India: Is SRI KRISHNA SWEETS Mark A Trademark Inheritance?

Last Updated: 12 December 2017
Article by Aarushi Jain and Pooja Kapadia
  • Two brothers claimed rights to use the SRI KRISHNA SWEETS mark by virtue of inheritance from their father
  • Plaintiff claimed damages and sought a permanent injunction from using the trademarks or any other mark using the word 'Krishna'
  • Court ordered the parties to maintain the status quo, holding that an injunction would severely affect the defendant's business

Sri Krishna Sweets is a popular Indian sweet manufacturer based in Coimbatore. The case involved a trademark dispute between two brothers and their claim to use the SRI KRISHNA SWEETS mark by virtue of their equal share and right in the goodwill of the mark as part of an inheritance from their father.

Background

The managing director of Sri Krishna Sweets Private Limited (plaintiff company), M Krishnan (the plaintiff), and M Murali (the defendant) are brothers. Their father started a restaurant called Sri Krishna Bhavan in Coimbatore in 1948.

The plaintiff subsequently started the Sri Krishna Sweets business in 1979 in partnership with his mother and aunt. He further obtained registrations for three trademarks in Class 30, namely:

  • a device mark under Application 404943 bearing the image of Lord Krishna with the word 'Krishna' in stylised form;
  • a device mark under Application 484524 bearing the word 'Krishna' in stylised form; and
  • a device mark under Application 484525 bearing the word 'Krishna' in capital letters.

After the partnership dissolved the plaintiff became the sole proprietor of the business and the trademarks.

In 1990 under a licence agreement the plaintiff granted the defendant the right to use the trademarks for the purpose of starting a restaurant. In 1996 the defendant also started a business in Coimbatore under the name 'Kovai Sri Krishna Sweets' with the logo SKS. With the plaintiff's permission he used the plaintiff company's tagline "Divine Sweets, Divine Taste" and "Anbai Solla Azhagana vazhi".

In February 2002 the defendant was made a director of the plaintiff company. Subsequently, in March 2002 the plaintiff assigned the trademarks' rights to his wife.

In June 2002 the plaintiff company, represented by the defendant, purchased Sri Krishna Sweets at Coimbatore and all other branches from Mr Krishnan along with the assets and liabilities belonging to the business. Meanwhile, Mr. Krishnan applied for a trademark for 'Sri Krishna Sweets'. The application was accepted subject to association of the trademark with the other marks but was later withdrawn by the applicant as the other marks were assigned to his wife.

The defendant resigned from the directorship of the plaintiff company on August 27 2010 to start his own private limited company. He also applied for a trademark for the words 'Sri Krishna' for spices but subsequently abandoned the mark. Subsequently, all the trademarks were assigned in the name of the plaintiff company.

The plaintiff asked the defendant to agree to transfer his oral licence agreement to a written document as was required under the Trademarks Act 1999. The defendant replied that the name 'Sri Krishna Sweets' was started by their father and was a gift to both children. Subsequently, the plaintiff company passed a resolution revoking the permission granted to the defendant to use the 'Sri Krishna Sweets' name and suits and an interim injunction application was filed to refrain the defendant from using the name.

The original suit had been filed by the plaintiff claiming, among other things, damages of Rs100,000 and seeking a permanent injunction from using the trademarks or any other mark using the word 'Krishna' including 'Sri Krishna Sweets'.

Pending the suit, the plaintiff filed three applications claiming interim injunctions under the Code of Civil Procedure before the Trial Court, III Additional District Judge, Coimbatore. The trial court dismissed the applications and the plaintiff appealed to the Madras High Court claiming an interim injunction restraining the defendant from:

  • using or issuing any advertisements using the trademarks;
  • using any domain name containing 'Krishna'; and
  • opening any new branches under a name or mark infringing the plaintiff's trademark.

Petitioner arguments

The plaintiff argued that Sri Krishna Sweets was started by the plaintiff in partnership with his mother and aunt. It was not started by the father and there was no claim for right or share in goodwill for the defendant. It was further argued that the partition deed after the father's death showed that the father never claimed any right over the business or trade name 'Sri Krishna Sweets'. Once the trademark for the word 'Krishna' had been registered in favour of the plaintiff, the words 'Sri' and 'Sweets' being generic terms, the non- registration of the term 'Sri Krishna Sweets' would not prevent the petitioner from seeking an injunction restraining the defendant from using that term.

