Late Sh. Kundan Lal Gujral, the inventor of Murgh Makhani, tandoori chicken, and Dal Makhani opened a restaurant named ‘MOTI MAHAL' in Peshawar in the year 1920 and subsequently, in 1947 in Delhi. He applied for registration of the mark “MOTI MAHAL” in August 1992 claiming prior use since 1947. He expired in December 1997 leaving behind his two grandsons (Mr. Ashim Gujral & his brother) and his daughter in law (mother of Mr. Ashim Gujral) as his son Mr. Nand Lal Gujral predeceased him, hereinafter jointly referred to as the ‘plaintiffs’, as his only Class I legal heirs.

 

 

After the expiry of Sh. Kundan Lal Gujral, the Plaintiffs have been running the business since 1997 and have exponentially expanded the business in the last 25 years acquiring goodwill and reputation. The Plaintiffs now have over 100 franchises and company-owned restaurants all over the world.

 

 

Ashim Gujral along with his brother and mother incorporated a company named Motimahal Delux on 23rd November 2004. The company on a routine check conducted on the internet in March 2021 came across a restaurant using the mark, 'MOTI MAHAL DELUX' located in Noida, being operated by a third party, consequently, a cease and desist notice was issued to the third party by the plaintiffs. It emerged that the franchise was given to the entity by Mr. Kuvam Gujral, being the son of Mr.Ashim Gujral. Mr.Ashim Gujral also came to know that Kuvam had approached an existing franchisee of the plaintiffs in Mathura to enter into a franchise agreement with a company in which Kuvam is the director, in place of the plaintiffs. This was done by Kuvam based on a forged 'No Objection Certificate' granted by Mr.Ashim Gujral in favor of Kuvam’s company Therefore Plaintiffs sent a cease and desist notice to Kuvam. The said notice was replied by Kuvam wherein he claimed that he is the owner of the trademark 'MOTI MAHAL'.

Consequently, the Plaintiffs approached the Delhi High Court seeking a permanent injunction against Kuvam, his company, and other defendants from infringing/passing off, inter alia, the plaintiffs’ trademarks, and copyrights along with other ancillary reliefs.

 

 

The Court earlier granted an ex parte ad interim injunction order restraining Kuvam, his company, and other defendants from using the trademarks 'MOTI MAHAL', 'MOTI MAHAL DELUX', 'MOTI MAHAL CAFÉ' and MOTI MAHAL (stylized), formative marks or any other marks deceptively similar to the plaintiffs’ registered marks. Kuvam has not filed a written statement as of the date of writing; however, he did file an application for vacation for an injunction.

 

 

The Plaintiffs contended that after the said trademark devolved upon them, it became their absolute property and their children had no right by birth in the said trademarks. Subsequently, they also applied for and obtained several other registrations for 'MOTI MAHAL' and MOTI MAHAL formative marks in their name. Therefore, all goodwill and reputation in the trademark 'MOTI MAHAL' vests with the Plaintiffs alone.

 

 

The Plaintiffs further contended that Kuvam, being the son of Mr. Ashim Gujral was carrying on business under the trademark 'MOTI MAHAL' in a partnership with Mr. Ashim Gujral under the firm 'Moti Mahal Deluxe Hospitality', (Partnership Firm) from 2017. His company does not have 'MOTI MAHAL' as part of its name and was only permitted to give out franchises under the brand 'INDI GRILL'. Kuvam however, under his company started giving out franchises in respect of the marks 'MOTI MAHAL and 'MOTI MAHAL DELUX' and also started transferring franchises from the Partnership Firm to his company, without any authorization of any of the plaintiffs including his father, Mr. Ashim Gujral.

Kuvam was mindful of the fact that any permission/permitted use has to be with the consent of the registered proprietor in a written agreement and hence, Kuvam forged signatures of Mr. Ashim Gujral on 'No Objection Certificate' issued to a third party for a change of franchisor from the Partnership Firm to Kuvam’s company. As Kuvam is not a Class I legal heir of late Sh. Kundan Lal Gujral had no rights whatsoever over the mark 'MOTI MAHAL' under the laws of inheritance.

 

 

Under the provisions of the Hindu Succession Act, 1956 (the Act) Kuvam did not have any rights in the Intellectual Property inherited by the Plaintiffs as the same was acquired as a self-acquired property by Late. Sh. Kundan Lal Gujral and not a coparcenary property. Therefore, Kuvam’s company was not entitled to use the trademark owned by Mr. Ashim Gujral simply because of Mr. Ashim Gujral being a shareholder in Kuvam’s company.

 

 

On the other hand, Kuvam contended that, Sh. Kundan Lal Gujral died intestate in 1997 and on that day Kuvam was a minor. He added that as per Section 10 (Rule 3) and Sections 19 read with Section 6 of the Act the trademarks in question devolved on all the legal heirs in the branch of the pre-deceased son of late Sh. Kundan Lal Gujral jointly. Reliance was placed on Section 133 in the Trademarks Act, 1999, (New Act) read with Rule 55 in the Trade and Merchandise Marks Rules, 2017 (New Rules), to contend that the Trademarks Laws also recognize the same principle of successorship as envisaged in the Act.

