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2016 Supreme(Del) 2886
IN THE HIGH COURT OF DELHI AT NEW DELHI
S. MURALIDHAR, J.
MONISH GUJRAL & OTHERS – Plaintiffs
Versus
M/S BEST FOOD & ANOTHER – Defendants
C.S. (COMM) No. 67 of 2015 & I.A. Nos. 26099 of 2015 & 5378 of 2016
Decided On : 09-08-2016
For the Plaintiff :Ms. Nancy Roy with Ms. Adya Khanna, Advocates.
Unauthorized use of a well-known trademark, supported by extensive evidence of ownership, reputation, and promotional activities, constitutes infringement, passing off, and unfair competition under the Trade Marks Act, 1999.
Headnote:
Trademark Infringement - Hospitality Services - Trade Marks Act, 1999, Section 29(6), Section 2(1)(zg), Copyright Act, 1957
Fact of the Case:
The Plaintiffs filed a suit against the Defendants for trademark infringement, passing off, and unfair competition, alleging that the Defendants continued to use their trademark 'MOTI MAHAL' despite the franchise agreement being terminated. The Court granted an ex-parte ad-interim injunction restraining the Defendants from using the trademark and subsequently proceeded ex-parte against the Defendants when they did not appear.
Finding of the Court:
The Court found that the Plaintiffs were the registered proprietors of the well-known trademark 'MOTI MAHAL' and its formative marks, and that the Defendants' unauthorized use of the trademarks amounted to infringement, passing off, and unfair competition. The Court decreed the suit, granting permanent injunction and mandatory injunction against the Defendants, and declined the prayer for exemplary and punitive damages at that stage.
Issues: Trademark infringement, passing off, unfair competition, ownership and unauthorized use of the trademark 'MOTI MAHAL', termination of franchise agreement, damages
Ratio Decidendi: The Court relied on the extensive evidence presented by the Plaintiffs, including trademark registrations, ownership history, promotional activities, and reputation associated with the trademark 'MOTI MAHAL' to establish the Defendants' unauthorized use as infringement, passing off, and unfair competition under the Trade Marks Act, 1999.
Final Decision: The Court decreed the suit in favor of the Plaintiffs, granting permanent injunction and mandatory injunction against the Defendants, and awarded costs of Rs. 20,000 to be paid by the Defendants to the Plaintiffs.
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 exh
