Delhi High Court
Monish Gujral & Ors vs M/S Best Food & Anr on 9 August, 2016
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
3
+ CS (COMM) 67/2015 & I.A. Nos. 26099/2015 & 5378/2016
MONISH GUJRAL & ORS ..... Plaintiffs
Through: Ms. Nancy Roy with Ms. Adya Khanna,
Advocates.
versus
M/S BEST FOOD & ANR ..... Defendants
Through: Ex parte by order dated 10th February
2016.
CORAM: JUSTICE S. MURALIDHAR
ORDER
% 09.08.2016
1. Monish Gujral, Rupa Gujral, Ashim Gujral and Moti Mahal Delux
Management Services Pvt. Ltd., Plaintiff Nos. 1 to 4 respectively, have filed
the present suit against M/s. Best Food and Mr. Vinay Garg, Defendant Nos.
1 and 2 respectively, praying for a permanent injunction and damages for
infringement of trademark, passing off and unfair competition.
2. The Plaintiffs state that they are the registered proprietors of the well-
known trademarks 'MOTI MAHAL' and MOTI MAHAL Formative marks
which are registered in India and in many jurisdictions across the world.
Plaintiff No. 4 is stated to be running a chain of Moti Mahal restaurants.
3. It is stated that the Defendants were ex-franchisees of the Plaintiffs and
were into the business of providing hospitality services. The grievance of the
Plaintiffs is that the Defendants continued to carry their operations under the
said trademark MOTI MAHAL Delux Tandoori Trail despite the franchisee
agreement having being terminated on 25th February 2015. The Plaintiffs
claimed that such continued unauthorised use of the said trademarks by the
Defendants is most likely to cause confusion in the minds of the consuming
public that there is some association between the Plaintiffs and the
Defendants, when in fact there is none. Consequently, the present suit was
filed.
4. On 23rd December 2015 while issuing summons in the suit and notice in
the application IA No. 26099 of 2015 under Order XXXIX Rules 1 & 2
CPC, this Court granted an ex parte ad-interim injunction restraining the
Defendants from using the trademark/trade name MOTI MAHAL/MOTI
MAHAL Delux Tandoori Trail or any other trademark which may be
deceptively similar to the Plaintiffs' trademarks. Further, a time of two
weeks was granted to the Defendants to remove the signboard placed on
their restaurant displaying the Plaintiffs' trademark..
5. Subsequently, despite service of summons and notice, the Defendants did
not appear. They were proceeded ex parte by an order dated 10th February
2016.
6. The Plaintiffs filed the affidavit of evidence of Plaintiff No. 1 Monish
Gujral, by way of examination-in-chief enclosing original documents. The
deponent of the affidavit has marked the Plaintiffs' documents as exhibits.
The Plaintiffs' evidence was closed on 29th July 2016.
7. This Court has heard the submissions of Ms. Nancy Roy, learned counsel
for the Plaintiffs.
8. The affidavit of Mr. Monish Gujral, Plaintiff No. 1 has remained
uncontested. Plaintiff No. 1 states that he is the authorized representative of
Plaintiff No. 4 and is competent to sign, verify and file the present affidavit
of evidence. The uncontested facts emerging from the affidavit of Plaintiff
No. 1 are as under:
(i) The Plaintiffs are the registered proprietors of the well-known trademark
'MOTI MAHAL' and MOTI MAHAL Formative marks in India and in
many jurisdictions of the world.
(ii) The Defendants are ex-franchisees of the Plaintiffs and are into the
business of providing hospitality services. The franchisee agreement dated
8th February 2013 entered into between the parties has been marked as
Exhibit PW-1/2. The said franchisee agreement was terminated on 21st
February 2015. A copy of the termination letter dated 21st February 2015 has
been marked as Exhibit PW-1/3.
(iii) The Defendants are aware of the ownership of the trademark 'MOTI
MAHAL' MOTI MAHAL Delux Tandoori Trail and MOTI MAHAL
Formative marks of the Plaintiffs and the goodwill and reputation enjoyed
by the Plaintiffs in and to the said trademarks. The Defendants were aware
that they have no right in any manner whatsoever to use the said trademarks
and in any event after the termination of the franchisee agreement.
