Summary
In the case of ITC Limited & Anr. vs Adyar Gate Hotels Limited, the court refused to grant an interim injunction against the use of the trademark ‘DAKSHIN’ for a South Indian restaurant. Though ITC held trademark and copyright registrations, the court noted the parties' past agreement, the defendant’s concurrent registration, and the plaintiffs’ prolonged inaction. The dispute, the court said, needed a full trial.
Trademark and Copyright Dispute Over Dakshin Restaurant
ITC and its group company operate luxury hotels across India. In 1989, ITC launched a South Indian fine-dining restaurant under the name ‘DAKSHIN’ at the Chola Sheraton in Chennai, operated jointly with Adyar Gate Hotels Limited (AGHL) under a service agreement. The agreement outlined that ITC would manage the hotel and restaurants, while AGHL retained ownership of the premises.
The agreement continued until 2015, when AGHL withdrew from ITC’s management. While ITC continued using ‘DAKSHIN’ in other cities, AGHL stayed silent on the mark’s use in Chennai.
In 2024, AGHL launched its own ‘DAKSHIN’ restaurant at a new location. ITC sued for trademark infringement, passing off, and copyright infringement, and sought an interim injunction to stop AGHL from using the name and associated artwork.
Questions Before the Court
- Whether ITC, as the registered proprietor of ‘DAKSHIN’, is entitled to an interim injunction.
- Whether AGHL’s use amounts to infringement or passing off.
- Whether the agreement and ITC’s conduct support AGHL’s claim of acquiescence.
- Whether the defendant’s trademark registration and the copyright registration impact the injunction request.
Arguments Presented By the Parties
ITC Limited and ITC Hotels (Plaintiffs)
- Claimed ownership of the ‘DAKSHIN’ brand since 1989 with valid trademark and copyright registrations.
- Asserted that AGHL had only permitted use of its hotel premises, while all branding, restaurant concepts, menus, and marketing were created by ITC.
- Argued that after termination of the agreement, AGHL had no right to use the name.
- Pointed to copyright registration over the original artistic logo of ‘DAKSHIN’.
- Alleged that AGHL’s new restaurant misrepresented heritage and created confusion among consumers.
Adyar Gate Hotels Limited (Defendant)
- Claimed honest adoption based on its own market research and investment in the brand during the Chola Sheraton operations.
- Argued that both parties had used the ‘DAKSHIN’ mark during the partnership and that no exclusive ownership by ITC was ever admitted.
- Highlighted that it obtained its own trademark registration in 2004 without any opposition from ITC.
- Argued that ITC had allowed it to use the brand until 2015 and took no action thereafter, amounting to acquiescence.
- Denied any copying of the logo, and contended that the new restaurant was distinct in presentation and location.
Court’s Analysis
Court’s Interpretation of the Service Agreement
The court examined the 1989 service agreement, noting that it did not clearly transfer ownership of the ‘DAKSHIN’ mark to ITC. While ITC managed the restaurant and claimed to have created the brand, the agreement showed that AGHL was the owner of the premises and had shared rights during the period of collaboration.
The court observed that the agreement created a long-term relationship where both parties used the mark. It noted that ITC’s own evidence referred to AGHL as a “joint user” and showed awareness of AGHL’s use since the 1990s.
According to the court, ITC’s failure to object to AGHL’s registration of the mark in 2004, or its continued use after the end of the service agreement, raised serious questions about whether it had waived its exclusive rights.
Concurrent Trademark Registrations and Acquiescence
The court pointed out that AGHL’s trademark registration had been on record for over two decades and had not been cancelled or rectified. Referring to Sections 28(3) and 33 of the Trade Marks Act, the court said this could amount to concurrent rights or statutory acquiescence, both of which require full trial.
Copyright Claims and Artistic Work
On the copyright issue, the court acknowledged the registration of the logo by ITC but held that the defendant’s logo was sufficiently distinct and not deceptively similar at this stage. The court also noted that similarity of names alone was not enough without clear copying of protected elements.
On Jurisdiction and Targeting
The court held that operating a restaurant in Chennai, even if its website is visible in Delhi, does not amount to targeting customers in Delhi. Therefore, the court rejected ITC’s reliance on Section 134 for jurisdiction based solely on digital presence.
Findings
- The court refused interim injunction against the use of ‘DAKSHIN’.
- Held that both parties had complex historical and legal claims, which could not be decided summarily.
- Observed that past agreements, co-use, and prolonged silence by ITC created a case for acquiescence.
- Ordered that the dispute be resolved after a full trial.
Relevant Paras
“The plaintiff cannot now turn around and say that the defendant had no role in the development of the brand, especially when the agreement and internal documents show a history of shared use…”
“The defendant has been using the mark for more than two decades… the plaintiffs failed to take any timely steps… a strong case of acquiescence is made out…”
“The balance of convenience is not in favour of granting an injunction… the parties’ rights need full trial.”
Case Citation
ITC Limited & Anr. vs Adyar Gate Hotels Limited, CS(COMM) 119/2025, decided on 4 December 2025.
Indian Kanoon Link: http://indiankanoon.org/doc/28917899/ (Visited on 23 December 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog.