FAO(OS)(IPD) 1/2023 & connected matters Page 1of16

$~24 to 26

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ FAO(OS)(IPD) 1/2023

DASAPRAKASH RESTAURANT AND ICE CREAM

PARLOUR PVT LTD & ANR .....Petitioners

Through: Mr. Joshy John, Mr. Manav

Vohra, Ms. Kavita Nailwal and Ms. Pranjul

Jain, Advocates

versus

MYSORE DASAPRAKASH AND ORS .....Respondents

Through: Mr. Tishampati Sen, Ms.

Riddhi Sancheti, Mr. Anurag Anand and Mr.

Mukul Kulhari, Advocates

+ FAO(OS)(IPD) 2/2023

DASAPRAKASH RESTURANT AND ICE CREAM

PARLOUR PVT LTD & ANR .....Petitioners

Through: Mr. Joshy John, Mr. Manav

Vohra, Ms. Kavita Nailwal and Ms. Pranjul

Jain, Advocates

versus

MYSORE DASAPRKASH AND ORS .....Respondents

Through: Mr. Tishampati Sen, Ms.

Riddhi Sancheti, Mr. Anurag Anand and Mr.

Mukul Kulhari, Advocates

+ FAO(OS)(IPD) 3/2023

DASAPRAKASH RESTAURANT AND ICE CREAM

PARLOUR PVT LTD & ANR .....Petitioners

Through: Mr. Joshy John, Mr. Manav

Vohra, Ms. Kavita Nailwal and Ms. Pranjul

Jain, Advocates

FAO(OS)(IPD) 1/2023 & connected matters Page 2of16

versus

MYSORE DASAPRAKASH AND ORS .....Respondents

Through: Mr. Tishampati Sen, Ms.

Riddhi Sancheti, Mr. Anurag Anand and Mr.

Mukul Kulhari, Advocates

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

JUDGMENT (ORAL)

% 21.01.2026

C. HARI SHANKAR, J.

1.We have taken up these appeals consequent on directions issued

by the Supreme Court in order dated 22 September 2015 in Civil

Appeals 7884-86/2015.

2.Civil Appeals 7884-86/2015 challenged judgment dated 28

August 2009 passed by a Division Bench of the High Court of Madras

which, in turn, upheld the judgment dated 12 November 2008 of a

learned Single Judge of the High Court of Madras, adjudicating OAs

1072-1074/2008 filed by the respondents in CS 945/2008

1

.

3.As these proceedings germinated in the High Court of Madras,

it is also necessary to note how we have come to exercise jurisdiction

in the matter.

4.CS 945/2008 was transferred to this Court by the Supreme

1

Mysore Dasaprakash and Anr v. Dasaprakash Restaurant and Ice Cream Parlor Pvt. Ltd. & Ors

FAO(OS)(IPD) 1/2023 & connected matters Page 3of16

Court by order dated 22 August 2017 and now stands renumbered by

the Registry of this Court as CS (OS) 344/2017. Subsequently,

applications were filed by the respondents before the Supreme Court

seeking transfer of the present appeals from the High Court of Madras

to this Court. By order dated 7 July 2023, the Supreme Court

transferred the present appeals to this Court. It is thus that these

appeals have come up before us.

5.We may note that CS (OS) 344/2017 is presently pending

before the Intellectual Property Division of this Court and was last

listed on 1 December 2025.

6.Theorder dated 22 September 2015, whereby the Supreme

Court set aside the judgment dated 28 August 2009 of the Division

Bench of the High Court of Madras and directed reconsideration of the

matter by the Division Bench, noted the fact that the Division Bench

of the High Court of Madras had not considered all aspects while

passing judgment dated 20 August 2009. It was in these terms that the

matter was remanded to the Division Bench forde novoconsideration.

7.We have heard Mr. Joshy John, learned counsel for the

appellant and Mr. Tishampati Sen, learned counsel for the respondent,

at length.

8.The issue in controversy has considerably narrowed down, as a

consequence of a recent judgment rendered by a learned Single Judge

FAO(OS)(IPD) 1/2023 & connected matters Page 4of16

of the High Court of Madras in CMA (TM) 2/2023

2

. We would come

to the said judgment by and by.

