in

respect of “Yo!” for restaurant included in class 42. This registration is

of 30.05.2007. Admittedly, the defendant launched its product in

March, 2008. The suit was filed by the plaintiff on or about

27.05.2008. The rectification has been filed by the defendant before

the Intellectual Property Appellate Board on 19.07.2008.

26. Having heard learned counsels for the parties and upon giving

my due considerations to the respective submissions; the documents

relied upon by them and the various authorities cited by them, I am of

the prima facie view that the plaintiff has made out a case for grant of

ad interim injunction as prayed for. First and foremost there is no

explanation as to why the defendant has used the exclamation mark

i.e. „!‟ along with the word “Yo”. The mark of the plaintiff “Yo!” and

“Yo! China” are not descriptive of the goods of the plaintiff. They do

not describe any quality or attribute of the plaintiff‟s goods. The

dictionary meaning of “Yo” in no way gives any indication of the flavor

CS(OS) No.1122/2008 Page 21 of 29

or quality, or ingredients, or the characteristics of either the plaintiffs

or the defendant‟s product. Prima facie I am of the view that the

registered marks of the plaintiff “Yo!” and “Yo! China” are arbitrary

marks in relation to the goods and services offered by the plaintiff and

the said marks are entitled to protection under the Act. The marks „Yo!‟

and „Yo! China‟ have acquired distinctiveness in relation to the

services and goods originating from the plaintiff by their extensive user

since 2002. Prima facie, it appears that these marks have acquired a

secondary meaning in so far as the goods viz. Chowmein (Noodles) are

concerned. Prima facie, I am not convinced that the registration of the

trademarks “Yo!” and “Yo! China” are liable to be cancelled for any of

the reasons cited by the defendant. Merely because “Yo!” like

“Hello!”, “Yahoo!”, “Wow!”, “Yeah!” or “Yuppy!” are exclamations

used in day to day common parlance to greet or cheer each other, or

anything or an event, they do not cease to be marks capable of being

registered as trademarks under the Act. It cannot be said that “Yo!” is

not a distinct mark. Its adoption by the plaintiff is arbitrary and it is

not descriptive of the plaintiff‟s goods and services. It cannot be said

that the mark is generic in nature. “Yo!” is not another name of

noodles (chowmein). The use of the mark “Yo!” in relation to other

goods or businesses cannot be an excuse for the defendant to use the

said mark in relation to, admittedly, the same class of products and

services for which the plaintiff has obtained registration of the said

mark.

27. A registered trademark is infringed by a person if he uses

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such registered trademark as his trade name or part of his trade name

or name of his business concern, dealing in goods and services in

respect of which the trademark is registered. It cannot be disputed

that the goods and services being offered by the plaintiff and the

goods of the defendant, namely, noodles (chowmein) are overlapping.

The defendant is using the trademark “Yo!” of the plaintiff in course of

trade in a similar manner to the manner for which the trademark is

registered. It is being used on the packaging of its products by the

defendant. “Mark” includes a heading, a label, a name, a word, a

letter or combination of thereof. Consequently, the use of the mark

“Yo!” by the defendant appears to fall within Section 29(4)(b) of the

Act.

28. I may refer to the decision of this Court in Indian Shaving

Products Ltd. & Anr. V. Gift Pack & Anr. 1998 PTC (18) 698. The

court noted the submissions of the parties in paragraphs 9 & 21 and

gave its finding in paras 23 and 52 to 54. The said being relevant are

reproduced hereinbelow.

“9. Defendants have opposed the above application and prayed for the dismissal of the application and vacation of the ex parte injunction order dated July 1, 1998 passed by this Court, inter alia, on the following grounds; …………………. The word Ultra is a descriptive and laudatory epithet having a direct reference to the character and quality of goods. It means according to the Dictionary of 'English Language' beyond what is usual or ordinary, excessive. The word 'Ultra' is thus descriptive and no monopolistic rights can be claimed by the plaintiffs therein as a trade mark. The suit is misconceived and without any cause of action as there is no goodwill that exists in

CS(OS) No.1122/2008 Page 23 of 29

respect of the word 'Ultra' in favor of the plaintiffs. Goodwill arises out of the use of a trade mark in relation to a business…………….. There is no likelihood of any confusion or deception occurring amongst the consumes or in the market considering that the competing goods of both the parties are sold under their respective well-known trade marks namely, Duracell and BPL. The word 'Ultra' merely signifies enhanced quality and is used as laudatory epithet for bona fide description of goods by both the parties. Further the packings and the trade dress of the competing goods are totally different. Hence there is a vast difference between the competing products. The allegations that the use of the word 'Ultra' by the defendants will cause confusion and deception are misconceived and fraudulent, untenable and figment of imagination of the plaintiffs.

