BUKHARA - A well-known trademark now

BUKHARA - A well-known trademark now

A suit was filed by the Plaintiff being aggrieved by the Defendant’s adoption of the mark ‘BALKH BUKHARA’ for its restaurant in Central Park Resorts, Sec-48, Gurgaon. In view of the dishonest adoption and reputation of the Plaintiff’s trademark BUKHARA, a suitable order of injunction against the Defendant was passed.

One of the prayers of the Plaintiff was to declare the trademark BUKHARA as well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999. The Court has delved in depth on the rationale for declaring the trademark BUKHARA as well known.

The Court noted that the attribute of certain trademarks or names attaining the status of well-known marks has been acknowledged and recognized by Courts in India for the last two-three decades. Illustratively, marks such as ‘APPLE’, ‘WHIRLPOOL’, ‘BENZ’ etc., have been recognised as ‘well-known’ marks even before the said marks were actually used on a commercial scale in India.

Keeping the decisions Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239; SLP(C) No. 008148/1992 titled Apple Computer Inc. v. Apple Leasing & Industries, NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 in mind, the Court  perused the plaint and the documents filed by the Plaintiff in support of its long-standing repute, both nationally and internationally.

The Court noted some of the relevant documents that denote that not only has the mark ‘BUKHARA’ been intrinsically connected to Indian cuisine, but the Plaintiff’s restaurant has also been recognized internationally as a customary stop for foreign celebrities and dignitaries. 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’s restaurant and a special menu is prepared for each such President.

The court also reviewed the US judgments against the Plaintiff where the trademark BUKHARA was refused protection against infringers. The US judgments were based on two factors:

(i)                That there was no evidence of BUKHARA having enjoyed goodwill and reputation in New York; and

(ii)              That the famous marks doctrine as set forth in Article 6bis of the Paris Convention and Article 16(2) of TRIPS has not been incorporated into the relevant federal law. 47.

The Court stated that these judgments would not be applicable in the context of India, where it is clear from the record 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 `well-known mark’ doctrines, both in its judicial decisions and in statutes.