Thelis

9.The respondents contended, in the plaint forming subject matter

of CS 945/2008, that Respondent 1 Mysore Dasaprakash was a firm,

which was the registered owner of the DASAPRAKASH wordmark,

registered under Section 18 of the Trade and Merchandise Marks Act,

1958. It was alleged, in the plaint, that the appellants were using the

mark DASAPRAKASH for allied and cognate services without

authorization and that, therefore, they were infringers of the mark.

Facts

10.Sitarama Rao, admittedly the originator of the

DASAPRAKASH mark, had eight sons. The plaint instituted by the

respondent averred that Sitarama Rao, with his sons K. Balakrishna

Rao, K. Balrama Dass, K. Bhagavan Dass and Mr. K. Ramadas, had

applied on 30 January 1962 for registration of the word mark

DASAPRAKASH in Class 30. Apparently, the mark was registered in

favour of the aforesaid applicants in 1963 in Class 30 for ice creams.

The plaint averred that this registration was renewed subsequently and

still continues to subsist and remain in force. Inasmuch as, despite

service of summons, the appellants did not respond, and OAs 1072-

1074/2008 were decided by the learned Single Judge exparte, we

2

Dasprakash Restaurant and Ice Cream Parlour Pvt. Ltd. v. Deputy Resgistrar of Trademarks

Intellectual Property Office Building GST Road and Ors., 2025 SCC OnLine Mad 12562

FAO(OS)(IPD) 1/2023 & connected matters Page 5of16

have to treat these averments, as contained in the plaint, as correct for

the purposes of the present appeals.

11.A Family Arrangement dated 3 May 1989 was executed among

the sons of Mr. Sitarama Rao and one K. Ganga Prasad. Clause 16

thereof read as under:

“16. It was further agreed to by all of us that of the sons of late

K. Seetharama Rao of their legal representatives can use the brand

name of “Dasaprakash” or “Dasaprakash Ice Creams” or any

combination of the term Dasaprakash in any part of India.

However, it was clearly understood among them that in such an

event the said party or his / her respective legal heirs must remain

in such undertaking if outsiders are taken into the said undertaking

as a participant in any capacity whether as director or as a major

share holder or as a partner.

A reading of clause 16 reveals that the sons of Mr. Sitarama Rao as

well as their legal representatives were permitted to use the brand

names DASAPRAKASH and DASAPRAKASH ICE CREAMS.

However, if outsiders were taken into the undertaking, which would

be using the said brand name, the right to use the brand name would

continue till the concerned family member remained a Director, a

major shareholder or a partner in the undertaking.

12.On 16 January 2001, a Memorandum of Understanding

3

was

executedinter aliabetween Laxmi Raman, Appellant 2 in the present

appeals, who is a promoter of the Appellant 1 company and K.

Balakrishna Rao, one of the sons of K. Sitarama Rao. The following

clauses of the said MOU merit reproduction:

3

“MOU”, hereinafter

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“MEMORANDUM OF UNDERSTANDING

1. Whereas party of the first part is the proprietor of

DASAPRAKASH Chain of Restaurants all over India since 1988

operating under franchise agreements.

******

3. WHEREAS Party of the First Part intends to sale/transfer

all the franchise agreements, except all the franchises agreement

existing in Delhi and Madras (as referred at Sr. No. 1 to Sr. No.

(illegible) above to a (illegible) Pvt. Ltd. Company

DASAPRAKASA RESTAURANT AND ICECREAM PARLOUR

PRIVATE LIMITED, JAIPUR (hereinafter referred to as the

Company) w.e.f. 15

th

January, 2001.

4. Shri K. Balakrishna Rao is entitled to open any restaurant in

India or abroad as per family settlement and he also intends to

transfer such right to use the name Dasaprakash, to the Company,

as he is one of the promoter of this company.

