Delhi High Court Declares ITC’s Bukhara as a Well-known Mark

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December 1, 2022

Delhi High Court Declares ITC’s Bukhara as a Well-known Mark

Justice Pratibha M. Singh of the High Court of Delhi has declared ITC’s mark BUKHARA as a well-known mark. The suit titled ITC Limited V. Central Park Estates Private Limited and Anr. C.O. (COMM.IPD-TM) 763 of 2022 was instituted by ITC against infringement of their mark BUKHARA by the defendants (Central Park Estates Private Limited and St. Jerome Hospitality Management Services Private Limited). In addition to the above, the plaintiff also sought cancellation/rectification of the defendants’ marks that incorporated the plaintiff’s BUKHARA mark. 

It was the plaintiff’s case that they had commenced operation of their restaurant, ITC Maurya in Chanakyapuri, New Delhi in the late 1970’s and have been using the mark since then. The plaintiff additionally contended that the restaurant is not just known for its food, but additionally for its interiors, décor, layout, arrangement of the restaurant, the cutlery in which the food is served, the wooden menu cards and the rustic look that has been maintained by them since its inception. The plaintiff is the registered proprietor of the mark BUKHARA in India since 1985 for both its device and word mark. On the other hand, the defendant’s had opened a restaurant under the name BALKH BUKHARA which came to the plaintiff’s knowledge in October, 2022. Further investigation by the plaintiff revealed that the defendants had even obtained registrations for the marks BALKH BUKHARA RESTAURANT and BALKH BUKHARA. The defendants were additionally alleged of imitating not just the well-known mark of the plaintiff but also the interiors, décor, staff uniform, utensils, wooden menu and as such the whole look and feel of the plaintiff’s restaurant that had been built over decades.

The counsel for the defendant in their response submitted to the court that the plaintiff’s mark had failed to obtain protection from the US courts’ Second Circuit in a similar suit for injunction filed by the plaintiff against infringers in the United States of America. However, after deliberations the defendants’ agreed to a decree with amicable resolution of the dispute. The defendants agreed to restrain from using the plaintiff’s mark BUKHARA in addition to agreeing to change the similar elements of their restaurant under the impugned name. As regards the rectification or cancellation of their registered trademark, the defendants agreed to delete the word BUKHARA from their marks.

With respect to the plea of the plaintiff to declare their BUKHARA mark as well-known, the court relied upon the decisions in Apple Computer Inc. v. Leasing & Industries [Suit No.2751 of 1989], Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239 as well as NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 to hold that, ‘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 scape in India’. The observation was made by the court especially in light of the contention raised by the defendants that the plaintiff had failed to get protection in the United States of America for their mark BUKHARA. The court further stated that, ‘In light of the 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.’ and declared the plaintiff’s mark BUKHARA as well-known.  

Further, considering the litigation in the United States of America by the plaintiff, the court delved into the factors that led to the failure and observed that the plaintiff’s unsuccessful attempt to protect their mark was due to the fact that there was no evidence that the mark BUKHARA enjoyed any goodwill and reputation in New York. Additionally, the famous marks doctrine as set forth in Article6bis of the Paris Convention and Article 16(2) if the TRIPS has not been incorporated into the federal law of the US. In light of the above, Justice Singh clarified that the judgments of the foreign court would have no bearing on the plaintiff’s case in India since it is clear that BUKHARA has originated from India and enjoys substantial goodwill and reputation not only from Indian patrons, but also from foreign patrons who visit the country.

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