Introduction

This appeal before the Division Bench of the Delhi High Court arose from an interim injunction order passed by the Commercial Court-13, Central District, Tis Hazari, Delhi, in a trademark infringement and passing-off action. The dispute concerns the use of the word ‘KARIM’ in the restaurant name GULSHAN-E-KARIM and examines the interplay between trademark exclusivity, likelihood of confusion, honest concurrent use, and equitable relief at the interim stage.

While affirming the finding of a prima facie case of infringement in favour of the registered proprietor, the Division Bench adopted a balanced approach by modifying the absolute injunction and substituting it with a disclaimer-based remedy.

Plaintiff in the suit contends:

1. The Plaintiff, Karim Hotels Pvt. Ltd., is the registered proprietor of multiple trademarks incorporating the words KARIM, KARIM’S, and KAREEM across several classes, including Classes 16, 29, 30, and 43, covering food products and restaurant services.
2. The Plaintiff traces its origins to 1913, when it was founded by Haji Karimuddin, whose family were royal cooks to the Mughal emperors and pioneers of Mughlai cuisine.
3. It claimed continuous and uninterrupted use of the mark KARIM since 1913 for its iconic Delhi restaurant and subsequent outlets.
4. Through long use, extensive goodwill, media recognition, and awards, the mark KARIM has acquired a strong secondary meaning and has become a source identifier exclusively associated with the Plaintiff. It also operates the website www.karimhoteldelhi.com.
5. In December 2020, they became aware of a restaurant operating in Moradabad, Uttar Pradesh, under the name GULSHAN-E-KARIM, run by the Defendant, Mohammad Talha.
6. Alleging that the incorporation of the word ‘KARIM’ rendered the Defendant’s mark deceptively similar to its registered trademarks, the Plaintiff instituted a suit seeking relief for trademark infringement and passing off, along with an application for interim injunction restraining use of the impugned mark.

Defence and Proceedings Before the Commercial Court

The Defendant resisted the injunction application on several grounds. It contended that:

1. The name GULSHAN-E-KARIM had been adopted by the Defendant’s father as early as 1997 and that the restaurant under the said name had been operating in Moradabad since 2016, with continuous use thereafter.
2. The mark GULSHAN-E-KARIM was coined, bona fide, and derived from its Urdu meaning, ‘Garden of God’ with ‘Karim’ also denoting generosity.
3. The rival marks, when compared as a whole, were dissimilar;
4. The Defendant’s operations were geographically limited; that there was no likelihood of confusion;
5. The Plaintiff had acquiesced to the use for over two decades.
6. The word KARIM is publici juris, being a common religious expression incapable of exclusive appropriation.

The Commercial Court rejected these submissions and granted an interim injunction in favour of the Plaintiff holding that:

1. KARIM constituted the dominant element of the Defendant’s mark.
2. The Plaintiff had established long-standing goodwill and reputation.
3. The plea of acquiescence was unsupported.
4. The argument that the mark was generic was rejected, particularly in light of the Defendant’s own application for registration of GULSHAN-E-KARIM.

Grounds of Appeal

Aggrieved by the injunction, the Defendant appealed to the Division Bench, inter alia, contending that:

1. GULSHAN-E-KARIM was an inherently distinctive and coined mark, honestly and concurrently used without any intent to trade upon the Plaintiff’s goodwill;
2. The marks were not visually, phonetically, or structurally similar, and mere commonality of the word “KARIM” could not establish confusion;
3. The anti-dissection rule barred isolating “KARIM” from the composite mark;
4. The Commercial Court erred in rejecting the plea of acquiescence despite documentary evidence of long-standing use;
5. KARIM was publici juris and incapable of exclusive protection; and In the alternative, the Defendant was willing to append appropriate disclaimers to avoid confusion.

The Plaintiff reiterated its submissions and relied upon the reasoning of the Commercial Court.

Analysis and Findings of the Division Bench

At the outset, the Court reiterated that an appeal against an interim order in an intellectual property dispute is an appeal on principle, and interference is warranted only if the lower court has applied incorrect legal standards.

Likelihood of Confusion and Dominant Mark Test

The Court reaffirmed settled principles governing trademark infringement:

1. Likelihood of confusion must be assessed from the perspective of an average consumer with imperfect recollection;
2. Marks are not to be compared side by side;
3. Even initial interest or momentary confusion is sufficient to establish infringement.

Applying these principles, the Court held that the Plaintiff is the registered proprietor of multiple marks in which KARIM is the dominant element. The inclusion of this dominant element in GULSHAN-E-KARIM was sufficient to create an initial impression of association with the Plaintiff’s restaurant in the minds of consumers. Differences in logo stylisation or presentation were considered immaterial.

The Court rejected the Defendant’s reliance on the anti-dissection rule, holding that the rule is subject to the dominant part test, which permits examination of prominent elements of a composite mark. On application of this test, KARIM was found to be the dominant component of the Defendant’s mark.

Publici Juris and Distinctiveness

The plea that KARIM is publici juris was also rejected. The Court observed that distinctiveness must be assessed contextually. While the word may have religious connotations, it is distinctive in relation to restaurant services. Further, registration of the mark operates as prima facie evidence of its validity and distinctiveness. The Defendant, having itself sought trademark registration, was estopped from challenging the distinctiveness of the term.

Acquiescence

The plea of acquiescence was found to be unsupported by evidence. The Court held that statutory registrations and tax records did not establish commercial use in the course of trade prior to 2016. The Plaintiff’s prompt issuance of a cease-and-desist notice and opposition to the Defendant’s trademark application negated any inference of consent or prolonged inaction.

Relief: Proportionality and Equitable Considerations

Despite affirming a prima facie case of infringement, the Court declined to uphold a blanket injunction. It noted the absence of dishonest intent or deliberate copying, the bona fide descriptive meaning of the mark, the Defendant’s limited and localised operations, and the disproportionate hardship that an absolute restraint would cause to an established business.

Balancing equities, the Court held that consumer confusion could be adequately mitigated by directing the Defendant to display prominent disclaimers, both offline and online, in English and Hindi, clearly stating that the outlet has no association with the Plaintiff’s KARIM restaurants.

Accordingly, the Court modified the Commercial Court’s order by substituting the absolute injunction with a disclaimer requirement. It further clarified that failure to comply within six weeks would result in automatic revival of the original injunction.

Comment

The decision underscores that while registration and dominance of a mark remain central to the infringement analysis, interim relief is not automatic or inflexible. The judgement serves as an important precedent on tailoring interim remedies in trademark disputes involving composite marks and honest concurrent use.