Madras High Court

Japtej Singh Ahluwalia vs Infusion Hospitality Private Limited on 24 September, 2024

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED: 24.09.2024

CORAM

THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

C.S.(Comm.Div.) No.30 of 2024 and O.A.Nos.101, 102 & 103 of 2024 and A.No.2286 of 2024 and OP(TM)/21, 22, 23, 32, 33 & 34/2024 and OP(CR)/3, 4, 5, 6 & 7/2024

C.S.(Comm.Div.) No.30 of 2024:

1.Japtej Singh Ahluwalia

2.Nikesh Lamba

3.Pricol Gourmet Private Limited, Represented by Mr.Japtej Singh Ahluwalia, Shareholder / Authorized Representative 40, 3rd Floor, 2nd Main Road, RA Puram, Chennai 600 028.

... Plaintiffs in C.S.(Comm.Div.) No.30 of 2024

-vs-

1.Infusion Hospitality Private Limited Represented by one of its Director Mr.Natarajan Subramanian 57, Thiruvalluvar Rd, Baruva Nagar, Seethammal Extension, Alwarpet, Chennai, Tamil Nadu 600 018.

https://www.mhc.tn.gov.in/judis Also at 109, Race Course Coimbatore, Tamil Nadu 641 018.

2.Pricol Holdings Limited Represented by one of its Director Ms.Suguna Jayakumar CPM Towers 109 Race Course NA Coimbatore 641 018.

... Defendants in C.S.(Comm.Div.) No.30 of 2024

OP(TM)/21, 22, 23, 32, 33, 34/2024:

1.Japtej Singh Ahluwalia

2.Nikesh Lamba

3.Pricol Gourmet Private Limited, Represented by Mr.Japtej Singh Ahluwalia, Shareholder / Authorized Representative 40, 3rd Floor, 2nd Main Road, RA Puram, Chennai 600 028.

... Petitioners in OP(TM)/21, 22, 23, 32, 33, 34/2024

-vs-

1.Pricol Holdings Limited Represented by one of its Director Ms.Suguna Jayakumar CPM Towers 109 Race Course NA Coimbatore 641 018.

2.The Registrar of Trade Marks, Anna Salai, Guindy Industrial Estate, SIDCO Industrial Estate, Guindy, Chennai, Tamil Nadu 600 032.

... Respondents in OP(TM)/21, 22, 23, 32, 33, 34/2024

https://www.mhc.tn.gov.in/judis OP(CR)/3 to 7/2024:

1.Japtej Singh Ahluwalia

2.Nikesh Lamba

3.Pricol Gourmet Private Limited, Represented by Mr.Japtej Singh Ahluwalia, Shareholder / Authorized Representative 40, 3rd Floor, 2nd Main Road, RA Puram, Chennai 600 028.

... Petitioners in OP(CR)/3 to 7/2024

-vs-

1.Pricol Holdings Limited Represented by one of its Director Ms.Suguna Jayakumar CPM Towers 109 Race Course NA Coimbatore 641 018.

2.Fiverr International Limited Eliezer Kaplan St. 8, Tel Aviv – Yafo, 6473409, Israel.

3.The Registrar of Copyright Copyright Office Boudhik Sampada Bhawan, Plot No.32, Sector 14, Dwraka, New Delhi – 110 078.

... Respondents in OP(CR)/3 to 7/2024

PRAYER in C.S.(Comm.Div.) No.30 of 2024: Civil Suit (Commercial

Division) filed under Order VII Rule 1 CPC Read With Order IV Rule

https://www.mhc.tn.gov.in/judis 1 of Original Side Rules of the Madras High Court, Section

2(1)(C)(xvii) Read With Section 7 of the Commercial Courts Act, 2015

and Sections 27 of the Trade Marks Act, 1999 and Sections 14, 51, 55

& 62 of the Copyright Act, 1957, praying to grant a judgment and

decree on the following terms:-

(a) A permanent injunction restraining Defendant No.2, its

partners, directors, proprietors, subsidiaries, affiliates, franchisees,

officers, servants, agents, distributors, stockists, representatives,

licensees and anyone acting for or on their behalf directly or

indirectly, as the case may be from using the artistic works in the

labels SOY SOI – ASIAN EATSTREET, BAYROOT, CRUST AND

CHEESE, DOUBLE ROTI, LITTLE SOI, ORIGIN, BANGKOK BAE,

BURGER BROS, CHINESE WOX, MADURAI MILITARY HOTEL,

MEX BOWL INC or as the case may be from performing any actions

which amount to the infringement of copyright in original artistic

works belonging to the plaintiff No.3.

