'Deliberate Effort To Deceive Consumers': Delhi HC Allows Karim Hotels' Trademark Infringement Suit Against “KARIN’S”

The Delhi High Court allowed the Trademark Infringement suit filed by Karim Hotels Pvt. Ltd. against “KARIN’S”.

The proprietors of the registered trademark “KARIM’S” filed a suit contending that by using a nearly identical mark/name “KARIN’S”, the defendants were infringing their mark.

A Single Bench of Justice Sanjeev Narula said, “Undoubtedly, the trademarks/ names of the parties are indistinguishable. Defendants have entirely imitated Plaintiff No. 1’s registered trademarks, replicating all aspects such as font of the letters, design of the logo, color scheme, size, style, and placement of letter and the taglines. Both the marks are also used for identical services. Given the prior business relationship between the parties, this appears to be a deliberate effort by the Defendants to deceive consumers into believing that their commercial partnership with the Plaintiffs continues.”

The Bench added that such similarities in the competing trademarks, combined with their use for identical goods and services, constitute a clear infringement of the plaintiff’s registered trademarks as per Section 29(1) and 29(2)(b) and (c) of the Trademarks Act, 1999, by the defendants.

“Further, the extensive imitation of the artistic design of Plaintiffs’ labels by the Defendants also amounts to violation of the Plaintiffs’ copyright”, it said.

Advocate Ridhima Goyal appeared for the plaintiffs while Advocate Jagdeep Anand appeared for the defendants.

Factual Background -

The plaintiff was the registered proprietor of the trademark “KARIM’S” used in respect of chain of restaurants renowned for their Mughlai cuisine. The mark was first adopted by Haji Karimuddin in the year 1913 and in 1987, his heirs constituted a private limited company under the name Karim Hotels Pvt. Ltd. for developing their business operations. The continuous usage of “KARIM’S” trademark and its formative versions resulted in accrual of formidable goodwill and reputation in its name. The plaintiff secured a lease for the premises owned by the defendant and an agreement was executed in this regard.

The lease agreement was to operate for five years and it as also provided that the trade name and goodwill of the “KARIM’S” mark would vest in the plaintiff and the defendant shall have no claim thereon. Subsequently, when the restaurant’s operations failed to meet the business expectations of the plaintiff, it opted to terminate the agreement. In 2010, the plaintiff learnt that the defendant fraudulently and with deliberate intent, started utilizing a deceptively similar mark “KARIN’S” along with the plaintiff’s registered marks “KARIM’S” and “SECRET OF GOOD MOOD TASTE OF KARIM’S FOOD” for a restaurant situated at the lease premises. Consequently, the suit was initiated.

The High Court in the above regard observed, “Defendants, as noted above, do not have any defence. The Plaintiffs, on the other hand, have established their ownership over “KARIM’S” trademarks by proving the registration certificates issued in relation thereto. The Defendants have not refuted the Plaintiffs’ ownership of their “KARIM’S” trademarks, which has also been acknowledged by them in the affidavits filed before Court as well as the Lease Agreement [Exhibit PW 1/3] and Cancellation Agreement dated 16th November, 2009 [Exhibit PW 1/8] executed between Defendant No. 1 and Plaintiff No. 2, bearing the signatures of Defendant No. 2 as a witness. Defendant No. 1 had, under the said Agreements, agreed to not use the “KARIM’S” trademarks, yet, they continued to use the Plaintiffs’ trademarks. The impugned use is also evinced through the Local Commissioner’s Report, which can be read in evidence in terms of Order XXVI Rule 10(2) of the Code of Civil Procedure, 1908.”

The Court said that the Defendants have been utilizing the impugned marks despite termination of the Lease Agreement, without the Plaintiffs’ authorization and therefore, the Plaintiffs have established a case for infringement of their registered trademark and copyright by the Defendants.

“In view of the foregoing discussion and Ms. Goyal’s statement, the present suit is decreed in favour of the Plaintiffs, and against the Defendants in terms of paragraph No. 35 (A) and (C) of the plaint”, it added.

The Court concluded that the Plaintiffs shall be entitled to recover the actual costs of the suit from the Defendant and hence, directed that the Plaintiffs shall file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018.

Accordingly, the High Court disposed of the suit.

Cause Title- Karim Hotels Pvt. Ltd. & Anr. v. Nizamuddin & Anr. (Neutral Citation: 2024:DHC:3938)

Appearance:

Plaintiffs: Advocates Ridhima Goyal and Mohd. Affan.

Defendants: Advocate Jagdeep Anand

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