xx xx xx xx xx xx xx xx

21. Learned counsel for the defendants has contended that the word 'Ultra' is a descriptive word. It is neither a fancy word nor a coinage of any one. It is a dictionary word with a definite meaning to it. The word 'Ultra' as per the Concussed Oxford Dictionary means" beyond; on the other side of extremely excessively". Since the said word is a word of English language the Plaintiffs cannot claim any exclusive rights therein. It is simply a laudatory epithet which is used in order to described the quality trade ad trait of a particular article in the market. Hence anyone can us the same and the plaintiffs could possibly have no objection to the same. The user of such a word cannot be registered as a trade mark under Section 9(d) of the Trade and Merchandise Marks Act, 1958.

xx xx xx xx xx xx xx xx

23. It is a well recognised principle of law that a trader or a businessman can acquire exclusive rights to use a particular word with dictionary meaning as a trade mark if it is shown to the satisfaction of the Court that it has acquired a secondary meaning or a

CS(OS) No.1122/2008 Page 24 of 29

distinctive character with the constant user for a considerable period of time. The user of the impugned word must be to such an extent that it has lost its primary meaning and has acquired a distinctive character. The moment the same is used it must remind the consumer of the goods of the plaintiffs. It has become so popular with the public by way of goodwill or a reputation that the moment it is used and referred to a picture emerges in the mind of the consumer of the article in question which is being sold under the said trade name. Thus the only qualification attached to the use of a descriptive word as a trade mark is that it must have been associated and used in connection with the goods of the plaintiffs for such a considerable period that it has come to acquire an altogether different meaning other than the one which it conveys in the language.

xx xx xx xx xx xx xx xx

52. It was next argued by the learned counsel for the defendant that the said trade mark Ultra is being used by several other persons/companies besides the defendants such as Toshiba, National and Sony. Thus the same has become publici juris and the plaintiffs cannot claim any exclusive right therein.

53. Admittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence the said defense, that other persons are also using the said trade mark, is not available to the defendants. The court is called upon to decide disputes in between the parties which are before it. The court cannot be expected to adjudicate upon a dispute which is not before it. A matter very much akin to the matter in hand came up before a single Judge of this Court. It was observed in Coolways India Vs. Prince Air Conditioning and Refrigeration, 1993(1) Arbitration Law Reporter 401. The contention that a plaintiff himself is usurping or infringing the trade mark of a third party was not to be gone into by the Court while deciding the issue in between the parties. What is to be seen by the Court is as to whether the plaintiff

CS(OS) No.1122/2008 Page 25 of 29

has acquired goodwill and reputation for his products. ……………………To the same effect is the view expressed by a learned Single Judge of this Court in Amrit Soap Company Vs. New Punjab Soap Factory, 1989(2) Arbitration Law Reporter 242. "The allegation that some other manufacturers are also using the same trade mark is of no consequence as the court is concerned with parties before it only.

54. Learned counsel has then argued that the colour scheme and get up of the two products are entirely different. Furthermore the plaintiffs are using trade mark Duracell Ultra whereas the defendants are using the trade mark BPL Ultra. The said distinguishing features are sufficient enough to separate one product from the other and no misrepresentation is likely to be caused in between the goods sold by the plaintiffs and that of the defendants. The purchasers who propose to purchase goods of the plaintiff can easily pick up them whereas those who want to have the goods of the defendants can have them easily by identifying them. I am sorry, I am unable to agree with the contention of the learned counsel for the defendant. The plaintiff admittedly are not objecting to the colour scheme and get up of the jacket of the goods of the defendants. Their case is that the defendants have usurped their trade mark and as such they are likely to filch their trade and cause loss and damage to their reputation as well as to their business. Thus the defense put forward by the defendants that the two products are dissimilar in their colour scheme and get up and dress material does not come to their rescue. Had the case of the plaintiff been that the trade mark used by the defendant is deceptively similar to that of the plaintiffs, in that eventuality the defendants could have shown that their goods are not likely to be treated and taken as the goods of the plaintiffs on account of their dissimilarity and distinctive features in colour scheme and get up and dress material. To the same effect are the observations of a Division Bench of this Court as reported in B.K. Engineering Company, Delhi Vs. U.B.H.I. Enterprises (Regd.) Ludhiana and another, AIR 1985 Delhi 210.”

CS(OS) No.1122/2008 Page 26 of 29

29. Thus, submissions similar to those advanced by the

defendant before me in similar circumstances have been considered

and rejected by the Court. I see no reason not to follow t he aforesaid

view. I may also refer to the decision of this Court in Yahoo!, INC v.