*****

6. That the shareholding pattern of the company would be as

follows:

1. Party of the First Part 40%

2. Party of the Second Part 20%

3. Party of the Third Part 20%

4. Party of the Fourth Part 20%

7. That party of the First Part hereby agrees to transfer all

franchise agreements pertaining to the operations at Agra,

Lucknow, Kanpur, Jaipur and Chandigarh for a consideration of

Rs. 50.00 Lacs (Rupees Fifty Lacs only) alongwith 40%

shareholding in the company and the Party of the Second Part with

its associates hereby agrees to acquires all the rights, titles and

interest consisting of goodwill, running business, brand name

"DASAPRAKASH" and respective Bank accounts free from all

encumbrances and liabilities in the name of the company.

8. Since the existing units situated in Delhi and Madras will

be operated by party of the First Part therefore any existing or

further liability of existing Delhi & Madras units will be the

responsibility of party of the First Part only and the company will

not be liable for any liability related to the above said units.

9. That party of the second Part with its associates has paid

Rs. 10.00 lacs (Rupees Ten Lacs Only) vide cheque No. 615440 dt.

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16.01.2001 drawn on Punjab National Bank, I.B.B. Sarojani Marg,

Jaipur as an advance payment towards the goodwill and the party

of the First Part hereby acknowledges the receipt of the advance

amount which shall be adjusted towards the total consideration

within 30 days from the receipts of "NO DUES" from the existing

franchises the balance amount of consideration of Rs. 40.00 Lacs

(Rupees Forty Lacs only) shall be paid. The payment of the

balance 40 lacs will be made after adjustment of existing liabilities

of the 5 units, if any.

10. That the party of the First Part hereby assure to the party of

the Second Part with its associates that the rights from all

encumbrances, charge, mortgage, lien, prohibitory order,

attachment notice of demand from income tax authorities or any

other authorities or persons whomsoever, Party of the First Part

further assures that there is no legal impediment in transferring the

franchise agreements.

11. Party of the First Part hereby agrees that it will not open/

operate any restaurant in the name of Dasparakash or in any other

name in future except the existing franchisee agreements in Delhi

and it has been decided by both the parties that any restaurant

opened in future, in India or abroad will be operated through the

agreements entered with the company only. The railway catering

business, if started will solely be owned by the party of the First

Part.

*****

13. Party of the First Part will continue to provide its technical

services/expertise to run the restaurant as technical and working

director in future and a consideration of Rs. 30,000/- (Rupees

Thirty Thousand only) P.M. inclusive of travelling and daily

allowance and expenses will be paid to party of the First part for

the services referred above. This will be reviewed on March, 1st

2002. Both, the party of the First part and the Party of the Second

part with its associates will manage the company affairs as directed

by the Board of Directors.”

13.A little over two months after the execution of the aforesaid

MOU, the High Court of Madras passed an interim order in

Insolvency Petition 34/2001

4

on 22 March 2001, adjudging K.

Balakrishna Rao as insolvent.

FAO(OS)(IPD) 1/2023 & connected matters Page 8of16

14.While the aforesaid order was in force, K. Balakrishna Rao

entered into an agreement dated 11 November 2001 with the

appellants, pursuant to the MOU dated 16 January 2001, Clause 3 of

which, reads thus :

“3. That the first party has on this day transferred all franchise

agreement of the Dasaprakash restaurants pertaining to the

operation of its business at Agra, Lucknow, Kanpur, Jaipur and

Chandigarh along with 40% shared in the company as per M.O.U

for a consideration of Rs.50 (Fifty) Lakhs. From, this date the

second party has acquired all the rights, title and interests

consisting of goodwill, running illegible, brand name, trademark

"Dasaprakash" along with allied marks i.e., Logo "D" with in

crown written in a stylized manner, respective bank accounts free

from all encumbrances and liabilities.”

15.The order dated 22 March 2001 adjudging K. Balakrishna Rao

as insolvent was made absolute by the High Court of Madras by order

dated 25 September 2003.

16.In these circumstances, the respondent instituted CS 945/2008

before the High Court of Madras, alleging that the use, by the

appellants, of the DASAPRAKASH brand name after the interim

order dated 22 March 2001 declaring K. Balakrishna Rao insolvent,

constituted infringement of the right conferred on the respondents to

use the mark pursuant to the registration of the mark in favour of

Sitarama Rao and his four sons with effect from 30 January 1962.

