'Geetham' restaurants did not violate 'Sangeetha' restaurant trademark but liable for passing off: Madras HC

The Madras High Court has held that the use of “Geetham” by a restaurant brand does not infringe the trademark rights of the well-known “Sangeetha” restaurant chain [Sangeetha Caterers Vs Rasnam Foods]..Justice Senthilkumar Ramamoorthy, however, found that Geetham was guilty of passing off for a limited period due to its deceptive trade dress and conduct. The Court delivered the judgment on March 25 in a suit filed by Sangeetha Caterers and Consultants LLP against its former franchisees and associated entities (Geetham). The Court ruled that the marks “Geetham” and “Sangeetha” are not deceptively similar when assessed as a whole from the perspective of an average consumer.“I am unable to conclude that the defendants’ marks are deceptively similar to the plaintiff’s,” the Court held, rejecting Sangeetha's claim of trademark infringement.As a result, the Court refused to grant a permanent injunction restraining the defendants from using the “Geetham” mark..The dispute arose after Rasnam Foods, RSM Foods and Prasanam Foods, which earlier operated multiple “Sangeetha” outlets as franchisees, exited the franchise arrangement in May 2022.Soon after termination, these entities began running restaurants under the “Geetham” name from the same premises in locations such as Velachery, T Nagar and Thoraipakkam.Sangeetha Caterers alleged that the adoption of the new brand, along with similar branding and messaging, was intended to mislead customers into believing that the businesses continued to be associated with “Sangeetha”..Justice Senthilkumar Ramamoorthy, however, did not find any violation of Sangeetha's trademark rights by Geetham restaurants. The Court observed that the plaintiff did not have a registration for the word "Sangeetha" on a standalone basis. Instead, their registrations were for composite marks like "SVR Sangeetha" or "Sangeetha Veg Restaurant" with specific device elements (like a Veena). When comparing "Geetham" to these full composite marks, the Court found they were not identical or nearly identical.The judge further found that although "Sangeetha" and "Geetham" (both meaning music) shared a musical theme, they were distinct words with different syllable structures and sounds. In other words, there was no phonetic (sound) similarity between the two marks. “I am unable to conclude that the defendants’ marks are deceptively similar to the plaintiff’s," the Court concluded. .The Court also took judicial notice of the fact that both "Sangeetha" and "Geetham" are common Indian names and dictionary words. It held that the existence of other restaurants using similar names (like "Geetha Cafe") made it difficult for Sangeetha restaurant to claim that the word "Geetham" alone would inevitably lead to trademark infringement..Nevertheless, the Court found that the defendants’ (those running Geetham restaurants) conduct amounted to passing off between June 1, 2022, and November 2, 2023. This finding was based on several factors, including the use of identical colour combinations - red for the brand name and green for “veg” - as well as the continuation of operations from the same locations.The Court also took note of advertisements and media reports suggesting that “everything remains the same except the name,” which reinforced consumer confusion.“The adoption of a deceptively similar trade dress was made with a view to convince customers that Sangeetha had metamorphosed into Geetham," the Court held. .It proceeded to issue a permanent injunction restraining the use of the deceptive trade dress earlier adopted by Geetham restaurants. The Court also ordered the defendants to disclose how much revenue it earlier while it was still using the deceptive trade dress (between June 1, 2022 and November 11, 2023) and pay profits earned during this period to Sangeetha's proprietor.Further, the Court also imposed costs of ₹10 lakhs on the defendants (Geetham), who were ordered to pay this amount to the plaintiff (Sangeetha)..Sangeetha Caterers and Consultants LLP was represented by Senior Advocate AK Sriram with a team from AS Kailasam & Associates.Rasnam Foods Private Limited & Ors (Geetham) was represented by Senior Advocate PS Raman with Advocate Ramesh Kumar.[Read Judgment]