30 Nov 2022 3:47 AM GMT
The Delhi High Court has declared ITC Limited's 'Bukhara' as a well known trademark under Section 2(zg) read with Section 11(2) of the Trade Marks Act and directed the Registrar to add it to the list of well-known trademarks upon completion of requisite formalities.Justice Prathiba M. Singh in the judgment said that certain trademarks or names attaining the status of well-known marks have...
The Delhi High Court has declared ITC Limited's 'Bukhara' as a well known trademark under Section 2(zg) read with Section 11(2) of the Trade Marks Act and directed the Registrar to add it to the list of well-known trademarks upon completion of requisite formalities.
Justice Prathiba M. Singh in the judgment said that certain trademarks or names attaining the status of well-known marks have been acknowledged and recognised by courts in India for the last two-three decades.
"Illustratively, marks such as 'APPLE', 'WHIRLPOOL', 'BENZ' etc., have been recognised as 'well-known' marks even before the said marks were actually used on a commercial scale in India. The said concept of according recognition for 'well-known' marks was finally incorporated statutorily in the Trade Marks Act, 1999, thus strengthening the recognition granted to such mark," Justice Singh said.
The court said the documents placed on record by ITC Limited show that "not only has the mark 'Bukhara' been intrinsically connected to Indian cuisine" but the restaurant has also been recognised internationally as a customary stop for foreign celebrities and dignitaries.
"Additionally, the Plaintiff's restaurant 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, as discussed above. In light of this overwhelming evidence, the reputation and global distinction earned by the Plaintiff's mark 'BUKHARA' is beyond well-established and the said restaurant has clearly internationalised India's cuisine."
Observing that US judgments - wherein ITC was unsuccessful in protecting the mark, would not be applicable in the context of India, the court said the brand in India enjoys substantial goodwill and reputation not only among Indians but also among foreigners who travel to India and carry back the said reputation.
"In view of all these circumstances which are in contrast to the position in the US, and considering the Indian legal position as elaborated above and the enormous fame and goodwill evidenced from the documents placed on record which are not denied by the Defendants, the mark 'BUKHARA' of the Plaintiff is declared as a well-known mark under Section 2(zg) read with Section 11(2) of the Act. The Registrar of Trademarks shall add the same to the List of Well-known Trademarks, upon the Plaintiff completing the requisite formalities"
The court passed the decision on November 14 on a suit filed by ITC for protection of its trademark 'Bukhara' which is used by it in respect of restaurant and other hospitality services. The mark was adopted by the group for its restaurant at ITC Maurya Hotel in Chanakyapuri in late 1970s.
Though the suit was primarily against adoption of the mark 'Balkh Bukhara' by a restaurant in Gurgaon, ITC had also sought declaration of its mark 'BUKHARA' as a well-known mark under Section 2(zg) of the Act.
ITC Limited in the suit said the Gurgaon restaurant had imitated various aspects of its 'BUKHARA' restaurant including – name, logo and font, interiors of the restaurant, décor, seating style, staff uniform, bib/apron, utensils, wooden menu and the whole look and feel of the restaurant.
In response, the defendants agreed to not use the mark 'BALKH BUKHARA' or any other mark consisting of the word and mark 'BUKHARA' for their restaurant, hotel, or other hospitality related services.
Accordingly, the court said the defendants shall stand restrained from using the mark 'BALKH BUKHARA' or any other mark which is identical or deceptively similar to the plaintiff's mark 'BUKHARA' for their restaurant, hotel or other hospitality related services.
The court further recorded that the defendants are agreeable to change the menu card, the jacket as part of the uniform of their restaurant servers, and the copper glass, which are similar to the Plaintiff's items.
"Insofar as the other elements of the restaurant are concerned, the Defendants agree to change and remove the name and word 'BUKHARA' from the restaurant, the display board, any promotional items, boards, websites, and the other items including napkins, menu cards, uniforms, invoices, stationery, and any other places within its restaurant where such mark appears, on or before 31st December, 2022," it added.
Title: ITC LIMITED vs CENTRAL PARK ESTATES PRIVATE LIMITED & ANR
Citation: 2022 LiveLaw (Del) 1132
Click Here To Read/Download Judgment