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 recognized by courts in India for the last two-three decades.
“Illustratively, marks such as ‘APPLE’, ‘WHIRLPOOL’, ‘BENZ’ etc., have been recognized 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 recognized internationally as a customary stop for foreign celebrities and dignitaries. 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 internationalized India’s cuisine.”
“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”.
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.
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