On Thursday, the Delhi High Court addressed the intersection of well-known marks and localized, innocent use. The Court examined whether the use of “GULSHAN-E-KARIM” by a Moradabad restaurant infringed upon the centuries-old KARIM brand, ultimately modifying an absolute injunction while safeguarding the Respondent’s reputation. Read on to know how the Court redefined the limits of trademark protection in cases of innocent infringement.
Brief Facts:
The case arose when the Respondent, claiming heritage dating back to 1913 through its founder Haji Karimuddin, discovered in December 2020 that the Appellant was operating a restaurant in Moradabad under the mark GULSHAN-E-KARIM, serving Mughlai cuisine. The Respondent contended that its continuous use of the mark KARIM, derived from the founder’s name, over multiple outlets and registrations in classes covering restaurants and food created considerable goodwill. The Respondent alleged that the appellant’s mark was deceptively similar and instituted a suit in 2022 before the District Judge (Commercial Court), seeking a permanent injunction against the use of GULSHAN-E-KARIM. An application under Order XXXIX Rules 1 and 2 CPC for interim relief was filed concurrently. In January 2025, the Commercial Court granted an interim injunction restraining the appellant from using KARIM as part of his mark, prompting the present appeal before the High Court.
Contentions of the Appellant:
The Appellant argued that the mark GULSHAN-E-KARIM was adopted by his father in 1997, and the restaurant opened in Moradabad in 2016, with uninterrupted use since then. He asserted that in Urdu, Gulshan-E-Karim means “Garden of God,” with Karim also meaning “generous,” and was intended to describe the culinary offerings rather than reference the respondent. The Appellant highlighted that the Food Safety and Drug Administration had licensed the restaurant under this name. He contended that there was no dominant emphasis on “KARIM,” the marks were not similar in entirety, and the restaurant’s local operation posed no risk of consumer confusion. Further, he cited the Respondent’s delay in instituting suit as implicit acquiescence, given that the mark had been in use for over two decades.
Contentions of the Respondent:
The Respondent emphasized its heritage, noting that KARIM restaurants date back to 1913, with ancestors of the founder serving as royal cooks during the Mughal era. It held multiple registrations of KARIM-related marks across Classes 16, 29, 30, 42, and 43, covering food and restaurant services, and operated a website at www.karimhoteldelhi.com. By continuous use, the respondent claimed considerable goodwill, making KARIM a distinctive source identifier. Upon learning of the Appellant’s GULSHAN-E-KARIM restaurant in December 2020, the Respondent alleged deceptive similarity, asserting that the Appellant’s use diluted the brand and misled consumers.
Observation of the Court:
The Court held that the word “KARIM” formed the dominant element of both marks, stating, "while assessing whether the rival marks are confusingly similar, it is open to the court, where the plaintiff’s mark is composite in nature, and has a dominant part, to examine the aspect of confusion and similarity, vis-a-vis the mark of the defendant, by examining whether the defendant has replicated the dominant part."
The Court observed, "it is characteristic of a human mind that it tends to recall dominant parts of a mark," and infringement must be assessed "from the point of view of a consumer of average intelligence and imperfect recollection." Accordingly, it concluded that 'KARIM', therefore, would constitute the dominant part of the appellant’s GULSHAN-E-KARIM mark, and that the possibility of confusion was real.
On the issue of acquiescence, the Court dismissed the defence outright, reiterating the settled principle that “mere acquiescence is no defence to infringement,” as laid down in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia. The Court observed that there was “no acquiescence at all” in the present case, since the appellant had failed to produce any credible evidence of continuous commercial use between 1997 and 2016. It further noted that the respondent had acted with due promptness upon discovering the appellant’s restaurant in 2020, issuing a cease-and-desist notice and pursuing legal remedies thereafter.
However, recognising the appellant’s innocent, localized use, the Court invoked equity under Section 135 of the Trade Marks Act, 1999, and Order XXXIX CPC. It held that "the approach of the Court, in a case of innocent infringement, cannot be the same as the approach in a case of contumacious infringement," and noted that "'Gulshan-e-Karim' is an expression which has a definite meaning in Urdu, which is 'garden of God'," making it suggestively laudatory. Given the restaurant’s long operation in Moradabad since 2016, a total injunction was deemed disproportionate.
Lastly, the Court directed the appellant to use a prominent disclaimer clarifying no connection with the KARIM brand, noting that " a change in the name of the restaurant altogether may, therefore, seriously affect the appellant’s business. Hypothetically, it may even persuade the appellant’s clientele to believe that the management of the appellant has changed. The effects of the appellant having to continue to run his restaurant under a different name, 9 years after the restaurant has been running, are imponderable.”
The decision of the Court:
In light of the foregoing discussion, the Court modified the Commercial Court’s injunction, allowing the appellant to continue using GULSHAN-E-KARIM subject to a clear disclaimer, in English and Hindi, on all advertisements and signages, stating no association with the KARIM group of restaurants and listing the Respondent’s outlet locations. Non-compliance within six weeks would revive the absolute injunction and result in dismissal of the appeal. The appeal was allowed to this limited extent, with no order as to costs.
Case Title: Mohammad Talha Vs. M/S Karim Hotels Pvt. Ltd
Case No: FAO (COMM) 82/2025 & CM APPL. 17511/2025
Coram: Hon’ble Mr. Justice C. Hari Shankar And Hon’ble Mr. Justice Ajay Digpaul
Advocate for Appellant: Sr. Adv. Swathi Sukumar, Advs. Shayan Khurram, Osho Mittal, Ritik Raghuvanshi, Rishab Aggarwal and Arafat Al
Advocate for Respondent: Sr. Adv. Darpan Wadhwa, Advs. Ridhima Goyal, Saif Uddin Khan, Mohd. Affan, Rashi Khandelwal, Divita, and Rhea
Read Judgment @Latestlaws.com
