Delhi High Court: In a suit filed by the plaintiffs seeking permanent and mandatory injunction for infringement and passing off registered trade marks and copyright, a Single Judge Bench of Mini Pushkarna, J., stated that the plaintiffs had demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction was granted, the plaintiffs would suffer an irreparable loss. Further, balance of convenience was also in favour of the plaintiffs, and against the defendants.
Thus, the Court restrained Defendant 1, from using the impugned marks ‘MOTI MAHAL’, ‘MOTI MAHAL DELUX’ and ‘MOTI MAHAL DELUX TANDOORI TRAIL/ 
or any other mark deceptively and/or confusingly similar and/or identical/virtually identical to the plaintiffs’ trade marks.
Background
In the present case, Plaintiff 1 was the rightful and exclusive owner and registered proprietor of the trade marks ‘MOTI MAHAL’, ‘MOTI MAHAL GROUP’, ‘MOTI MAHAL MANAGEMENT SERVICES’. Further, Plaintiffs 1-2 and 4 were the rightful and exclusive owners and registered proprietors of the trade mark ‘TANDOORI TRAIL’, used in relation to high quality and famous restaurants operating throughout the country and around the globe.
It was submitted that Defendant 1 was the ex-franchisee of Plaintiff 1 and was engaged in the business of providing restaurant, catering and hospitality services, carrying on business. The present suit was a blatant case of infringement and passing off as well as unfair trade practices, wherein, Defendant 1 was continuing to carry on its operations under the trade mark ‘MOTI MAHAL DELUX TANDOORI TRAIL’/ 
, despite the termination of the Franchise Agreement.
The mala fide of Defendant 1 was further evident from the fact that, in addition to the continued use of aforesaid marks, they also dishonestly adopted and were using the mark ‘MOTI MAHAL DELUX’, which was deceptively and/or confusingly similar to the plaintiffs’ earlier, well-known and registered trade marks, with just the addition of the suffix ‘DELUX’. It was submitted that this addition, in no way diminished the deceptive similarity of the same, when compared to the plaintiffs’ earlier, well-known and registered trade marks.
It was submitted that Defendant 1, being the ex-franchisee of Plaintiff 1 was clearly aware of the ownership and notoriety of the ‘MOTI MAHAL’, ‘MOTI MAHAL DELUX TANDOORI TRAIL’, ‘TANDOORI TRAIL’ and their formative marks as well as the goodwill and reputation enjoyed by the plaintiffs in and to the said trade marks. Further, Defendant 1 being a party to the Franchise Agreement was aware that it had no rights in any manner whatsoever in the aforesaid marks or their formatives.
Thus, it was submitted that such acts of Defendant 1 constituted wilful infringement of the plaintiffs’ earlier, well-known registered trade marks, passing off and unfair trade practices, in an obvious attempt to mislead the consumers, potential franchisees and public at large and also to ride upon the immense goodwill and reputation earned by the plaintiffs over the last more than 100 years.
The plaintiffs further submitted that they had also been using the oval devices, 
, represented in the stylized manner and artistic impression. The said oval device was an original artistic work and was liable to be protected under Section 2(c) of the Copyright Act, 1957. Any unauthorized use or reproduction or dealing in any goods bearing the characteristics of the aforesaid artistic works not only amounted to infringement of copyrights but also constituted cognizable criminal offence under the provisions of the Copyright Act, 1957.
Comparison of the two marks:
Analysis, Law, and Decision
After considering the circumstances, the Court stated that the plaintiffs had demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction was granted, the plaintiffs would suffer an irreparable loss. Further, balance of convenience was also in favour of the plaintiffs, and against the defendants.
Thus, the Court restrained Defendant 1, its principals, partners, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies, assignees, etc. from advertising, selling, offering for sale, marketing, promoting any restaurant and catering business or in any other manner whatsoever, using the impugned marks ‘MOTI MAHAL’, ‘MOTI MAHAL DELUX’ and ‘MOTI MAHAL DELUX TANDOORI TRAIL/ 
or any other mark deceptively and/or confusingly similar and/or identical/virtually identical to the plaintiffs’ trade marks.
Further, Defendant 1 was directed to remove the references of all the impugned marks ‘MOTI MAHAL’, ‘MOTI MAHAL DELUX’ and/or ‘MOTI MAHAL DELUX TANDOORI TRAIL’/
from the board/hoarding of the impugned restaurant outside the premises of Defendant 1, from various social media websites.
The matter would next be listed on 06-05-2025.
[Moti Mahal Delux Management Services (P) Ltd. v. SRMJ Business Promoters (P) Ltd., 2024 SCC OnLine Del 8909, decided on 12-12-2024]
Advocates who appeared in this case:
For the Plaintiffs: Shreya Sethi with Anirudh Bhatia, Advocates.
