The feud between two different parties claiming to be owners of the trademark SRI PAANDI was highlighted to the public sometime in 2005 when the parties opened their South Indian restaurants near each other in the same block of shop lots in Petaling Jaya (PJ).
Confusion arose among customers as not only did the restaurants have the same name in the same type font, but the waiters of both restaurants were also clad in the same purple-coloured uniform. It did not help that both restaurants claimed to originate from the well-known SRI PAANDI restaurant in Brickfields, which is known for its delicious South Indian food.
This confusion between the restaurants in PJ resulted in customers standing outside the restaurants, unsure as to which restaurant was the true SRI PAANDI restaurant. Waiters of both restaurants, taking advantage of this situation, would beckon aggressively to customers to attract them to enter their respective outlet. On a legal front, the battle proceeded to the IP Court with the owner of the first restaurant in PJ (a company run by K. Saraswathy) initiating a legal suit for trademark infringement and passing off against the owner of the second restaurant that started on the same row of shops.
In what turned out to be an extremely twisted and complex case with evidence dating back to 1987 (when the original SRI PAANDI restaurant was set up by five founders in Brickfields), the IP Court decided, on 31 January 2011, that the core issue in this case was the issue of ownership. Who owns the mark? Is it the Plaintiff, that being a company run by K. Saraswathy, which was incorporated in 2003 and claimed to be bona fide owner of the trademark SRI PAANDI during its registration of the mark SRI PAANDI under Classes 30 and 43 in 2005? Or is it the Defendants, that being the Sri Paandi Restaurant enterprise and Sri Paandi Restaurant Sdn Bhd company, comprised of individuals who are not the five founders of the original SRI PAANDI restaurant in Brickfields, but who took over the operations of the said restaurant in Brickfields from the original five founders and are still running the said operations there to date?
KASS was the IP consultant to the Defendants in this case. We adduced ample evidence to show that the trademark was owned by the original five founders of the original SRI PAANDI restaurant since 1987 and the trademark was thereafter transferred to the subsequent owners of the restaurant. Unfortunately, the transfer of the trademark was verbal and implied by the parties and there was no written agreement to prove the transfer of the trademark.
However, despite the lack of evidence to show the transfer of the mark, Justice Dato’ Azahar bin Mohamed found that the Plaintiff was not the bona fide owner of the trademark SRI PAANDI due to the following facts revealed during trial: (i) K. Saraswathy from the Plaintiff company knew when she signed the Statutory Declaration declaring that the Plaintiff was the true owner of the mark that there was a SRI PAANDI restaurant in Brickfields; (ii) her husband was a part-time worker at the Brickfields restaurant as early as 1990; (iii) the restaurant in Brickfields was established since March 1987; and (iv) the Plaintiff was only incorporated in 2003 and registered the SRI PAANDI mark in 2004. These facts prove that the Plaintiff was neither the first user nor the author of the SRI PAANDI mark. The Court thus decided that the registered SRI PAANDI marks in Classes 30 and 43 were wrongfully remaining on the Trademark Register and should be removed. Corresponding to this decision, the claims made by the Plaintiff against the Defendants were dismissed.
Both parties have not appealed the High Court decision. This case reemphasizes the need for parties to keep records of their first use of their mark and for any transfer of rights to be recorded in writing.
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