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A wake up call for your trademark registration: Is your business protected?

A recent case of trademark violation proceeding reported by Emirates 24/7.

Calicut Paragon Restaurant LLC issues legal notices 15 restaurants A South Indian restaurant chain in the UAE has issued legal notice to 15 restaurants for alleged infringement of its trade names 'Paragon' and 'Calicut', resulting in alleged unfair competition by them.

The owners of Calicut Paragon Restaurant, established in Kozhikode in Kerala about 75 years ago and nine years ago in the UAE, have claimed a compensation of Dh10 million from each of the 15 restaurants in different Emirates for using their legally registered trade names 'Calicut' and 'Paragon'.

The initiation of legal proceedings against restaurants for using the name of a well-known place in Kerala has caught the attention of the expat Keralite community in the UAE, since there are many restaurants with place name prefixes like 'Thalassery', 'Malabar' and 'Kumarakom'.

Speaking to Emirates 24|7, Sumesh Panhikeyil Cheruvari, Managing Director of the Dubai-based Calicut Paragon Restaurant LLC, said the legal notice were issued against 15 new restaurants started in the last two years, for using the 'Calicut' and 'Paragon' brand names registered by his company with the UAE trade mark authorities. The new restaurants, some of them started by his former managers and employees, were thus guilty of unfair business practice. Sumesh said his company's reputation would be affected if any untoward incident like food poisoning happened in any of the new restaurants using the brand names 'Calicut' and 'Paragon.'

Sumesh claims that 'Calicut', 'Paragon' and 'Salkara' are registered trade names in seven countries -- UAE, Qatar, Kuwait, Oman, Bahrain, Saudi Arabia and Singapore. Legal consultants Al Tamimi & Co, representing Calicut Paragon in the case, said four restaurants have been already served with legal notice and given 25 days' notice to revoke their names.

"Our client, Calicut Paragon Restaurant LLC, has instructed us to approach you by way of this legal notice to immediately cease and desist from infringing their registered trademark that is solely owned by our client.

"As you will be aware, Calicut Paragon is a well-known business in the restaurants sector. Mr Sumesh has used his 'Paragon' and 'Calicut' trademarks in relation to all aspects of his high-profile and successful restaurant business.

"His rights in these trademarks are an extended usage of the first Paragon Restaurant in Calicut, Kerala, which was established in 1939," says the legal notice, a copy of which is available with Emirates 24|7.

"We are an established name in the restaurant business and our regular footfall in the Karama outlet alone is around 1,200 per day.

"We have a lot of multinational customers, especially from Europe, who visit our restaurant. Our reputation has gone up among non-Keralite customers after we bagged best budget hotel awards from 'Time Out', 'Ahlan' and 'Times Now'.

"In the last two years, I have seen a proliferation of new restaurants with our names and style. Some of them were started by my former managers who had left on not-so-good terms. I could have taken legal action against them earlier, but now I have to protect my trade name because in case some unhappy incident like food poisoning happens in these restaurants, my reputation will also be affected," said Sumesh on the telephone from Calicut (the actual place) where his grandfather Govind and father D M Valsan started the original restaurant under the name Paragon Baking Company in 1939.

Counterfeit restaurants are a real challenge both in India and the Gulf, he added.

Calicut Notebook... Royal... Delight...

Gopi Poovamullathil, partner of Calicut Notebook, one of the restaurants that received the legal notice, told Emirates 24/7: "We have received a legal notice. We will go through the proper channel. Everybody feels that Calicut is the name of a place and it cannot be someone's brand name.

"I hail from Calicut. My business partner Vijayan is also from Calicut. There are many businesses with place names, though I don't know all its legal aspects. Notebook is a different and unique name for a restaurant. We have not imitated anyone."

"We had taken permission from the Dubai Economic Department and are doing business legally, following government regulations. We have two restaurants with the name Calicut Notebook," Gopi added.

There are many South Indian restaurants in the UAE with similar names --- Paragon Castle, Calicut Royal, Calicut Saawariya, Delight Calicut, Calicut Gate, Happy Malabar Paragon Restaurant, New Paragon, Malabar Paragon, Paragon Palace, Royal Paragon, Calicut Royal Food and Paragon Calicut/Abu Dhabi.

The legal serving

The legal notice talks about the Calicut Paragon Restaurant awards and that many celebrities from India like the late former Prime Minister Rahul Gandhi, film director Mira Nayyar, painter M F Hussain, actresses Noora Armani and Malaika Arora have visited the restaurant.

The seven-page legal notice goes on to state that 'Paragon' and 'Calicut' are considered as well-known trademarks and Sumesh retains the legal and exclusive protection as provided under the UAE Federal Trademark Law No. 37 of 1972 and other subsequent amendments. Any violation or infringement of the exclusive rights of the client is subject to criminal and civil liabilities and sanctions.

"We have served legal notice to four or five restaurants in the list and due to the long Eid holidays, many of the outlets were closed. Now we will serve the notice to the remaining restaurants which use the name Calicut or Paragon," said Madhu V Suriyan, legal consultant from Emirates Patents and Trademark.

What is at stake?

Pointing out the punitive measures in the UAE trademark and brand protection rules, the legal notice urges the restaurants to "cease and desist using or copying any material that includes the trademarks 'Paragon' and/or 'Calicut'. It also warns them to remove the signage and discard any material that includes the client's trademarks and or trade name of the respondent (Calicut Paragon Restaurant LLC), immediately change their trade names, provide a written undertaking to cease trading under these names and provide a consent to hand over all printed material, letterheads, stickers, business cards and other stationery or billboards and advertising materials bearing the names 'Calicut' and 'Paragon'.

The legal notice also urges other alleged copycats to deregister their trade names and reimburse legal expenses and attorney's fees that the respondent incurred to send the legal notice through the court.

Advocate Madhu said as per UAE trademark laws, a 25-day legal notice was given to these restaurants and if they don't comply with the demands in the notice, further proceedings will be initiated through the Dubai Court of First Instance.

It is true that Calicut is a place name and an individual or company cannot claim ownership of a place name. But when it is a registered trade name in the UAE, it is protected. We have similar cases of business rivals misusing place names like Malabar and the court orders went in favour of the trademark owner in the UAE," he said, adding that the new restaurants did not use any other place names like Kasargod or Kannur because 'Calicut Paragon' is a well-known name and they want to take a shortcut to attract customers.

© Emirates 24|7 2014

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