https://www.mhc.tn.gov.in/judis

(b) A permanent injunction restraining Defendant No.2, their

partners, their employees, officers, servants, agents and all others

acting for and on their behalf from manufacturing, selling,

distributing, exporting, advertising, offering for sale, and in any

other manner, directly and indirectly, dealing with any products,

services in the name of DOUBLE ROTI, SOY SOI – ASIAN

EATSTEET, ORIGIN, DELISH – THE DESSERT STUDIO, BAYROOT,

LITTLE SOI, CRUST AND CHEESE BY DOUBLE ROTI, EPICURE –

BEPOKE BANQUETING & EVENTS, SOWL – BREW ROOM AND

BAKEHOUSE, BURGER BROS, BANGKOK BAE, CHINESE WOX,

MEX BOWN INC., PIZZERIA BY THE BAY, MEX BOWL INC.,

BANGARUSWMY NAIDU BIRIYANI, MADURAI MILITARY

HOTEL or any other mark and / or label which is identical / similar

to the plaintiff no.3's trade marks and such other marks and passing

off the goods / services of the defendant as and for those of the

plaintiff no.3 in any manner whatsoever.

https://www.mhc.tn.gov.in/judis

(c) A permanent injunction restraining the defendants, their

partners, their employees, officers, servants, agents and all others

acting for and on their behalf from transferring all the domain names,

websites, social media platforms, mobile application in relation to the

brands Double Roti, Soy Soi – Asian Eatstreet, Origin, Delish – The

Dessert Studio, Bayroot, Little Soi, Crust and Cheese by Double Roti,

Epicure – Bepoke Banqueting & Events, Sowl – Brew Room and

Bakehouse, Burger Bros, Bangkok Bae, Chinese Wox, Mex Bowl Inc.,

Pizzeria by the Bay, Mex Bowl Inc., Bangaruswmy Naidu Biriyani

and Madurai Military Hotel to any party in any manner whatsoever.

(d) A mandatory injunction directing the Defendant No.2 to

assign all the Trade Mark Applications under Nos.5679336, 5679335,

5679334, 6115275, 6115274, 6115273, 5679340, 5679338, 5679337,

5679343, 5679342, 5679341, 5679346, 5679345, 5679344, 6115260,

6115259, 6115258, 6115316, 6115315, 6115314, 6115272, 6115262,

https://www.mhc.tn.gov.in/judis 6115261, 6115308, 6113507, 6115306, 6115319, 6115318, 6115317 filed

for the trade marks SOY SOI – ASIAN EATSTREET, BAYROOT,

CRUST AND CHEESE, DOUBLE ROTI, LITTLE SOI, ORIGIN,

BANGKOK BAE, BURGER BROS, CHINESE WOX, MADURAI

MILITARY HOTEL, MEX BOWL INC and trade mark registration

under No.3951684 obtained for the trade mark SOY SOI – ASIAN

EATSTREET in the name of the plaintiff no.3.

(e) A mandatory injunction directing to Defendant No.2 to

transfer the Copyright Registrations obtained for the artistic works

titled Bangkok Bae, BOWL SHAPED DEVICE AS ART WORK WITH

STICKS ON TOP AND THE WORD Chinese Wox Bring Home The

Taste of China IN STYLE ALTOGETHER IN RED COLOUR and ART

WORK OF SPHERE WITH C AND TRIANGLE SHAPED DEVICE

AND PUNCH HOLES, CRUST & CHEESE BY DOUBLE ROTI

ALTOGETHER IN COLOUR of Defendant No.2 to Plaintiff No.3.

https://www.mhc.tn.gov.in/judis

(f) A mandatory injunction directing to Defendant No.1 to

assign the Trade Mark Registration under NO.2888013 for the mark

DOUBLE ROTI in the name of the Plaintiff No.3.

(g) A declaration that Plaintiff No.3 is the original, sole

proprietor and the owner of the Plaintiff's trade marks being, Double

Roti, Soy Soi – Asian Eatstreet, Origin, Delish – The Dessert Studio,

Bayroot, Little Soi, Crust and Cheese by Double Roti, Epicure –

Bepoke Banqueting & Events, Sowl – Brew Room and Bakehouse,

Burger Bros, Bangkok Bae, Chinese Wox, Mex Bowl Inc., Pizzeria by

the Bay, Mex Bowl Inc., Bangaruswmy Naidu Biriyani, Madurai

Military Hotel.

