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Karim’s Food is saved by the HC, but Kareem’s is barred from starting restaurants.

In a trademark infringement case involving Mumbai-based businessman Kareem Dhanani, the Delhi High Court sided with famed Mughlai cuisine outlet ‘Karim’s’ and barred him from expanding his restaurant chain further, citing the name’s similarity to a well-known brand.

Further, Justice Prathibha M. Singh’s single-judge court directed Kareem to refrain from displaying any connection to the Karims at Jama Masjid in any restaurant now operating under his license.

The trademark “KARIM’S” was registered in 1913, and it was derived from the name of the company’s founder, Haji Karimuddin. For more than a century, Plaintiff has used the abovementioned mark in connection with restaurants, catering, and other connected activities. The phrase “KARIM’S” is entirely and uniquely linked with the Plaintiff for top quality Mughlai food, according to the plaint.

Plaintiff claimed to have trademark registrations in multiple classes for the marks “KARIM” and “KAREEM,” as well as devices, logos, and other adaptations of those marks. Plaintiff claims that the founder comes from a line of ancestors who worked as Shahikhansamas (royal cooks) under the Mughal Empire and established a cuisine known as Mughlai Cuisine. Its flagship restaurant is in Old Delhi, near the Jama Masjid. It has won numerous honors and has been acknowledged as an authentic restaurant by various media outlets.

Plaintiff issued a legal notice and then filed a lawsuit after learning about Defendant’s use of the similar mark “KAREEM’S” in December 2014. Defendant claimed in the action that it holds a registration for the device “KAREEM’S.” In light of Defendant’s registration, Plaintiff filed a case with the IPAB in Mumbai seeking revocation of Defendant’s mark.

The cancellation petition remained pending before the IPAB after that, and the complaint was dismissed, allowing Plaintiff to file proper proceedings following the IPAB’s cancellation petition determination.

Plaintiff has now filed a permanent injunction to prevent infringement, passing off, delivery up, damages, and other claims, claiming that Defendant is continuing to expand their restaurant business as a result of the protracted delay in the disposition of the abovementioned cancellation petition.

It was claimed that there is a great deal of confusion between Plaintiff’s and Defendant’s eateries.

The Court noticed right away that the Defendant’s admitted adoption of the infringed mark dates from 2003, about 90 years after Plaintiff’s adoption. It was observed that the cancellation petition was still pending and had not progressed any further. The IPAB was also dissolved with the enactment of the Tribunals Reforms Act, 2021, and the matter would have to be transferred to the jurisdictional High Court.

It went on to say that because Plaintiff was the first user, adopter, and owner of the marks “KARIM/KARIM’S/KAREEM,” Defendant’s ongoing use of the mark would amount to passing off and deception.

However, because the defendant has already opened 41 restaurants, the Court determined that striking a balance is necessary to guarantee that neither party suffers irreparable harm.

The Court ruled in favor of Karim, issuing a slew of instructions with a balanced approach to the defendant’s investment in his chain, owing to the Plaintiff’s mark “KARIM/KARIM’S/KAREEMlong “‘s adoption and the goodwill and reputation that the Plaintiff’s restaurants enjoy, not only in India but internationally.

The defendant has been ordered to stop using the disputed mark and issue notices in important newspapers (especially popular in North India) distancing itself from the Karim’s. It has also been requested that no presentations be made inside the restaurants that connect the two. The defendant was also ordered by the court to include a disclaimer in any future promotional actions claiming a distinctive identity from the well-known eatery.