In interim relief to Old Delhi's iconic Karim's restaurant, the Delhi High Court on Friday ordered a Bombay-based restaurant named 'Kareem's' to publish a disclaimer on their website, social media handles, and in newspapers, stating unambiguously that it is not associated with or related to the Delhi Karim's. (Karim Hotel Pvt. Ltd. vs. Kareem Dhanani)
A single-judge bench of Hon'ble Justice Prathiba M Singh, ordered Kareem's to refrain from opening any new outlets till the next date of hearing in the case.
The Court found that the defendant restaurant Kareem's had adopted the trademark in 2003, over 90 years after the plaintiff had done so, and said that,
"The plaintiff is the primary owner of the mark, Karim's, running over 41 restaurants. However, in this case, a balance must be struck to ensure that neither party is prejudiced unfairly. The plaintiff's mark enjoys enormous goodwill and reputation, both in India and internationally."
Interestingly, the Court was also bemused by the Registrar's decision to allow the defendants to register this mark since Karim's was already registered.
Following that, the Court ordered the defendants to produce written statements as well as a list of franchise agreements with all of their franchisees by July 5, 2022. In the first week of August, the case will be heard.
On behalf of Karim's, Advocate Farrukh Khan argued that the plaintiffs are the owners of a well-known trademark that enjoys substantial goodwill and reputation on a national and worldwide scale. In addition, he stated that using the registered trademark would constitute passing off and deception. Khan further argued that this was the second round of litigation between the parties since the first complaint had been dismissed due to the dissolution of the Intellectual Property Appellate Board in Chennai.
In contrast, defendant Kareem Dhanani asserted that his trademark had also been registered in 2003 and that he had chosen the name Kareem's after his own name. He said,
"I am also a chef. My name is also Kareem."