The Delhi High Court has sided with popular Mughlai food outlet 'Karim's' in trademark infringement battle with Mumbai based businessman Kareem Dhanani and restrained him from expanding his restaurant chain further noting that the name is similar to the known brand.
The single-judge bench of Justice Prathibha M. Singh in further directions asked Kareem to restarin from showcasing any relation with the Karim's at Jama Masjid in any restaurant currently functioning under his franchise.
“KARIM’S” was trademarked in the year 1913 and the mark was derived from the name of the original founder Haji Karimuddin. The said mark is being used by the Plaintiff in respect of restaurants, catering and other related businesses since more than 100 years. It was averred in the plaint that the word “KARIM'S” is exclusively and uniquely associated with the Plaintiff for high quality Mughlai food.
It was contended that Plaintiff has trademark registrations in various classes both for the mark “KARIM” and “KAREEM” as also devices, logos and other derivatives thereof. The Plaintiff’s case is that the founder hails from a line of ancestors who were Shahikhansamas (royal cooks) in the Mughal Empire and who developed a line of cuisine commonly and popularly known as Mughlai food. Its flagship restaurant is located near the Jama Masjid in Old Delhi. It has received various awards and been recognized by various media outlets as an authentic restraunt.
When Plaintiff came to know of the Defendant's use of the identical mark “KAREEM’S” sometime in December, 2014 it initially issued a legal notice and later on filed a suit. In the said suit, the Defendant took a plea that it has a registration for the device “KAREEM’S”. Considering the said registration, the Plaintiff had filed a petition seeking cancellation of the Defendant's mark before the IPAB, Mumbai.
Thereafter, the cancellation petition continued to remain pending before the IPAB and the suit was disposed of giving liberty to the Plaintiff to file appropriate proceedings after the decision by the IPAB in the cancellation petition.
The present suit seeking permanent injunction to restrain infringement, passing off, delivery up, damages etc., has now been filed by the Plaintiff on the ground that, owing to the long delay in the disposal of the said cancellation petition, the Defendant is continuing to expand their restaurants business.
It was averred that enormous confusion is being caused between the Plaintiff’s and the Defendant's restaurants.
The Court at the outset noted that admitted adoption of the impugned mark by the Defendant is since 2003, which is almost 90 years after the Plaintiff’s adoption. It noted that cancellation petition continue to remain pending and has not proceeded further. and with the enactment of the Tribunals Reforms Act, 2021, the IPAB has also been abolished and thus the case would have to be transferred to the jurisdictional High Court.
It added that considering the fact that the Plaintiff is the prior user, adopter and owner of the marks “KARIM/KARIM’S/KAREEM”, the continued use of the said mark by the Defendant would result in passing off and deception.
However, since the defendant has already opened 41 restaurants, the Court deemed it appropriate to strike a balance to ensure that neither party is prejudiced irreparably.
Owing to the long adoption of the Plaintiff’s marks “KARIM/KARIM’S/KAREEM” and the goodwill and reputation which the Plaintiff’s restaurants enjoy, not only in India but internationally, the Court ruled in favour of Karim , issuing a slew of instruction with balanced approach to defendant's investment in his chain.
The defendant has been asked to halt its expansion under the impugned mark and make announcements via notice in prominent newspapers (particularly popular in North India) diassociating itself from the Karim's. It has also been instructed that no presentation what so ever should be made inside the restarunts connecting the two. The Court also asked the defendant to use disclaimer in future promotional activities claiming unique identity from the known restaurant.
Case Title: KARIM HOTEL PVT LTD vs KAREEM DHANANI
Case Details: CS(COMM) 112/2022 & I.A. 2695/2022
Coram: Justice Prathibha M. Singh
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