(iv) The photographs of the premises of the Defendants showing the
continuous unauthorized use of the trademark 'MOTI MAHAL Delux
Tandoori Trail' after the termination of the franchisee agreement has been
exhibited as Exhibit PW-1/4.
(v) Tracing the history of the trademark 'MOTI MAHAL', it is pointed out
that Mr. Kundan Lal Gujral, the grandfather of Plaintiff Nos. 1 and 3 and the
father-in-law of Plaintiff No. 2 opened the first Moti Mahal restaurant way
back in 1920 in Peshawar (now in Pakistan). After the partition in 1947, he
shifted to Darya Ganj in Delhi. Around 1948, Mr. Kundan Lal Gujral also
opened a hotel in the name of Moti Mahal in Darya Ganj.
(vi) Mr. Kundan Lai Gujral entered into a partnership agreement dated 5th
September 1951 with Mr. Thakar Das Maggo, Mr. Kundan Lai Jaggi, Mr.
Karam Chand Sarwal and Mr. Dharam Singh Uberoi by virtue of which the
above named partners agreed to run the business in the name of MOTI
MAHAL HOTEL. It was further agreed upon by the parties to the said
partnership agreement that Mr. Karam Chand Sarwal and Mr. Dharam Singh
shall have no concern with or interest in the restaurant business of MOTI
MAHAL Restaurant and further if, at any time in future, Mr. Karam Chand
Sarwal or Mr.Dharam Singh retire from the said partnership, or the
partnership is dissolved, they shall have no right to use the name MOTI
MAHAL in any business which they start jointly or severally.
(vii) The MOTI Mahal restaurant continued to do well and established itself
as an iconic landmark of Delhi. However, the hotel business did not do very
well and was eventually closed.
(viii) It is stated that on 16th February 1959 Mr. Kundan Lal Gujral become
the absolute owner of the property at Darya Ganj. He and Mr. Nand Lal
Gujral (father of Plaintiff Nos. 1 and 3 and husband of Plaintiff No. 2), with
a view to expanding their restaurant business started a restaurant in South
Extension Part-II, New Delhi under the name and style of Moti Mahal
Delux. They had entered into a partnership agreement on 18th August 1975
with Mr. Sanjiv Kohli and Ms. Manorama Kohli, Mr. Kailash Chander
Sarwal and Ms. Nirmala Chadha. The word 'DELUX' was added to the
name to distinguish it from the main MOTI MAHAL restaurant in Darya
Ganj.
(ix) Other partnerships were entered into between Mr. Kundan Lal Gujral
and Mr. Nand Lal Gujral and they opened other restaurants at Shop No. M-
30 and M-30A in partnership with others by the name of MOTI MAHAL
Delux-II in the year 1977. Moti Mahal restaurant at Darya Ganj was not
doing good business on account of which the family of the Plaintiffs decided
to retire from the said ownership. The Plaintiffs' family relinquished their
shares in the said partnership to Mr. Yoginder Nath Chadha, Mr. Avinash
Chander Chaddha, Mr. Kushal Deep and Mr. Vinod Chadha and permitted
them to use the mark MOTI MAHAL with respect to restaurant at Netaji
Subhash Place, Darya Ganj.
(x) It is asserted that despite transfer of its shares in Darya Ganj restaurant,
the Plaintiffs' family retained the exclusive right to use the trademark MOTI
MAHAL and precluded the transferees from using their trademark MOTI
MAHAL for any other restaurant. It is stated that Gujral family continued to
expand the business and diligently protected its trademark rights in MOTI
MAHAL. The Sarwal family was only permitted to use the trademark MOTI
MAHAL with the suffix DELUX and never MOTI MAHAL per se.
(xi) It is asserted that the name MOTI MAHAL is just not a name but in the
food industry has become a brand inasmuch as a mere mention of the name
of MOTI MAHAL depicts the source which has now come to have been
exclusively associated with the Plaintiffs and none else. The trademark
MOTI MAHAL has acquired a secondary meaning for excellence in food
and service in the hospitality business.
(xii) The mark/name MOTI MAHAL being a coveted intellectual property
of the Plaintiffs, registrations were also obtained for the trademarks MOTI
MAHAL and MOTI MAHAL DELUX, the details of which are given as
under:
Trade Number Date Class Goods
Mark
MOTI 580007 28.8.1992 29 Meat, fish chicken, poultry,
MAHAL meat extracts, preserved,
dried and cooked fruits and
vegetables, jellies, jams,
eggs, milk and other dairy
products, edible oils and
fats, preserves, pickles.
