Madras High Court: In an interlocutory application filed by Sangeetha Hotels in a suit alleging infringement of its trade marks by the defendants/respondent, P.T Asha, J. said that Sangeetha Hotels has made out a prima facie case for grant of an ad interim injunction and the balance of convenience is also in its favour.
Background:
Sangeetha Hotels is engaged in the business of providing services relating to hotels, restaurants and other allied services under the name of SANGEETHA/Sangeetha Veg since the year 1985. For the past 3 decades and 8 years, the founders have invested considerable time, energy and money into developing the brand SANGEETHA/SANGEETHA Veg Hotels. The applicant has registered the following trademarks, SANGEETHA, SANGEETHA Veg, SVR SANGEETHA, SANGEETHA Vegetarian Restaurant, SANGEETHA EXPRESS, SVR, (denoting the mark “Sangeetha Veg Restaurant”) with a logo of a musical instrument over the letter S.
Taking note of Sangeetha Hotels reputation and success of their SANGEETHA chain of restaurant, the respondents approached its partner for a franchise to operate the SANGEETHA Restaurants. The respondents had assured Sangeetha Hotels that they would operate the restaurant keeping in mind the standard and quality which is being maintained by T Sangeetha Hotels. Thus, Sangeetha Hotels entered into a franchise agreement with the respondent.
As per the terms of the franchise agreement, respondents were under an obligation to maintain the standards that have been prescribed by the franchisor. The menu, recipes etc. were also taken from the Sangeetha chain of restaurants. Over a period of time, Sangeetha Hotels came to learn the downside in running the franchises units. They have discovered lapses in quality, pricing and other non-compliances. Further, the respondents started running a competing business in the name of Udupi Ruchi during 2016, and also, under the name of this organization, respondents had made substantial investments in other competing businesses.
Sangeetha Hotels also came to learn that in violation of undertakings surviving terms of the franchise agreement, respondents had applied for registration of trademarks which included the marks like SANGEETHAM, GEETHAM, GEETHAM Veg. etc. which is nothing but a deceptively similar mark of Sangeetha Hotels. The materials used for promotion also very clearly indicated the deception played on the part of the respondents. While promoting the opening of their restaurant, they had stated as follows: – “Everything is the same except the name – same place, same ambiance, same team, same test, same service, same quality”.
Sangeetha Hotels come forward with a suit and the applications stating that the adoption of the name ‘Geetham’ by the respondents is visually, phonetically and aurally similar to its trade mark ‘Sangeetha’.
Issues:
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If Sangeetha Hotels has proved their right to the trade mark Sangeetha/Sangeetha Veg Restaurant and all the other variants which have been registered in its name;
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If the respondents have adopted a mark which is similar to that of Sangeetha Hotels and such adoption is contrary to the terms of the agreement between the parties and is deceptive and an infringement of Sangeetha Hotels registered mark; and
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If by such adoption the respondents have created a confusion in the minds of the public that ‘Geetham’ is only a new avatar of Sangeetha Hotels.
Analysis
The Court took note of the legal use certificate produced by Sangeetha Hotels to show their ownership to the mark ‘Sangeetha’ and other similar marks. The respondents have also not denied the ownership of the Sangeetha Hotels to these marks. It is their contention that their mark ‘Geetham’ has no similarity to the Sangeetha Hotels’ trade mark ‘Sangeetha’.
The Court after taking note of the minutes of the meeting dated 27-05-2022, said that the respondents have cleared that they will not use the trade name, trade marks, signboard etc similar to the trademark Sangeetha or any of its other variations which are similar or confusingly or deceptively similar to the brand name of the Sangeetha Hotels. The Court said that the name ‘Geetham’ is a variant of the word ‘Sangeetha’ and therefore contrary. Further, rejected the contention of the respondents that they were permitted to open a new units.
Thus, the Court said that Sangeetha Hotels had clearly and categorically expressed their refusal to grant permission to set up a new unit by the respondents and the respondents had sought time to revert after having their discussion with their directors. Therefore, there is an attempt to suppress the true facts which clearly is an act of deception.
Further, the Court said that in their promotional materials, the respondents had given out that it was only a name change and that in all other respects it remains the same. This by itself would give out to an unwary customer that ‘Sangeetha’ had re-named itself as ‘Geetham’. Further, it noted that some of the customers believed this to be true as some of the customer reviews have expressed satisfaction with the hospitality and food of the respondents by calling it the Sangeetha chain of restaurants. Therefore, the Court said that “the apprehension of Sangeetha Hotels that the public would be misled into believing that the respondent is nothing but old wine in a new bottle stands prima facie proved”.
Concerning the defense of delay, raised by the respondents, the Court referred to Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, wherein it was held that “mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if its prima facie appears that the adoption of the Mark was itself dishonest”. Thus, the Court said that this defense lacks merits in as much as the Sangeetha Hotels after collating the evidence has approached the Vacation Court within 4 months of the notice. This cannot be termed as an inordinate delay.
Therefore, the Court has granted injunction in favour of Sangeetha Hotels on the following grounds:
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Sangeetha Hotels has prima facie established the infringement of its trademark by the respondents.
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There is suppression and deception on the part of the respondents.
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The adoption of the word ‘Geetham’ coupled with the respondents’ advertisement have caused confusion in the minds of the public
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There is no inordinate delay in approaching the Court.
[Sangeetha Caterers and Consultants LLP v Rasnam Foods Pvt Ltd, 2023 SCC OnLine Mad 6259, Order dated 22-09-2023]
