Savvy Thakur
Published on: 30 November 2022 at 18:31 IST
The Delhi High Court ruled that ITC Maurya’s ‘Bukhara’ is a well-known trademark under Section 2(zg) of the Trade Marks Act.
Justice Prathiba M. Singh made the observation that there was no doubt that the name “Bukhara” was a well-known brand because the restaurant had received numerous awards and had celebrities from all over the world visit.
“In light of this overwhelming evidence, the Plaintiff’s mark “BUKHARA” has earned a worldwide reputation and distinction, and the aforementioned restaurant has clearly internationalized India’s cuisine.”
Along with Advocates Afzal Khan, Samik Mukherjee, Debjyoti Sarkar, Vishal Nagpal, and Manosij Mukherjee, senior attorneys Arvind Nigam and Rajshekhar Rao appeared for ITC.
The defendants were represented by attorneys Nikita Anand and Peeyoosh Kalra.
The ITC had filed a lawsuit arguing that a Gurgaon restaurant’s use of the name “Balk Bukhara” violated its trademark.In addition, the ITC requested that the well-known status of its mark “Bukhara” be acknowledged.
The defendants’ counsel informed the Court that the US courts had not granted trademark protection to the name “Bukhara.”
However, the defendants agreed not to use the name “Balk Bukhara” or any other name ending in “Bukhara” for their hotel, restaurant, or other hospitality services.
As a result, the Court ordered the defendants to change the items or places where the mark appears before December 31, 2022, and prohibited them from using the mark “Balk Bukhara” or any other similar mark in any form.
The Court noted that the attribute of certain trademarks attaining the status of “well-known marks” had been acknowledged by Indian courts for approximately three decades on the prayer seeking the declaration of ITC’s mark as a well-known mark.
It went on to say that “The Plaintiff has also placed on record various news clippings and pictures depicting a tradition whereby every US President who visits India visits the Plaintiff restaurant and a special menu is prepared for each such President,” and that this was added to the document.
In addition, the Court stated that the judgments of US courts would not apply in India because it is obvious that the mark “Bukhara” originated in India and has a significant amount of goodwill and reputation, not only among Indians but also among foreigners who travel to India and bring the aforementioned reputation back.
The Court continued, “India also recognizes transborder reputation and the “well known mark” doctrines, both in its judicial decisions and statutes.”
As a result, the Court deemed “Bukhara” to be a well-known mark and ordered the Registrar of Trademarks to include it on the list of well-known marks.