Complainant began operating in the hospitality industry in 1975 and was known as one of India's leading private sector businesses with operations in a variety of industries, including fast-moving consumer goods (FMCG), hotels, paperboard and packaging, agri-business, and information technology. In the late 1970s, the plaintiff registered the mark "BUKHARA" for its restaurant at the ITC Maurya Hotel. The restaurant was well-known for its interior design, décor, layout, seating arrangement, the cutlery used to serve the food, the wooden menu cards, and the rustic appearance it had maintained over the years. Additionally, the plaintiff maintained websites like www.itcportal.com and www.itchotels.in that contained details about the plaintiff's hotel operations in India and other countries as well as evidence of the plaintiff's use of the trade mark "BUKHARA." The mark 'BUKHARA' had been registered in India since 1985 both in word form and in logo form. It was also claimed that 'BUKHARA' had acquired the status of a well-known trade mark.
Contentions by Plaintiff
Plaintiff felt wronged by the defendants using the name "BALKH BUKHARA" as their restaurant's trademark. Additionally, the plaintiff discovered the use of the aforementioned mark in 2022 and discovered that the defendants had registered the marks "BALKH BUKHARA RESTAURANT" and "BALKH BUKHARA" logo on the basis of both proposed to be used and actual use, respectively. Inquiries made by the plaintiff revealed that the defendants had copied every aspect of the plaintiff's "BUKHARA" restaurant, including the name, logo, font, interior design, seating arrangement, staff uniform, bib/apron, utensils, wooden menu, and overall atmosphere. Even the logo form and font were identical.
Under Section 57 of the Trade Marks Act of 1999, the plaintiff sought to correct the defendants' already registered marks and reserve its right to sue the defendants separately for copyright infringement of its artistic work that included the "BUKHARA" device, such as its stylized font (Act).
Contentions by Defendant
For their restaurant, hotel, or other hospitality-related services, the defendants' attorneys claimed that they have no plans to utilise the mark "BALKH BUKHARA" or any other mark containing the word "BUKHARA." Also, it was said that the defendants had no objections if the case was decided in their favour.
Decision
The court ruled that the plaintiff's supporting documents show not only that the mark "BUKHARA" had been organically linked to Indian food, but also that the plaintiff's restaurant had gained recognition on a global scale as a frequent stop for foreign dignitaries and celebrities. As a result, the plaintiff's mark, "BUKHARA," had acquired a solid name and distinctiveness around the world, and the plaintiff had unmistakably globalised Indian food.
The court took note of the ruling in ITC Ltd. v. Punchgini, Inc., 552 US 827 (2007), where the plaintiff failed to get US trademark protection for the "BUKHARA" mark. But the Court held that the judgment of US Court would not be applicable in the context of India, where it was clear from the record that the mark 'BUKHARA' originated in India and enjoyed substantial goodwill and reputation not only among Indians but also among foreigners who travel to India.
The Court held that the mark 'BUKHARA' was declared as a well-known mark under Section 2(zg) read with Section 11(2) of the Act. Further, the Court directed the Registrar of Trade Marks to add 'BUKHARA' mark to the list of 'well-known trade marks'.
Conclusion
Despite the fact that ITC had been unsuccessful in obtaining an injunction prohibiting the use of the mark Bukhara against some former workers in US Courts, there wasn't enough proof that Bukhara had a positive image and goodwill in New York. Nonetheless, the Court decided that "Bukhara" had acquired a global distinction beyond being well-established and conferred the status of a well-known mark due to its honours and the overwhelming evidence indicating its recognition in India.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
ITC LIMITED 