(h) A declaration that Plaintiff No.3 is the original, sole

proprietor and the owner of the copyright in the artistic works in

SOY SOI – ASIAN EATSTREET, BAYROOT, CRUST AND CHEESE,

DOUBLE ROTI, LITTLE SOI, ORIGIN, BANGKOK BAE, BURGER

https://www.mhc.tn.gov.in/judis BROS, CHINESE WOX, MADURAI MILITARY HOTEL, MEX BOWL

INC.

(i) A declaration that all or any license, assignment, permission,

consent, authorisation or no objection, provided by the Defendant

No.1 and Defendant No.2 in respect of the Plaintiff's trade marks

being SOY SOI – ASIAN EATSTREET, BAYROOT, CRUST AND

CHEESE, DOUBLE ROTI, LITTLE SOI, ORIGIN, BANGKOK BAE,

BURGER BROS, CHINESE WOX, MADURAI MILITARY HOTEL,

MEX BOWL INC to any party as null and void.

(j) A declaration that all or any license, assignment, permission,

consent, authorisation or no objection, provided by the Defendant

No.1 and Defendant No.2 in respect of the Plaintiff's artistic works

being Double Roti, Soy Soi – Asian Eatstreet, Origin, Delish – The

Dessert Studio, Bayroot, Little Soi, Crust and Cheese by Double Roti,

Epicure – Bepoke Banqueting & Events, Sowl – Brew Room and

https://www.mhc.tn.gov.in/judis Bakehouse, Burger Bros, Bangkok Bae, Chinese Wox, Mex Bowl Inc.,

Pizzeria by the Bay, Mex Bowl Inc., Bangaruswmy Naidu Biriyani,

Madurai Military Hotel to any party as null and void.

(k) The Defendants be ordered to pay the Plaintiff No.1 & 2 a

sum of INR 10,00,000/- (Rupees Ten Lakhs Only) as damages for

having attempting to usurp the ownership of the Plaintiff No.3's

trade marks, pass off their goods and services as and that of the

Plaintiff No.3 and for infringement of copyright in Plaintiff No.3's

artistic works.

(l) Costs of such other relief.

PRAYER in OP(TM)/21/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark under Registration No.3951684 in class 43 to

https://www.mhc.tn.gov.in/judis Petitioner No.3 and direct the Respondent No.2 to rectify the register

in relation to the Trade Mark under Registration No.3951684 in class

43 by changing / amending the name of the Registered Proprietor

from Respondent No.1 to Petitioner No.3 and cost of the proceedings

be awarded in favour of the petitioners.

PRAYER in OP(TM)/22/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark bayroot under Application No.5679336 in

class 30 that deemed to be registered to Petitioner No.3 and direct the

Respondent No.2 to rectify the register in relation to the Trade Mark

bayroot under Application No.5679336 in class 30 that is deemed to

be registered by changing / amending the name of the Registered

Proprietor from Respondent No.1 to Petitioner No.3 and cost of the

proceedings be awarded in favour of the petitioners.

https://www.mhc.tn.gov.in/judis PRAYER in OP(TM)/23/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark Double Roti under Registration No.2888013

in class 43 to Petitioner No.3 and direct the Respondent No.2 to

rectify the register in relation to the Trade Mark under Registration

No.2888013 in class 43 by changing / amending the name of the

Registered Proprietor from Respondent No.1 to Petitioner No.3 and

cost of the proceedings be awarded in favour of the petitioners.

PRAYER in OP(TM)/32/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark ORIGIN under Registration No.5679345 in

class 35 to Petitioner No.3 and direct the Respondent No.2 to rectify

the register in relation to the Trade Mark ORIGIN under Registration

No.5679345 in class 35 by changing / amending the name of the

https://www.mhc.tn.gov.in/judis Registered Proprietor from Respondent No.1 to Petitioner No.3 and

cost of the proceedings be awarded in favour of the petitioners.

PRAYER in OP(TM)/33/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark little SOI under Registration No.5679343 in

class 30 to Petitioner No.3 and direct the Respondent No.2 to rectify

the register in relation to the Trade Mark little SOI under Registration

No.5679343 in class 30 by changing / amending the name of the

Registered Proprietor from Respondent No.1 to Petitioner No.3 and

cost of the proceedings be awarded in favour of the petitioners.

PRAYER in OP(TM)/34/2024: Original Petition (Trade Marks) filed

under Section 57 of the Trade Marks Act, 1999, pleased to allow the

present petition and direct the Respondent No.1 to assign and

transfer the Trade Mark little SOI under Registration No.5679342 in

https://www.mhc.tn.gov.in/judis class 35 to Petitioner No.3 and direct the Respondent No.2 to rectify

the register in relation to the Trade Mark little SOI under Registration

No.5679343 in class 35 by changing / amending the name of the

Registered Proprietor from Respondent No.1 to Petitioner No.3 and

cost of the proceedings be awarded in favour of the petitioners.

