Tervinder Singh Jhans & Others v. Pankaj Rai & Others

High Court of Judicature at Bombay, Nagpur Bench | Decided: 1 September 2026 Appeal Against Order No. 42 of 2026 Bench: Hon’ble Mr. Justice Y.G. Khobragade Citation: 2026:BHC-NAG:11473

Background

The appellants are Tervinder Singh Jhans, M/s Barbecue a proprietary concern through its proprietor Tervinder Singh Jhans and Barbecue Food Services Pvt. Ltd., all having their registered office at Plot No. 2B, Mount Road Extension, Sadar, Nagpur. The respondents are Pankaj Rai, Kumkum Pankaj Rai, Mrityunjay Surendra Singh, and Epices Hospitality (OPC) Pvt. Ltd., all based at Satyam Apartment, Canal Road, Gokulpeth, Nagpur.

The appellants claimed to have been carrying on the business of providing food and beverage services in the name and style of BARBECUE at Sadar, Nagpur since the year 1994 a period of over thirty years. In the year 1994 the appellants created an artistic work in the label and logo of their firm BARBECUE, having a peculiar and distinctive style of cursive writing, colour scheme and overall artistic get-up comprising the word BARBECUE written in cursive style accompanied by a diamond-shaped device mark in orange and bright yellow colours. The appellants applied for registration of the trade mark comprising the word BARBECUE along with the distinctive colour combination and style of writing in the year 2005. The Registrar of Trade Marks granted registration in favour of the appellants under Class 42 as evidenced by a certificate dated 9 January 2008, and under Class 43 for restaurant services as evidenced by a certificate dated 9 November 2020, both in device form. On 6 July 2022 the Registrar of Copyrights issued a copyright registration certificate No. A-144348/2023 in respect of the artistic work in favour of the appellants. The appellants also held registration with MSME and Udyam authorities. Their sales from 1994-95 to 2019-20 over a period of twenty-six years amounted to approximately Rs. 39,04,86,774.

In November 2022 the appellants noticed that the respondents defendants No. 2 and 4, being Kumkum Pankaj Rai and Epices Hospitality (OPC) Pvt. Ltd. had commenced supplying food items through online platforms including Zomato and Swiggy under the name and style BARBECUE Gokulpeth, Nagpur, using a mark, label and logo which the appellants contended was deceptively similar to their own trade mark, copyright and device mark. The appellants issued a legal notice dated 27 December 2022 calling upon the defendants to desist from infringing their artistic work, label and device mark. The defendants did not comply.

The appellants thereupon instituted Trade Mark Suit No. 02 of 2026 before the District Court, Nagpur, seeking a declaration and permanent injunction restraining the defendants from infringing their copyright and trade mark in BARBECUE and BARBEQUE. Simultaneously they filed Exhibit No. 5 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking a temporary injunction. The learned District Judge-15, Nagpur, by the impugned order dated 4 August 2026, declined to grant the temporary injunction, primarily on the ground that the appellants and defendants were carrying on their respective businesses at different geographical locations Sadar and Gokulpeth respectively and that the expression BARBECUE or BARBEQUE was not exclusively associated with the appellants in the minds of consumers, and hence no case of passing off arose.

The appellants preferred the present Appeal Against Order No. 42 of 2026 before the Bombay High Court, Nagpur Bench, under Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908, challenging the impugned order. With the consent of both sides the matter was heard finally at the stage of admission.

The defendants’ case before the appellate court was that the words BARBECUE and BARBEQUE were distinct from each other, that the appellants were mischievously and interchangeably using both words, that neither word was a word mark but a composite or device mark comprising the word written in a unique cursive style with a sweeping underline and a distinctive diamond-shaped logo, that no registration had been granted in favour of the appellants for a standalone word mark BARBECUE, that the defendants’ application for registration of BARBEQUE was sub-judice before the competent authority, that the defendants were operating a cloud kitchen at Gokulpeth and were not running a restaurant having a label or logo similar to the plaintiffs, and that geographic separation between Sadar and Gokulpeth meant there was no confusion in the minds of consumers.

Issues for Determination

1. Whether the defendants’ use of the phonetically similar word BARBECUE or BARBEQUE in connection with their online food supply business constituted a prima facie infringement of the appellants’ registered trade mark, device mark and copyright in the artistic work in BARBECUE or BARBEQUE, notwithstanding that the defendants operated a cloud kitchen through Zomato and Swiggy rather than a physical restaurant.
2. Whether the geographical separation between the appellants’ establishment at Sadar, Nagpur and the defendants’ online food supply business operating under the name BARBECUE Gokulpeth was a legally sufficient ground for the Trial Court to refuse a temporary injunction in an action for trade mark infringement and passing off.
3. Whether the phonetic similarity between the words BARBECUE and BARBEQUE being the appellants’ registered trade mark and the name used by the defendants was sufficient to establish prima facie infringement under Section 29 of the Trade Marks Act, 1999, particularly having regard to the manner in which consumers use online food delivery aggregator platforms such as Zomato and Swiggy.
4. Whether the impugned order of the Trial Court was perverse and unsustainable in law for failing to appreciate the material on record and the governing legal principles on trade mark infringement and passing off, warranting interference by the appellate court.
5. Whether the appellants had made out a prima facie case, demonstrated that the balance of convenience lay in their favour, and established that they would suffer irreparable harm if the injunction were refused, so as to entitle them to a temporary injunction pending the trial.