MOTI 1249495 13.11.2003 42 Providing of food and
MAHAL drink, temporary
accommodation, medical,
hygienic and beauty care,
veterinary and agricultural
services, legal scientific
and industrial research,
computer programming.
(xiii) Apart from the above registrations, the Plaintiffs have also obtained
the following registrations:
Trade Mark Number Date Class Goods
MOTI 1246463 29.10.2003 35 Advertising business
MAHAL management, business
Management administration and
Services office function.
The certified copies of the registration certificates are marked and exhibited
as Ex.PW-1/6 to Ex.PW-1/8 respectively.
(xiv) The Plaintiffs are also the owner of the copyright in the oval devices
including MOTI MAHAL, MOTI MAHAL Tandoori Trail, represented in
the stylized manner and artistic impression. The said over device is an
original artistic work and is protected under Section 2 (c) of the Copyright
Act, 1957.
(xv) The Plaintiffs have also opened over 100 restaurants in India and
aboard under diverse brand names such as MOTI MAHAL, MOTI MAHAL
DELUX, MOTI MAHAL DELUX TANDOORI TRAIL, MOTI MAHAL
KABAB TRAIL and MOTI MAHAL CHAT TRAIL, MOTI MAHAL
DOSA TRAIL to name a few. List of such restaurants under the name
MOTI MAHAL is marked and exhibited as PW-1/10.
(xvi) The list of awards won by the MOTI MAHAL brands and the
restaurants run under the said brand are listed in para 22 of the affidavit.
(xvii) It is stated that Plaintiff No. 1 also incorporated PLaintiff No.4
company on 23rd November 2004 to carry on business under the famous
MOTI MAHAL brand.
(xviii) In paras 30 and 31 of the affidavit, the amounts spent by the Plaintiffs
in advertising, promoting and marketing their services under the trade name
had been set out. The sales figures of the various franchised outlets the last
five years are reproduced under:
Year Sales Figures (Rs.)
2008-2009 1,71,76,588.28
2010-2011 24,40,36,019.00
2011-2012 34,45,20,893.50
2012-2013 32,48,98,146.20
2013-2014 33,75,95,125.36
(xix) In para 32 of the affidavit, the advertisement expenses for the last five
years from 2008-09 to 2013-14 have been set out, as under:
Year Advertisement expenses (Rs.)
2008-2009 5,09,661.52
2010-2011 8,76,184.00
2011-2012 6,46,345.00
2012-2013 3,01,772.00
2013-2014 2,87,258.13
(xx) It is stated that the Plaintiffs are also the owner of the website, the
details of which have been set out in para 36 of the affidavit.
(xxi) It is stated that the Plaintiffs are the first proprietors of the said trade
mark/name, MOTI MAHAL and MOTI MAHAL Formative marks and have
acquired exclusive proprietary rights and that no person, firm or company is
entitled to print, publish, advertise and use of the said trademark in any
manner, which may be identical and deceptively similar to the Plaintiff's
trade mark/name.
(xxii) It is stated that the Plaintiffs' trade mark MOTI MAHAL, MOTI
MAHAL Formatives marks and oval devices and
are well-known marks as envisaged under the provisions of
Section 2 (1) (zg) of the Trade Marks Act, 1999.
9. The Court is satisfied that from the uncontested affidavit of Plaintiff No. 1
filed on behalf of the Plaintiffs and that
(a) the mark MOTI MAHAL, MOTI MAHAL Formatives marks and
its oval devices are inherently distinctive of the products and business
of the Plaintiffs and have been continuously and extensively used by
the Plaintiffs for the past several decades in India;
(b) in view of the extensive promotional, advertising and marketing
activities, the Plaintiffs have been able to show that the substantial
section of the public associates and knows that the said mark
belonging to the Plaintiffs;
(c) the Plaintiffs are entitled to permanent injunction restraining from
using the trademarks by the Defendants.
(d) The Plaintiffs came to know that the Defendants have
unauthorizedly use the said marks despite the franchisee agreement
entered into with them having been terminated and that such
unauthorized use amounts to infringement within the meaning of
Section 29 (6) of the Trademarks Act, 1999 entitling the Plaintiffs to
the reliefs sought in the suit.
