ITC and its group company operate luxury hotels across India. In 1989, ITC launched a South Indian fine-dining restaurant under the name \u2018DAKSHIN\u2019 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.<\/p>\n
The agreement continued until 2015, when AGHL withdrew from ITC\u2019s management. While ITC continued using \u2018DAKSHIN\u2019 in other cities, AGHL stayed silent on the mark\u2019s use in Chennai.<\/p>\n
In 2024, AGHL launched its own \u2018DAKSHIN\u2019 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.<\/p>\n
The court examined the 1989 service agreement, noting that it did not clearly transfer ownership of the \u2018DAKSHIN\u2019 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.<\/p>\n
The court observed that the agreement created a long-term relationship where both parties used the mark. It noted that ITC\u2019s own evidence referred to AGHL as a “joint user” and showed awareness of AGHL\u2019s use since the 1990s.<\/p>\n
According to the court, ITC\u2019s failure to object to AGHL\u2019s 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.<\/p>\n
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.<\/p>\n
On the copyright issue, the court acknowledged the registration of the logo by ITC but held that the defendant\u2019s 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.<\/p>\n
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\u2019s reliance on Section 134 for jurisdiction based solely on digital presence.<\/p>\n
\u201cThe 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…\u201d<\/p>\n
\u201cThe 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…\u201d<\/p>\n
\u201cThe balance of convenience is not in favour of granting an injunction… the parties\u2019 rights need full trial.\u201d<\/p><\/blockquote>\n
Case Citation<\/h5>\n