Key Holdings of the Court

• Court held that the words BARBECUE and BARBEQUE are phonetically similar words. The defendants were using the phonetically similar word BARBECUE in connection with their online food supply business under the name BARBECUE Gokulpeth, and the appellants carried on their restaurant business under the trade mark and copyright BARBECUE or BARBEQUE at Sadar, Nagpur. The phonetic similarity between the two names was prima facie established.
• Court held that the defendants had prima facie infringed the appellants’ artistic copyright, trade mark and device mark. The defendants never approached the competent authority for registration of a copyright or trade mark in respect of the name they were using. The defendants had adopted a phonetically similar name and were running an online food supply business under it. The Court found that such use constituted a prima facie infringement of the appellants’ registered artistic copyright, trade mark and device mark, applying the principles laid down by the Supreme Court in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and others and other decisions cited in the judgment particularly that the use of a phonetically and visually similar word, especially when accompanied by a similar representation, may amount to infringement under Section 29 of the Trade Marks Act, 1999.
• Court held that the Trial Court’s reliance on geographical separation between Sadar and Gokulpeth as the primary ground for refusing the injunction was perverse and unsustainable in law. The Trial Court had proceeded on the ground that the two businesses were located at different geographical locations and that the expression BARBECUE or BARBEQUE was not exclusively associated with the appellants in the minds of consumers, and hence passing off did not arise. The Court found that this approach failed to appreciate the material on record and the governing legal principles on trade mark infringement and passing off. The finding was perverse and the impugned order was liable to be quashed and set aside. In arriving at this conclusion, the Court specifically noted the manner in which consumers behave while using food delivery aggregator platforms such as Zomato and Swiggy, where a search for BARBECUE by any consumer on these platforms would be likely to bring up the defendants’ listing and cause confusion with the appellants’ well-established restaurant.
• Court held that the appellants had established all three essential ingredients for the grant of a temporary injunction. The appellants had made out a prima facie case by demonstrating over thirty years of prior use and registration of the trade mark and copyright. The balance of convenience lay in favour of the appellants they were the prior adopters and registered proprietors, while the defendants had commenced business under a phonetically identical name without seeking any registration. If the defendants were permitted to continue their business under the phonetically similar name BARBEQUE during the pendency of the suit, it would cause irreparable loss and injury to the appellants’ goodwill and reputation in the market.
• Court allowed the appeal, quashed and set aside the impugned order dated 4 August 2026, and issued a temporary injunction restraining the respondents and defendants through their partners, assigns, licensees, agents and all persons claiming through or under them from using, selling, advertising, circulating, displaying, marketing or otherwise dealing with the trade mark BARBECUE or BARBEQUE or any mark deceptively similar to the label, device mark, trade mark and artistic work or copyright of the appellants, during the pendency of the suit. No order as to costs was made.

Statutory Provisions Involved

Section 29 of the Trade Marks Act, 1999 governs infringement of a registered trade mark. The Court applied this provision and specifically relied on the observations in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and others to the effect that the use of a mark that is phonetically and visually similar to a registered trade mark would constitute infringement, and that Sub-section 9 of Section 29 provides that where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation. The Court found that the defendants’ use of the word BARBECUE in their online business name BARBECUE Gokulpeth was prima facie hit by this provision.

Section 2(zb) of the Trade Marks Act, 1999 defines a trade mark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others. Section 2(h) defines a mark as deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. Section 2(m) defines a mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours or any combination thereof. These provisions were set out and applied by the Court in assessing the nature of the marks involved and the standard for deceptive similarity.

Section 2(c) of the Copyright Act, 1957 defines an artistic work to include a painting, sculpture, drawing including a diagram, map, chart or plan, an engraving or a photograph whether or not such work possesses artistic quality, a work of architecture, and any other work of artistic craftsmanship. The Court applied this provision in the context of the appellants’ copyright registration in the artistic work comprising the BARBECUE label with its distinctive cursive writing and diamond-shaped device, to find that the defendants’ use prima facie infringed the appellants’ copyright.

Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 govern the grant of temporary injunctions and require the applicant to establish a prima facie case, demonstrate that the balance of convenience lies in its favour, and show that refusal would cause irreparable harm. Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908 was the basis of the appellate jurisdiction exercised by the Division Bench in entertaining the appeal against the Trial Court’s order refusing the temporary injunction.

Reasoning of the Court

The Court’s reasoning proceeded by surveying the settled legal principles on trade mark infringement and passing off, applying them to the facts of the case, and then identifying the specific error committed by the Trial Court.

On the legal principles, the Court drew on a series of Supreme Court decisions cited by both parties. From N.R. Dongre v. Whirlpool Corporation, the Court drew the principle that injunction is a relief in equity and that prior use and trans-border reputation can support the grant of interim injunctive relief in a passing off action. From Sanjay Soya Pvt. Ltd. v. Narayani Trading Company, the Court drew the test for passing off the classic trinity of goodwill, misrepresentation and damage and the principle that fraud is not a necessary element of the cause of action. From T.V. Venugopal v. Ushodaya Enterprises, the Court drew the principle that adoption of a mark associated with an established business for the purpose of riding on its reputation and goodwill is fraudulent from inception and must be restrained by a court with a duty to protect both the proprietor and the consuming public. From Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, the Court drew the principle that a mark acquires distinctiveness through consistent and prolonged use and that the overall impression of the mark is relevant in the case of composite marks. From Impresario Entertainment and Hospitality Private Limited v. M/s Social Tribe, the Court drew the principle that the addition of a suffix word to a registered trade mark does not take away the fact of infringement where the essential feature of the registered mark has been copied. From Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and others, the Court drew the direct and decisive principle that in an infringement action once it is found that the defendant’s mark is identical with the plaintiff’s registered trade mark, the court cannot go into an inquiry whether the infringement is likely to deceive or cause confusion, and that phonetic and visual similarity constitutes infringement under Section 29(9) of the Trade Marks Act, 1999. From Heinz Italia v. Dabour India Ltd. and Parle Products (P) Ltd. v. J.P. and Co. Mysore, the Court reinforced the principle that similarities rather than dissimilarities must be considered, that phonetic similarity cannot be ignored, and that the broad and essential features rather than microscopic differences are the test.

Applying these principles to the facts, the Court found that the appellants had been running their restaurant business under the name BARBECUE at Sadar, Nagpur, for over thirty years, had device mark registrations under Classes 42 and 43, had copyright registration in the artistic work, had established sales of approximately Rs. 39 crores over twenty-six years, and had used a distinctive label comprising the word BARBECUE in cursive style with a diamond-shaped device. The defendants had commenced supplying food items through Zomato and Swiggy under the name BARBECUE Gokulpeth without ever seeking registration of the name as a trade mark or copyright. The phonetic similarity between the two names was not in serious dispute.

The Court then identified the error in the Trial Court’s reasoning. The Trial Court had refused the injunction solely on the ground of geographical separation between Sadar and Gokulpeth. The Court held this approach was fundamentally misconceived in the context of online food delivery platforms. When a consumer searches for BARBECUE on Zomato or Swiggy, both the appellants’ restaurant and the defendants’ cloud kitchen would appear, making confusion inevitable regardless of their physical distance. Geographical proximity within a city is in any event not a sufficient basis for refusing a trade mark infringement or passing off injunction where the marks are phonetically identical a principle reinforced by the Supreme Court’s decision in Laxmikant V. Patel v. Chetanbhai Shah cited within Sanjay Soya. The Trial Court’s finding that BARBECUE or BARBEQUE was not exclusively associated with the appellants was also found to be contrary to the evidence of thirty years of use and registered trade mark protection.

Doctrinal Significance

The Tervinder Singh Jhans judgment, while an interlocutory order, makes a practically important contribution to Indian trade mark law in two areas the application of trade mark infringement principles to online food delivery platforms, and the treatment of geographical separation as a ground for refusing injunctive relief.

Its most practically significant contribution is the court’s express recognition that geographical separation between competing businesses in the same city is not a sufficient ground for refusing a trade mark injunction when both businesses are accessible through online food delivery aggregator platforms such as Zomato and Swiggy. The Court’s observation that a consumer searching for BARBECUE on these platforms would encounter both the appellants’ and defendants’ listings irrespective of their physical locations reflects a contemporary and commercially realistic understanding of how food businesses are now discovered and patronised by consumers. This is a useful and timely development of the principle, established in Laxmikant V. Patel v. Chetanbhai Shah, that geographical proximity within a city is not a meaningful barrier to confusion in passing off and trade mark infringement cases.

The judgment also reinforces the principle drawn from Renaissance Hotel that in a trade mark infringement action based on a registered mark, once phonetic and visual similarity is established, the court is not required to conduct a separate inquiry into whether confusion in the minds of consumers would actually result. The addition of a geographical suffix such as Gokulpeth to the defendant’s name does not neutral the infringement where the essential word element of the registered mark here BARBECUE has been adopted wholesale by the defendant.

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