Court’s Decision
The Delhi High Court held that the restaurant operating under the name Gulshan-e-Karim infringed upon the registered trademark KARIM used by the famous Karim Hotels Pvt. Ltd., whose roots trace back to 1913. The Court concluded that the inclusion of “KARIM” in the appellant’s name created a likelihood of confusion among consumers of average intelligence and imperfect recollection.
However, acknowledging that the use of the name Gulshan-e-Karim was not malicious but “innocent infringement,” the Court modified the injunction granted by the Commercial Court. Instead of a complete ban, the Court directed the appellant to continue using the name Gulshan-e-Karim only with a bold disclaimer stating it has “no connection with the Karim group of restaurants.”
“The interests of justice and equity may not justify subjecting the appellant to an injunction as extreme as that granted by the Commercial Court.” — Justice C. Hari Shankar
Facts
The dispute arose when the proprietors of the historic Delhi restaurant Karim’s discovered, in 2020, that a restaurant named Gulshan-e-Karim was operating in Moradabad. Claiming infringement of its registered trademarks KAREEM and KARIM, the respondent sought an injunction before the Commercial Court to restrain the use of the name KARIM by any other restaurant.
The Commercial Court granted the injunction, restraining the appellant from using the mark KARIM or any deceptively similar name. Aggrieved, the appellant filed an appeal before the Delhi High Court arguing that “KARIM” was a generic and religious expression, meaning “generous” in Urdu, and thus incapable of exclusivity.
Issues
- Whether the word KARIM enjoys trademark protection despite its generic or religious connotation.
- Whether the use of GULSHAN-E-KARIM constitutes infringement of the registered trademark KARIM.
- Whether the defense of acquiescence or honest concurrent use could protect the appellant.
- Whether the injunction could be modified in equity.
Petitioner’s Arguments
The appellant contended that Gulshan-e-Karim was coined by his father in 1997, meaning “Garden of God,” and was adopted without intent to imitate Karim’s. He argued that “KARIM” is a common term in Urdu and part of religious vocabulary, thus publici juris.
It was further argued that when compared as a whole, the marks Karim’s and Gulshan-e-Karim are distinct in visual, structural, and phonetic impression, and therefore there was no likelihood of confusion. Counsel also invoked the anti-dissection rule, contending that the Commercial Court erred by isolating “KARIM” from the composite mark.
The appellant also claimed acquiescence, asserting that the respondent was aware of the restaurant’s use since 1997 but chose to sue only in 2022. To demonstrate bona fides, the appellant expressed willingness to use a disclaimer clarifying no connection with Karim’s of Delhi.
Respondent’s Arguments
The respondent, owner of multiple registered marks under Classes 16, 29, 30, 42, and 43 of the Trade Marks Act, maintained that KARIM is its dominant identifier and has acquired immense goodwill as a source identifier for Mughlai cuisine since 1913.
It contended that even a fleeting impression of association between Gulshan-e-Karim and Karim’s constitutes infringement under Section 29(2)(b) of the Trade Marks Act. Relying on Parle Products v. JP & Co. and Midas Hygiene Industries v. Sudhir Bhatia, it was argued that the test is not of side-by-side comparison but the impression in the mind of an average consumer.
The respondent further denied acquiescence, asserting that it only became aware of the Moradabad restaurant in December 2020 and had promptly opposed its trademark application.
Analysis of the Law
The Court reaffirmed the principles under Sections 28, 29, and 31 of the Trade Marks Act, 1999, holding that registration confers exclusive rights and prima facie validity of ownership. The infringement test requires examining whether the rival marks are similar enough to cause confusion among the public.
The Court applied the initial interest confusion test, stating that even a momentary impression of connection between Karim’s and Gulshan-e-Karim constitutes infringement. It emphasized that consumers rely on general impressions, not detailed recollection, echoing Parle Products and Amritdhara Pharmacy v. Satya Deo Gupta.
“If the consumer even fleetingly wonders whether the two restaurants are associated, infringement stands established.”
The Court rejected the appellant’s reliance on the anti-dissection rule, clarifying that it applies to plaintiffs asserting rights over parts of their mark—not to defendants. It held that in Gulshan-e-Karim, the dominant part was “KARIM,” as the term “God” (Karim) was more significant than “Gulshan” (garden).
The Court also clarified that KARIM was distinctive in the restaurant industry despite its generic meaning in religion, observing that distinctiveness must be evaluated in the context of trade and consumer association.
Precedent Analysis
- Parle Products v. J.P. & Co. (1972 1 SCC 618): Established that marks are remembered by general impressions; confusion arises even if consumers recall only part of a mark.
- Kaviraj Pandit Dura Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980): Distinguished between infringement and passing off; infringement focuses on mark similarity, not get-up.
- Wander Ltd. v. Antox (India) Pvt. Ltd. (1990 Supp SCC 727): Limited appellate interference in interim injunctions.
- Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2004) 3 SCC 90): Delay or acquiescence no defense once infringement is proven.
- South India Beverages v. General Mills (2015 61 PTC 231 Del): Introduced the dominant part test.
- Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra (2025 SCC OnLine SC 1701): Reiterated phonetic and visual similarity tests.
Court’s Reasoning
The Bench held that even if the appellant’s mark was not a deliberate imitation, its composition and meaning inherently evoked the respondent’s brand. Given that both establishments served identical cuisines and targeted the same clientele, the likelihood of confusion was high.
The Court rejected the plea of acquiescence, holding that the respondent had taken prompt steps after discovering the appellant’s mark. Furthermore, it reiterated that under Midas Hygiene, delay or inaction does not bar injunctions in trademark infringement cases.
However, considering the appellant’s small-town operations and the absence of mala fide intent, the Court exercised equity by modifying the injunction. It allowed the appellant to retain the name Gulshan-e-Karim provided it carries a bold disclaimer in English and Hindi:
“This outlet is independent and has no connection with the Karim’s group of restaurants. Our outlets are located at [Delhi locations]. We have no other outlet or franchise.”
This disclaimer, the Court directed, must appear on all signage, online platforms, and promotional materials within six weeks.
Conclusion
The Delhi High Court partially allowed the appeal, modifying the blanket injunction. It upheld that the word KARIM is a distinctive trademark in the culinary business and enjoys statutory protection. Yet, to balance equities and prevent undue hardship, the Court permitted continued use of Gulshan-e-Karim with a mandatory disclaimer.
“An inequitable order cannot be passed under Order XXXIX. The nature and extent of injunction must be modulated by the balance of convenience and irreparable loss.”
Thus, the ruling reinforces both the sanctity of trademark exclusivity and the Court’s equitable discretion in cases of innocent infringement.
Implications
This judgment underscores that religious or common words can acquire distinctiveness in commercial contexts if they become identifiers of a particular business. It further clarifies that initial interest confusion is sufficient to establish infringement, and delay cannot defeat an injunction.
The ruling also signals a nuanced judicial approach — balancing intellectual property protection with fairness to small businesses acting in good faith.