This stands transferred to this Court by the Supreme Court and is

presently pending before the IPD of this Court.

4

Re. K. Balakrishna Rao

FAO(OS)(IPD) 1/2023 & connected matters Page 9of16

17.In the aforesaid suit, the respondents filed three OAs, 1072 to

1074/2008, which stand allowed by the impugned order of the learned

Single Judge of the High Court of Madras.

18.Summons were issued in the suit. Mr. John candidly

acknowledges that the appellants did not respond to the summons or

filed any written statement traversing the assertions in the plaint. In

these circumstances, the learned Single Judge of the Madras High

Court, by the impugned order dated 12 November 2008, allowed the

prayer of the respondents for an interim injunction restraining the

appellants from using the DASAPRAKASH mark. We may reproduce

the terminal paragraph of the order passed by the learned Single Judge

thus:

“4. A reading of the said clause will show that no other person

excepting the nine persons who were parties to the said family

arrangement can use the Trade name and Trade mark. Only one

exception has been provided in the said family arrangement i.e. if

any one of the said nine persons or their family members happen to

be associated with an outside undertaking in the capacity as

Director or a major shareholder or a partner, then so long as such

family member remains in the said undertaking in such capacity,

the said undertaking can use the trade name or trade mark. In this

case it is the consistent case of the applicants that one of the family

members, namely Balakrishna Rao was a major share holder of the

first defendant company and as such the said company was using

the said trade name and trade mark 'DASAPRAKASH' legally so

long as the said Balakrishna Rao remained as the major

shareholder and that now the said Balakrishna Rao ceased to be a

share holder pursuant to which the use of the trade name and trade

mark by the first defendant company or the defendants 2 to 4 has

become unauthorized. As the same has not been denied by the

respondents entitled to deny it the said contention prima facie is

sustainable. Therefore, this Court comes to the conclusion on that

the applicants have made out a prima facie case and that the

balance of convenience also remains in their favour. Accordingly,

all these applications are allowed and injunction is granted as

prayed for till disposal of the suit.”

FAO(OS)(IPD) 1/2023 & connected matters Page 10of16

19.Aggrieved by the aforesaid order of the learned Single Judge,

the appellants filed original side appeals, OAs 428-430/2008 before

the Division Bench of the High Court of Madras which, by judgment

dated 28 August 2009, dismissed the appeals. As we have already

noted that order now stands set aside by the Supreme Court and the

matter stands remanded to the Division Bench for reconsideration.

Analysis

20.At a bare glance, it is clear that the impugned order dated 12

November 2008 of the learned Single Judge of the High Court of

Madras is substantially unreasoned. In fact, the learned Single Judge

has proceeded on the premise that the assertions in the plaint filed by

the respondents were not denied by the appellant which is contrary to

the observations by the learned Single Judge earlier in the order that

the appellants were proceededex parte. The learned Single Judge has,

in these circumstances, merely accepted the respondents’ stand that

Balakrishna Rao and, therefore, the present appellant, could not

continue to use the mark DASAPRAKASH after he had ceased to be a

shareholder in the appellant company.

21.Mr. John submits that, in fact, Balakrishna Rao continues to

remain a shareholder in the appellant company and that, therefore, the

finding of the learned Single Judge is not correct.

22.As against this, Mr. Sen points out that Clause 16 of the Family

Arrangement entitled the sons of K Sitarama Rao or their legal

representatives to use the mark DASAPRAKASH or

FAO(OS)(IPD) 1/2023 & connected matters Page 11of16

DASAPRAKASH ICE CREAMS, inter aliathrough any undertaking

which involved outsiders, till such family member continued in the

undertaking as a Directoror a major shareholderor a partner. Mr. Sen

points out that Balakrishna Rao was only a 10% shareholder in the

appellant company and could not, therefore, be treated as a Director,

or a major shareholder, or as a partner therein and that, therefore, the

continued use of the mark DASAPRAKASH or DASAPRAKASH

ICE CREAMS by the appellant was in the teeth of Clause 16 of the

Family Arrangement.