PRAYER in OP(CR)/3/2024: Original Petition (Copyrights) filed

under Section 50 of the Copyright Act, 1957, pleased to allow the

present petition and direct Respondent No.1 to assign and transfer

the artistic work “Flower like are word with dots around and the

word The New Punjab Club altogether in color” under Copyright

Registration No.A-152027/2023 to Petitioner No.3 and direct

Respondent No.3 to rectify the register in relation to the artistic work

“Flower like are word with dots around and the word The New

Punjab Club altogether in color” under Copyright Registration No.A-

152027/2023 by changing / amending the name of the Registered

https://www.mhc.tn.gov.in/judis Proprietor from Respondent No.1 to Petitioner No.3 and cost of

proceedings be awarded in favour of the petitioners.

PRAYER in OP(CR)/4/2024: Original Petition (Copyrights) filed

under Section 50 of the Copyright Act, 1957, pleased to allow the

present petition and direct Respondent No.1 to assign and transfer

the artistic work “Bangkok Bae” under Copyright Registration No.A-

150472/2023 to Petitioner No.3 and direct Respondent No.3 to

rectify the register in relation to the artistic work “Bangkok Bae”

under Copyright Registration No.A-150472/2023 by changing /

amending the name of the Registered Proprietor from Respondent

No.1 to Petitioner No.3 and cost of proceedings be awarded in favour

of the petitioners.

PRAYER in OP(CR)/5/2024: Original Petition (Copyrights) filed

under Section 50 of the Copyright Act, 1957, pleased to allow the

present petition and direct Respondent No.1 to assign and transfer

https://www.mhc.tn.gov.in/judis the artistic work “bowl shaped device as art work with sticks on top

and the word chinese wox bring home the taste of china in style

altogether in red color” under Copyright Registration No.A-

150481/2023 to Petitioner No.3 and direct Respondent No.3 to

rectify the register in relation to the artistic work “bowl shaped

device as art work with sticks on top and the word chinese wox bring

home the taste of china in style altogether in red color” under

the name of the Registered Proprietor from Respondent No.1 to

Petitioner No.3 and cost of proceedings be awarded in favour of the

petitioners.

PRAYER in OP(CR)/6/2024: Original Petition (Copyrights) filed

under Section 50 of the Copyright Act, 1957, pleased to allow the

present petition and direct Respondent No.1 to assign and transfer

the artistic work “square shape device as artwork with letters b at the

centre and the words burger bros in style all in red color” under

https://www.mhc.tn.gov.in/judis Copyright Registration No.A-151320/2024 to Petitioner No.3 and

direct Respondent No.3 to rectify the register in relation to the artistic

work “square shape device as artwork with letters b at the centre and

the words burger bros in style all in red color” under Copyright

Registration No.A-151320/2024 by changing / amending the name of

the Registered Proprietor from Respondent No.1 to Petitioner No.3

and cost of proceedings be awarded in favour of the petitioners.

PRAYER in OP(CR)/7/2024: Original Petition (Copyrights) filed

under Section 50 of the Copyright Act, 1957, pleased to allow the

present petition and direct Respondent No.1 to assign and transfer

the artistic work “art work of sphere with c and triangle shaped

device and punch holes, crust and cheese by double roti altogether in

colour” under copyright Registration No.A-150474/2023 to Petitioner

No.3 and direct Respondent No.3 to rectify the register in relation to

the artistic work “art work of sphere with c and triangle shaped

device and punch holes, crust and cheese by double roti altogether in

https://www.mhc.tn.gov.in/judis colour” under Copyright Registration No.A-150474/2023 by

changing / amending the name of the Registered Proprietor from

Respondent No.1 to Petitioner No.3 and cost of proceedings be

awarded in favour of the petitioners.

