Delhi High Court: In a case filed by ITC Ltd. seeking protection of the trade mark ‘BUKHARA', the Single Judge Bench of Prathiba M. Singh, J. declared ‘BUKHARA' as a well-known trade mark under Section 2(zg) read with Section 11(2) of the Trade Marks Act, 1999 and directed the Registrar of Trade Marks to add the mark ‘BUKHARA' to the list of well-known trade marks.
Background
Plaintiff started its hospitality business in 1975 and was stated to be one of India's foremost private sector companies with business spanning across diverse sectors such as Fast-Moving Consumer Goods (FMCG), Hotels, Paperboards and Packaging, Agri-Business, and Information Technology. Plaintiff adopted the mark ‘BUKHARA' for its restaurant at ITC Maurya Hotel in the late 1970s and was known for its interiors, décor, layout, arrangement of the restaurant, the cutlery in which the food was served, the wooden menu cards and the rustic look which it had maintained over the years. Plaintiff also maintained websites such as www.itcportal.com and www.itchotels.in, that provided information about the plaintiff's hotel business in India and across the world and reflected the use of the trade mark ‘BUKHARA' by the plaintiff. The mark ‘BUKHARA' had been registered in India since 1985 both in word form and in logo form. It was also claimed that ‘BUKHARA' had acquired the status of a well-known trade mark.
Submissions on behalf of the Plaintiff
Plaintiff was aggrieved that defendants had adopted the mark ‘BALKH BUKHARA' for their restaurant. Further, plaintiff learnt the use of the said mark in 2022 and found out that defendants had obtained registrations of the marks ‘BALKH BUKHARA RESTAURANT' and ‘BALKH BUKHARA' logo, both on proposed to be used basis. Plaintiff conducted enquiries which revealed that the defendants had imitated the Plaintiff's ‘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, even the logo form and the font were identical.
Plaintiff had sought to reserve its right to initiate a separate action against the defendants for copyright infringement of its artistic work comprising the ‘BUKHARA' device, such as its stylized font and sought rectification of the already registered marks of the defendants under Section 57 of the Trade Marks Act, 1999 (Act).
Submissions on behalf of the Defendants
Counsel for the defendants submitted that the defendants do not intend to use the mark ‘BALKH BUKHARA' or any other mark consisting of the word ‘BUKHARA' for their restaurant, hotel, or other hospitality related services. Further, it was submitted that the defendants had no objection if the suit was decreed.
Analysis, Law, and Decision
The Court stated that the documents filed by plaintiff in its support denote that not only the mark ‘BUKHARA' had been intrinsically connected to Indian cuisine, but the plaintiff's restaurant had also been recognized internationally as a customary stop for foreign celebrities and dignitaries. Thus, the reputation and global distinction earned by the plaintiff's mark ‘BUKHARA' was well-established and plaintiff had clearly internationalized India's cuisine.
The Court noted the US Court's decision in ITC Ltd. v. Punchgini, Inc., 552 US 827 (2007), wherein plaintiff was unsuccessful in protecting the ‘BUKHARA' mark in the US. But the Court held that the judgment of US Court would not be applicable in the context of India, where it was clear from the record that the mark ‘BUKHARA' originated in India and enjoyed substantial goodwill and reputation not only among Indians but also among foreigners who travel to India.
The Court held that the mark ‘BUKHARA' was declared as a well-known mark under Section 2(zg) read with Section 11(2) of the Act. Further, the Court directed the Registrar of Trade Marks to add ‘BUKHARA' mark to the list of ‘well-known trade marks'.
[ITC Limited v. Central Park Estates (P) Ltd., 2022 SCC OnLine Del 4132, decided on 14-11-2022]
Advocates who appeared in this case :
For the Petitioner: Senior Advocate Arvind K. Nigam
Senior Advocate Rajshekhar Rao
Advocate Afzal B. Khan
Advocate Samik Mukherjee
Advocate Debjyoti Sarkar
Advocate Vishal Nagpal
Advocate Manosij Mukherjee
For the Respondent(s): Advocate Peeyoosh Kalra
Advocate Nikita Anand