By Titiksha Sinha and Shilpi Sinha
Hon’ble Justice Prathiba M. Singh has recently declared ITC Limited’s famous trade mark BUKHARA used in respect of its restaurant at Chanakyapuri, New Delhi, as “well-known” in a suit filed by ITC Limited (i.e., the Plaintiff) against Central Park Estates Pvt. Ltd. and St. Jerome Hospitality Management Services Pvt. Ltd (i.e., the Defendants) for infringing their rights by adopting the trade mark BALKH BUKHARA for its restaurant.
ABOUT THE PARTIES
The Plaintiff, ITC Limited started its hospitality business in the year 1975 and has been operating several hotels across the world since then. ITC Limited has business across diverse sectors and is ranked among Asia’s 50 best performing companies.
a) Central Park Estates Private Limited is a real estate developer involved in the creation of living, recreation, leisure and commercial spaces.
b) St. Jerome Hospitality Management Services Private Limited is a company involved in community, personal & social services activity.
- ITC Limited adopted the trade mark BUKHARA in late 1970’s for its restaurant at ITC Maurya Hotel, Chanakyapuri, New Delhi, and got the trade mark same registered in 1985 vide Application No. 436907. The Plaintiff’s website www.itcporta.com and www.itchotels.in provide valuable information about its business across the world including India, including that of BUKHARA.
- The BUKHARA restaurant has unique décor and stylized font which is visible on its entrance, the bibs/apron for the customers as well as the menu. It is known for its various preparations, interiors, wooden menu cards etc., including its traditional method of cooking over a clay oven or tandoor. It is visited by various celebrities, presidents, heads of states etc., various chefs of global repute have also worked at it. The BUKHARA restaurant has won a large number of awards including international awards such as best restaurant in Asia in 2005 by ABTA, Asia’s first Golden Fork Award etc. The sales of BUKHARA restaurant in 2021 was over 20 crores INR. Owing to the same, BUKHARA has acquired the status of a “well-known trade mark”.
- The Defendants adopted the trade mark BALKH BUKHARA/ for its restaurant in Gurgaon, and obtained registration for the same and BALKH BUKHARA RESTAURANT vide Application Nos. 4010765 and 3839762 respectively. The Defendant has also imitated essential elements of the BUKHARA restaurant including the name, font, interiors, bib/apron, decor, seating style, uniform of staff, utensils, wooden menu and the whole look and feel of the restaurant. Screenshots showcasing some of the similarities between ITC Limited’s BUKHARA restaurant, and the Defendant’s restaurant are copied below:
- In view of the same, the Plaintiff prayed for permanent injunction restraining the Defendant, a decree of sum of estimated damages valued at ₹ 2,00,02,000/-, cancellation of the Defendant’s registrations and other reliefs including an order declaring the trade mark BUKHARA to be declared as well-known.
The counsel for the Defendant, informed that the parties have amicably arrived at a settlement agreement, and the suit shall stand decreed in the following terms:
- The Defendant shall stand restrained from using the mark BALKH BUKHARA or any other mark which is identical/deceptively similar to BUKHARA for their restaurant, hotel or other hospitality related services, and they shall change/remove the word BUKHARA from restaurant, display board, websites, menu cards etc.
- The Defendant is agreeable to the Registration No. 4010765 for the trade mark being cancelled, and shall delete the word BUKHARA from Registration No. 3839762 for the trade mark BALKH BUKHARA RESTAURANT.
Court’s Analysis relating to Well-known Mark
The Hon’ble Court traced the history of recognition of well-known trade marks in India and placed reliance on judicial precedents wherein marks such as APPLE , WHIRLPOOL , BENZ etc., were recognized as well-known trade marks by courts even before they were actually used on a commercial basis in India. The Hon’ble Court reiterated statutory provisions with respect to ‘well-known marks’ incorporated in the Trade Marks Act, 1999 under Section 2(zg), Section 11(2) and (6), Section 29(4) and Rule 124 of the Trade Marks Rules 2017.
The Hon’ble Court placed reliance on several judgments and the following observations:
- The knowledge of the famous or well-known mark can be the result of actual use or promotion of the trade mark only in a particular segment of trade. Indian jurisprudence has widely recognized even transboundary reputation of foreign marks and accorded them the status of well-known marks under common law, even in relation to completely unrelated goods and services.
- On account of advancement of technology access to information, international travel and advertising/publicity on internet, television, magazines etc., more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products old under those names and on account of promotional and marketing activities have come to enjoy trans-border reputation.
- Another reason for growing acceptance of trans border reputation is that a person using a well-known trademark even in respect of goods or services which are not similar tries to take unfair advantage of the trans-border reputation which that brand enjoys in the market and thereby tries to exploit and capitalize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person’s well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition.
Plaintiff’s Well-Known Mark
The Plaintiff in this case also desired the mark “BUKHARA” to be declared as a well-known mark. The Plaintiff provided various documents in support of its long-standing repute including registrations, extracts from the Plaintiff’s website reflecting (1) Bukhara as an award winning culinary brands; (2) Michelin star chef, Mr. Alfred Prasad having worked at Bukhara; (3) photographs of various dignatories/celebrities such as Mr. Bill Clinton, Mr. Donald Trump etc., visiting the restaurant; (4) certificate of CA showing revenue generated by the Bukhara restaurant between 1978 to 2022; (5) news clipping depicting a tradition whereby every US President who visits India, visits the Bukhara restaurant and special menu is prepared for them; (6) numerous awards, etc. Relevant screenshot given below, for ready reference:
The Hon’ble Court took these evidences into consideration and said that not only these documents denote that ‘BUKHARA’ has been intrinsically connected to Indian cuisine but is also recognized internationally as a customary stop for foreign celebrities and dignitaries, additionally the court observed that ‘BUKHARA’ has received numerous awards recognizing it as the best restaurant in Asia, Best Indian Restaurant in the World in the years 2006 and 2007, and “India’s best Hotel Restaurant Award” by Travel & Leisure in the year 2016.
The Hon’ble Court reviewed the judgment of ITC Ltd. v. Punchgini, Inc., wherein ITC was unsuccessful in protecting its BUKHARA trade mark in USA , and observed that the same was due to two factors (1) no evidence of BUKHARA enjoying goodwill and reputation in New York; and (2) Article 6bis of the Paris Convention and Article 16(2) of TRIPS has not been incorporated into the relevant federal law. The said judgment would not be applicable in India, where it is clear that it enjoys substantial goodwill and reputation not only among Indians but also foreigners.
In view thereof, the reputation and global distinction earned by the Plaintiff’s mark BUKHARA is beyond well-established and it has clearly internationalized India’s cuisine. Therefore, the mark BUKHARA is declared as a well-known trade mark under Section 2(zg) read with Section 11(2) of the Act, and requested the Learned Registrar to add the same to the list of well-known trade marks upon completion of the formalities.
The decision rendered by the Hon’ble High Court of Delhi is well-reasoned and clear in highlighting the difference in the laws applicable in India and the United States regarding the well-known marks. The decision also traces the history, judicial approach and growing jurisprudence in India with respect to protection and enforcement of well-known marks and reinforces confidence of IP owners in the legal regime as far as brand protection and enforcement of well-known and famous marks in the country is concerned.
 ITC Limited V. Central Park Estates Private Limited and Anr C.O.(COMM.IPD-TM)763/2022
 Apple Computer Inc. v. Apple Leasing & Industries [Suit No.2751 of 1989, decided on 4th May, 1991]
 NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300
 Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239
 518 F.3d 159 (2nd Cir. 2008)