ITC Maurya’s “Bukhara” is Declared Well-Known Brand by Delhi High Court, providing relief in a Trademark Dispute
The ITC Maurya’s “Bukhara” is declared a well-known brand by the Delhi High Court, providing relief in a trademark dispute.
Background
The suit has been filed by ITC Limited/Plaintiff against Central Park Estates Pvt. Ltd. and St. Jerome Hospitality Management Services Pvt. Ltd./Defendants seeking protection of the Plaintiff’s trademark ‘BUKHARA’ used in respect of restaurant and other hospitality services.
The Plaintiff commenced its hospitality business in the year 1975 and has since then started managing and operating several hotels across the world. The Plaintiff 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. The Plaintiff is also stated to be ranked among Asia’s 50 best performing companies compiled by Business Week apart from being recognized by Forbes as one of the World’s Top 250 best regarded companies in 2019.
Arguments
Advocate Kalra appearing for the respondent submitted that the mark BUKHARA has not been earlier protected by US Courts.
He submitted under instructions of Amit Paliwal, Manager (Legal), that the Defendants do not intend to 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.
Court Observation
The single judge bench of Justice Prathiba M. Singh observed that the judgments of the US court would not be applicable in the context of India, 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. India also recognizes transborder reputation and the `wellknown mark’ doctrines, both in its judicial decisions and in statutes.
“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 court held.
The court directed the Registrar of Trademarks to add the same to the List of Well-known Trademarks, upon the Plaintiff completing the requisite formalities.
Case title: ITC Limited v/s Central Park Estates Private Limited & Anr.
Citation: C.O. (COMM.IPD-TM) 763/2022 and I.A. 18332/2022, 18333/2022
Date: 14.11.2022