Until 1996 there was a clear demarcation in the business dealings of the two brothers – the plaintiff was involved in the sweets business and the defendant ran the restaurant business. The plaintiff subsequently under an oral agreement allowed the defendant to use the name 'Sri Krishna Sweets' and the tagline in good faith. An attempt by the defendant in 2010 to register the mark SRI KRISHNA SWEETS also showed that his claim that the trademark belonged to their father was made only for the purpose of this case.

Two joint venture agreements were entered into by the plaintiff company and the respective promoters in Dubai and the United States for running the business in these countries. Both the agreements had clauses clearly acknowledging that the plaintiff was the sole owner of the Sri Krishna Sweets and the SKS trademarks. By virtue of the defendant being a co-signatory to these agreements, he had acknowledged that the plaintiff was the owner of the mark.

Defendant arguments

The trademark application for 'Sri Krishna Sweets' made by the plaintiff was withdrawn and therefore there was no registered or applied-for mark for this name by the plaintiff or plaintiff company. Therefore, there can be no claim for infringement but there could possibly be a claim for passing off.

The name 'Sri Krishna Sweets' and the logo SKS were first used by the father in 1948 and the sons started using it as a part of their common inheritance. The plaintiff's claim that oral permission was granted to the defendant to use the trade name and the device of Lord Krishna was strongly denied.

Reliance was placed on an advertisement issued by the plaintiff company as well as the plaintiff company website, where it was clearly stated that Sri Krishna Sweets was started by the late Mr MK Mahadeva Iyer (ie, the father). This showed that Mahadeva Iyer had started the business and that the plaintiff had merely joined the business as the elder son. It was claimed that this would not give him an exclusive right to the trademarks.

It was argued that the claim that the plaintiff company was started in 1979 by the plaintiff was false. Invoices for the purchase of sweets from the plaintiff company shop in Coimbatore carried the words "Sweet Tradition since 1948". These words were only removed after the suit was filed.

It was also argued that even assuming that the plaintiff and thereafter the plaintiff company was the proprietor of the mark, they had permitted the defendant to use the mark from 1996 and now, after 20 years of the defendant carrying on the business under that name, had sought an injunction action.

Even assuming the joint venture agreements could be looked into by the court, it could only be concluded that the defendant had acknowledged the plaintiff company's ownership of the trademark rights in the mark in Dubai or in the United States, not in India.

Judgment

Both parties traced the lineage of their business to Mahadeva Iyer. The plaintiff company consistently claimed that it had used the mark since 1948 when the plaintiff was not even born. Therefore, the business could only have been started by Mahadeva Iyer.

It was noted that the plaintiff had removed the words "Sweet Tradition since 1948" and the mention of Mahadeva Iyer from the plaintiff company website only after filing the current suit in an attempt to separate Sri Krishna Sweets from Mahadeva Iyer. The court dismissed the plaintiff company's argument that any and all association of the business name with the late Mahadeva Iyer was out of respect.

With regards to the claim of the use of the mark and tagline under an oral licence, the court noted that every business dealing of the plaintiff company, including every assignment or licence over the course of several years, was documented. Therefore the court did not accept the claim that the oral licences were granted by the plaintiff company.

The rights acknowledged in the joint venture agreements were held to relate only to rights that may accrue in the United States or Dubai, not in India.

The defendant had been running his business since 1996 and neither the plaintiff company nor the plaintiff had ever raised any objections regarding the use of the mark. While placing reliance on earlier jurisprudence and to maintain the balance of convenience (which is a key ingredient in granting an interim injunction) the court ordered the parties to maintain the status quo. It held that there was acquiescence on part of the plaintiff company and that granting an injunction at this stage would severely affect the defendant's business.

This article was originally published in the 06th November 2017 edition of World Trademark Review

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Aarushi Jain
Pooja Kapadia
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions