Decided on: 6 November 2025
Coram: Justice C. Hari Shankar, Justice Ajay Digpaul
Citation: 2025 SCC OnLine Del 8240
Introduction
In a significant decision, the Delhi High Court delivered a balanced judgment in the trademark dispute between M/S Karim Hotels Pvt. Ltd., the owner of the well-known Karim’s restaurant and Mohammad Talha, the proprietor of the Gulshan-e-Karim restaurant based in Moradabad.
The judgement lays down an equitable approach, and provides a detailed explanation on the relationship between innocent trademark infringement, statutory rights of registered owners, and equitable considerations in injunctions while accommodating localized use of a trademark.
Facts of the Case
In December 2020, Karim Hotels Pvt. Ltd., (“Karim Hotels”) the operator of the famous Karim’s restaurant since 1913 became aware of an eatery in Moradabad operating under the name “Gulshan-e-Karim” by One Mr. Mohammad Talha. Dispute arose in 2022 when Karim Hotels filed a trademark infringement and passing off suit before the Commercial Court at Tis Hazari, Delhi seeking a permanent injunction to restrain the use of “Gulshan-e-Karim” (“Impugned Mark”) basis their use and reputation in the “KARIM” trademark since 1913. Karim Hotels contended that the use of the Impugned Mark would cause confusion among consumers and dilute their hard-earned goodwill and reputation. The Commercial Court ruled in favour of Karim Hotels in January, 2025 and granted an interim injunction – restraining the use of the Impugned Mark as is.
Mohammad Talha (“The Appellant”), the owner of the Impugned Mark “Gulshan-e-Karim” challenged the decision in the Delhi High Court, arguing that their trademark was adopted by his father in 1997 since the same means “Garden of God” in Urdu language. It was also submitted that the Impugned Mark is being used in relation to their restaurant services in Moradabad since 2016. The Appellant argued that the rival marks are dissimilar when compared in their entirety since no special emphasis or dominance was placed on the term “Karim” and their trademark, being a phrase as a whole was always used in its entirety. The Appellant also argued that their trademark was being used locally in Moradabad and serving customers within Moradabad since 2016 – as a result of which they have built significant goodwill and reputation in Moradabad. The Appellant further contended that the delay in legal action by Karim Hotels amounted to acquiescence.
The Respondent, Karim Hotels argued basis their longstanding and widespread use of the “Karim” trademark since 1913 through their Karims chain of restaurants; and also submitted details of trademark registrations for their KARIM family of marks across Classes 16, 29, 30, 42, and 43, covering food and restaurant services. Karim Hotels argued that the Impugned Mark was deceptively similar to their “Karim” marks and its use mislead consumers and cause market confusion.
Final Judgment
A Division Bench of the Delhi High Court evaluated the competing contentions carefully and held the following:
Similarity in Rival marks
The court held that the rival marks are indeed deceptively similar, given that the term “Karim” forms a dominant part of both these marks. The court was of the view that an average consumer with imperfect recollection tends to recall the dominant parts of a mark and when infringement is assessed from the point of view of a consumer of average intelligence and imperfect recollection, confusion between the rival marks seems likely.
Acquiescence
The Court dismissed the Appellant’s plea basis acquiescence, observing that mere acquiescence is no defence to infringement. The Court further stated that in the present case, there was no acquiescence at all given that the Appellant had not submitted any evidence establishing continuous use of their trademark “Gulshan-e-Karim” between 1997 and 2016. The court also considered the cease-and-desist notice issued by Karim Hotels to the Appellant – which proves prompt action taken by the aggrieved party.
Innocent adoption and use of the trademark
The court recognised that “Gulshan-e-Karim” was adopted with bona fide intention given that the term has a definite meaning in Urdu; and that the mark was used locally within Moradabad only. The court held that their approach in such a case must be balanced and a total injunction would be considered disproportionate given the longstanding use of the Impugned Mark since 2016.
Given the above reasoning, the Delhi High Court granted an equitable discretion under Order XXXIX CPC and Section 135 of the Trade Marks Act, 1999; and upheld the prima facie case of infringement.
That said, taking into account that the infringement was not malicious, that there was no sign of intent to copy or exploit the goodwill of Karim Hotels, and that the Appellant was using the trademark “Gulshan-e-Karim” since 2016, the court considered a total injunction against use of the Impugned Mark as disproportionate.
Accordingly, the court altered the injunction – requisitioning the Appellant to clarify within the trademark that there exists no relationship between them and Karim Hotels within six weeks’ time period. The court instructed the Appellant to provide a clear indication, in big fonts, in Hindi and English language, placed below the “Gulshan-e-Karim” trademark as displayed on their restaurant(s) as well all other online and off-line platforms.
Conclusion
A nuanced template in trademark jurisprudence, this Delhi High Court judgment balances the robust protection of reputed trademarks with complete fair-mindedness towards localized use by smaller businesses. Keeping intent as the highest threshold in deciding infringement cases, the Court weighed proportionality in trademark enforcement cases – with the aim of guarding prior trademark rights without damaging small time local businesses. Importantly, the court has clarified that where there is innocent infringement, particularly where the defendant has established some reputation in the business industry, fair adjustments like disclaimers can work well.
Author: Akshi Seem, Associate partner