Karim Hotel Pvt Ltd (Karim), famously located at Jama Masjid, New Delhi, has multiple branches Pan-India, it coined and adopted the trademark KARIM in the year 1913. The mark KARIM is an abbreviation of the name of its original founder, Haji Karimuddin. Karim has registered the mark KARIM in Classes 16, 29, 30, 42, 43.
Sometime in 2014, Karim came to know about one Mr. Kareem Dhanani, who was running his restaurant business, nationally and internationally, with a deceptively similar name KAREEM, causing a threat to the goodwill created by the former and misleading the customers into believing it branching out of Karim, circulated as “Kareem’s”. This was followed up with a legal notice being sent by Karim to Kareem’s in February of the year 2015, to which no reply was given till March 2015. Karim then proceeded with filing of the suit in the Delhi High Court against Kareem, ‘1885/2015 Karim Hotels Pvt. Ltd. v. Kareem A. Dhanani’.
In the said suit, Kareem took a stand that he has registered his brand as “KAREEM’S” in 2005 under Class 42. Upon understanding this, Karim then filed a Cancellation Petition against Kareem’s mark before the IPAB, Mumbai. With the petition being moved to the IPAB, the High Court stayed the case until any decision was given on the cancellation application. This petition remained pending till November of 2017, resulting with the order declaring the suit to be disposed of with the liberty provided to the Karim for filing an appropriate proceeding after the IPAB’s decision on the cancellation petition. Aggrieved by the fact that the Cancellation petition still stands pending and Kareem is still successfully running various hotels in different cities, Karim approached the Court again. When asked by the Court to present the list of hotels run by Kareem, there were 41 establishments stated running under the name ‘Kareem’s Restaurant’ pan-India and abroad.
The Hon’ble High Court took cognizance of all the available facts. The High Court was considerable of both the parties’ status in the market. Kareem was already running multiple hotels by the time the case came to the decision and it was observed by the Court that granting a permanent Injunction against Kareem would be a great injustice to Kareem. Therefore, the Court gave directed Kareem to refrain from opening any further restaurants which are identical or deceptively similar to that of the Karim’s. It was further directed that Kareem should issue at least 2 public notices in prominent media circulation in Maharashtra and North India, stating that Kareem has no connection with the Karim.