                                  For Plaintiffs             : Mr.M.S.Bharath
                                  in C.S.(Comm.Div.).30/2024

                                  For Defendants            : Mr.Pranav V.Shankar

in C.S.(Comm.Div.).30/2024 for M/s.R.Vidhyashankar

For Petitioners : Mr.M.S.Bharath

For Respondent 1 : Mr.Pranav V.Shankar in OP(CR)/3 to 7/2024 for M/s.R.Vidhyashankar

For Respondent 2 : No Appearance

For Respondent 3 : Mr.S.Janarthanam, in OP(CR)/3, 4/2024 Senior Panel Counsel

For Respondent 3 : Mr.A.R.Sakthivel, in OP(CR)/5, 7/2024 Senior Panel Counsel

For Respondent 3 : Mr.M.Karthikeyan, in OP(CR)/6/2024 Senior Panel Counsel

https://www.mhc.tn.gov.in/judis For Petitioners : Mr.M.S.Bharath in OP( TM)/21 to 23,

For Respondent 1 : Mr.Pranav V.Shankar in OP(TM)/21 to 23, for M/s.R.Vidhyashankar

For Respondent 2 : Mr.J.Madhanagopal Rao, in OP( TM)/21 to 23, Senior Panel Counsel

**********

JUDGMENT in C.S.(Comm.Div.) No.30 of 2024 and COMMON ORDER in OP(TM)/21, 22, 23, 32, 33 & 34/2024 and OP(CR)/4, 5, 6 & 7/2024

One suit and multiple rectification petitions, both in respect of

registered trade marks and registered copyrights, were filed before

this Court. Pursuant to negotiations, a joint memorandum of

compromise dated 14.09.2024 was executed. The said joint

memorandum of compromise has been executed by seven parties,

who are described as party 1 to party 7 therein. Out of those parties,

party 3 is the second defendant in the suit. It is stated that the second

https://www.mhc.tn.gov.in/judis defendant, which was originally a public limited company was

converted into a private limited company. Parties 1 and 2, who are

third parties to these proceedings, are said to be the shareholders and

directors of party 3. Party 4 therein is the third plaintiff in the suit

and also a party to the rectification petitions. Parties 5 and 6 therein

are the first and second plaintiffs in the suit and petitioners in the

rectification petitions. Party 7 is a third party to these proceedings

and a limited liability partnership represented by party 6 / second

plaintiff in these proceedings. Although Infusion Hospitality Private

Limited has been arrayed as the first defendant in the suit, it is

submitted that the said entity merged with Pricol Gourmet Private

Limited under a scheme of amalgamation and was dissolved without

being wound up. The order sanctioning the scheme of amalgamation

is on record and corroborates the above submission.

2. Broadly, the joint memorandum of compromise envisages

the transfer of the entire shareholding of Mr.Japtej Singh Ahluwalia

https://www.mhc.tn.gov.in/judis and Mr.Nikesh Lamba in Pricol Gourmet Private Limited to

Mr.Vikram Mohan for an aggregate consideration of Rs.4,06,10,000/-.

The joint memorandum of compromise also records the confirmation

and acknowledgment by parties 5, 6 and 7 that the trade marks and

copyrights enumerated in Part-I of schedule – IV belongs to and are

vested absolutely in the second defendant. Clause 5 of the joint

memorandum of compromise records that the parties would present

the compromise before this Court and before the NCLT and that all

legal proceedings listed in schedule – II thereof would be disposed of

in terms thereof. Clause 5 and schedule – II are set out below:

“5. Parties 1 to 6 will forthwith record this MOC before Honorable Madras High Court and NCLT in all legal proceedings listed in Schedule II hereto initiated by them, as compromised in terms hereof and either secure a Decree to be passed in all such legal proceedings in- terms hereof or have the proceedings closed in view of this MOC, without any order as to costs.” SCHEDULE II Pending Legal Proceedings between the Parties

https://www.mhc.tn.gov.in/judis Sl.No. Particulars Forum C.S.(Comm.Div.) No.30 of 2024 Honourable High Court of 1 Madras OP(TM) Nos.21 to 23 of 2024 Honourable High Court of

OP(CR) Nos.3 to 7 of 2024 Honourable High Court of

3 Madras CP/74/CHE/2024 National Company Law 4 Tribunal, Chennai Bench CSR No.32/2024 dated 22.01.2024 E4 Abhiramapuram Police Station, Crime Branch, 5 Chennai 600 028.

3. The joint memorandum of compromise also provides for the

transfer and assignment of the trade marks and copyrights set out in

part A of schedule – VI in terms of an assignment deed which is

schedule – XI to such memorandum of compromise. It also provides

for the treatment of other assets. Upon examining the terms of such

joint memorandum of compromise, I see no legal impediment to the

disposal of these proceedings in terms thereof.

https://www.mhc.tn.gov.in/judis

4. Accordingly, the following orders are issued:

(i) C.S.(Comm.Div.) No.30 of 2024 is decreed in terms of joint

memorandum of compromise dated 14.09.2024, which shall form an

integral part thereof. In view of the compromise, the parties shall

bear their respective costs. Consequently, O.A.Nos.101, 102 and 103

of 2024 and A.No.2286 of 2024 are closed.