Butter Chicken and Dal Makhani: The Right of Attribution in Trademark Law

Introduction

Dal Makhani and Butter Chicken, both considered hallmarks of Indian culinary culture, have transcended national boundaries to acquire global recognition. Nonetheless, a legal dispute has arisen in the culinary world, in the case of Rupa Gujral & Ors. v. Daryaganj Hospitality Private Limited & Ors.[1], where the Delhi High Court has been tasked with resolving a conflict between Moti Mahal and Daryaganj, two renowned Delhi-based restaurant chains. The essence of this legal battle is the rightful claim to the invention of these beloved Indian dishes.

This legal issue delves into the nuances of trademark law, with Moti Mahal claiming that Daryaganj’s allegations are an attempt to passing off Moti Mahal’s trademarked recipes as its own. As the Delhi High Court (DHC) prepares to deal with the legal intricacies, this culinary dispute not only raises questions about intellectual property (IP) protection and the right of attribution in the culinary sphere but also highlights the broader implications for the intricate dynamics of trademarks in the ever-evolving realm of culinary innovation.

This article aims to elaborate upon this interesting dispute:

• Moti Mahal v. Daryaganj: The Dispute
• Trademark Law and Attribution: The Indian Standpoint

Moti Mahal v. Daryaganj: The Dispute

Moti Mahal, tracing its origins back to 1920, alleges that its founder, Kundal Lal Gujral, introduced and invented Butter Chicken and Dal Makhani post-Partition, establishing a culinary legacy that spans generations. The dispute gained momentum when Daryaganj, gaining fame through Shark Tank India, declared itself the “inventor” of both dishes, attributing the culinary innovation to their forefather, Kundan Lal Jaggi.

Moti Mahal’s suit, filed before the DHC, contains allegations of trademark infringement and passing off. Seeking a temporary injunction against Daryaganj, Moti Mahal contends that the latter is not only misleading the public about the true originator of Butter Chicken and Dal Makhani but is also utilizing a manipulated photograph of the Peshawar Moti Mahal on its website.

Moti Mahal’s plea is multifaceted, aiming to restrain Daryaganj from asserting that its predecessor invented the dishes, using specific taglines such as “by the inventors of butter chicken and dal makhani,” and claiming any association with Moti Mahal. The legal claim emphasizes Moti Mahal’s sole ownership of the trademark “MOTI MAHAL,” a symbol of its culinary heritage, utilized internationally since 1920.

Daryaganj’s defence, presented on January 16 before the Court, countered Moti Mahal’s claims, labelling the entire suit as “misconceived, baseless, and lacking a cause of action.” Daryaganj’s counsel argued that a cropped photograph on their website, strategically excluding the term “Moti Mahal,” aimed to avoid trademark infringement. Despite this, Daryaganj committed to removing the contentious photograph as a “conciliatory gesture.”

As the case continues, Daryaganj is yet to file its complete response to the suit, and the DHC, presided over by Justice Sanjeev Narula, has set the next hearing date for May 29, 2024.

Trademark Law and Attribution: The Indian Standpoint

Trademark Registration and Protection

In India, trademark law grants owners exclusive rights to protect their registered symbols, designs, or phrases associated with their businesses. The Trade Marks Act, 1999[2] (TM Act) governs trademark registration and protection in India. Upon registration, a trademark owner can claim exclusive rights to its use for 10 years, with the option for renewal. When someone uses the registered trademark without authorization or uses a deceptively similar mark for related goods or services, it leads to trademark infringement.

The Concept of ‘Passing Off’

Beyond infringement, the concept of “passing off” plays a crucial role in attribution disputes. As defined in Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited[3], passing off is “a species of unfair trade competition” where one party deceives consumers into believing their goods or services are associated with another established brand. This can occur through misleading claims, similarity in branding elements, or even the use of manipulated images.

Attribution and Moral Rights of Trademark Owners

The principle of exhaustion poses a limitation on the rights of the trademark owner. India follows the doctrine of international exhaustion, as per which, once the owner legally sells goods bearing the trademark, they lose control over those goods globally. This gives rise to the question of whether trademark owners retain some moral rights even after the initial sale of goods.

Unlike copyright law, there is no explicit provision for moral rights or attribution in the TM Act. Therefore, Section 30(4) of the TM Act assumes significance. This section contains an exception to the exhaustion principle, stating that the trademark owner can oppose further dealings in goods if legitimate reasons exist, like changes or impairments to the goods after the first sale.

The DHC analyzed this provision in the case of Kapil Wadhwa v. Samsung Electronics[4]and interpreted the phrase “change or impaired” to encompass actions like re-packaging or re-labeling that tamper with the integrity of the goods or products. Similarly, another case, Amway India Enterprises Pvt. Ltd. v. 1Mg Technologies Pvt. Ltd. & Anr., also interpreted Section 30(4).[5] In this case, direct selling entities sought an injunction against e-commerce intermediaries for selling their products outside the designated distribution channels, alleging tampering with barcodes. The court acknowledged the insufficiency of evidence in this case but raised questions about the applicability and scope of Section 30(4).

Despite the legal framework, the notion of attribution or moral rights for trademark owners remains ambiguous. Although Section 30(4) can be interpreted to safeguard against the dilution of goodwill and reputation, it falls short of explicitly mentioning attribution or moral rights. Furthermore, the burden of proof rests on the trademark owner to prove that the said tampering with goods significantly impacts their goodwill.

In the context of Moti Mahal v. Daryaganj dispute

The Moti Mahal-Daryaganj dispute revolves around the intersection of historical attribution and trademark infringement in relation to Butter Chicken and Dal Makhni. Moti Mahal asserts trademark ownership and accuses Daryaganj of misleading practices, invoking the concept of passing off. The disagreement transcends legal considerations and involves historical attribution, as both establishments construct elaborate stories regarding the origins of these renowned dishes. The lack of explicit mention of moral rights in Indian trademark law adds complexity, with Section 30(4) providing a potential recourse but requiring careful interpretation and proof. The upcoming decision of the court will have far-reaching consequences for these cherished recipes and set an example for how to navigate the complex dynamics between attribution claims, trademark law, and cultural significance in such culinary disputes.

Conclusion

The Butter Chicken-Dal Makahni dispute goes beyond mere trademark infringement. There exists a convergence of culinary narratives where attribution and historical claims intertwine with legal concepts like passing off. While Moti Mahal claims exclusive ownership, Daryaganj has presented its own origin story. The absence of an express mention of attribution or moral rights in Indian trademark law creates further ambiguity, leaving Section 30(4) as a possible shield, but its effectiveness hinges on proving damage to goodwill. This case delves into the intricate relationship between trademarks, attribution, and cultural heritage, with the court’s decision potentially setting a precedent for future culinary disputes and shaping the narrative of these iconic dishes.

[1] Rupa Gujral & Ors. v. Daryaganj Hospitality Private Limited & Ors., CS(COMM) 26/2024.

[2] https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf.

[3] Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, 2001 (2) PTC 541 SC.

[4] Kapil Wadhwa v. Samsung Electronics, 2013 (53) PTC 112 (Del.).

[5] Amway India Enterprises Pvt. Ltd. v. 1Mg Technologies Pvt. Ltd. & Anr., (2019) 260 DLT 690.

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