(e) By their continued unauthorised use of the Plaintiffs'
aforementioned trademarks, the Defendants will undoubtedly cause
harm to the reputation and goodwill created by the Plaintiffs and is
bound to cause confusion and deception in the minds of the public
and members of the trade misleading them into believing that there
exists a connection between the Defendants and the Plaintiffs, whe in
fact it does not;
(f) The Plaintiffs have also been able to prove that the Defendants,
being fully aware of the proprietorship of the Plaintiffs in the
trademarks in question, have continued to unauthorizedly use the said
marks with a view to exploit the goodwill and reputation of the
Plaintiffs and in particular their trademarks.
(g) Further the use of the Plaintiffs' registered trademark and artistic
works by the Defendants amounts to infringement of the said
trademarks in terms of Section 29 (6) of the Trademarks Act, 1999.
10. The Court accordingly decrees the suit and restrains the Defendants,
their directors, franchisees, partners, servants, agents, representatives and
assignees
(a) from using the trademark/trade name MOTI MAHAL/MOTI
MAHAL Delux Tandoori Trail and/or any other trademark
deceptively or confusingly similar to the Plaintiffs' trademarks MOTI
MAHAL and the MOTI MAHAL Formative marks or any other trade
mark mentioned in proceeding paragraphs of the plaint as a trademark
or part of a trademark, trade name or part of a trade name, domain
name or part of a domain name or in any other manner whatsoever
which would result in infringement, passing off, unfair competition
and dilution of the Plaintiffs' trademarks'
(b) from using the oval devices including ,
or any other mark/label/device which is identical/
deceptively similar to the Plaintiffs' oval device which would result in
infringement of Plaintiffs' copyright;
(c) using any other indicia whatsoever to show any association or affiliation
or connection of the Defendants or their services with the Plaintiffs or their
services.
11. The Court further issues a mandatory injunction directing the Defendants, their
directors, franchisees, partners, employees, agents, distributors, representatives
and assign to:
(a) hand over to the Plaintiffs or their nominated representative all goods,
packaging and promotional materials, catalogues, stationary and any other
material whatsoever bearing the trademark MOTI MAHAL/MOTI
MAHAL Delux Tandoori trail and/or any other trademark deceptively or
confusingly similar to the Plaintiffs' trademarks MOTI MAHAL and
MOTI MAHAL Formative marks or any other trademark mentioned in the
preceding paragraphs of the plaint;
(b) recall all the marketing, promotional and advertising materials bearing
the trademark MOTI MAHAL/MOTI MAHAL Delux Tandoori Trail,
and/or any other trademark deceptively or confusingly similar to the
Plaintiffs' trademarks MOTI MAHAL and MOTI MAHAL Formative
marks or any other trademark mentioned in the preceding paragraphs of the
plaint which has been manufactured, distributed, sold by the Defendants
and hand over to the representatives of the Plaintiffs;
(c) deliver to the Plaintiffs' attorneys or representatives for destruction all
products, labels, signs, prints, packages, moulds, plates, dies, wrappers,
receptacles and advertisements in its possession or under their control
bearing the trademarks MOTI MAHAL/MOTI MAHAL Delux Tandoori
Trail and/or any other packaging/label/marks deceptively or confusingly
similar to the Plaintiffs' trademarks MOTI MAHAL and MOTI MAHAL
Formative marks.
(d) allow inspection of their accounts by the Plaintiffs to assist in
ascertaining the amount of profits made by them and/or damages suffered
by the Plaintiffs as a result of the Defendants' use of the Plaintiffs'
trademarks/devices.
12. In the absence of sufficient evidence at this stage, the prayer of the Plaintiffs
for exemplary and punitive damages against the Defendants is declined. However,
such right of the Plaintiffs to claim damages including exemplary and punitive
damages against the Defendants is left open to be agitated in separate proceedings
in accordance with law.
13. The suit is decreed in the above terms with costs of Rs. 20,000 which will be
paid by the Defendants to the Plaintiffs within a period of four weeks. The decree
sheet be drawn up accordingly. The applications are disposed of.
S.MURALIDHAR, J
AUGUST 09, 2016
Rm
