In the instant case, the Delhi High Court came to the rescue of Old Delhi's popular Mughlai food outlet Karim's and has restrained Mumbai based businessman Kareem Dhanani from opening any further restaurants under deceptively similar marks, till further order.
Rights of the Plaintiff
- That the Plaintiff, also trading as M/s Karim Hotel Pvt Ltd,
coined and adopted the trade name
"KARIM'S" in the year
1913 which has been derived from the name of the
original founder Haji Karimuddin.
- 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.
Considering their specialty, the word "KARIM'S" is
exclusively and uniquely associated with the Plaintiff for high
quality Mughlai food.
- That the mark "KARIM/KARIM'S/KAREEM is being used by
the Plaintiff in respect of restaurants, catering and other related
businesses since more than 100 years.
- That the Plaintiff has also been positively reviewed by some of
the world renowned magazines namely Time Magazine, BBC, World
Guide, National Geographic and has also been recognized in many
national and internationally acclaimed books/travelogues.
- That Plaintiff also has trademark registrations for the both marks KARIM and KAREEM in classes 16, 29, 30, 42 and 43 as enumerated below:
Facts of the case
- The Plaintiff issued a suitable legal notice on
February 25, 2015 itself, once it came to know of
the Defendant's use of mark KAREEM'S in
December 2014. The said notice was replied by the Defendant on
March 11, 2015.
- Given that the Defendant refused to settle the matter amicably,
the Plaintiff filed a civil suit being CS (OS) 1885/2015
titled Karim Hotels Pvt. Ltd. v. Kareem A. Dhanani, for
permanent injunction, passing off, and damages against the
Defendant. However, in the said suit the Defendant took the plea of
it having trademark registration of the name/mark KAREEM'S vide
application no. 1336349 in class 42 for which the Plaintiff had
already moved to the IPAB and had filed a petition seeking
cancellation of the impugned mark.
- Keeping in mind the ongoing cancellation proceedings before the
IPAB, Defendant moved an Application under Section 124 of the Trade
Marks Act and sought for the stay of the current proceeding of the
said civil suit till the time the cancellation proceedings has been
finalized disposed.
- Thereafter, the cancellation proceedings never finalized even
till November 16, 2017 and accordingly the court disposed of the
civil suit stating that given that no fruitful purpose would be
served by repeatedly adjourning the proceedings till the time they
await the decision of the IPAB, where the order passed by the IPAB
may be challenged by the either of the parties and there are
chances that the proceedings may stretch even longer.
- However, the Court disposed of the said proceedings with liberty to the Plaintiffs to file appropriate proceedings after the IPAB had disposed of the cancellation proceeding and the said order has attained finality
Present Suit
- The said cancellation petition has continued to remain pending
and has not proceeded further. With the enactment of the Tribunals
Reforms Act, 2021, the IPAB has also been abolished and thus the
case had to be transferred to the jurisdictional High Court.
However, the matter is yet to be listed and no notice of listing in
a High Court has been received by the Plaintiff.
- In the span of 4 years the Defendant have extensively expanded
their business and have at least 41 franchises of their restaurant
KAREEMS in various cities in India as well as abroad.
- The extensive use by the Defendant has caused immense confusion
among the public. Given the extent of similarity, the general
public has been made to believe that the Defendant has some
association to that of the Plaintiff, or their restaurant is the
original franchise of the plaintiff's flagship Karim's
Restaurant located in Jama Masjid, Delhi.
- The continuous expansion by the Defendant has left the Plaintiff to fear their mark getting diluted. Therefore the Plaintiff has now filed the present suit seeking permanent injunction to restrain infringement, passing off, delivery up, damages etc.
Karim v/s Kareem- Order passed by the Court
In the present case, the Court has taken note of the delay in the cancellation proceedings and continuous expansion of business by Defendant in the span of 4 years. Additionally, the Court has also taken into consideration that Defendant's claim of use of the name/mark KAREEM'S as mentioned in Defendant's trademark application since 2003 which is almost 90 years after Plaintiff's adoption.
Accordingly, owing to Plaintiff's prior adoption and long-standing use of the name/mark KARIM/KARIM'S/KAREEM and that Defendant's continues use of impugned mark would result in passing off and deception, the court passed the following interim order to strike a balance such that neither of the parties are prejudiced irreparably.
- 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;
- The Defendant has to 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
DelhiA
- The Defendant has to issue at least two public notices in
prominent newspapers having circulation 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. The
said notices shall be published by the next date of hearing.
- The Defendant in all their advertisements and promotional materials, menu cards, etc. including all promotions on social media and online platforms, shall carry a prominent disclaimer stating "No connection with KARIM'S Jama Masjid/Delhi".
ANALYSIS
It is a general rule of thumb that as per section 124 of the Trade Mark's Act, if a rectification/cancellation proceeding of plaintiff's or defendant's trade mark is pending before the Registrar or the Appellate Board (now the High Court), the ongoing suit has to be stayed till the final disposal of such proceedings to avoid conflicting decisions by the Civil Courts and the Tribunal.
However, one must note that Trade Marks Act does not provide for stay of action against the passing off, therefore when a suit is filed for infringement of trade mark as also for passing off, the filing of a rectification petition before the Intellectual Property Rights Board would result in the stay of the suit as far as infringement of trade mark is concerned under Section 124 of the Trade Marks Act, 1999, but that suit with regard to passing off is to be continued.
With respect to the current case, once the Plaintiff as able to establish the extensive amount of confusion being caused in the general public where the Defendant was being seen as the authentic franchisee of the Plaintiff's flagship restaurant in Delhi, the court was quick enough to take matters into hand and pass an interim order, just enough to avoid the confusion and to highlight the distinction between the two entities.
The "takeaway" from this case being, responsibility of an entrepreneur does not end at getting multiple trademark registrations for your brand. It's an ongoing process which includes due diligence and pro-activeness to take immediate action as when a third party encroaches on your rights. Keeping an eye on the Trade Marks Registry and taking prompt action in case a similar/identical mark is applied for is the most important step which brand owners often neglect and believe that their registrations are enough to safeguard their right.
As regards the present case, if the Plaintiff had been prompt enough to take immediate action of opposing the Defendant's application as when the same was filed, the entire delay due to the ongoing rectification proceeding could have been avoided.
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