The Delhi High Court recently declared ITC Maurya situate “Bukhara” restaurant as a “well-known trademark” after ITC limited moved a trademark infringement suit against a Gurgaon based restaurant named “BALKH BUKHARA”.
Referring to marks such as APPLE, WHIRLPOOL, BENZ which are recognised as well known marks even before they were actually used on commercial scale in India, the a single judge bench of Justice Prathiba Singh observed that “the attribute of certain trademarks or names attaining the status of well known marks has been acknowledged and recognised by Courts in India for the last two-three decades”.
In that respect and after perusing through the documents submitted by ITC Limited the HC in its November 14 judgment said that “not only has the mark ‘BUKHARA’ been intrinsically connected to Indian cuisine, but the Plaintiff’s (ITC Ltd.) restaurant has also been recognized internationally as a customary stop for foreign celebrities and dignitaries”. The HC further took note of the news clippings submitted by ITC Limited “depicting a tradition where every US President who visits India, visits the Plaintiff restaurant and a special menu is prepared for each such President”.
Clippings submitted by ITC Ltd. referred to visits made by former US President Bill Clinton, tennis player Roger Federer as well Indian cricketer Sachin Tendulkar to the restaurant. The HC also took note of the numerous awards received by Bukhara 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. “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,” Justice Singh observed.
With respect to the US judgments wherein ITC Ltd. was unsuccessful in protecting the Bukhara trademark in USA, the HC said that the same are not applicable in the Indian context “where it is clear from the record that the mark BUKHARA originated in India, and enjoys substantial goodwill and reputation not only among Indians but also among foreigners who travel to India and carry back the said reputation”.
The HC thereafter declared “Bukhara” as a “well known trademark” noting the “Indian legal position” and the “enormous fame and goodwill” enjoyed by the restaurant evidenced from the documents placed on record which were not denied by the Gurgaon based restaurant. The HC directed the Registrar of Trademarks to add the same to the “List of Well-known Trademarks” after completion of requisite formalities by ITC Ltd.
The HC further restrained the Gurgaon based restaurant from using ‘BALKH BUKHARA’ or any other mark which is identical or deceptively similar to the ‘BUKHARA’ trademark for the restaurant, hotel or other hospitality related services.
ITC Ltd has been in the hospitality business since 1975 and is stated to be one of India’s foremost private sector companies with business spanning across diverse sectors such as FastMoving Consumer Goods (FMCG), Hotels, Paperboards and Packaging, Agri-Business and Information Technology. ITC Ltd adopted the “Bukhara” trademark for its restaurant situated at the five star luxury hotel ITC Maurya Hotel in Chanakyapuri, New Delhi in late 1970s. Bukhara provides various cuisines which are inspired from the North-West frontier region of India and has gained an enormous reputation owing to various preparations which it had started serving to its customers.
ITC claimed that the restaurant is also known for its interiors, decor, layout, arrangement of the restaurant, the cutlery in which the food is served, the wooden menu cards and the rustic look which it has maintained over the years as well as traditional cooking methods such as a clay oven or tandoor.
ITC Ltd., moved the HC seeking a “permanent injunction” against the defendants Central Park Estates Private Limited and another, alleging that it had imitated several aspects of ‘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. The company sought an order restraining the defendant from manufacturing, selling, or using Balkh Bukhara or any mark which is deceptively similar to Bukhara trademark thereby infringing upon it.
The Defendant 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 services. They further agreed to change the menu card, the jacket as part of the uniform of the Balkh Bukhara restaurant’s servers, and the copper glass, which are similar to the Plaintiff’s items. The HC directed the defendants to change the items or places where the mark appears before December 31, 2022.