IN THE HIGH COURT AT CALCUTTA ORIGINAL SIDE (Intellectual Property Rights Division) BEFORE: The Hon’ble Justice Ravi Krishan Kapur IA NO. GA-COM/1/2025 In IP-COM/14/2025 ANNA MARIA FORGIONE AND ANR Vs. FIRE AND ICE HOLIDAYS INN PRIVATE LIMITED For the petitioner : Mr. Debnath Ghosh, Sr. Adv. Mr. Sourajit Dasgupta, Adv. Mr. S. Prasad, Adv. Mr. P. Basu, Adv. For the respondent : Mr. Mr. Ayan Banerjee, Adv. Mr. Avijit Dey, Adv. Judgment on : 28.03.2025 Ravi Krishan Kapur, J.: 1. This is a suit for infringement. 2. Briefly, the petitioner no.1 is a chef and runs a pizzeria and restaurant by the name of “Fire and Ice”. The name “Fire and Ice” was conceived of by the petitioner as far back as in January 1995. The first such restaurant had commenced operations at Katmandu, Nepal. Over the passage of time, the business of the petitioner has gained tremendous goodwill and reputation. Subsequently, the petitioner has also opened a restaurant in Kolkata in or about 2005. The mark and phrase “Fire and Ice” has been conceived of and adopted by the petitioner in relation to its business and it is alleged that the same has acquired a distinctive character and there 2 is immense popularity and goodwill associated with the mark. The petitioner has also obtained registration in its favour. The unique colour combination, getup and overall trade dress is also distinctively associated with the business of the petitioner exclusively and none other. 3. The petitioner also alleges that the words “Fire” and “Ice” are essential features of the mark of the petitioner and are exclusively associated with the petitioner. 4. In or about July 2024, the petitioner came to learn that another restaurant has been opened by the defendant having the name “Fire and Ice” and thereby infringes upon the mark of the petitioner. 5. By a notice dated 10 July 2024, the petitioner had called upon the respondent to cease and from using the impugned mark. Subsequently, the petitioners were surprised to learn that the respondent had also filed an application for registration of the mark “Fire and Ice Holiday Inn”. 6. It is alleged that in running a restaurant with the impugned name there is dishonest and ulterior intent to trade on the goodwill of the petitioner. Hence, the instant suit and the prayers for interim protection. 7. The matter had been adjourned on several dates. The respondent has filed an undertaking on 4 March 2025 which is taken on record signed by the promotors to the effect that they are ready and willing to forthwith change their name and not use the mark “Fire and Ice”. The respondent also undertakes that they will not proceed to abandon the trade mark application for the registration of the mark “Fire and Ice Holiday Inn”. In view of the unconditional undertaking filed by the respondent there is no 3 scope for adjudication of any dispute. The grievance of the petitioner has for all purposes been resolved. 8. In such circumstances, there shall be an order of injunction limited to the extent that the respondent shall not use the impugned mark “Fire and Ice” either as trade mark or services or trade name and is restrained from doing so. The respondent is also directed to take necessary steps to change the impugned trade name on or before 15 April 2025. In terms of the above undertaking, the respondent is also directed to take steps to withdraw the proceedings before the Registry. 9. It is made clear that there has been no adjudication on whether the word “Fire” or “Ice” independently and separately forms a distinctive part of the trading name or mark of the petitioner or whether the petitioner is entitled to claim any right in respect thereof. 10. With the above directions nothing further survives in the suit or the interlocutory application. 11. By consent of the parties both the suit and the interlocutory application being IP-COM 14 of 2025 and GA-COM 1 of 2025 respectively stand disposed of. 12. Let there be a decree in terms of the above. (Ravi Krishan Kapur, J.)