Delhi High Court declares ITC's 'Bukhara' integral to Indian cuisine

Delhi High Court declares ITC's 'Bukhara' integral to Indian cuisine

The company had filed a suit mainly against Gurugram restaurant 'Balkh Bukhara'

The Delhi High Court has declared that 'Bukhara', is an established trademark of ITC Limited. It has directed the Registrar to add it to the list of well-known trademarks on completion of the requisite formalities, under the Trade Marks Act, 1999.

The bench comprising Justice Prathiba M. Singh stated that for the past few decades, certain trademarks or names attaining an iconic status, have been acknowledged and recognized by the courts in India.

Citing the examples of 'Apple', Whirlpool' and 'Benz', she said that these were recognized as well-known marks even before being used on a commercial scale in India. The concept of according recognition for such marks was finally incorporated statutorily in the Act, strengthening their identification.

The court said ITCs documents showed that "not only has 'Bukhara' been intrinsically connected to the Indian cuisine," but the restaurant is also recognized internationally as a customary stop for foreign celebrities and dignitaries. Its reputation and global distinction are well-established and the restaurant has clearly internationalized India's cuisine.

The restaurant has received numerous awards, including Best Restaurant in Asia (2006) and Best Indian Restaurant in the World (2007). It also bagged India's Best Hotel Restaurant Award by Travel & Leisure (2016).

The bench observed that the United States courts' judgments, wherein ITC was unsuccessful in protecting the mark, would not be applicable in India's context. It reiterated that in the country, the brand enjoyed substantial goodwill and reputation not only among Indians but also foreigners who travel to India and carry back the memories.

Justice Singh ruled, "In view of the circumstances, which are in contrast to the position in the US and considering the Indian legal position and the enormous fame and goodwill evidenced from the documents placed on record, which are not denied by the defendants, 'Bukhara' is declared as a well-known mark under Trades Mark Act. The Registrar of Trademarks shall add the same to the List of Well-known Trademarks, upon the plaintiff completing the requisite formalities."

The decision was passed on a suit filed by ITC for protection of its trademark 'Bukhara', used for the restaurant and other hospitality services. It was adopted for the restaurant at ITC, Maurya Hotel, in Chanakyapuri, in the late 1970s.

Though the suit was primarily against the adoption of the mark 'Balkh Bukhara' by a restaurant in Gurugram, ITC also sought a declaration of its mark 'Bukhara' as a well-known mark under the Trades Mark Act.

ITC maintained that the Gurugram restaurant had imitated various aspects of 'Bukhara', including the name, logo and font, interiors of the restaurant, décor, seating style, staff uniform, bib/apron, utensils, wooden menu and the whole look and feel of the ITC restaurant.

The defendants agreed to not use the mark 'Balkh Bukhara' or any other mark or word comprising 'Bukhara' for their restaurant, hotel, or other hospitality-related services.

Thus, the court said that the defendants shall stand restrained from using the mark 'Balkh Bukhara' or any other mark identical or deceptively similar to 'Bukhara'. It noted that the defendants had agreed to change the menu card, the jacket as part of the uniform of their restaurant servers, and the copper glass, which were similar to the items of the plaintiff.

The court added, "The defendants have agreed to change and remove the name and the word 'Bukhara' from the restaurant, the display board, any promotional items, boards, websites, and other items, including napkins, menu cards, uniforms, invoices, stationery, and places within its restaurant where such a mark appears, on or before 31 December 2022."