In the case of ITC Limited v Central Park Estates Private Limited & Anr, the Delhi High Court granted protection to the trademark “Bukhara” for restaurants and other hospitality services. The plaintiff had filed a suit against Central Park Estates Pvt. Ltd and St. Jerome Hospitality Management Services Pvt. Ltd (“Defendants”).
The Plaintiff has been in the hospitality business since 1975 and has managed and operated several hotels worldwide. The Plaintiff adopted the mark “Bukhara” for its restaurant at the ITC Maurya Hotel in Chanakyapuri, New Delhi, in the late 1970s.
Over the years, the restaurant expanded and garnered enormous reputation in the country. The restaurant has been visited by various celebrities, Presidents, and heads of State. Plaintiff also has a website called www.itcportal.com and www.itchotels.in that reflect Plaintiff’s use of “Bukahra.” It is, therefore, claimed that “Bukhara” had acquired the status of a well-known trademark.
The Defendants, however, adopted the mark “Balkh Bukhara” for their restaurant in Central Park Resorts, Gurgaon. They also obtained registrations of marks “Balkh Bukhara Restaurant” and “Balkh Bukahra” logo on a “proposed to be used” basis. On further inquiry, Plaintiff discovered that the Defendants were also copying other aspects of the “Bukahra” restaurant, like the name, logo, font, interiors, décor, seating style, and staff uniform. Further, they had also copied the wooden menu and imitated the whole look and feel of the restaurant for their commercial establishment.
While the matter was being taken up by the Court, the parties amicably arrived at an agreement. The Defendants agreed to restrain themselves from using the mark “Balkh Bukhara” or any other mark that was identical or deceptively similar to the Plaintiff’s mark “Bukhara” for their restaurant, hotel or any other hospitality-related services. The Defendants also agreed to change their menu cards, the jacket of the uniform of the servers and copper glasses. They also decided to remove the name and word “Bukahra” from the restaurant, display board, promotional items, boards and websites, napkins, menu cards, invoices, stationary and any other places where the mark appears before 31st December 2022.
Plaintiff also sought a declaration of its mark “Bukhara” as a well-known mark under Section 2(zg) of the Act. To this extent, Plaintiff submitted various documents illustrating the repute and well-known status of the mark. The Court studied the documents placed on record and noted that “Bukahra” is intrinsically connected to Indian cuisine, and the same has been recognised internationally as a regular pitstop for foreign celebrities and dignitaries.
Although ITC had been unsuccessful in seeking an injunction against the use of the mark Bukhara in US Courts against some ex-employees since there wasn’t enough evidence of Bukhara having enjoyed goodwill and reputation in New York. Nevertheless, in light of its honours and the overwhelming evidence regarding its reputation in India, the Court agreed that it had earned a global distinction beyond being well-established and granted the status of a well-known mark to “Bukhara”.