- That 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 Plaintiff in respect of restaurants, catering and other related businesses since more than 100 years.
- That Plaintiff has also been positively reviewed by some of the world-renowned magazines namely Time Magazine, BBC, World Guide, and National Geographic, and has also been recognized in many national and internationally acclaimed books/travelogues.
- That Plaintiff also has trademark registrations for both marks KARIM and KAREEM in classes 16, 29, 30, 42 and 43 as enumerated below:
|S. NO.||MARK||CLASS||APPLICATION NO.||APPLICATION DATE||STATUS|
|1.||16||2051016||November 09, 2010||Registered|
|2.||16||2051025||November 09, 2010||Registered|
|3.||29||1143864||October 17, 2002||Registered|
|4.||29||2894261||February 06, 2015||Registered|
|5.||30||2051023||November 09, 2010||Registered|
|6.||30||2894260||February 06, 2015||Registered|
|7.||42||1491350||September 30, 2006||Registered|
|8.||43||2051024||November 09, 2010||Registered|
|9.||43||2061166||November 30, 2010||Registered|
|10.||KAREEM||16||2051013||November 09, 2010||Registered|
|11.||KAREEM||30||2051014||November 09, 2010||Registered|
|12.||KAREEM||43||2051015||November 09, 2010||Registered|
|13.||16||2051028||November 09, 2010||Registered|
|14.||30||2051029||November 09, 2010||Registered|
|15.||43||2051030||November 09, 2010||Registered|
- That Plaintiff has also acquired trademark registration for their caption ‘Secret of good Taste of Karim’s food’ in classes 16, 30, and 43 and is also has been actively using the domain karimhoteldelhi.com. which is accessible to its worldwide customers.
- Plaintiff issued a suitable legal notice on February 25, 2015, itself, once it came to know of Defendant’s use of mark KAREEM’S in December 2014. The said notice was replied to by Defendant on March 11, 2015.
- Given that Defendant refused to settle the matter amicably, 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 Defendant. However, in the said suit Defendant took the plea of it having trademark registration of the name/mark KAREEM’S vide application no. 1336349 in class 42 for which 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 have been finalized and disposed of.
- 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
- 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, Defendant has 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 Delhi
- 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”.
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.