Akash Arora & Anr. 78 (1999) DLT 285. “Yahoo” is defined in the

Shorter Oxford English Dictionary to mean an expression of

exuberance or excitement. Like “Yo”, “Yahoo” too is an exclamation.

Yahoo! INC. brought the suit against the defendant to injunct the

adoption of the domain name “Yahooindia.com”, which was stated to

be similar to the domain name of the plaintiff viz. Yahoo.com. The

injunction was oppossed by the defendant by, inter alia, contending

that “Yahoo!” was a dictionary word and, therefore, could not be

appropriated as a domain name/trademark. This submission was

rejected by the Court in para 16 which reads as follows:

“16. The contention of the learned counsel for the defendant that the word 'Yahoo!' is a dictionary word and, therefore, cannot be appropriated as a domain name/trademark is also misplaced as there are number of such words being used by various companies as their trademarks. The said words although are dictionary words have acquired uniqueness and distinctiveness and are associated with the business of the concerned company and such words have come to receive maximum degree of protection by courts as was done also in the case of 'WHIRLPOOL'. In the said decision namely N.R. Dongre Vs. Whirlpool Corp.; reported in 1996 PTC (16), a Division Bench of this Court recognised the distinctiveness and uniqueness of the word 'WHIRLPOOL' which was subsequently upheld by the Supreme Court in its decision reported in 1996 PTC 583.

CS(OS) No.1122/2008 Page 27 of 29

'WHIRLPOOL' is otherwise a dictionary word and was not registered in India as a trademark. The court considering the entire gamut of the case held that the reputation of the trademark 'WHIRLPOOL' in respect of washing machines has travelled ansborder to India and, thereforee, although the respondents are not the registered roprietor of the 'WHIRLPOOL' in India in respect of washing machines can maintain action of passing off against the appellants in respect of the use of the same which has been registered in their favor in respect of the same goods. In the said decision, it was also held that registration of a trademark under the Act would be irrelevant in an action of passing off.”

30. The aforesaid reasoning of the Court is equally applicable in

the facts of the present case and, consequently, I adopt the same. I

find no merit in the defendant‟s submission that the use of the mark

“Yo!” by the defendant is not likely to lead to confusion or deception as

the defendant is using the same in conjunction “Masala” and “Chilly

Chow” on its Maggi branded noodles (chowmein). “Yo!” it appears

have become distinctive of the services and goods offered by the

plaintiff and the use of the said mark by the defendant on its products

is likely to lead to confusion and deception in the minds of the

consumers that the product of the defendant has some connection

with the plaintiff, its products and services. The plaintiff has disclosed

the extent of the use of the marks “Yo!” and “Yo! China” adopted by it

since the year 2002 and the efforts made by it in popularizing the said

marks and it cannot be said that these marks do not identify the

plaintiff and its products.

31. In Midas Hygiene Industries P. Ltd. & Anr. V. Sudhir

CS(OS) No.1122/2008 Page 28 of 29

Bhatia & Ors. 2004 (28) PTC 121 (SC), para 5, the Court has held that

normally an injunction must follow in an infringement action where it

prima facie appears that the adoption of the mark by the defendant

was dishonest. I may also refer to the decision in Laxmikant V. Patel

v. Chetanbhai Shah & Anr. (2002) 3 Supreme Court Cases 65. The

Supreme Court held:

“10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or sty le. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a away as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does nto matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”

32. It is pertinent to note that the defendant has been in business

of producing and selling noodles (chowmein) for the last about three

decades. There is no explanation why and how it is suddenly thought

of using the mark “Yo!” in relation to its products for which the plaintiff

has a registration in its favour. The submission of the defendant that

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the expression “Yo!” is not being used as a trademark does not

impress me because Section 29(4) does not require that the defendant

should be using the trademark of the plaintiff, as a trademark. It is

sufficient if the trademark of the plaintiff is used as a mark by the

defendant in relation to goods or services, which are identical or

similar to those for which the trademark is registered. As aforesaid,

the case appears to fall under Sections 29(4)(a), (b) and 29(5) of the

Act. I am, prima facie, of the view that the use of the plaintiff‟s

trademark “Yo!” by the defendant is likely to cause confusion amongst

the consumers of noodles (chowmein), who according to both the

parties are youngsters/teenagers. For the aforesaid reasons, I allow

the application and restrain the defendants in terms of the prayer

made in the application till the disposal of the suit.

33. Any observations made in this order are only tentative and

not final and shall not affect the final determination of the suit.

34. Application stands disposed off with costs quantified at

Rs.25,000/-.

(VIPIN SANGHI) JUDGE JULY 01, 2009 rsk