22 February, 2018
With the long journey of a small family businesses turning into big, the disputes relating to the name and legacy of fathers and forefathers are common across courts in India. In 2017 Madras High Court decided on one such dispute relating to the trade mark where two brothers claimed their rights to use the goodwill in the mark "Sri Krishna Sweets" by virtue of inheritance. Mr. M. Krishnan, the elder brother, is the proprietor of a Sri Krishna Sweets Private Limited situated at Coimbatore filed a case for infringement of trade mark against M. Murali, his younger brother, before District Court, Coimbatore where the Trial Judge refused to grant injunction to the Plaintiff as he failed to establish a prima facie case in his favor. The Trial Judge noted that there has been acquiescence for over 20 years in filing of the said case. Aggrieved by the said order of the Trial Judge the Plaintiff preferred an appeal before Madras High Court, where also the application for injunction was ruled out in favor of Defendant.
The facts of the case were that the father of M. Krishnan and the M Murali started a restaurant called "Shri Krishna Bhawan" in Coimbatore in 1948. The elder son, M. Krishnan later on, in the year 1979, started a business in the name "Shri Krishna Sweets" and simultaneously obtained the trade mark registrations in relation to the figure mark of "Lord Krishna", the word "Krishna" in stylized form and the word mark "Krishna" in capital letters. M. Krishnan claimed that in the year 1990, he orally licensed the impugned trademarks to the Defendant and also made him the Director of the company. Later on, M. Krishnan transferred the trademarks rights to his wife. He thereafter applied for registration of the full name "Sri Krishna Sweets" as trade mark but withdrew the said application as he had already transferred the trademarks and did not have proprietorship in the previously registered trademark with which the present trademark has been directed to be published as an associated trade mark.
In the year 2010 M. Murali resigned from the directorship of M. Krishnan's Company in order to start his own company and further opened branches in India and abroad. The controversy between the brothers started in the year 2015 when the wife of M. Krishnan re-assigned all the marks to him and he wrote to his younger brother asking to formalize the oral permission already granted to him to use the trade names. M. Murali in its reply claimed that the name "Sri Krishna Sweets" and the business were started by their father and as their common inheritance, both the brothers were equally entitled to use the name in respect of their businesses. With this dispute at hand, the elder brother approached the Trial Court where the Trial Court dismissed its claims of infringement of trade mark. Subsequently he approached the Madras High Court in an appeal.
The Plaintiff argued that the business "Sri Krishna Sweets" was started by him and the Trail Court was not right in concluding that the name was a part of common inheritance from the father and both the sons have equal rights over the goodwill. Moreover, once the word mark "Krishna" has been registered in his favor, the entire coinage of "Sri Krishna Sweets" would belong to him alone. Further, while referring to the family partition deed, the Plaintiff argued that the father never claimed any right in the said trademarks which makes M. Krishnan the proprietor of the said trademarks. It was further asserted by the Plaintiff that in the year 2010, the Defendant made attempts to register the mark "Sri Krishna Sweets" clearly showing that the claim by the Defendant of a shared goodwill inheriting it from the father was only made for the purpose of the present case. He also referred to the agreement of joint venture between the Plaintiff and the promoters in Dubai and USA where both the agreements contained clauses which clearly indicated that the Defendant being co-signatory of the agreement and had clearly acknowledged the rights relating to mark "Sri Krishna Sweets" and logo "SKS" in favor of the Plaintiffs.
M. Murali in his defense argued that the trade name "Sri Krishna Sweets" is neither registered in favor of the M. Krishnan nor the same is registered in the name of the Plaintiff Company, therefore there can be no claims relating to infringement of the trade mark. He further argued that the name "Sri Krishna Sweets" and the letters "SKS" written in particular style were used by their father and thereafter the sons used the same as a part of their common inheritance from the father. He denied the claim of the Plaintiff that M. Krishnan orally allowed him to use the trade name. He also pointed out that the withdrawal of the application for the registration of "Sri Krishna Sweets" as a trade mark by M. Krishnan was actually never intended to be registered as a trademark, and there is no assignment of unregistered mark namely "Sri Krishna Sweets" by M. Krishnan to his wife or by the wife to the Plaintiff Company. What was assigned under the assignment deeds were only the registered marks, clearly indicating that an unregistered mark cannot travel in association with a registered mark. He further placed his reliance on the advertisements issued by the Plaintiff where it was clearly stated that the business "Sri Krishna Sweets" was established by their father M.K. Mahadeva Iyer and also referred to various invoices for purchase of sweets from the Plaintiff's outlets in Coimbatore wherein it was specifically stated that the business has been carried on since 1948 particularly the words "Sweet Tradition since 1948" which was subsequently removed by the Plaintiff after filing of the present suit.
Considering various arguments of both the parties the Court held that the parties have traced their linage from the business of their father which was established in the year 1948 and not by M. Krishnan. The Court noted an important point that after filing of the present suit, the Plaintiff made attempts to disassociate the name "Sri Krishna Sweets" from the father and also deleted the words "Sweet Tradition since 1948" from their bills and advertisement material. The Court also pointed out the conduct of the parties, where they have entered into different written agreements in their usual course of business in relation to each and every license and lease other than the license of impugned trade mark which Plaintiff claims to have orally licensed to the Defendant makes the arguments merely a tool of convenience not having any teeth.
The Court further made its observation that Defendant has been running the business for nearly 20 years and the Plaintiff during this time did not raise any objection regarding the usage of the name "Sri Krishna Sweets". Hence, such action of the Plaintiff cannot in any manner give a right to the Plaintiff to seek injunction against the Defendant.
The Court while considering the case of Narasus's Coffee Company Vs Narasu's Roller Floru Mill made it clear that in the trade mark dispute between family members should not be treated as a trade mark dispute but must be looked as a family dispute. After looking into the relevant documents and submissions made by the parties, the Court held that the balance of convenience lies in favour of the Defendant and as per the laws laid down inWander Limited & Anr. Vs Antox India Pvt. Limited, refused to interfere with the order of the trial Court and dismissed the appeal filed by the Plaintiff.
For further information, please contact:
Gautam Kumar, LexOrbis
mail@lexorbis.com