 

 

Kuvam further stated that the Trademarks registry imposed a condition at the time of grant of registration that the mark 'MOTI MAHAL' shall be used by Joint Proprietors, which includes all legal heirs of Kundan Lal Gujral. In this regard, reliance was placed on Section 24 in the Trademarks Act, 1999 (New Act). Therefore, Kuvam claimed he is a co-owner of the mark 'MOTI MAHAL' in its various combinations. He claimed the property inherited by Kuvam was held in trust for him by his father, Mr. Ashim Gujral as Kuvam was a minor when Mr. Kundan Lal Gujral died. He added that Plaintiffs are not entitled to grant of interim injunction on account of acquiescence as Kuvam’s company with the knowledge of Mr. Ashim Gujral has granted franchise of 'MOTI MAHAL' on various dates.

 

 

The Court after considering the rival submissions framed three issues: Issue 1: Whether Kuvam was entitled to any rights in the trademark 'MOTI MAHAL' on account of his being a great-grandson of late Sh. Kundan Lal Gujral? For determining this Court needed to determine as to who would be the legal heirs of late Sh. Kundan Lal Gujral and entitled to the property in the aforesaid mark. On this issue, the Court held that since Sh. Kundan Lal Gujral died intestate therefore in terms of Section 8 read with the Schedule to the Act, the only Class-I legal heirs of late Sh. Kundan Lal Gujral would be Mr. Ashim Gujral and his brother (plaintiffs No.1 and 2) (sons of the predeceased son) and their mother( plaintiff No.3) (widow of the predeceased son). Kuvam would not fall in the category of Class-I heirs. As per Section 9 of the Act, Class-I heirs would be entitled to simultaneously succeed to the properties to the exclusion of all other legal heirs. In terms of Section 10 (Rule 3) of the act, all the Class- I heirs would be entitled to an equal share in the property of the deceased. Therefore, applying the principles of Sections 8, 9, and 10 as discussed above, the Plaintiffs would equally inherit the properties of Late Shri Kundan Lal Gujral including the trademark, to the exclusion of Kuvam. Since the mark 'MOTI MAHAL' was not an ancestral/coparcenary property of late Sh. Kundan Lal Gujral or that Late Sh. Kundan Lal Gujral had constituted a Hindu Undivided Family (HUF), therefore no right could be created in favor of Kuvam.

 

 

Even if it is assumed that the Trademark was a coparcenary property of late Sh. Kundan Lal Gujral, since late Sh. Kundan Lal Gujral had left behind a female Class-I heir, wife of a pre-deceased son, because of the proviso to Section 6, the interest of late Sh. Kundan Lal Gujral in the coparcenary property would devolve by intestate succession and not by survivorship. In that event, Mr. Ashim Gujral and his brother and their mother would inherit the said property as tenants in common, and their children would not have any right by birth in such properties.

 

 

Therefore, the Court clarified that Plaintiffs are the sole registered owners of the wordmark 'MOTI MAHAL'. Further, since the plaintiffs continued the business of late Sh. Kundan Lal Gujral after his demise in 1997, made several other applications for registration of trademarks in respect of 'MOTI MAHAL' and other formative marks and obtained various registrations in their name. It is also not disputed that the plaintiffs developed the business ever since the demise of late Sh. Kundan Lal Gujral and the business have expanded exponentially in the said period. Therefore, over some time, plaintiffs have acquired tremendous goodwill and reputation in respect of the aforesaid marks. Any unauthorized use of the aforesaid mark by Kuvam or his company would cause the public to believe that the same is connected with the plaintiffs.

 

 

Mr. Kuvam started giving out franchises from his company as well as transferring franchises from the Partnership Firm to his company without the permission of any of the plaintiffs. A permitted use can only be with the consent of the registered proprietor in writing and since Plaintiffs have not given any permission in writing to Kuvam or his company to use the mark "MOTI MAHAL', Kuvam has forged the signatures of his father on the 'No Objection Certificate' issued to a third party for a change of franchisor from the Partnership Firm to his company.

 

 

Issue 2: Whether Kuvam’s company was entitled to use the mark as Mr. Ashim Gujral is a 50% shareholder in Kuvam’s company? The Court clarified that just because Mr. Ashim Gujral is a 50% shareholder in Kuvam’s company, it would not entitle Kuvam’s company to use the trademarks that are registered in the name of Mr. Ashim Gujral unless Mr. Ashim Gujral has authorized or permitted Kuvam’s company to do so.

 

 

Issue 3: Whether there was any Acquiescence on part of the Plaintiffs? The Court held that there is nothing to suggest that there has been any acquiescence on the part of the plaintiffs to the aforesaid franchises given by Kuvam through his company. It is the case of the plaintiffs that Kuvam has forged the signatures of Mr. Ashim Gujral on the 'No Objection Certificate’ issued to a third party for a change of franchisor from the Partnership Firm to Kuvam’s company.

 

 

Further, it has been stated that the plaintiffs came to know about the infringement of their mark by the defendants on a routine check conducted on the internet in March 2021, and immediately thereafter the plaintiffs filed the present suit. Therefore, it cannot be said that there was any delay or acquiescence on part of the plaintiffs. The Court also added that “In any event, where adoption of a mark has been dishonest, mere delay in bringing the action cannot come in the way of grant of injunction.”

 

 

Given the above, the Court held that a prima facie case of infringement of trademarks and passing off is made out in favor of the Plaintiffs and the balance of convenience also is in favor of the Plaintiffs and against the defendants. Further, irreparable harm and injury would be caused to the Plaintiffs if an interim injunction restraining the Defendants from using the registered trademarks of the Plaintiffs is not passed.

 

 

Therefore the Court confirmed its interim injunction order till the disposal of the suit. The matter is next listed on 4th May 2022.