23.Mr. Sen endeavours, however, to further submit that these

aspects do not require any detailed examination by this Court as they

stand addressed by a learned Single Judge of the High Court in a well-

reasoned judgment dated 16 December 2025 in CMA (TM) No. 2 of

2023. That judgment was rendered on an appeal filed by Appellant 1

under Section 19(1) of the Trade Marks Act, 1999, which, in turn,

arose from a challenge by the appellant to the grant of the trademarks

DASAPRAKASH and HOTEL DASAPRAKASH to the respondents

vide Registration 309327 in class 30. In the said challenge, the

appellants asserted their right to use the DASAPRAKASH and

HOTEL DASAPRAKASH trade marks on the basis of the MOU

dated 16 January 2001supra. This contention stands thus recorded in

para 3 of the order of the learned Single Judge dated 16 December

2025.

“3. As per the MOU, the proprietor agreed to sell/transfer all

the Franchise Agreement except the Agreements in Delhi and

Madras to a proposed newly incorporated private limited company.

The Proprietor was entitled to open any restaurant in India or

abroad as per a family settlement and by virtue of the same, he

FAO(OS)(IPD) 1/2023 & connected matters Page 12of16

wanted to transfer that right to use the name of “Dasaprakash” to

the appellant Company. A sum of ₹ 50 Lakhs along with 40%

shareholding in the Company was given in favour of the proprietor

and the proprietor agreed to transfer all the Franchisee Agreements

pertaining to operations at Agra, Lucknow, Kanpur, Jaipur and

Chandigarh.”

24.The learned Single Judge has ultimately dismissed the

appellants’ appeal, holding thus:

“19. Yet another issue that was brought to the notice of this

Court is with respect to what was ultimately allotted in terms of

shares, in favour of the said Balakrishna Rao. The said Balakrishna

Rao while giving his statement before the Official Liquidator made

it clear that he was only allotted 10% of the shares in the appellant

Company as against the original 40% that was agreed upon. Thus,

the said Balakrishna Rao was not a majority shareholder and

therefore, he could not transfer any right or title in favour of the

appellant Company, since the requirement under Clause 16 of the

Family Arrangement dated 03.05.1989 has not been fulfilled.

20. There is yet another vital issue that stares against the

appellant Company. The said Balakrishna Rao filed an Insolvency

Petition in I.P.No.34 of 2001 and an interim order was passed on

22.03.2001 adjudging him as an Insolvent and thereby, all the

estate and effects of the insolvent stood vested in the Official

Assignee of this Court. In such an event, Balakrishna Rao will not

have the right to enter into any Agreement and if any such

Agreement is entered into, it will be the nonest in the eye of law.

While facing this disqualification, the subsequent Agreement is

said to have been entered into between Balakrishna Rao and the

appellant on 11.11.2001. On the day when the said Balakrishna

Rao is said to have been entered into an Agreement, he is legally

incompetent and this Agreement itself is voidab initio.

21. The learned counsel for the appellant submitted that the

appellant was kept in dark regarding the insolvency proceeding

initiated by Balakrishna Rao and that the appellant is entitled for

being treated as one of the co-proprietors of the trademark and

therefore, the appellant is entitled to submit Form TM-24 in this

regard where the appellant sought to include their name as the co-

owner of the Trademark “Dasaprakash”.

22.As statedsupra, the Trademark “Dasaprakash” was a

family Mark and it was jointly owned by the legal heirs of the

FAO(OS)(IPD) 1/2023 & connected matters Page 13of16

deceased Seetharama Rao. Therefore, one of the proprietors cannot

transfer the rights in favour of any person or entity. On a demurrer,

even if it is assumed that Balakrishna Rao can transfer his

share/right in favour of the appellant Company, such right was lost

after the said Balakrishna Rao was adjudged as an Insolvent.”

