Delhi High Court declares ITC Maurya's 'Bukhara' as a well-known mark; grants relief in trademark suit

The Delhi High Court recently declared ITC Maurya's 'Bukhara' as a well-known mark under Section 2(zg) of the Trade Marks Act. [ITC Limited v. Central Park Estates Private Limited & Anr].Justice Prathiba M Singh observed that given the fact that the restaurant has won numerous awards and has had celebrities from across the globe visit, there was no doubt that 'Bukhara' was a well-known mark."In light of this overwhelming evidence, the reputation and global distinction earned by the Plaintiff’s mark ‘BUKHARA’ is beyond well-established and the said restaurant has clearly internationalised India’s cuisine.".Senior Advocates Arvind Nigam and Rajshekhar Rao appeared for ITC along with Advocates Afzal Khan, Samik Mukherjee, Debjyoti Sarkar, Vishal Nagpal and Manosij Mukherjee.Advocates Peeyoosh Kalra and Nikita Anand represented the defendants..ITC had filed a suit claiming that the adoption of the mark 'Balk Bukhara' by a Gurgaon restaurant amounted to infringement of its trademark. Additionally, ITC sought a declaration of its mark 'Bukhara' as a well-known mark. Counsel for the defendants informed the Court that the mark 'Bukhara' had not been protected by courts in the USA.The defendants, however, agreed not to use the mark 'Balk Bukhara' or any other mark with the word 'Bukhara' for their hotel, restaurant or other hospitality services.Consequently, the Court restrained the defendants from using the mark 'Balk Bukhara' or any other similar mark in any form and directed them to change the items or places where the mark appears before December 31, 2022..On the prayer seeking declaration of ITC's mark as a well-known mark, the Court recorded that the attribute of certain trademarks attaining the status of 'well-known marks' had been acknowledged by courts in India for about three decades."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," it added..Further, the Court said that the judgments from USA courts would not be applicable in India's context, where it is clear that the mark 'Bukhara' originated in India, and enjoys substantial goodwill and reputation not only among Indians, but also among foreigners who travel to India and carry back the said reputation."India also recognizes transborder reputation and the `wellknown mark’ doctrines, both in its judicial decisions and in statutes," the Court added..Hence, the Court declared 'Bukhara' as a well-known mark and directed the Registrar of Trademarks to add the same to the list of well-known marks..[Read Judgment]