IPR Newsletter: Karim Hotel Pvt. Ltd. Vs. Kareem Dhanani – June 2022

“The Karim’s” near Old Delhi’s Jama Masjid was established in 1913 by Haji Karimuddin, the son of a royal chef in the court of the last Mughal ruler, Bahadur Shah Zafar. The eatery is in a legal battle with Mumbai-based Kareem Dhanani, who runs 41 restaurants across the world with a similar name including three in Dubai, Abu Dhabi, and Canada Karim Hotel Pvt. Ltd (Karim Hotel) launched a trademark infringement suit against Kareem Dhanani. In 2003, Kareem Dhanani started using the business name “Kareem’s.” The court pointed out that Dhanani had adopted the contested mark about 90 years after Karim. Karim Hotel Pvt. Ltd has contended that Kareem Dhanani has trademark registrations in various classes both for the mark “KARIM” and “KAREEM” as also devices, logos and other derivatives. The Karim Hotel Pvt. Ltd case is that the founder hails from a line of ancestors who were Shahikhansamas (royal cooks) in the Mughal Empire and who developed a line of cuisine commonly and popularly known as Mughlai food. Its flagship restaurant is located near the Jama Masjid in Old Delhi. It has received various awards and been recognized by various media outlets as an authentic restaurant. When Karim Hotel Pvt. Ltd came to know of Kareem Dhanani’s use of the identical mark “KAREEM’S” sometime in December 2014 it initially issued a legal notice and later on filed a suit. In the said suit, Kareem Dhanani took a plea that it has a registration for the device “KAREEM’S”. Considering the said registration, Karim Hotel Pvt. Ltd had filed a petition seeking cancellation of the Kareem Dhanani’s mark before the IPAB, Mumbai. Thereafter, the cancellation petition continued to remain pending before the IPAB and the suit was disposed of giving liberty to Karim Hotel Pvt. Ltd to file appropriate proceedings after the decision by the IPAB in the cancellation petition. The present suit seeking permanent injunction to restrain infringement, passing off, delivery up, damages etc. has now been filed by Karim Hotel Pvt. Ltd on the ground that, owing to the long delay in the disposal of the said cancellation petition, Kareem Dhanani is continuing to expand their restaurants business.

It was averred that enormous confusion is being caused between the Karim Hotel Pvt. Ltd and the Kareem Dhanani’s restaurants.

The Court at the outset noted that admitted adoption of the impugned mark by the Kareem Dhanani is since 2003, which is almost 90 years after Karim Hotel Pvt. Ltd’s adoption. It noted that cancellation petition continues to remain pending and has not proceeded further and with the enactment of the Tribunals Reforms Act, 2021, the IPAB has also been abolished and thus the case would have to be transferred to the jurisdictional High Court. It added that considering the fact that the Karim Hotel Pvt. Ltd is the prior user, adopter and owner of the marks “KARIM/KARIM’S/KAREEM”, the continued use of the said mark by the Kareem Dhanani would result in passing off and deception. Owing to the long adoption of the Karim Hotel Pvt. Ltd marks “KARIM/KARIM’S/KAREEM” and the goodwill and reputation which the Karim Hotel Pvt. Ltd restaurants enjoy, not only in India but internationally, the Court ruled in favour of Karim Hotel Pvt. Ltd, issuing a slew of instruction with balanced approach to Kareem Dhanani ‘s investment in his chain. However, because Kareem Dhanani has already opened 41 restaurants, the Court determined that striking a balance is necessary to guarantee that neither party suffers irreparable harm. The Court ruled in favor of Karim Hotel Pvt. Ltd, issuing a slew of instructions with a balanced approach to the Kareem Dhanani’ s investment in his chain, owing to the Karim Hotel Pvt. Ltd’s mark “KARIM/KARIM’S/KAREEM long adoption and the goodwill and reputation that Karim Hotel Pvt. Ltd restaurants enjoy, not only in India but internationally. Kareem Dhanani has been ordered to stop using the disputed mark and issue notices in important newspapers (especially popular in North India) distancing itself from the Karim’s. It has also been requested that no presentations be made inside the restaurants that connect the two. Kareem Dhanani was also ordered by the court to include a disclaimer in any future promotional actions claiming a distinctive identity from the well-known eatery.

Impact Of Undertakings on The Balance of Convenience

Having found that damages would not be an adequate remedy for either party, the balance of convenience between the parties was then considered (i.e., where the lowest risk of injustice would arise from granting or refusing interim relief). In this case, the assessment involved a consideration of the:

• likely harm to both parties;
• difficulties in quantifying the damages suffered; and
• relative merits of the parties’ cases.

Ingredients To Grant an Injunction

While granting an injunction in the case of passing off, both ingredients of injunction i.e. prima facie case and balance of convenience should exist in favour of the applicant. Court must be satisfied that there are serious questions to be tried at the suit, irreparable damage will be caused to the applicant and hardship would be more to the applicant, and therefore an interim injunction is necessary. Bench remarked that; “foundation of passing off action is the existence of goodwill. Further as to who conceived and adopted the mark earlier is also relevant.”

Types of Injunctions

A perpetual injunction is generally granted upon merits of the suit when the suit is finally decreed. By virtue of this decree, the complainant can assert exclusive rights over the mark in comparison to the opponent who is completely prohibited from use of the mark or commission of any act which would go against the rights to be enjoyed solely by the complainant. Temporary injunction, as the name suggests, is for a stipulated period of time or until any further court order and can be granted at any stage of the suit. This would be of utmost concern to any aggrieved party because unless the court grants temporary injunction, the other party can continue to use the mark, and this would go against the very purpose of filing a suit of infringement or passing-off.

Conclusion

While contesting a suit for trademark infringement, if the complainant can show that they are the prior users of the mark or that they have acquired reputation and goodwill in due course of time, the Courts may consider these as factors while deciding whether a prima facie case has been made out or not. In India, there is a growing need for registration of trademarks day by day, clearly indicating the awareness developing among people to safeguard their own products. Trademark infringement is a common sight nowadays. Although there exists several remedies to cope up with the same, not many are implemented the way they should be. Loopholes in every procedure being carried out to eliminate infringement ultimately hinders the law in hand. Violation of any kind of trademark leads to a negative impact on the individual or the entity thereby reducing the brand value. Along with direct infringement, there arises indirect infringement as well. Although there are no provisions related to indirect infringement, liabilities exist abiding by the principle of universal law. Hence, what is required is a little bit of awareness among individuals in order to avoid facing any kind of infringement on their own product.