25.Thus, the learned Single Judge of the High Court has clearly

returned findings adverse to the appellants with respect to the

appellants’ right to use the trade mark DASAPRAKASH. The learned

Single Judge has held,inter alia, that

(i)Balakrishna Rao was only a 10% shareholder in the

Appellant 1 company, as against 40% as envisaged in the MOU

dated 16 January 2001,

(ii)Balakrishna Rao was not, therefore, a majority

shareholder,

(iii)Balakrishna Rao could not, therefore, transfer any right to

use the DASAPRAKASH mark to the appellant company in

terms of Clause 16 of the Family Arrangement,

(iv)once Balakrishna Rao had been adjudged an insolvent by

the High Court of Madras on 22 March 2001, any agreement

executed by Balakrishna Rao would be legallynon est,

(v)thus, the agreement dated 11 November 2001 was of no

legal or binding force or effect and wasvoid ab initio,

(vi)the trade mark DASAPRAKASH was a family mark

jointly owned by the legal heirs of Sitarama Rao and could not,

therefore, have been transferred by one of the proprietors to any

third party, and

(vii)even if, on a demurrer, it were to be presumed that such a

right vested in Balakrishna Rao, that right stood extinguished on

Balakrishna Rao having been adjudged as an insolvent by the

FAO(OS)(IPD) 1/2023 & connected matters Page 14of16

High Court of Madras on 22 March 2001.

26.The judgment dated 16 December 2025 stands undisturbed till

date, though Mr. John submits that a review petition has been filed

before the High Court of Madras.

27.The aforenoted judgment dated 16 December 2025 of the High

Court of Madras makes out a clearprima faciecase in favour of the

respondents and against the appellants, insofar as the entitlement of

the appellants to use the mark DASAPRAKASH is concerned.

28.The appellants do not claim to be registered owners of the

proprietors of the trade mark DASAPRAKASH. They were tracing

their entitlement to use the mark to the MOU dated 16 January 2001

and the subsequent agreement dated 11 November 2001. At the

highest, therefore, they could claim to be permissive users of the mark

within the meaning of Section 29 of the Trade Marks Act, 1999.

29.Once the learned Single Judge of the High Court has held that

the appellants did not retain the permission to use the mark after K.

Balakrishna Rao had been adjudged insolvent, the appellants cannot

be treated as permissive users of the mark. The mark in question is the

very mark which is registered in favour of the respondents. The use by

the appellants of the mark are for restaurants and other such activities

which are allied and cognate to the activities in respect of which the

mark is registered in favour of the respondents.

30.A case, therefore, ofprima facieinfringement, resulting in

FAO(OS)(IPD) 1/2023 & connected matters Page 15of16

likelihood of confusion, within the meaning of Section 29(2)(b)

5

of the

Trade Marks Act, is made out.

31.Where aprima faciecase of infringement is made out, the

Supreme Court has, inMidas Hygiene Industries (P) Ltd. v. Sudhir

Bhatia

6

, clearly held that an injunction must follow.

32.As a result, we endorse the decision of the learned Single Judge

allowing OA 1072 to 1074 of 2008 filed by the respondents in CS 945

of 2008, albeit for our own reasons citedsupra. Theappellants, as

well as all others acting on their behalf, would stand restrained from

using the mark DASAPRAKASH or any other mark which may be

deceptively similar thereto, in respect of ice creams, restaurants or any

other allied or cognate goods or services, pending disposal of the suit.

33.The appeals are, accordingly, dismissed with no orders as to

costs.

34.Mr. John prays that it may be clarified that all other defences

raised by the appellants should remain open to be taken up in the suit

which is pending before this Court.

35.We clarify that we have not addressed any other aspect of the

5

29.Infringement of registered trade marks

*****

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or

a person using by way of permitted use, uses in the course of trade, a mark which because of—

*****

(b) its similarity to the registered trade mark and the identity or similarity of the

goods or services covered by such registered trade mark; or

6

(2004) 3 SCC 90

FAO(OS)(IPD) 1/2023 & connected matters Page 16of16

matter and that all issues would be available for being urged before

the learned Single Judge in the suit.

36.We further clarify that the present order is a mereprima facie

expression of opinion for the purposes of deciding the respondents’

request for interim relief and should not be treated as binding on the

Commercial Court while adjudicating the suit.

C. HARI SHANKAR, J.

OM PRAKASH SHUKLA, J.

JANUARY 21, 2026/yg