Karim's v. Kareem's (Trademark conflict): Case Analysis

This case analysis on ‘Karim’s v. Kareem’s (Trademark Conflict Case)’ was written by Ananya Bhansode an intern at Legal Upanishad.

Citation of the case: CS(COMM) 112/2022 & I.A. 2695/2022

Karim Hotel Pvt. Ltd …Plaintiff

Versus

Kareem Dhanani …Defendant

Introduction

In layman’s language, a trademark can be termed as a source identifier as it helps in identifying the source of goods and services as well as distinguishes the goods of one seller from that of another. This article will discuss the trademark infringement battle between Karim Hotel Private Limited v. Kareem A. Dhanani which was decided on 27th May 2022.

What is trademark infringement?

In India, trademark infringement is a cognizable offence, meaning that in addition to civil penalties, the offender may also be charged with a criminal offence. The registration of the trademark is also not required by Indian law for the initiation of civil or criminal proceedings. The law governing the protection of trademarks in India is the Trademarks Act, 1999. The Act outlines the procedures for registering trademarks and providing for their protection as well as outlining the consequences of trademark infringement. Worldwide, trademarks are recognised as intellectual property.

What is the Karim’s v. Kareem’s Case?

Plaintiff is the owner of the well-known trademark “KARIM/KAREEM/KARIM’S as also of the trading name M/s Karim Hotel Pvt Ltd of which the word “KARIM” forms an important and crucial attribute.

Haji Karimuddin, the company’s original founder, came up with the name “KARIM” and had it registered as a trade name in 1913. The plaintiff has been using the trade name for more than a century in connection with the restaurant industry, catering, and other businesses.

According to the plaint, the plaintiff has been using the name “KARIM’S,” which is exclusively and remarkably associated with the plaintiff for fine Mughlai cuisine. The caption “Secret of good mood Taste of Karim’s food” is registered under the name of the plaintiff as well. Additionally, the plaintiff owns the www.karimhoteldelhi.com domain name, which is open to both Indian and international visitors.

According to the plaintiff’s argument, the founder of Karim’s is descended from a line of Shahikhansamas, also referred to as the royal cooks in the Mughal empire, who created a line of cuisine that is now known to us as Mughalai food. In Old Delhi, close to the Jama Masjid, is where it has its main restaurant.

The plaintiff’s restaurant, which is located in Old Delhi, has been given favourable reviews by numerous prestigious publications and media outlets since the 1980s, including “TIME Magazine,” “BBC WORLD GUIDE,” and “National Geographic.” It has also been named one of the top restaurants in Asia by Time Magazine.

According to the allegations in the plaint, Plaintiff learned that Defendant was using the same mark “KAREEM’S” sometime in December 2014. At that time, on February 25, 2015, Plaintiff initially served Defendant with a legal notice, to which Defendant responded on March 11, 2015.

The defendant’s restaurant business is still growing. According to information provided by Plaintiff, Defendant now has many franchisees in a variety of cities. Between the restaurants owned by Plaintiff and Defendant, there is a great deal of confusion. Additionally, Plaintiff’s brand is being obscured.

Issues in the Karim’s v. Kareem’s Case

The IPAB Mumbai received a cancellation petition; no action has been taken in response. The petition is still pending.
The continued use of the said mark by Defendant would result in passing off and deception, given that Plaintiff is the prior user and owner of the marks “KARIM/KARIM’S/KAREEM.”

Karim’s v. Kareem’s Case Judgement

In this case of Karim’s v. Kareem‘s the court gave the defendant the following instructions: Until the next hearing date, Defendant shall not open any additional restaurants using the trademarks “KARIM/KARIM’S/KAREEM/KAREEM’S” or any other marks that are identical to or confusingly similar to Plaintiff’s marks “KARIM/KARIM’S/KAREEM.”

The aforementioned order would apply to both the defendant and any entity that might be promoted, incorporated by, or connected to the defendant or any of his family members. The defendant must also make sure that customers are not led to believe that the defendant is connected to the plaintiff KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi when they dine in one of his establishments or those run by one of his franchises.

At least two public notices stating that Defendant’s restaurant KAREEM’S is not affiliated with Plaintiff’s – KARIM HOTEL PVT LTD or KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi – must be published by Defendant in well-known newspapers with readership in Maharashtra and in North India. By the next date, said notices must be published.

There must be a prominent disclaimer that reads, “No connection with KARIM’S Jama Masjid/Delhi,” on all menu cards, advertisements, and promotional materials, as well as on all promotions on social media and online platforms.

Karim’s v. Kareem’s (Trademark conflict): Case Analysis

Suggestions

The Karim’s v. Kareem’s case was first filed by the petitioner in 2015 and it goes on to date, which proves the delay. The remedy available for now to the petitioner by the Delhi court is not enough, it is the petitioner’s years of hard work for which the credit is taken away by the defendant. The fact that the defendant has a list of 41 restaurants around the country will bound to confuse the customers about the authenticity of the original restaurant situated in Old Delhi and therefore a better remedy should be provided to the plaintiff.

Conclusion

The usage of the word Karim’s had been noticed by the plaintiff in 2014 and hence steps were taken to obtain relief but due to the petition still being pending at the IPAB Mumbai, no relief was granted to the plaintiff. The restaurant run by Plaintiff is a world-renowned restaurant which has been written about in various magazines. It has been provided by the plaintiff that the original restaurant situated in Old Delhi was founded by the one who followed the ancestral line of the Mughal cooks and is unique and extraordinary in its way. The Delhi High court has granted temporary relief to Plaintiff until the next hearing.

References

Karim Hotel Pvt. Ltd. v. Kareem Dhanani, available at a)https://www.manupatrafast.com/pers/Personalized.aspx and b)http://164.100.69.66/jupload/dhc/PMS/judgement/30-05-2022/PMS27052022SC1122022_115641.pdf (last visited on 5th July 2022)
[Trademark Battle] Karim’s v. Kareem’s | Kareem’s related to or associated with Delhi’s iconic Karim’s restaurant? Del HC issues directions, available at, https://www.scconline.com/blog/post/2022/05/31/trademark-battlekarims-v-kareems-kareems-related-to-or-associated-with-delhis-iconic-karims-restaurant/ (last visited on 5th July 2022)
Karim’s v. Kareem’s: Delhi High Court Restrains Businessman From Infringing Trademark Of Old Delhi’s Mughlai Food Outlet, available at https://www.livelaw.in/news-updates/delhi-high-court-karim-hotel-trademark-infringement-200457 (last visited on 5th July 2022)
[Karim’s v. Kareem’s] Relief Granted To Old Delhi’s Iconic Mughlai Food Outlet Karim’s By Delhi High Court In Trademark Case, available at https://www.soolegal.com/news/karims-kareem-relief-granted-to-old-delhi-iconic-mughlai-food (last visited on 5th July 2022)