Moti Mahal vs Daryaganj: Who invented butter chicken? Delhi HC to decide

More recently, Daryaganj, of Shark Tank India fame, also started advertising itself as the “inventor” of both the dishes. Its proprietors claimed that it was their forefather, Kundan Lal Jaggi (1924-2018), who invented both the dishes instead. They also displayed a picture of Peshawar’s Moti Mahal on the restaurant’s website.

Consequently, Moti Mahal filed a legal suit at the Delhi High Court, claiming that Daryaganj was passing off Moti Mahal’s invention as its own.

What has Moti Mahal alleged? How do trademarks work? And what is passing off? We explain.

Moti Mahal’s allegations, Daryaganj’s response

Moti Mahal’s suit alleges trademark infringement and passing off (more on that later), and seeks a temporary injunction against Daryaganj. A temporary injunction is an order by which a party to an action is required to do/refrain from doing a particular thing until the suit is disposed of, or until further orders of the court.

Moti Mahal’s proprietors have contended that not only is Daryaganj misleading the public about who invented butter chicken, it has also wrongly used a manipulated photograph of the Peshawar restaurant on its website.

Moti Mahal’s plea seeks to restrain Daryaganj from claiming that their “predecessor” invented the two dishes, as well as from using the tagline “by the inventors of butter chicken and dal makhani” on their website, on social media platforms, and any print or electronic media.

The plea also seeks to restrain Daryaganj from claiming that it is, in any way, related to Moti Mahal, whose first branch was opened in Old Delhi’s Daryaganj neighbourhood. Moti Mahal’s plea said that it solely owned the trademark “MOTI MAHAL” along with other related marks, used for restaurants operating nationally and internationally since 1920.

On January 16, in the Delhi HC, the counsel for Daryaganj opposed Moti Mahal’s claims, labelling the entire suit as “misconceived, baseless, and lacking a cause of action.”

Regarding a photograph of the Peshawar restaurant, the defendants’ counsel said that the restaurant was jointly established by the “predecessors” of both parties — Moti Mahal’s Gujral and Daryaganj’s Jaggi — and that the plaintiffs had no valid claim of exclusive rights over the image.

Kundan Lal Gujral (right) and Kundan Lal Jaggi. (Wikimedia Commons)

Daryaganj’s counsel argued that the website used a cropped picture, specifically to exclude the term “Moti Mahal”, and thus not infringe on its trademark. Despite this, the counsel said, the defendants agreed to remove the disputed photograph from their website within a week as a “conciliatory gesture” to “alleviate the plaintiffs’ concerns” without conceding to any of their claims.

Daryaganj, however, is yet to file its complete response to Moti Mahal’s suit. In the January 16 hearing, Justice Sanjeev Narula asked Daryaganj’s proprietors to file their response within 30 days, and listed the matter for hearing on May 29.

How trademarks work

A trademark is a symbol, design, word, or phrase that is identified with a business. When a trademark is registered, its owner can claim “exclusive rights” to its use.

The Trademarks Act of 1999 governs the regime of trademarks, and their registration. The Act guarantees protection for trademarks registered with the Controller General of Patents, Designs, and Trademarks, also known as the trademark registry.

According to Section 25 of the Act, once registered, a trademark is valid for 10 years and can be renewed by the owner periodically.

Using someone’s registered trademark without their authorization amounts to a violation or infringement of the trademark. Using a substantially similar mark for similar goods or services can also amount to infringement.

A mark is considered “deceptively similar” to another, if it nearly resembles that other mark, confusing the consumer in the process. Such deception can be caused phonetically, structurally or visually — as decided by the courts.

There is, however, another way in which trademarks can be infringed.

‘Passing off’

In Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited (2001), the Supreme Court said that passing-off is a “species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business”.

The apex court ruled  that the infringing products need not be identical, but the similarity in the nature, character, and performance of the goods of the rival traders has to be established to sustain a claim of ‘passing off’.

Take a situation where a brand logo is misspelt such that it is not easy for a consumer to discern — for instance, ‘Adidas’ and ‘Adibas’. In the present case, Moti Mahal is arguing that Daryaganj’s claims that its forefather Jaggi ‘invented’ butter chicken, and use of the manipulated photo of Moti Mahal restaurant in Peshawar, amounted to passing off Moti Mahal’s trademark as its own.

In infringement cases, the trademark owner can take legal action against anyone who infringes on or violates their copyright and is entitled to remedies such as injunctions, damages, and accounts. An injunction is “an official order given by a law court, usually to stop someone from doing something.”