The Delhi High Court in the case of Karim Hotel Pvt. Ltd. v. Kareem Dhanani, 2022 SCC OnLine Del 1610, decided on 27.05.2022, granted interim relief to Old Delhi’s very famous restaurant, ‘Karim’s’, and ordered ‘Kareem’s’, the Bombay based restaurant to announce on their website, social media pages and in the newspaper, that they have no relation with the Delhi based renowned restaurant Karim’s.
FACTS
Karim Hotels Pvt. Ltd. (hereinafter referred to as “the Plaintiff”), is the proprietor of the well-known trademark “KARIM/KARIM’S/KAREEM”. Additionally, M/s Karim Hotel Pvt. Ltd., which is Plaintiff’s trading name, has the prominent word or mark “KARIM” within itself.
The name “KARIM’S”, was coined and adopted by Plaintiff’s founder way back in 1913. The said mark is being used by Plaintiff in respect of restaurants, catering, and other related businesses for over 100 years.
Additionally, Plaintiff had trademark registrations in various trademark classes including Class 16, 29, 30, 42, and 43 both for the mark “KARIM” and “KAREEM”.
Also, the caption “Secret of good mood Taste of Karim’s food” had also been registered by the Plaintiff under Classes 16, 30, and 43. Plaintiff also uses the domain name www.karimhoteldelhi.com for national and international customers and is well-known in the food and beverages business.
In 2014, Plaintiff became aware of the use of the identical mark “KAREEM’S” by Kareem Dhanani (hereinafter referred to as “the Defendant”). Subsequently, on 25.02.2015, Plaintiff issued a legal notice, to which Defendant replied on 11.03.2015.
Plaintiff also filed a suit, i.e., Karim Hotels Pvt. Ltd. v. Kareem A. Dhanani (“CS (OS) 1885/2015”), wherein Defendant took a plea that it has a registration dated 04.02.2005 for the device mark “KAREEM’S” in Class 42. Soon after, Plaintiff filed a petition for cancellation of the Defendant’s said mark before the Intellectual Property Appellate Board (hereinafter referred to as “IPAB”), Mumbai.
In view of the cancellation petition filed by the Defendant, the infringement suit CS (OS) 1885/2015 was stayed by the Delhi High Court (hereinafter referred to as “the High Court”), vide order dated 17.02.2016, until the decision of IPAB.
Since 17.02.2016, the case was regularly delayed, thus the High Court finally disposed of the matter on the ground that continuously adjourning the current suit would serve no useful purpose because not only are the proceedings before the IPAB bound to take time but any order passed by the IPAB may be contested by either of the parties.
Thus, the present suit seeking a permanent injunction to restrain the infringement, passing off, delivery up, damages, etc., was filed by the Plaintiff due to the long delay in the disposal of the said cancellation petition by IPAB, and the Defendant’s continuous use of the Trademark and expansion of their restaurant business.
ISSUES BEFORE THE HIGH COURT
- Whether the Defendant had infringed upon the Plaintiff’s registered trademark?
- Whether an injunction can be granted to the Plaintiff?
CONTENTIONS OF THE PARTIES
The Plaintiff contented that the Defendant’s continuous use of the word “KAREEM’S” has led to confusion amongst the customers, and as a result of the same, the Plaintiff’s trademarks are getting diluted.
The Plaintiff stated that a fresh notice was issued to the Defendant, reiterating the direction to file a list of all the restaurants operating under the name “KAREEM’S”.
The Defendant contented that the matter is yet to be listed and no notice of listing in the High Court has been received by the Plaintiff. Moreover, it is submitted that the Defendant is currently running 41 restaurants, the details of which had been duly handed over along with the affidavit of the Defendant.
Lastly, both the parties pleaded for the cancellation petition filed before the IPAB, which is still pending and no proceedings have taken place.
DECISION AND FINDINGS
The High Court observed that, the Plaintiff is the prior owner and user of the marks “KARIM/KARIM’S/KAREEM” for Mughlai food and North Indian delicacies, since the year 1913. On the other hand, the Defendant adopted this impugned mark 90 years after the Plaintiff’s adoption.
The High Court held that the Defendant’s continuous use of the impugned mark amounts to passing off and deception, given the Plaintiff’s long adoption of the “KARIM/KARIM’S/KAREEM” marks, the national and international goodwill that the Plaintiff’s restaurants hold.
However, as the Defendant has opened 41 restaurants already as per the list provided, the High Court issued reasonable and non-prejudicious directions as follows:
i. That the Defendant shall not open any further restaurants under the marks “KARIM/KARIM’S/KAREEM/KAREEM’S” or any other marks which are identical or deceptively similar to the Plaintiff’s marks “KARIM/KARIM’S/KAREEM” till the next date of hearing.
ii. That the Defendant shall ensure that no representation is made to the customers that the Defendant is associated with the Plaintiff – KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi, in the restaurants run by him or by his franchises,
iii. At least two public notices shall be issued in prominent newspapers circulating in Maharashtra and in North India, that the Defendant’s restaurant KAREEM’S is not associated with the Plaintiff’s – KARIM HOTEL PVT. LTD. or KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi.
iv. All the advertisements and promotional materials, menu cards, etc. including all promotions on social media and online platforms, shall carry a prominent disclaimer to the following effect: “No connection with KARIM’S Jama Masjid/Delhi”.
v. That these abovementioned disclaimers must be effected within 2 weeks in regards to all existing and future promotional materials.
AMLEGALS REMARKS
The High Court in the present case has tried to strike a balance between the rights of both the parties by upholding the rights conferred by the registration of the trademark on the trademark owner, and on the other hand, by imposing reasonable redressal measures upon the Defendant.
The High Court rightly ruled that when a party that has adopted and is been using a trademark for several years and has been recognized by customers at large, then such a party’s trademark cannot be diluted by anyone in any circumstances.
However, it is interesting to note that instead of applying the legislation and the law in an absolute manner, the High Court acted in the best interest of both the parties. Given the fact that the revenue and customer base of both the parties were highly dependent on the use of the impugned mark of “KARIM/KARIM’S/KAREEM”, so rather than passing an order because of which one party is harmed substantially, the High Court gave directions that aided both the parties.
Such a type of judicial rationale and order shall be highly appreciated by the stakeholders of the intellectual property rights community.
Team AMLEGALS, assisted by Mr. Alay Raje (Interns)
For any query or feedback, please feel free to connect with chaitali.sadayet@amlegals.com or mridusha.guha@amlegals.com
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